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A TREATISE
ON THE
LAW OF TRADE-MARKS
AND ANALOGOUS SUBJECTS,
(FIRM-NAMES, BUSINESS-SIGNS, GOOD-WILL, LABELS, &c.)
BY
WILLIAM HENRY BROWNE,
OF THE BAR OF THE SUPREME COURT OF THE UNITED STATES.
SECOND EDITION,
R E VIS EID AN ID E NIL. A. R. G. E. De
B O S T ON :
LITTLE, BROWN, AND COMPANY.
1885.
Copyright, 1885,
By WILLIAM HENRY BROWNE.
All rights reserved.
TO NIVERSITY PRESS:
JOHN WILSON AND SON, CAMBRIDGE.
%. & *
£&lta) & J.
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PREFACE
TO THE SE COND EDITION.
THE first edition of this book sprang from the author's
desire to bring order out of chaos. There was need
for a collation of authorities on the Law of Trade-Marks
and kindred matters; and that need was felt, not only
by owners of applied symbols of manufacture and com-
merce, but also by bench and bar alike. No compre-
hensive treatise on those matters could be found in any
tongue. Judicial rulings of many countries had to be
consulted, and general principles of world-wide interest
to be deduced therefrom. Wonder not, therefore, that
much of the matter was crude, and sometimes merely
theoretical.
It is probable that no other branch of legal science
has had a more rapid growth during the twelve years
since the first edition appeared. For that reason, this
book had, for the greater part, to be rewritten. Within
that time, nearly all civilized nations have shown a due
appreciation of the importance of the subject. Their
interest has been manifested by scores of treaties and
numerous acts of legislation. A single fact speaks a
volume. In 1883, at Paris, more than twenty govern-
ments, including that of our own nation, were in con-
ference to form a union for the protection of indústrial
property, including rights in trade-marks. The result
iw PREFACE TO THE SECOND EDITION.
is a treaty in vigorous operation. The purpose thereof
is practically to efface mere territorial limits, as effectu-
ally as does the Postal Union, or the work of the late
International Prime-Meridian Conference. True, our
Senate has thus far declined to confirm the treaty; but
that is only because the subject of trade-marks had
complicated with it that of patents for inventions, and
it was thought too great concessions were demanded.
For the present, our citizens rely on special treaties for
protection in foreign countries. Interest in the matter
is not abated, but rather increases with the progress of
commerce. Because of that interest, the jurisprudence
of the subject has necessarily become more settled,
harmonious, and refined.
Our first national legislation in regard to trade-
marks was in 1870. For lack of apt words, limiting
the operation of the registration act to the commerce
over which Congress has control, that act was a nullity.
The Supreme Court having pointed out the error, Con-
gress, in 1881, corrected it; and ever since registra-
tion and its beneficial consequences have run smoothly
along. -
A few words as to the literature of emblems of com-
merce, etc. In the United States, Mr. Upton published
his work in 1860. As a pioneer, he did good service;
but explorations had then only begun. In 1871 ap-
peared a volume of nearly eight hundred pages, enti-
tled “American Trade-Mark Cases,” gathered by Mr.
Rowland Cox. The collection is convenient and valu-
able, inasmuch as it contains in full the principal opin-
ions of courts of the various States of our Union; and,
in an Appendix, decisions of English courts. In 1881,
Mr. Cox also published “A Manual of Trade-Mark
Cases,” comprising Sebastian's (English) digest of cases
PREFACE TO THE SECOND EDITION. v
down to 1879, besides some later ones. Several other
digests were published in or before the former year,
including that of Mr. Coddington. All are useful, if
they do no more than point the direction to full and
explicit enunciations of legal principles. – In Eng-
land, in 1861, Mr. Lloyd put forth an excellent little
treatise of about eighty pages duodecimo, and a second
edition in 1865. Later followed Adams's, and other
books and 'essays relating to trade-marks. The Brit-
ish legislation of 1875–76 gave an impetus to writers
of books of local practice. As a consequence of the
legislation of 1883, a number of books issued from the
press, by Messrs. Aston, Lawson, Bousfield, Terrell,
and others. They are mostly commentaries on the
British statute of that year, with rules of practice in
registration matters. They therefore do not imme-
diately concern general readers or practitioners in this
country, especially those who are in quest of general
principles. &
In France, in 1855, was published the “Code Inter-
national de la Propriété Industrielle, Artistique et Lit-
téraire,” by MM. Pataille and Huguet, to which an
“Appendice” was published in 1865 by the gentleman
first named. This is a work of great merit, containing
as it does much and various information in regard to
treaties, commercial conventions, and other congruous -
matters; but to us it is limited in value, as a book of
reference. In 1855, those gentlemen also began the
issue of a periodical entitled “Annales de la Propriété
Industrielle, Artistique et Littéraire,” principally com-
posed of opinions and decisions of the tribunals of com-
merce and courts of France, and sometimes of other
European countries. This still goes on under the su-
pervision of a corps of learned members of the French
vi PREFACE TO THE SECOND EDITION.
bar, although the eminent writer M. Pataille died in
1881. This work, now in its thirtieth volume, contains
a mine of wealth, not only in terse logical decisions of
judicial courts, but also in able essays and careful anno-
tations. In 1855 was published a good book, “Traité
de la Contrefaçon,” by Blanc. Space will not permit
anything more than a mere reference to Pouillet,
Clunet, and many other excellent authors. In 1884
was begun a publication entitled “Journal Officiel,”
which contains Trade-Mark decisions; but reference
to cases is somewhat hindered, from the omission of
names of parties litigant.
In other European countries there are publications
on the same subject, especially in Belgium, Germany,
and Austria, but they relate almost exclusively to
matters of mere local interest.
The latest obtainable decisions of courts of various
nations have been consulted and cited in the follow-
ing pages.
With the hope that this volume—the result of care-
ful revision of the first edition and analysis of judicial
opinions since then evolved—may be serviceable to
his brethren of the legal profession, and the public in
general, this work is submitted by
W. H. B.
WASHINGTON, D. C., August, 1885.
Q
CONTENTS.
[The numerals refer to pages.]
INDEx To CASES CITED . . . . . . . . .
TABLE OF ABBREVIATIONS . . . . . . . .
CHAPTER I.
INTRODUCTION . . . . . . . . . . . .
CHAPTER II.
PROTECTION of TRADE-MARK PROPERTY.
CHAPTER III.
DEFINITION AND NATURE OF A TRADE-MARK .
CHAPTER IV.
INDICATION OF ORIGIN or Own ERSHIP . . .
CHAPTER W.
ExAMPLES OF TRADE-MARKS . . . . . . .
CHAPTER VI.
FEDERAL TRADE-MARK LEGISLATION . . . .
CHAPTER VII.
FEDERAL LEGISLATION (continued) . . . .
CHAPTER VIII.
INFRINGEMENTs . . . . . . . . . . . .
ix
XX
18
94
163
330
383
viii CONTENTS.
CHAPTER IX.
REMEDIES,-LAw AND Equity . . . . . . . . . . 461
CHAPTER X.
DEFENCES . . . . . . . . . . . . . . . . . . . 482
CHAPTER XI.
DAMAGES . . . . . . . . . . . . . . . . . . 507
CHAPTER XII.
RIGHTS ANALOGOUs To THOSE OF TRADE-MARKs . . . . 524
CHAPTER XIII.
PRACTICE IN THE PATENT OFFICE . . . . . . . . . 578
CHAPTER XIV.
INTERFERENCES IN THE PATENT OFFICE . . . . . . . 620
º CHAPTER XV.
ABANDONMENT . . . . . . . . . . . . . . . . 648
APPENDIX.
TREATIES, CoNVENTIONs, ETC.
AUSTRo-HUNGARIAN EMPIRE, 673; BELGIUM, 674; BRAZIL, 674; FRANCE,
675; GERMAN EMPIRE, 676; GREAT BRITAIN, 676; ITALY, 676; Russia,
677; SERBIA, 677; SPAIN, 678.
TRADE-MARK LAws of VARIOUS Countries.
AUSTRIA, 678; BELGIUM, 680; BRAZIL, 681; CANADA, 682; DENMARK, 688;
FRANCE, 686; GERMANY, 688; GREAT BRITAIN, 691; ITALY, 697; JAPAN,
697; THE NETHERLANDs, 700; Norway, 701; RoumanIA, 701; RUssia,
702; SwedEN, 703; SwitzERLAND, 704; TURE EY, 705; THE UNITED
STATEs, 705. -
INDEx . . . . . . . . . . . . . . . . . . . 707
Af
INDEX TO CASES CITED.
[The references are to sections.]
A.
Abadie & Co. v. Proudhon & Co. 224
Abendroth Brothers, Re 273
Abington v. North Bridgewater 292
Adams & Fay, Re 218
Adams & Hammond v. Edwards
et al. 676
Adams & Taylor, Re 193
Adriance, Platt, & Co., Re 281
Affaire Armstrong 689
Affaire Vrau v. Divers 686
Ainsworth v. Walmesley 66, 199, 205,
302, 362, 471, 672
Aldrich et al. v. Bingham 619
Alleghany Fertilizer Co. v. Wood-
side 68, 219
Almy v. Harris 424
A. & M. Landon v. Pons 221
Am. Grocer Publishing Co. v.
Grocer Pub. Co. 33, 547
Am. Hide, &c. Co. v. Am. Tool,
&c. Co. 678, 681, 682
American Lubricating Oil Co., Re 68,
613
American Sardine Co., Re 134, 352, 610
American Saw Co. v. Emerson 504
Ames v. King 427
Amoskeag Manuf. Co., Re 235
v. Garner 67, 300, 386, 450, 497
v. Spear 28, 34, 36, 93, 153,235,
462, 685
Ams, Re
89 a
Anglo-Swiss Condensed Milk Co.
Ca,Se
Ansell v. Gaubert 545
Anthony & Kuhn Brewing Co.,
Re 597
Apollinaris Co. v. Edwards 191
v. Moore 191
v. Norrish 191
Armistead v. Blackwell 192, 653
Armstrong v. Kleinhaus 680
Arnault et cl. v. Franck 604
Arnold v. Bishop 308
Arnoux v. Antippa et al. 25
Arthur Gillender & Co., Re 207
Atlantic Milling Co. v. Robinson
et al. 150, 504, 680
Atlantic White Lead Co., ex parte 133
Aubertin v. Wix et al. 48
Auburn, &c. v. Douglass 508
Austen v. Boys 522
Averill Chemical Paint Co., Re 251
Avery & Sons v. Meikle 24, 30, 43,91,
137, 229,419
A. Vogeler & Co., ex parte 609
A. W. Balch & Co., Re 218
A . . . . . v. Z . . . . 135
B.
Backus, F. M., Re 274
Badoit v. André 170
Bain v. Munro 522
Banks v. Gibson 524
Banque du Commerce et de l’In-
dustrie v. Banque Centrale du
Commerce et de l’Industrie 530
Banque Populaire v. Banque Pop-
ulaire d’Escompte
Barbier v. Simon 89 c
†Bardin v. Gobert et al. 601
Bardou v. Berha et al. 33
~ v.-Lassausée - - – 212
Bardou et al v. Sabatou et al. 398
Bardou & Son v. Lacroix 71, 135, 586
Bardou, Pierre, & Pauilhac v. Bar-
dou 420 a
Barkhouse Brothers & Co., Re 273
Barksdale, F. C., Re 115, 558
Barnard v. Pillow, Re 557
Barnett v. Kübler 166
v. Leucharg 166, 386, 496
Barrow’s Application, Re 89 d
Barrows v. Knight 216, 426
Bass v. Dawber 471
Batcheller et al., ex parte 276
Batty v. Hill 133, 597
X. INDEX TO CASES CITED.
Browne v. Freeman 134, 220,252,680
Bru v. Larband 258
Brunswick v. Dunning 319
Bryce v. Dorr 508
Bryson v. Whitehead 545
Buck et al. v. Hermance 503
Buckland et al. v. Rice et al. 220 b
Bulloch, Lade, & Co. v. Gray 192
Burgess v. Burgess 420, 432
v. Hately 471
v. Hills 471
Burke v. Cassin 33. 134
Burnett v. Phalon 32, 88,150,237,337
50, 476, 658
523
[REFERENCES ARE To secTIONs.]
Bautain v. Mercklein 527
Bay State Iron Co., Re 193
Beard v. Turner 219, 260,497
Bell v. Daniels 502, 681
v. Locke 105, 107, 550
Bergen & Bainbridge, Re 218
Bernard v. Emonds et al. 200
Berthelon v. Vergé 535
Biddle Hardware Co., Re 193
Bigelow Carpet Co. v. Dobson 504
Bininger v. Clark 524
Binninger v. Wattles 134, 597
Bird v. Randall 346
Bisson-Aragon v. Aragon 187
Blackwell v. Armistead 658, 659, 660
v. Dibrell 352, 654, 681
v. Wright 30, 33, 134, 386, 654
Blake Crusher Co. v. Ward 812
Blakeslee & Co., Re 134, 164,276,367
Blancard v. Gutton 58
Blancard & Co. v. Fancher 58
Blanchard v. Hill 20, 395,458, 500
v. Reeves 467
Blanchard Churn case, The 375
Blofield v. Payne 35,458, 500, 505, 541
Bloss v. Bloomer 351,443
Boardman v. Meriden Britannia
Co. 30, 144, 148, 229, 230, 395, 538
Boboeuf v. Boeuf 420 a
Boehm & Co., Re 66
Boetticher, Kellogg, & Co., Re 70
Boilley v. Jollivet 89 c
Bond v. Milbourn 523
Bonfils Frères v. Naquet 89 d
Bonnet et al. v. Delisle 527
Booth v. Jarrett 539
Bostwick & Tilford, Re 274
Boswell v. Mathie 531
Boudet v. Berdin et al. 528
Boulnois v. Peake 528
Bournhonet & Basille v. Tisseron
et al.
Bowman v. Floyd 91
Boyd v. Browne 344
Boyer v. Boyer 33,420 a
Bradbury v. Beeton 547
v. Dickens 116, 524, 547
Bradley, Assignor to Young & Co. 328
v. Norton 663
Braham v. Bustard 150, 245
Brandreth, Re 134
Brook, Re 260
Brooklyn White Lead Co. v.
Masury 91, 188, 659
Brousse, Perdonnet, & Co. 220
Brousse v. Pernolet & Co. 221
Brown, Fred., Re 207
v. Mercer 137
v. State of Maryland 287
Brown's Jamaica Ginger, Re 172
91, 135, 136
Burrows v. Foster
Burton v. Stratton
Bury v. Bedford 57, 364, 437
Busch & Co., Re 613
Bush & Co., Re 68
Byass v. Sullivan 427
Byron, Lord, v. Johnstone 554
C.
Cagnaut v. Durand 546
Cahoon v. Ring 338
Caire, Jules E., Re 638
Caminade & Co. v. Caminade 527
Canal Co. v. Clark 29, 112, 134, 144,
182, 189, 192, 420, 521, 538
Candee, Swan, & Co. v. Deere &
Co. 129, 134, 192, 597
C. & W. A. Waters, Re 68
C. A. Yale Manuf. Co. v. C. A.
Yale 607, 661
Canham v. Jones 545
Carmichel v. Latimer 57, 420
Carmoy v. Samson 440
Carney, George J., Re 138
Carnrick v. Morson 33
Carpentier v. Canivet 414
Carrière v. Durand et al. 686
Carroll v. Ertheiler 66, 386
Carroll, J. W., Re 218
Carter v. Baker 505, 518, 517
Cartier v. Carlile 33, 386
v. May 471
Carver v. Bowker 229
v. Pinto Leite 472
Case & Martin, ex parte 589
Cassidy, John E., ex parte 368
Castille v. Dennery 552
Caswell v. Davis 29, 134, 136, 220
Cave v. Myers 72, 498, 531
Cawood Patent (94 U. S.) 504
Cazade & Crooks, Re 581
C. D. Ross & Son, ex parte 276
Chabrier v. Peillon 598
Chaize v. Fromentelle 534
INDEX TO CASES CITED. Xi
[REFERENCES ARE To SECTIONs.]
Champlin et al. v. Stodart 504
Chantier du Grande Ivry, Re 530
Chappell v. Davidson 71,496, 549, 557
v. Sheard 71, 557
Chapu v. Legrand et al. 33, 686
Charles S. Ross & Co., Re 248
Charleson v. Campbell 528
Chase v. Mayo 565
Cheavin v. Walker 72,221
Cheever v. Wilson 298
Chevet v. Lemasson 527
Chicot & Co. v. Vespierre & Rozé 89 a
Child v. Adams 329
Choynski v. Cohen 100, 161
Christofle & Co. v. Deleiderrier 22, 51
Christy v. Dande 261
v. Murphy 65, 528
Chubb v. Griffiths 471
Churton v. Douglass 98, 522, 524, 526
Civil Service Supply Assoc. v.
Dean 528
Clark v. Brown 424
v. Clark 388, 420, 427
v. Freeman 393, 555
v. German Mutual Fire Ins.
Co. 71,91
Clayton v. Stone 108
Clemens v. Belford 556
v. Such 548
Clement v. Maddick 33, 116, 386, 547,
550
Clertan et al. v. Carpentier 166, 236
Clicquot v. Roudeau et al. ' 455
Clowes v. Hogg 547
Coats, Re
Coats v. Holbrook.
Cochrane, James, Re
Cocks v. Chandler 252, 548
Coffeen v. Brunton 28, 34, 35,109,386,
458, 460, 462, 468, 501, 538
Cohen & Co. v. Maris & Widow
Robert 252,678
Colgate & Co., Re 273
Colladay v. Baird 186, 302
Collender v. Griffith – – –109
Collins Co. v. Brown 21, 287
v. Cohen 287, 362
v. Oliver Ames & Sons' Cor-
poration 67, 427
v. Reeves 21
v. Walker 471
Colman v. Crump 58, 385, 886, 501
Colton v. Thomas 540
Compagnie Howe v. Grimm 387
Compagnie Laferme v. Hendrickx 471
Compère v. Bajou et al. 209, 525
Comstock v. White 38, 563
Congress & Empire Spring Co. v.
High Rock Cong. Spring Co. 39, 57,
91, 146, 160, 191, 247, 362
597.
36, 344, 471, 496
614
Connell v. Reed 71
Conover v. Rapp 513
Conrad v. Joseph Uhrig Brewing
Co. 71, 418, 473
Consolidated Fruit Jar Co., Re 221
v. Dorflinger 72
Constable & Co. v. Brewster 547
Cook v. Starkweather 137, 386
Cooke, J. C., Re 578
Cope v. Evans 386
Corns v. Griffiths 547
Cornwall & Co., Re 68, 191,638
Correspondent Newspaper Co. v.
Saunders 547
Corwin v. Daly 65, 134, 395
Cotton v. Gillard 352
Coudray v. Monpelas 219
Covel v. Maxim et al. 643
Cowing v. Rumsey et al. 504, 507, 513
Cº.v. Land and Water Journal
e 559
Crane & Byron, ex parte 133
Crane & Co., ex parte 276
Crawford v. Collins 590
Crawshay v. Collins 524
v. Thompson 395,458
Crespel & Descamp v. Dayez fils
aimé & Co. 269
Crichton, Malcolm, Re 193
Croft v. Day 28, 34, 43, 201, 851, 385,
393, 422, 423, 538
Crompton v. Belknap Mills 315
Crutwell v. Lye 522, 523, 526
Cuillieron-Policard v. Gadobert 89
Cunin-Gridaine and other manu-
facturers of Sedan v. Crocius 182
Curtis v. Bryan 201, 351, 426, 492
8
Cusimberche v. Debard 9
C. & W. A. Waters, Re 68
D.
Dalbanne & Petit v. Colleuille &
C 216
O. - - -
Dale v. Smithson 71,351,458,494, 538
Dannachie v. Young 193, 533
Davey, Bickford, Watson, & Co. v.
Nier 268
Davis v. Garrett 518
v. Kendall 88, 91,273, 468, 516,
º 563
v. Kennedy 33
Dawes & Fanning, ea parte 367
Day v. Woodworth 519
Dayton v. Wilkes 106, 108, 550
De Bussy (Charles) v. Charles
Marchal 556
Décressonière v. Celisse 33
Deiz v. Lamb
INDEx TO CASEs CITEp.
[REFERENCES ARE TO SECTIONS.]
Delaleu v. Grignon 192
Delaware & Hudson Canal Co. v.
Clark (See Canal Co. v. Clark.)
Demot, Dubrac, & Benités v. Soc.
des Heritiers Liebig 686
Deneubourg-Ligier et Cliff v. Bir-
kin frères 419
Denis & Mounier v. Vignier, Do-
dart, & Co. 253
Dental Vulcanite Co. v. Wether-
bee 682
Derringer v. Plate 47, 362, 424, 502
Désiré Michel & Co. v. Achard &
Co. 190
De Villemessant v. N. Estibal 33
Devlin v. Devlin - 471
Dick & Co., Re 134, 597
Dietrichsen v. Cabburn 562
Dixon v. Jackson 33, 68
Dixon Crucible Co. v. Guggen-
heim 37, 114, 129, 172, 362, 396,
480, 541
Doe v. Yates 196
Dole Brothers, Re 134
Dorvault v. Hureaux 529
v. Teissier & Co. - 529
Dougherty v. Van Nostrand 526
Dousman & D. T. Co. v. Ruffner 138
Doxsee, J. H., Re 250
Dr. Haterr Medicine Co., Re 381
Dubois v. Demoiselles Louise and
Lucille -
Dugué & Co. v. Bobot-Descou-
tures 603
Dunbar v. Glenn 33, 191
Dunèsme v. Anastay 473
Dunn & Co., Re 273
Dunn Edge Tool Co., Re 249
Dupont, A., v. Debreye 383
Dutcher Temple Co., Re 234, 377
Duwel v. Bohmer 280
E.
Eames & Sealey v. McDougal 633
Eberman v. Reitzell 354
Edelsten v. Edelsten 33, 35, 411, 471,
496, 504
v. Wick 72, 73, 541
Edgerley, H. B., Re 217
Edinburgh Correspondent News-
paper, Re 547
Edmonds v. Benbow 547
Eggers v. Hink 164
Electro-Silicon Co. v. Hazard 22, §
Elk v. Wilkins 289
Ellis v. Zeilen & Co. 418
Ely v. Monson 466
England v. Downs 522
v. New York Publishing Co. 196
English, R. W., Re 162
Enoch Morgan's Sons v. Troxell
et al. 44, 137, 418
Entrepôt d'Ivry, Re 530
Erard v. Erard 420 a
Estcourt v. The Estcourt Hop Es-
sence Co. 71, 471
Estes et al. v. Williams et al. 116
v. Worthington 497
Estibal v. Petit-Demenge 551
Evans v. Harlow 478
Evans, W. M., ex parte 590
Eydoux v. Morel 89 d, 681
F.
Faber v. Faber 421
v. Hovey 68, 504
Faivre v. Boulan 33
v. Duguaire et al. 184
Falkinburg v. Lucy 83, 148, 255, 538
Farcy et al. v. Epailly et al. 33
Farina, Re 260, 497
v. Camus 288
v. Cathery 33
v. Shaw 58
v. Silverlock 28, 30, 58
Farr v. Pearce 522
Farre, Charles Narcisse, Re 89, 304
Fay v. Durand - 135
Featherstonhaugh v. Fenwick
Fechheimer & Workum, ex parte -
Fenn v. Bolles 524
Ferguson v. Davol Mills 149, 234
Fetridge v. Merchant 38,242, 244, 351,
462
v. Wells 71, 148, 241, 242, 244,
328, 353, 471, 488
Field v. Adreon 297
v. Lewis 471
Filkins v. Blackman 57, 539
Filley v. Child 221
v. Fassett 33, 148, 150, 386, 664,
s 682, 685
Fils vſ. Sarrazin 624
Fiolet v. Duval 89 b
Fisk, Clark, & Flagg, Re 133, 134,273
Flavel v. Harrison 72
Fleischmann v. Schluckmann 136, 191
Fleming, Cochran, Re 207
Roote v. Silsbee 503
Forbes, Samuel B., Re 275
Ford v. Foster 68, 71, 72,219, 688
Forsythe v. State 354
Foss, ex parte, and Re Baldwin 68
Fould v. Honegger 32
Fowle v. Spear 71, 351,429, 475,491
INDEX TO CASES CITED.
[REFERENCES ARE To SRCTIONS.]
Fox v. Meurgey et al. 89, 219, 221
F. Prot & Co. v. Cabrideus et al. 33
v. Carriès 443
v. Jules Avice et al. 135
v. Monganzi 387
Frances, The 299
French v. Rogers 314
Frese v. Bachof 137
Fullwood v. Fullwood 543
Fulton v. Sellers 29, 57, 135, 539
Fumouze et al. v. Grosse et al. 387
Funke v. Dreyfus
G.
71, 135,136,685.
Galand v. Galand 420 a
Gale, Daniel J., Re 138
Galy v. Mauchien & Co. 564
Galzy v. Courcy 600
Gamble v. Stevenson 528
Gardner v. Bailey 33
Garnier v. Berthe 407
v. Lindière et al. 409
v. Paul Garnier 408, 410, 582
v. Richard 33
Garnier et al. Carthusians v.
Rivoire - 409
Gaullieur & André, Re 273
Gay v. Siebold 590
Genevoix v. Pauliac . 387
Germain v. Sevene 504
Gibblett v. Read 68, 545
Gilbert & Co. v. Benedictus 441
Gill & Lootz, Re 218
Gillis v. Hall 425
Gillott v. Esterbrook 29, 226, 229, 401,
446, 512, 544, 681, 685
v. Kettle 36, 446
Gillout v. Richard 89 c
Gilman v. Hunnewell 33, 134
Ginter v. Kinney 134
Glen & Hall Manuf. Co. v. Hall 71,
- 401, 442
Glen Cove Manuf. Co. v. Lude-
ling 360, 400
Glendon Iron Co. v. Uhler 134, 136,
* 192
Glenny v. Smith 64, 386, 496, 531
Godillot v. Harris et al. 144
v. Hazard 261
Gogney v. Delamme 443
Goodyear v. Dunbar 464
v. Hullihen 312, 314.
Goodyear Rubber Co., Re 134, 597
v. Day 220 a
Gourbeyre v. Bodevin - 236
Gordon, Re 89 b, 138
Gout v. Aleploglu 222, 867
Graham, Re 134
Graham v. Plate 504, 507
Graham & Co. v. Kerr, Dodson, & 386
Co.
Gravelet (dit “Blondin”) v. Ar-
nault 213
Graveley v. Winchester 523
Gray et al. v. Taper-Sleeve Pulley
Works 91, 191,677
Green, Re 191
v. Folgham 562
v. Rooke 134
Greenwoods Scythe Co., Re 70,275
Grézier v. Caumontal 55
v. Chalvin 410
v. Cusenier 387
v. Detang 55
v. Gallifet 387
v. Girard 410
v. Jouhate 58
v. Lambert 387
v. Lieutand 410
v. Poullain 387
v. Rivoire 33
v. Rocca 387
v. Sage 410
Grillon v. Guénin 33
Grow v. Seligman
Guerineau v. Mignon
Guinness v. Ullmer 33, 58
Guislain & Co. v. Labrugnère 397, 450
Gullet Gin Manuf. Co., Re 323
91, 214, 420 .
236
Guyon v. Sewell 503
H.
* Hagg v. Darley 545
Halbron v. Malespine 416
Hall v. Barrows 30, 66, 129, 302, º;
7
v. Hall 524
Hall, Daniel G., ex parte 276
“Hall Calendar Watch” case,
The
Halliday Bros., Re 138
Hamilton Disinfectant Works, d
89
Hammelle et al. v. Doudiet 387
Hammerslaugh & Co., er parte 133
Hammond v. Douglass 524, 526
Hanford v. Westcott 621
Hankinson, Re - 565
Hargreaves v. Smith 260
Harrington v. Libby 89 b, 89 d, 137,
138,270
Harris, Beebe, & Co., Re 167
Harrison v. Gardner 523
v. Taylor 497
Harter v. Souvazoglu 89
Hartford Carpet Co. v. Dobson 504
xiv.
INDEX TO CASES CITED.
[REFERENCES ARE To SECTIONs.]
Hauthaway & Sons, Re 164, 276
Havemeyer et al., Re 614
Hawkins v. Lambert 633
Hayden v. Phillips 619
Hayem v. Brisac 58
H. D. Smith & Co., Re 234
Heath v. Wright 71, 429, 475, 491
Hecht v. Porter 66
Heidsieck v. Souris, Dresel, et al. 455
Helmbold v. The Henry T. Helm-
bold Manuf. Co. 57, 71, 134
Hennessy v. Hogan 448
v. Kennett 443
v. Wheeler 71, 475
. v. White 443
Hennessy & Co., James, ex parte 133
Henry v. Price 137
Heritiers Boboeuf v. Boeuf 420 a
Hérold v. Gerbeau 679
Heydenfeldt v. Davey, &c. Mining
Co. (U. S. Sup. Court) 282
Heyman, Re 135
Hill & Hall’s case, Re 323
Hine, Charles C., Re 558
v. Lart 150, 612
Hirsch, David, Re 218
Hirst v. Denham 191
H. J. Baker & Brother, Re 274
H. M. Rowe & Co., ex parte 588
Hobbs v. Français 71, 485
Hogg v. Emerson 08
5
v. Kirby 20, 71, 108,458, 474, 548
547
v. Maxwell
Holloway v. Holloway 71, 420, º
541
Holmes et al. v. Holmes et al. 34, 322
Holmes, Booth, & Haydens v.
The Holmes, Booth, & Atwood
. Manuf. Co. 386, 420
Holt et al. v. Menendez et al. 680
Holtzer & Co. v. Lendenberg &
Co 50
Hookham v. Pottage 531
* Hostetter v. Anderson 443
v. Fries et al. 220, 521
v. Vowinkle 33, 504, 516
Hovey v. Henry - 681
Howard v. Henriques. 83,92, 95, 96,
528. 560
Howe v. Searing 83, 98,210,525,536
v. The Howe Machine Co. 201,
422, 423
Howe Machine Co. v. Maquaire
et al. 387
Hovenden v. Lloyd 545
Hudson v. Bennett 471
v. Osborne 57, 71, 437, 523
Humphrey’s Spec. Hom. Med. Co.
v. Wenz 89 a, 229
Hunt v. Maniere 472
Hunyadi-Janos, Re 191
I.
Illinois, State of, v. Roehr 452
in. Rubber Co. v. Rubber Comb
O.
Ingram v. Lawson 473
v. Stiff . 33, 116, 547
Insurance Oil Tank Co. v. Scott 72,
340
Isaacs v. Daly 89 a.
Ives, Beecher, & Co., Re 614
J.
Jackson v. Nichols 633
James Hennessy & Co., ex parte 133
James v. James 134, 420
Jansen v. Ostrander 319
Jaubert-Bonnaire v. Wilford 689
J. Buchan & Co., Re 273
Jenkins et al. v. Putnam 633
Jenkins, N., Re 273
J. Marsching & Co., Re 192
Johnson & Co., Re 134
Jolley, Son, & Jones, Re 624
Jollie v. Jaques 548
Jones v. Pearce 508
Joseph Dixon Crucible Co. v. Ben-
ham 137
J. S. Johnson & Co., ex parte 133, 367
Julian v. The Hoosier Drill Co.
et al. 191, 681
Jurgensen v. Alexander 427, 471
K.
Kane & Co., Re 89 b
Kelly v. Byles 134
v. Hutton 116, 546
Kemp v. Herman 288
Kendall v. Stone 473
v. Winsor 681
Kennedy v. Lee 523
Kenyon v. Wesson 627
Kidd v. Johnson 57, 68, 364, 672
Kidd & Co. v. Mills, Johnson, &
Co. 68, 672
King of Saxony, ea parte 144
Kinney v. Allen 137
- v. Basch 30, 68,229
Kipling, Re 89 a
Knoepfel, W. H., R
© 194
Knott v. Morgan 91, 413, 526, 560
INDEX TO CASES CITED. XV
[REFERENCES ARE TO SECTIONS.]
L.
Labouchere v. Dawson 523
La Croix v. May et al. 568
La Fraternelle Parisienne v. La
Parisienne 530
Lagarde v. Piper 400
Laird v. Wilder 71
Laker v. Damon 510
Lalande et al. v. Appel et al. 85, 141
Lamplough v. Balmer 72
La Nationale v. La Société Natio-
male 530
Landon v. Lamare 387
v. Leroux 221, 387
v. Pons 221
Landreth, Oliver, Re 89 d, 270
Landsberger & Co., Re 273
Lanferty v. Wheeler 71
Lanman & Kemp v. Bognard et al. 688
Larénaudière v. Perine-Guyot 220
Larrabee v. Lewis 89 a, 136, 174
Laurens v. Laurens 527
Lautz Bros. & Co. v. Schultz & Co. 621
Lavery & Co. v. Fajardo 91, 219
Lawrence & Co., Re 134
Lawrence Manuf. Co. v. Lowell
Hosiery Mills 229
Lawson et al. v. Dechaille 689
Lazenby v. White 542, 681
Lea v. Haley 498
v. Millar 136, 192
v. Wolff 136, 192
et al. v. Deakin 136, 192
Leather, &c. v. Hirschfield 72, 505
Leather Cloth Co. v. Lorsont 72, 471
Leather Co. v. American Leather
Co. 30, 32, 33, 41,43, 64, 71, 72, 83,
91, 96, 126, 129, 301, 302, 351,
362, 363,477,672
Lebat v. Partongue 530
Leclanche Battery Co. v. Western
Electric Co. 521
Ledger v. Ray 547
Lee v. Haley 71,91, 498
Lee & Shepard, Re 113
Leech v. Doorgachurn Seal et al. 74
Le Figaro v. Le Petit Figaro 33
Legrand aimé v. Louit frères 137
Lehigh Valley Coal Co. v. Hamblem 533
Leidersdorf v. Flint 130, 280
Lelarge v. Brossom 89
Lemercier v. Millin 529
Lemoine v. Ganton 683
Leonard & Ellis's Trade-Mk., Re 135
Leonard & Ellis v. Wells 135
Leroy v. Calmel 49, 682
Lesley, A. M., Re 273
Levigoureux et al. v. Lecompte &
Co. 187
Levy v. Bizet 236
v. Walker 36
Lewis v. Langdon 526
Lichstein v. Mellis 91, 528
Liebig & Liebig’s Ext. of Meat Co.
v Collemann et al. 686
Liebig's Ext. of Meat Co. (limited)
v. Hanbury 134
Linde v. Bensel 536
Lindon v. Graham 473
Linoleum Manufacturing Co. v.
Nairn 220, 221
Lochgelly Iron & Coal Co. v. Lum-
phinnans Iron Co. 193, 583
Lockwood v. Bostwick 33, 362, 397
Longchamp v. Veuve Potin et al. 192
Lonquéty v. Fanchon & Co. 535
Loog v. Bean 473
Lord Byron v. Johnstone 554
Lorimier & Bovet v. Dubois 539
Louis Foucaud & Co. v. Lucien
Foucauld & Co.
Louis Strasburger & Co., Re 133
Lowell v. Lewis 508
Lowell Manuf. Co. v. Larned 89, 304
Luyties et al. v. Hollender et al. 360
M.
Mack v. Petter 137, 547
Magee Furnace Co. v. Le Baron 533
Manhattan Medicine Co. v. Wood 71,
483, 545, 672
Manuf. Co. v. Trainer 71, 156
Many v. Sizer 464
Marsh v. Billings 91,458, 501, º
et al. v. Warren et al. 381, 382
Marshall et al. v. Pinkham 324, 420
v. Ross 72
Martell & Co. v. Badoureau &
Patte 456
v. Martell et al. 58
Massez v. Joly 434
Matsell v. Flanagan 30, 36, 107, %
Mauprivez v. Buchet et al. 165
Mayer et al. v. Herlick et al. 532
McAndrew v. Bassett 52, 66, 184,
471,658
McCardel v. Peck 97, 528
McCartney v. Garnhart 403
McConnell, Porter, & Co., Re 193
McElwee v. Blackwell 306
McGowan Bros. Pump Mach. Co.
v. McGowan 524
McLean v. Fleming 20, 33, 43, 187,
385, 386, 392, 420, 471, 497, 501, 504
McMillan v. Barclay 681
xvi
INDEX TO CASES CITED.
[REFERENCES ARE TO SECTIONs.]
McNair v. Cleave 495
Mellus v. Silsbee 681
Meneely v. Meneely 136, 206, 326,420
Menier v. Buisson et al. 686
v. Leblanc-Winckler 419
v. Rochebrun 89 c, 686
Mercantile Loan and Warehouse
Co., Re 318
Meriden Britannia Co. v. Parker 33,
Merrimack Manufacturing Co. v.
Garner 256,462, 538
Messerole v. Tynberg 68, 216
Metzler v. Wood 33, 71, 471
Michaud et al. v. Lemenu et al. 58,
35, 191
Michel (Nestor) v. Stremier 286
Middlesex Co., Re 303
Millaud v. Caron 417
v. Le Petit Journal du Nord 417
v. Marian et al. 417
Millington v. Fox 802, 886, 393, 468,
471, 526
Mills, Johnson, & Co., Re 68
Milner v. Reed 326
Ministère Pub. v. Bernard 89
Ministère Pub. & F. Prot & Co. v.
Carriès 443
Missouri v. Gibbs 136
Mitchell v. Henry 268, 418
Moet v. Couston 471
Mondin & Co. v. Sari et al. 534
Montagnac v. Halphen & Co. 535
Montagne v. Bizet 71
Montgomerie v. Donald & Co. 533
Moodie, ex parte 138
Moorman v. Hoge 89 b, 187, 138, 341
Morgan v. McAdam 71, 72
v. Rogers 362, 672
Morgan, C. C., Assignor to Union
Paper Collar Co. 140
Morgan's Sons Co. v. Troxell 44, 137,
418
Morison v. Moat 545, 562
v. Salmon 429
Morrison v. Case 68, 606
Morse v. Worrell 33
Motley v. Downman 102,462, 526
Mouson & Co. v. Boehm 680, 681
Mowry v. Whitney * 624
Mulhens v. Buchholz 686
Muller v. Compagnie Immobilière 529
Müller v. Haymann 22
N.
Newberry v. James 545, 562
Newby v., Oregon Central R. R.
Co. et al. 321
Newman v. Alvord 29, 182, 188, 191,
193, 538, 659
New York Cab Co. v. Mooney 560
Nixey v. Roffey 72
Notelle v. Dutoict, Marlin, & Co.
and Paul Dutoict & Co. 137
O.
Oakes v. Tonsmierre 57, 539
O’Hara v. Hawes 308
Ohio Valley Piano Co., Re 273
Oliver, Re 192
Oliver Landreth, Re 89 d, 270
Orr Ewing & Co. v. Johnston &
Co. 83, 418
Osgood v. Allen 33, 109, 116, 381, *::
6
v. Rockwood
P.
Page v. Ferry 503
Palmer v. Harris 71, 351, 481
J. B., Re 221
Solon, Re 164,276
Panckoucke v. Wittersheim 415
Parent v. Chaumont 883
Parker v. Brant 464
v. Helme 503
v. Sears 464
Parsons v. Hayward 522
Partridge v. Menck 28, 32, 34, 35, 71,
256, 351, 462, 474, 489, 496
I’asley v. Freeman 344
Paulſin, Mary A., Re 246
Peabody v. Norfolk 545
Peck & Snyder, Re 585
E’eitz v. Eichele 537
Pellier et al. v. Trottier frères et al. 387,
535
Pennsylvania Coal Co. v. Douglas
et al. 533
Pepper v. Labrot et al. 91, 191
Perkins & Ernst, ea parte 606
Perry Davis & Son, Re 273
Perry v. Truefitt 28, 34, 41, 43, 71,
885, 393, 479
Peterson v. Humphrey 525
Phalon v. Wright 71, 134, 484
Phelps v. Brown 614
Ph. Vrau & Co. v. Pouillier-Lou-
ghaye et al. 89, 268
Pidding v. How
71, 480, 491
Pie v. Poulet 443
Pierce v. Franks 471
Pierre Bardou & Pauilhac v.
Joseph & Léon Bardou 420 a.
Pinaud & Amour v. Pineau 527
INDEX TO CASES CITED. xvii
Robineau v. Charbonnel 471
Rodgers v. Nowill 856, 428,458, 471,
50 5
3.
v. Rodgers 471
Rodgers & Son v. Philp & Solo-
In OIIS 684
Roederer & Co. v. Roederer 438
Rogers v. The Amado 299
Rolt v. Bulmer 524
Rommetin v. Crotte 532
Rose v. Evans 135
v. Loftus 471, 508
Rose, J., Re 217
Rosing, Re 260
Ross v. Ross 292
Ross & Son, C. D., ex parte 276
Ross & Co., Chas. S., Re 248
Rotherham's Trade-Mark, Re 219
Rowe & Co., H. M., ex parte 588
Rowe & Post, Re 597
Rowland v. Breidenbach 134
Rowley v. Houghton 33, 612
R. S. Merrill & Co., Re 273
Rubber Co. v. Goodyear 504
Russell & Erwin Manuf. Co. v.
Mallory 681
S.
Sabold, John, Jr., Re
Safeguard Fire Insurance Co.,
597
[REFERENCES ARE TO SECTIONs.]
Pisano v. Ilawson 287
Pitts v Hall 504
Ponsardin v. Peto 472
Popham v. Cole 385
v. Wilcox 33
Portallier v. Balay 58
Potter v. Holland 338
v. The Commissioners of In-
land Revenue 522
Potter et al. v. McPherson et al. 33
Poupier v. Laurençon 89 c |
Powell, Re 624
Pratt, Re 624
Pratt & Farmer, Re 597
Prize Cases (U. S. Sup. Court) 299
Probasco v. Bouyon et al. 57
Procter & Gamble, Re 89
v. McBride et al. 33
Prot & Co., F., v. Cabrideus et al. 33
v. Carriès 443
v. Jules Avice et al. 135
v. Monganzi 387
Prowett v. Mortimer 547
Prudhon v. Villaret 89 b
Prudon v. Brousse et al. 605
Purser v. Brain 549
R.
Radde v. Norman 191
Rader & Co., Re 597
Raggett v. Findlater 134, 597
Ralph v. Taylor 221
Ralph's Trade-Mark, Re 221
Ransom v. The Mayor, &c. 388, º
Tansome v. Graham 135
Raphauel, Re 135
Rºudère Veuve, v. Plesier
€t al.
Reed, W. H., Re 274
Regina v. Closs 453
v. Gray & Gosling 452
v. S. Jones 452
v. J. Smith 452, 453
Regnard v. Perrier 534
Reinhardt v. Spalding 135
Reynolds v. Bullock 524
Rian v. Bernheim 165
Richards v. Williamson 443
Richardson, Re 221, 611
Ricque et al. v. Forges 268, 585
Risewick v. Davis 297
Roach, Re 134
Robert v. Grandjean 89
Roberts, Re 134, 164,276
v. Sheldon 33
Robertson v. Berry 191, 553
v. Quiddington 522, 524
Re 818
Salignac & Co. v. Lavanier & Co. 599
Samuel v. Berger 368,474
Sargent v. Romeu 50, 216
Saunion & Co., Re 71
Sawyer v. Horn 43, 187, 418
v. Kellogg 471
Say v. Duringer et al. 21, 43
Schenck, C. S., ex parte 133
v. Rider 627
Schmidt & Curtius, ex parte 133
Schorthose v. Hogg 529
Schrauder v. Beresford & Co. 380, 384,
449, 626, 661
Schweitzer v. Atkins 33
Scott v. Scott 531
Scoville v. Toland 109, 381
Seabury v. Grosvenor 71
v. Johnson 352
Sedon v. Senate 537
Seigle v. Mondon, Gonon, & Carre 607
Seixo v. Provezende 405, 661
Selchow et al. v. Baker 134, 166,219
Seligman, Jacob, Re 214
Serrell v. Collins 338
Seymour v. McCormick 503
Shaver v. Shaver 136
Shepherd v. Boggs 524
xviii
INDEX TO CASES CITED,
[REFERENCES ARE To secTIONs.]
Shaw Stocking Co. v. Macket al. 229
Shipwright v. Clements 57, 522
Shrimpton v. Laight 33
Sickles v. Borden 515
Siegert et al. v. Abbott 71, 483
v. Ehlers 194
v. Findlater 71, 134, 194, 546
Simpson & Sons, Re 381
Singer Manuf. Co. v. Brill 220 a
v. The Donnestic Co. 473
v. Kimball & Morton 220 a
v. Larsen 220 a
v. Loog 91, 220 a, 521
v. Mestwerdt & Engel 387
v. Riley et al. 220 a
v. Stanage 220 a, 521
v. Wilson 386
Singleton v. Bolton 20, 134, 180, 356,
395,458, 500
Skinner & Co. v. Oakes et al. 57, *;
9
Smith, Re 89 a, 597
v. Everett 524
v. Reynolds 66, 329, 338
v. Sixbury 71
v. Woodruff 476, 493
H., Re 274
Smith & Co., C. D., Re 234
Smith, Crosby, & Co., Re 218
Snodgrass v. Wells 136
Snook, ex parte 196
Snowden v. Noah 36, 104, 107, 550
Société Anonyme des Mines et
Fonderies de Zinc de la Vieille
Montagne v. Baxter
Société de la Vieille Montagne v.
Beglin 473
Sohl v. Geisendorf 135, 681, 685
Somborn v. Menser et al. 339
Southern v. How 20, 63, 895, 500
Southron v. Reynolds 17
Spaulding v. Page 515
v. Tucker 515
Spencer & Sons v. Peigney, 178,686
Spottiswoode v. Clarke 31, 257, 462,
549
Stone v. Carlan 560
Stonebraker v. Stonebraker 435
Strasburger & Co., Louis, ea parte 133
Stubs v. Astier et al. 48, 178, 688
Swett & Crouch, Re 247
Swift v. Dey 36, 113, ;
61
v. Peters
Sykes v. Sykes 72, 201, 395, º 423,
2
T.
Sprague v. Adriance 681
Stachelberg v. Ponce 672
Standish v. Whitwell 260
State of Illinois v. Frank Roehr 452
Steinthal v. Samson 260
Stephens v. De Conto 108, 111, 550
. Peel 33
Sternberger, Leopold, Re 638
v. Thalheimer & Hirsch 68, 340,
380, 638
Stetson v. Winsor 560
Stevens v. Keating 463
Stewart v. Smithson 71, 72,495
Stokes v. Landgraff 157, 160, 597
Tallcott v. Moore 471
Taylor v. Carpenter (3 Story, 458) 21,
36,287, 681, 685
v. Carpenter (2 Wood. & M. 1) 21,
35, 65, 287, 344, 496, 503, 681,
685
v. Carpenter (11 Paige, 292) 28,
34, 35, 42, 65, 496, 501
v. Gillies 133
v. Taylor 33
Tegmeyer v. Kerns 627
Ternaux v. Bournhonet 527
Testevuide v. Girault 535
Teter, Re 138
Tetlow v. Savournin 476
Thaddeus Davids & Co., Re 381
Thalheimer & Hirsch, Re 638
“The Blanchard Churn ?’ case 375
The Dr. Harter Medicine Co., Re 381
“The Hall Calendar Watch?” case 376
The Walkden Aerated Waters
Co., Re 624
Thibierge v. Dupont et al. 165
Thomas, ea parte 522
Thompson v. Winchester 203, 459,496
Thompson, Derby, & Co., Re 89 a
Thomson, Langdon, & Co., Re 273,
588
Thorley's Cattle Food Co. v. Mas-
S8. II] 196, 420
Thunot-Duvotenay v. Degorce-
Cadot
Tipping v. Clarke 562
Tolle, John F., ex parte 367
Tom Pouce v. Roqueplan 91
Tonge v. Ward 33
Torchin v. Cathrin 383
Torchon v. Pauliac 221
Tournachon v. Tournachon 213
Town v. Stetson 134
Tracy v. Swartwout 503
Trade-Mark Cases (U. S. Sup.
Ct. 278, 281, 381
Tribouillet v. Mounier 504
Tucker Manuf. Co. v. Boyington 221
Tufts, James W., Re 273
Twamley, James, Re 584
INDEX TO CASES CITED,
XIX
Wendt & Rammelsberg, Re 68
West v. Rice 502
Weston v. Hemmons 545
v. Hunt 319
Wheaton v. Hubbard 424
Wheeler v. Johnston 193, 583
Wheeler & Wilson Manuf. Co. v.
Shakespear 221, 521
White v. Schlecht 188
Whitely v. Swayne 813, 829, 651
Whittemore v. Cutter 315, 508
Whyte, Com. Dec., case of 111
Willcox v. Aubineau 89 b
Willcox & Gibbs Sewing Machine 89 b
9
Co. v. The Gibbens Frame
Willett v. Blanford - 524
Williams v. Adams 125, 136, 191,681,
685
[REFERENCES ARE TO SECTIONs.]
U. •
United States v. Hudson & Good- 454
WII)
v. Rider 89 b, 138
ea rel, Schumacher & Ettlinger
v. Marble 381
eac rel. The Willcox & Gibbs
Sewing-Machine Co. v. Mar-
bl
e 381
U. S. Rifle & Cartridge Co. v.
Whitney Arms Co. 681
Upmann v. Elkan 472
Uzielli, ex parte 472
V.
Valve Jar Co., ex parte 133
Van Beil v. Prescott 134
Venus, The 294, 299
Vidoard et al., Re 313
Violet frères v. Thomas 33
v. Vital, Liautaud & Co. 33
Vogeler, August, et al. v. Max
Ernst 381
Vogeler & Co., A., ex parte 609
Voivet v. Scoppine 535
Volta Belt Co., Re 303
Vrau & Co., Ph., v. Pouillier-Lou-
ghaye et al. 89, 268
W.
Walch, Brooks, & Kellogg, Re 218
v. M. J. Cole & Co. 662
Walkden Aerated Waters Co., Re 624
Walter & Fielding, Re 193
Walter & Shaeffer, Re 602
Walton v. Crowley 33, 57, 362, 885,
-- 402
Warburg & Co., Re 134
Ward v. Ward 682
Warfield v. Booth 622
Warner v. Roehr 443, 452, 520
Warren v. Warren Thread Co. 57
Warton v. Klug 439
Waters, C. & W. A., Re 68
Weaver, Re 606
Webster v. Webster 36, 526
Wedderburn v. Wedderburn 522
Wedgwood et al. v. Smith et al. 216
Weed v. Peterson 386, 471, 504, 508
Welch v. Knott 393
Weldon v. Dicks . 497
v. Boston & Albany R. R. 681.
v. Johnson 119, 137
v. Williams 523, 545, 562
v. Wilson r 526
Williamson, E. J., Re 273
Winans v. N. Y. & Erie R. R. Co. 338
Winfree & Lyon, Re 218
Winsor v. Clyde 560
Wintermute v. Redington 503
Witt v. Corcoran 523
Woodward v. Lazar 92, 528
Woolam v. Ratcliff 412
Wolfe v. Barnett 681
v. Burke 71, 475
v. Goulard 134, 596
v. Hart 134, 137
Wolfe et al. v. Udolpho Wolfe
Co. - - 596
Worthington & Co.'s Trade-Mark, 266
Re -
Wostenholm & Son, Re 70
Wotherspoon v. Currie 136, º: §
Woven Wire Mattress Co., e;
parte 277
Wright v. Hooker 590
Wylam v. Clarke 471
Y.
Yale, C. A., Cigar Manuf. Co. v.
C. A. Yale - 607, 661
Youatt v. Winyard 562
Young, ex parte (Re Lemon Hart
& Son) . . 57
v. Jones Bros. & Co. 51
v. Macrae 134, 527
TABLE OF ABBREWIATIONS.
A. J. . . .
Abb. N. C. . .
Abb. Pr. . . .
Ad. & E. .
Alb. L. J. . .
Am. L. Reg. . . .
Am. L. Rev. . . .
Am. L. T.
Am. R.
Annales
Atk.
B. & Ad. .
B. & Cr. .
Bac. Abr. .
Barb. Ch. .
Beav. . . . . .
Beng. L. R. App. .
Bing. N. C. . . .
Bing. N. R. .
Piss. º
Blanc . . . . .
Bl. Com. .
Blatch..
Bos.
Brewst.
Burr. . . . .
C. B. . . .
C. C. C. Pap.
Cal. . .
Ch. D. . . . . .
Codd. Dig. . .
Co. Litt. .
. Atkyns's Reports.
. Australian Jurist.
. Abbott’s New Cases.
. Abbott's Practice Reports. (New York.)
(New York.)
Adolphus & Ellis's Eng. King's Bench Reports.
Albany Law Journal.
American Law Register.
. American Law Review.
. American Law Times.
. American Reports.
. Annales de la Propriété Industrielle, Artistique et
Littéraire. (Paris.)
(English Chancery.)
. Barnewell & Adolphus, King’s Bench Reports.
. Barnewell & Cresswell, King's Bench Reports.
. Bacon’s Abridgment.
. . . . Barbour's Chancery Reports.
Barb. S. C., or Barb. .
. Beavan’s Reports.
. Bengal Law Reports, Appendix.
. Bingham’s New Cases.
. Bingham’s New Reports. Do
. Bissell. (U. S. Circuit Court.)
. Blanc sur la Contrefaçon.
. Blackstone's Commentaries.
. Blatchford's Reports.
. Bosworth’s Reports.
. Brewster's Reports.
. Burrow. (English King's Bench.)
(New York.)
Barbour's Supreme Court Reports. (New York.)
(Rolls Court.)
(Eng. Common Pleas.)
(U. S. Circuit Court.)
(Superior Ct. N. Y. City.)
(Pennsylvania.)
. Common Bench Reports.
. Central Criminal. Court Sessions Papers.
. California Reports.
. Law Reports, Chancery Division.
. Coddington's Digest.
Coke on Littleton.
TABLE OF ABBREVIATIONS. xxi.
Com. Dec. . . . . Commissioner's Decisions. (U. S. Patent Office.)
Conn. . . . . . . Connecticut Reports. - ... •
Coop. . . . . . . Cooper. (English Chancery Reports.)
Cox's Man. . . . . A Manual of Trade-Marks, etc. (Rowland Cox.)
Cranch . . . . . Cranch’s Reports. (U. S. Sup. Ct.)
Cro. Jac. . . . . . Croke's Reports. (King's Bench, temp. James I.)
Ct. of App. . . . . Court of Appeal. (England.)
Ct. of Sess. Cas. . . Court of Sessions Cases. (Scotch.)
Cush. . . . . . . Cushing's Reports. (Massachusetts.)
D. & B. . . . . . Deersly & Bell’s English Crown Cases.
D. & R. . . . . . Dowling & Ryland's English King's Bench Reports.
Daily Reg. . . . . New York Daily Register. - -
Daly . . . . . . . Daly's Reports. (New York Common Pleas.)
Deady . . . . . . Deady's Reports. (U. S. Circuit Court.) -
De G., F. & J. . . . De Gex, Fisher, & Jones's Eng. Chancery Reports.
De G. & J. . . . . De Gex & Jones's Eng. Chancery Reports.
De G., J. & S. . . . . De Gex, Jones, & Smith's Eng. Chancery Reports.
De G., M. & G. . . . De Gex, Macnaghten, & Gordon's Eng. Chan. Rep.
Dill. . . . . . . Dillon's Reports. (U. S. Circuit Court.) -
Doug. . . . . . . Douglas's Reports. (English King's Bench.)
Drew. & S. . . . . Drewry & Smale's Eng. Vice-Chancellor's Rep.
•
Eden on Inj. . . . . Eden on Injunctions.
E. D. Smith . . . . E. Delafield Smith's Reports. (N. Y. Common
Pleas.) -
Ex. . . . . . . . Exchequer Reports.
Fed. R. . . . . . The Federal Reporter.
Fish. . . . . . . Fisher's U. S. Patent Cases. .
Ga. . . . . . . . Georgia Reports.
Giff. . . . . . . Giffard. (Eng. Vice-Chancellor's Reports.)
Gray . . . . . . Gray's Massachusetts Reports.
Greenl. Ev. . . . . Greenleaf on Evidence.
. C. . . . . . House of Lords Cases. -
M. . . . . . Hemming & Miller. (Eng. Vice-Chancellor's Rep.)
W. . . . . . Harrison & Wollaston. (Eng. King's Bench Rep.)
Hare . . . . . . Hare’s English Vice-Chancellor’s Reports.
Hilt. . . . . . . Hilton's Reports. (N. Y. Com. Pleas.) .
Hoff. Ch. . . . . . Hoffman's Chancery Reports. (New York.)
Holmes . . . . . Holmes's Reports. (U. S. Circuit Court.)
Hopkins . . . . . Hopkins's Chancery Reports. (New York.)
How. App. Cas. . . . Howard's Appeal Cases. (New York.)
How. Pr. . . . . . Howard’s Practice Reports. (New York.)
xxii
TABLE OF ABBREWIATIONS.
Hughes's Reports. (U. S. Circuit Court.)
Hun's New York Supreme Court Reports.
Illinois Reports.
Indiana Reports.
Jacob & Walker's English Chancery Reports.
Johnson's Reports. (New York.)
Journal du Palais. (Paris.)
The Jurist.
Kay & Johnson's English Vice-Chancellor's Reports.
Keen's English Rolls Court Reports.
Kentucky Law Reporter and Journal.
Keyes's New York Reports.
. Louisiana Annual Reports.
. Legal Intelligencer.
Legal Observer.
Law Journal, Chancery.
. Law Journal, Common Pleas.
• Law Journal, Exchequer,
Law Journal, King's Bench.
Law Journal, Magistrates' Cases.
Law Journal, Notes of Cases.
Law Reports (Ireland), Chancery Division.
Law Times Reports.
. Lloyd on Trade Marks. (London.)
. Mylne & Craig's English Chancery Reports.
Mackey's Reports. (Supreme Court of D. C.)
. Maddock's English Chancery Reports.
Manning & Granger's English Common Pleas Reports.
Manning, Granger, & Scott’s do.
Mason's Reports. (U. S. Circuit Court.)
. Massachusetts Reports.
Hughes . . . . .
Hun . . . . . .
Ill. . . . . . wº
Ind. . . . . O
J. & W.
Johns. . . . .
Journ. du Palais. e
Jur. . . . . . ©
K. & J. . . .
Keen . . . . .
Kent. L. R. and J. . .
Keyes . . . . .
La. Ann. . * &
Leg. Int. . © º
Leg. Obs. . tº e e
L. J. Ch. . . . . .
L. J. C. P. . . .
If J. Ex. . tº
L. J. K. B. e º
L. J. M. C. . . ©
L. J. Notes of Cas.
L. R. (Ireland) Ch. D.
L. T. R. . . . . .
Lloyd . . . . .
M. & C. .
Mackey . . .
Madd. . . C o
Man. & Gr. . . . .
Man., Gr. & S. . º
Mason . o Q
Mass. .
McLean © to
Md. . . . . . . .
Mer. • 6
Mich. .
Mo. . .
Mo. App
Mod
Mont, D. & Beö. . ©
Monthly L. R. . .
McLean's Reports. (U. S. Circuit Court.)
Maryland Reports,
Merivale's English Chancery Reports.
Michigan Reports.
Missouri Reports.
Missouri Appeals Reports.
o Modern Reports, English King's Bench.
Montagu, Deacon, & De Gex's Reports. (Lord Chan-
cellor, etc.)
Monthly Law Reporter.
TABLE OF ABBREWIATIONS. xxiii
N. C. . . . . . . North Carolina Reports.
N. & M. . . . . . Neville & Manning's English King's Bench Reports.
N. R. . . . . . . The New Reports. (English.)
(N. S.) . . . . . New Series.
N. W. Reporter . . . Northwestern Reporter.
N. Y. Leg. Obs. . . New York Legal Observer.
Off. Gaz. . . . . . Official Gazette of the United States Patent Office.
Ohio S. . . . . . Ohio State Reports.
Oreg. . . . . . . Oregon Reports.
J.
Pacific Coast L. J. . . Pacific Coast Law Journal.
Pa. L. J. . . . . . Pennsylvania Law Journal.
Pemberton . . . . Pemberton on Judgments.
Penn. L. J. . . . . Pennsylvania Law Journal, Reports.
Penn. St. . . . . . Pennsylvania State Reports.
Pet. . . . . . . . Peters's Reports. (U. S. Supreme Court.)
Phil. . . . . . . Phillips's English Chancery Reports.
Phila. . . . . . . Philadelphia Reports.
Pick. . . . . . . Pickering's Reports. (Massachusetts.)
Pop. . . . . . . Popham's English King's Bench Reports.
Poth. des Ob. . . . Pothier on the Law of Obligations.
R. Cox. . . . . . American Trade-Mark Cases. (Rowland Cox)
Rep. . . . . . . The Reporter. ſº
Rev. Stats. . . . . Revised Statutes of the United States.
R. I. . . . . . . Rhode Island Reports.
Robertson . . . . Robertson's Reports. (New York Superior Court.)
Rose . . . . . . Rose's Reports, English Bankruptcy.
S. & S. . . . . . Simons & Stuart's Reports, English Chancery.
Sandf. Ch. . . . . Sandford’s Chancery Reports. (New York.)
Sandf. S. C. . . . . Sandford's Supreme Court Reports. (New York.)
Scot. L. Rep. . . . Scottish Law Reporter.
Seld. { } gº Selden’s Reports. (New York.)
Seton . . . . . . Seton’s Forms of Decrees in Equity.
Sim. . . . . . . Simons's English Vice-Chancellor’s Reports.
Supp. Rev. Stats. . Supplement to Revised Statutes of United States.
Swanst. . . . . . Swanston's English Chancery Reports.
T. R. . . . . . . Term Reports.
Trade Marks . . . . British and Foreign Journal of Commerce, Trade
Marks, and International Exhibitions.
U. S. . . . . . . Reports of the Supreme Court of the United States.
Upton º © © © * > & Upton's Trade-Marks.
xxiv.
TABLE OF ABBREWIATIONS.
W. & B. . . . . .
W. R. (W. W. & A'B)
Wes. . . . .
Wict. L. R. Eq. .
W. R. . . . . . .
Wall. . . . .
Wall. Jr. . . . .
Watts & Serg. . . .
Wend. . . . . . .
West. Jur. . . .
West. L. J. . .
Wilson (Ind.)
Wis. . . .
Wood. & M. . . .
Woods. . . . . .
Wesey & Beames's English Chancery Reports.
Wyatt, Webb, & A'Beckett's Victoria Reports.
uity.
. . Wesey's English Chancery Reports.
. Victoria Law Reports. (New Series.) Equity.
Weekly Notes of Cases.
Weekly Reporter, London.
. . Wallace's Reports. (U. S. Supreme Court.)
. Wallace, Jr. (U. S. Circuit Court.)
Watts & Sergeant's Pennsylvania Reports.
... Wendell’s Reports. (New York.)
... Western Jurist.
... Western Law Journal.
Wilson's Indiana Superior Court Reports.
. . Wisconsin Reports.
. Woodbury & Minot. (U. S. Circuit Court.)
Woods's Reports. (U. S. Circuit Court.)
LAW OF TRADE-MARKS.
C H A P T E R I.
INTRODUCTION.
§ 1. Antiquity of the subject.
§ 2. Emblems of ownership coeval with birth of traffic.
§ 3. Origin, -in general ignorance.
§ 4. Seals, — most sacred proprietary marks.
§ 5. Trade-marks borrowed from heraldry.
§ 6. Sign-boards, as proprietary marks.
§ 7. Water-marks on paper.
§ 8. Stamps on ancient bricks, tiles, &c.
§ 9. Various kinds of circulating mediums.
§ 10. Stamping of precious metals.
§ 11. In all ages, symbolical expressions in favor.
§ 12. Hieroglyphics required by commerce.
§ 13. Chinese marks on fictile manufactures.
§ 14. Use of emblems on books.
§ 15. Proprietary marks of printers, painters, sculptors, &c.
§ 16. Swan-marks in England.
§ 17. Marks on clay pipes.
§ 18. Trade-marks are generally optional.
§ 19. Hall-marks, &c., in various countries.
§ 1. Antiquity of the Subject.—The main subject of this
treatise — the symbolism of Commerce—may well be deemed
to be as old as commerce itself. The most important part of
that symbolism is comprehended in the brief conventional
term “Trade-mark.”* As the love of gain is inborn, it must
1 In this age, when steam and electricity have nearly annihilated space,
and brought all parts of the world together, it is surprising that the term
1
2 LAW OF TRADE-MARKS. [$ 2.
be assumed that in even the rudest ages of the world men
obeyed the instinct of adding to gains, and therefore guarded
against losses incident to keen and perhaps unscrupulous ri-
valry. By labor or traffic they had things to sell. He who
sold and he who bought had alike to deal in faith. The faith
had to rest on some mark on goods, some peculiar emblem
that gave a quick but emphatic signal. All had to deal on
trust, as all do now, and take as proof the representation of
the affixed symbol, whether that symbol were the trade-mark
of a nation on its coin, or the rude device of an unlettered
artisan or trader. A glance of the eye sufficed. The first
law of nature — self-preservation — was as potent in the pro-
tection of the means of livelihood as of life itself. History
proves this.
§ 2. Seals and other emblems of ownership were coeval with
the birth of traffic. The numerous relics of prehistoric an-
tiquity which have floated down to us on the current of Time
fully authorize this conclusion. That such marks were always
in use at less remote periods, we gather from the records of
chroniclers on whose lips the signet-royal of Death was im-
“trade-mark” is misunderstood. In the greater number of standard dictionaries
of English there are definitions that do not define. Examine dictionaries.
Worcester, ed. of 1860: “A particular mark, sign, device, writing, or ticket put
by a manufacturer upon his goods, to distinguish them from those of others.”
On the authority of Bouvier (Law Dictionary).
Webster, ed. of 1883, substantially the same, also limited to a manufacturer,
on the authority of Simmonds.
Imperial Dictionary (by Ogilvie), 1883, also so limited.
Dictionary of Commerce and Manufactures, De Colange, 1881, substantially so
limited.
Abbott's Law Dictionary properly defines.
Rnight's American Mechanical Dictionary, vol. iii., 1876, contains the follow-
ing, from the pen of the present writer:– “Trade-Mark. An arbitrary symbol
affixed by a manufacturer or merchant to a vendible commodity. The prin-
cipal purpose of a trade-mark 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 to protect the purchaser as well as the
vendor. All countries protect the integrity of trade-marks, and nearly all
civilized nations have treaties and conventions securing reciprocity of protec-
tion.” As tests, it also recites the essential characteristics, substantially as in
§ 143, infra. This is a proper definition, in the light of authorities, as late as
the year 1885.
§ 3.] INTRODUCTION. 3
pressed thousands of years ago. In truth, no organized sys-
tem of trade could safely be conducted without the aid of
symbols of ownership, or of origin; 1 for the simplest mode
of exchange of goods, to be trustworthy, must be subject to
faith in the authenticity of emblems attesting the probity of
the vendor. We may reasonably assume, therefore, that marks
were found to serve an important purpose from the beginning
of competition in manufactures and the incipiency of commer-
cial spirit. What more natural than to affix a mark of iden-
tity to anything we make or possess! It is not done through
a churlish or selfish motive, but merely to avoid confusion
and dispute.
§ 3. Such emblems had their origin in a general ignorance
of reading the combinations of cabalistic characters that we
call writing. A written certificate of the genuineness of any
article of merchandise could not be understood by the no-
madic peoples, who desired to barter natural products for
something made by the hand of skilled artisans. A simple
emblem, as a crescent, a sun, a star, an animal, or other object
copied from nature or devised by fancy, when once associated
with a particular class of goods, or the handicraft of a certain
man, would readily be understood. Perhaps Tubal-cain —
who, in the first age of the world, was “an instructor of
every artificer in brass and iron’” — was wont to impress upon
his utensils and weapons a peculiar emblem of authenticity.
Faith, the very soul of commerce, thus gave mutual advan-
tages. The maker was protected against unfair competition
of inferior workmen, and the purchaser had a guaranty of
excellence. The mark was as easily read as were the marks
that distinguished the cattle of Jacob from those of Laban.
It spoke an emphatic language: When you see me, know that
I have come from So-and-so. From the day that such signs
were used by artisans to indicate the product of their skill,
or by merchants to vouch for the honesty of commodities sold
or traded by them, base imitators must have existed, for dis-
honesty is not the junior of art. He who could forge a piece
* As to the technical meaning of these words, as defined by the courts, see
Chapter IV., “Indication of Origin or Ownership.”
4 LAW OF TRADE-MARKS. [$4.
of metal could also forge a symbol. Thence arose the neces-
sity for restrictive laws and retributive penalties; for from
the beginning of the world the protection of the helpless and
innocent has been a supreme object of legislation. “The
law was made for transgressors,” and to the law the wronged,
the weak, the simple, look for redress from the rapacity of
wicked men, and for the conservation of their rights. We
can readily conceive how easy was the transition from the
process of marking animate to inanimate property, from the
branding of flocks and herds to the branding or otherwise
marking of manufactures. The history of the word chattel
informs us that, in the early ages, beasts constituted the chief
part of a man's property. The word signifying cattle came
to mean all other kinds of movable property the subject of
bargain and sale, so that the symbol of ownership might as
well be applied to one kind of personal property as to another.
The object of affixing a mark was gain, just as it is now. It
is meant to insure an adequate reward for acceptable work-
manship, or to be evidence of authenticity.
§ 4. Seals are the most sacred of proprietary marks; and
from early antiquity they have been used. The seal has ever
been a distinguishing mark of ownership; of security, as in
the case of sealing the den of lions upon Daniel, and the door
of the sepulchre wherein was laid the body of the Saviour;
of affection, as in the language of the Church to her Lord in
the Song of Solomon: “Set me as a seal upon thy heart, as
a seal upon thine arm "; of honor, of secrecy, of attestation,
of authenticity. The sigillum or signet, of a monarch or man
in authority, has always been deemed an instrument of power."
Many noble families have in use ancestral seals which have
descended to them from distant generations, and which they
regard with reverent pride. The seal is a figure frequently
mentioned in Scripture. We read of the inscription on one,
“The Lord knoweth them that are his ’’; * and St. John tells
of the mighty host who were sealed in their foreheads.” We
speak of the seal of baptism, the seal of holy communion,
1 See Gen. xxxviii. 18; Exod. xxviii. 11.
2 2 Tim. ii. 19. 8 Rev. vii. 3.
§ 5.] INTRODUCTION. 5
the seal of matrimony, and, most solemn of all, the seal of
death."
§ 5. Soon after the Norman conquest, in consequence of
their presence being required to give validity to every species
of legal documents, seals became instruments of the greatest
moment; and heraldic insignia, with a representation of the
knightly shield, on the field of which they were displayed, were
exactly suited to fulfil all the requirements of the seal-engraver.
By such means, heraldry became interwoven as well with the
peaceful concerns of every-day life as with the display or mar-
tial splendor and turmoil of war. Heraldry may be regarded
as a science, inasmuch as it possesses a system, a classification,
and a language, of its own, – which language speaks forth in
many hundred trade-marks. But in this work it is simply as
a token of proprietorship and authenticity, and as a fertile
source of business emblems, that we regard the seal. Whether
as a sign, a word, a brand, in all cases the legal significance
is the same. A brand (from the Anglo-Saxon, signifying to
burn) is a sign of ownership imprinted on casks or other
wood-work with hot iron; derived from the custom of burn-
ing criminals with heated metal. Seal-marks of rank, pro-
fession, trade, are infinite in style, but each is sacred to its
possessor or originator. No man has any more right to plun-
der his neighbor's emblem, whether private or professional,
than he has to steal his gold or his wife. In hereditary dig-
nities, seals are regarded as precious jewels attached to the
title, and the most rare and exquisite gems are often employed
in their construction. Heraldic devices are frequently highly
prized as commemorative of family honors. Virgil assigns to
Aventinus “insigne paternum ” upon his shield, - his hered-
itary device, derived by him from his father.” Badges are
likewise proprietary marks: “Might I but know thee by thy
household badge,” says Shakespeare; and again he says,
1 See “seal,” 1 Kings xxi. 8; Nehem. ix. 38; and “sealed,” Esther iii. 12.
As to engraving, see Exod. xxviii. 2, “engraven in stone”; Job xix. 24, “graven
with an iron pen and lead”; Jer. xvii. 1, “with a pen of iron, and with a point
of a diamond: it is graven.”
2 AEmeid, vii. 8 Henry VI, Part II., Act 5.
6 LAW OF TRADE-MARKS. [$6.
“For sufferance is the badge of all our tribe.”" The label,
another heraldic term, is connected with trade-marks only as
far as being a groundwork for figures or other devices.”
§ 6. Sign-boards are yet another description of proprietary
marks. The ancient Egyptians, Greeks, Romans, seized this
idea of advertising, and displayed sign-boards with inscriptions
denoting their trades, further embellished with the most strik-
ing emblems thereof. We have no reason to think that the
shrewd Oriental and Latin merchants were in those ancient
days a whit less eager than their successors in the great
bazaar of life, in devices to influence trade. On the contrary,
they seem to have been exceedingly fertile and ingenious in
symbols and other adjuncts of popularity. Among the ruins
of Herculaneum and Pompeii have been discovered signs
crudely painted, or graven in stone, or modelled in relievo in
terra-cotta, and inserted in the pilasters at the side of the open
shop-fronts. Thus there have been found a goat, the sign of a
dairy; a mule driving a mill, the sign of a baker; and, at
the door of a school, the not very seductive sign of a boy un-
dergoing a birching at the hand of the master. At the shop
of a perfumer were represented various items of his traffic.
There were also the signs of the anchor, the ship, a sort of
chess, and checkers. In Herculaneum, at what was prob-
ably the door of a shoemaker, was a painted Amorino, or
Cupid, carrying a pair of ladies' shoes, one on his head, the
other in his hand. Complex or simple sign-boards seem to
be indispensable to prudent trading, and the most illiterate
rustic has sufficient tact to fashion a trade-emblem peculiar
to himself, and not to be infringed on by another. From the
custom of setting up a green bush at the door of a vintner
arose the Italian proverb, “Al buon vino non bisogna frasca.”
From the Romans undoubtedly our forefathers adopted the
sign-board. A thousand or so years ago, reading was a rare
1 Merchant of Venice, Act 1.
2 The signs belonging to tradesmen in the Middle Ages were heirlooms, but
were gradually disused, until, from the development of international commerce,
a “sign” on goods for sale became a necessity. Piracy on such marks became
a trade with inferior tradesmen. The Globe Encyclopædia, Trade-marks.
§ 7.] INTRODUCTION. 7 :
acquirement with the commonalty; and consequently to write
the trader's or owner's name would be of little avail. Those
who could advertised their names by rebuses; thus, for in-
stance, a hare and a bottle stood for Harebottle, and two
cocks for Cox. Others whose names no rebus could repre-
sent adopted pictorial objects according as genius or imagi-
nation suggested. What more convenient than for an inn-
keeper to emblazon on his signboard the family crest of the
lord of the estate whereon he lived Luther was generally
represented by the symbol of a swan; and hence “The
Bible and Swan" was the characteristic sign of an inn in
honor of Luther. Did not Lord Mountgarrat derive his title
from the fact that one of his ancestors was a man of letters,
probably a briefless barrister, who had his dwelling in an
attic? Who can tell ?
. § 7. Water-marks on paper are used as proprietary signs.
Temporary or accidental emblems have sometimes become per-
manent associations, as in the case of the kind of paper termed
foolscap. In the reign of Charles I., all English paper bore .
in water-marks the royal arms. Cromwell's Parliament, to
cast indignity upon the memory of the unhappy monarch,
substituted the fool's cap and bells. Although in the course
of events these symbols were discontinued, the name sticks.
A notable instance of a sort of water-mark is that shown in
obligations and other securities issued by the United States,
in which threads of various-colored floss-silk are distributed
through the paper in the process of manufacture. Such
threads constitute a proprietary mark of the government; and
it is a highly penal offence for any person to have such paper
in his control or possession." It may not seem irrelevant to
allude to an interesting law case, which was decided by means
of a water-mark on paper. There was produced a forged will,
so cunningly executed that, although believed to be false,
legal evidence of the fact of falsity was lacking. As the coun-
sel of the rightful heir sat studying over the case at night,
he chanced to hold the paper between his eyes and a candle.
1 Revised Statutes of United States, sect. 5430.
8 LAW OF TRADE-MARKS. [$8.
He thus discovered in water-marks the figures of the year
in which the paper was made. It was a period of years after
the date of pretended execution.
$ 8. If one class of workmen might profitably employ
peculiar marks to indicate origin, as well might any other
class. The mechanics in the quarries, making ready the
stones for the temple of Solomon, availed themselves of this
mode of proving their claims to wages. Recent discoveries
confirm tradition. The cinders of burnt Jerusalem have been
cut through, and turned up to the light. While the seal of
Haggai, in ancient Hebrew characters, has been picked up
out of the siftings of the rich moulds deposited with the ruins
of the treasures of Jewish pride, the first course of stones de-
posited by Phoenician builders has been reached. Quarry-
marks put on in vermilion have been copied, – known to
be quarry-marks by the trickled drops of the paint, still visi-
ble; only they are above the letters, showing that when they
were affixed the stones lay with the under side uppermost."
The same practice continues to this very day, where many
men are employed. The engineer and the architect know
every mark, and thus can instantly fix the origin of the
work. Our own artisans do not stop to think whether they
are not pursuing the practice of forerunners of several thou-
sand years ago. The tile-maker stamps his products with
his private mark; and sometimes common building-brick is
impressed with its maker's seal, rude though it be. The most
ancient bricks, recovered from the ruins of temples of Nineveh
and of Egypt, also bear many marks of origin. It was the
rule of Nebuchadnezzar to have his name stamped on every
brick that was used during his reign in erecting his colossal
palaces. Sir Henry Rawlinson discovered on each brick in
the walls of the modern city of Bagdad, on the borders of
the Tigris, clear traces of that royal signature.” Fragments
of pottery, having peculiar marks of workmen are every-
where found in the ancient cities of the East; pottery, as
1 See the First Statement of the Palestine Exploration Society, 1871.
2 Müller's Science of Language. Also, Knight's Mechanical Dictionary,
title “ Brick.”
§ 9.] INTRODUCTION. 9
Brongniart has remarked, affording the best records of the
early ages of man, as bones do of the earth."
§ 9. The condition of man as an inhabitant of the earth,
and the relations and intercourse of men as members of a
community, involved the necessity of a circulating medium.
A tertium quid — a third commodity of a certain value —
became necessary as a medium of exchange. At different
periods the medium of exchange has been represented by vari-
ous commodities, which at this day would be the very objects
of barter. The ancient Greeks, with a limited commercial
intercourse, used as a currency the cattle that grazed upon
their land. These had one advantage, that of being able to
transport themselves, under charge of drivers. Homer (in his
episode of Glaucus and Diomed, where the former is repre-
sented as having given his golden armor, worth a hundred
oxen, for the brazen armor of the latter, worth but nine”)
chronicles the use of cattle as a medium of exchange. Yet at
that time the Greeks had talents of gold, but they were too
valuable to use as current specie. Then as the use of coin
superseded the more cumbrous living standard of value, the
term “oxen” or “cattle" was transferred to the representative
coin. They used stamped bars, the rude mark serving the
same end that the image and superscription did at a later
period. That plan having failed to receive full confidence,
it was supplanted by actual coinage, which many authorities
date from about seven centuries before the beginning of the
Christian era.” Homer, however, speaks of brass money as
being in existence nearly twelve centuries B. C. To the Lydi-
ans is ascribed the invention of gold and silver coin. At
Rome, under Servius Tullius, money was coined about 578 B.C.
Julius Caesar was the first person who obtained permission
from the Senate to stamp his image on the national coin; that
honor having previously been reserved for the gods or defunct
1 See lecture by Prof. J. Forbes Boyle, F. R. S., on Arts and Manufactures
of India; History of the Ceramic Art, from the French of Albert Jacquemart,
London, 1873; and “Marks and Monograms on Pottery and Porcelain,” &c., by
William Chaffers, 4th ed., 1874, with 3,000 potters' marks and illustrations.
2 Gillies's Ancient Greece, vol. i. p. 11.
8 Snowden's Mint Manual of All Nations.
10 LAW OF TRADE-MARKS. [$ 11.
heroes. It was probably about the time that Daniel was cast
into the lion's den that those famous pieces of gold called
Daries, from Darius the Mede, were coined; their fineness
and beauty causing them to be preferred to all other money
throughout the whole East. Spanheim informs us that upon
the coins of Tenedos and those of other cities a field mouse is
engraved, together with Apollo Smintheus, the driver away
of field mice, on account of his being supposed to have freed
certain tracts of ground from those animals. Shekels that
have Samaritan inscriptions were generally coined by Simon
the Maccabee. The first money coined in England was under
the Romans at Colchester. -
§ 10. There must have been an interval of over a thousand
years during which the precious metals were known and used,
before the ingenuity of man was able to apply them to the
purposes of coinage. 1860 years B. C., Abraham, for a burial-
place for his wife Sarah, purchased the cave of Machpelah;
“and,” says inspired writ, “Abraham weighed to Ephron the
silver which he had named in the audience of the sons of Heth,
four hundred shekels of silver, current money with the mer-
chant.”! We must conjecture that the money referred to was
the simple bullion, perhaps marked but not coined. A cur-
rency of authenticated coin has always been an essential ele-
ment of civilization. e
§ 11. It is an indisputable fact that in all ages of the world,
and among all races of men, some form of symbolical expres-
sion has been in use and in favor. It was the badge of good
faith. Caveat emptor / Let the purchaser beware! See that
the seal is on the bale of goods, the marks on the fabrics! The
people of the ancient nations had need of symbols as well as we
have. Until within the last few years, the arts practised in
India were nearly as numerous as those known in Europe and
America. The Persians, Babylonians, Assyrians, and the still
more ancient Egyptians, had their multifarious products of
skilled labor. In Nineveh, the people made warlike arms, and
worked in gold. They glazed earth, made beads, and wrought
famous embroideries. The Etruscans were eminently skilled
1 Gen. xxiii. 14-16. -
§ 13.] INTRODUCTION. 11
in the arts both of use and beauty. All these peoples main-
tained commerce. Much of the prosperity of the cities of
Asia Minor was due to the trade with India. We find that
the Hindoos, a manufacturing and mercantile people, 1200 or
1300 years B.C., had their emblematic marks for merchandise.
Those persons who were unable to write used the most distin-
guishing symbol of their craft. Thus, the cultivator used the
plough ; the carpenter, the gimlet; the iron-Smith, a pair of
pincers; the shopkeeper, a pair of scales; the musical instru-
ment maker, a lyre, a pipe, or a trumpet. The learned used
symbols that might be intelligible to the unlearned. In short,
a monogram, a letter, some device drawn on the article made,
to denote the place of its manufacture, the artist employed, the
date, was all that was requisite to constitute a proprietary mark.
§ 12. Commerce required its hieroglyphics, and commerce
was world-wide. The situation of Babylon, at the head of
the Persian Gulf, was admirably adapted for trading pur-
poses; and, hence, from the time of its destruction, it was
succeeded by other cities until the foundation of Bagdad.
Thus spices, ivory, ebony, dyes, gums, pearls, leather, silk, and
cotton stuffs, – all sorts of serviceable commodities, – were
floated on the Euphrates and the Tigris, or brought in cara-
vans of camels to the grand central mart, every species of pro-
duct bearing some unmistakable impress of the mercantile
enterprise which exported it. We read of Babylonish carpets
and tapestry, and the various other tissues and cloths so famed
for brilliancy and richness of hues; and, as early as the time
of Joshua, mention is made among the spoils of Jericho of
“a goodly Babylonish garment.”
§ 13. Many relics of pottery, found in different parts of the
Assyrian empire, exhibit upon their surfaces marks which
prove that an engraved mould had been employed in their
manufacture. The Chinese, the only people who claim to
possess an exact chronology from the remotest antiquity to
the present time, are our preceptors in the style and mode of
affixing marks to articles of fictile manufacture. We do as
they did long before the Christian era. Their official annals
record, as the inventor of pottery, the Emperor Hoang-ti, to
12 LAW OF TRADE-MARKS. [$ 14.
whom they assign a date of 2698 years B. C.; and they tell
us that under his reign there was a superintendent of pottery
named Ning-fong-tsee." Porcelain of China had sixteen hun-
dred years' priority of invention over that of Europe; and yet
we find proofs of their trade-marks. These are of two sorts.”
One kind is composed of Chinese characters, which tell under
what reign the article was made; the other, by designs in
color, or engraved names of men, or of establishments, indi-
cates the author of a vase, the place of manufacture, or the
destination of the article, as for the use of the Emperor or
other dignitary. On a piece of pure white china of great
antiquity there was found stamped a factory-mark.
§ 14. The makers of books found it convenient to use arbi-
trary signs to authenticate their works. When the pioneers
in the art of printing were pondering their new invention,
during the transition period from block-printing with detached
letters, Gutenberg, in 1436, entered into an agreement with
John Riffe, Anthony Heilman, and Andrew Dreizehn, in which
affair the three associates were to furnish the necessary funds,
while Gutenberg was to pay them half of all profits, the other
half being for himself. After a time the association broke
up ; differences arose about the liquidation; and a lawsuit
was the consequence. By the records of this suit, it appears
that they kept their invention a secret, and called themselves
“Spiegelmachers” (makers of looking-glasses). The specu-
lum was their protecting symbol. Aldus Manutius, the fa-
mous Venetian printer, adopted the dolphin and anchor as his
mark, borrowing the idea from a silver medal (of the Em-
peror Titus), presented to him by Cardinal Bembo. In 1503,
the olive-tree was the sign of Henry Estienne, a bookseller
and printer, whose firm for several generations continued to
be the leading publishers and printers in Paris. The book-
sellers generally had wood-cuts of their signs for colophons
of their books, so that their shops might become known by
1 Marryat’s Pottery and Porcelain, London, 1857.
* Histoire et Fabrication de la Porcelaine Chinoise. Translated from the
Chinese, by Julian. Paris, 1856. —An interesting book is “The Old Derby China
Factory,” &c., by John Haslem. London, 1876. (Fac-similes of old marks.)
§ 15.] INTRODUCTION. - 13
the inspection of the cuts. For that reason, Benedict Hec-
tor, one of the early Bolognese printers, gives this advice to
buyers, in his “Justinus et Florus”: “Purchaser, beware,
when you wish to purchase books from my printing-office.
Look at my sign, which is represented on the title-page, and
you can never mistake. For some evil-disposed printers have
affixed my name to their incorrect and faulty works, in order
to secure a better sale for them.” Jodocus Badius, of Paris,
gives a similar caution: “We beg the reader to notice the
sign, for there are men who have adopted the same title, and
the name of Badius, and so filch our labor.” In the Preface
to the Livy of 1518, of Aldus, before mentioned, a similar
fraud is exposed : “Lastly, I must draw the attention of the
student to the fact that some Florentine printers, seeing that
they could not equal our diligence in correcting and printing,
have resorted to their usual artifices. To Aldus's Institu-
tiones Grammaticae, printed in this office, they have affixed
our well-known sign of the dolphin wound round the anchor.
But they have so managed, that any person who is in the
least acquainted with the books of our production cannot fail
to observe that this is an impudent fraud; for the head of
the dolphin is turned to the left, whereas that of ours is well
known to be turned to the right.”
§ 15. An acquaintance with booksellers’ marks or signs, as
expressed in the title-pages of their books, is of some use, be-
cause many books have no other designation of origin. We
find an anchor, the mark of Raphelengius, at Leyden; the
same, with a dolphin twisted around it, the mark of the Ma-
nutii, at Venice and Rome; the Arion, denoting a book pub-
lished by Oporinus, at Basle; the Caduceus, or the Pegasus,
on the publications of the Wechelénses, at Paris and Frank-
fort; the cranes of Cramoisey; the compass of Plantin of
Antwerp ; the sphere in a balance of Janson or Blaow, at
Amsterdam; the lily of the juntas at Venice, Florence, Lyons,
and Rome." Many publishers also made use of monograms
compounded of the initials or other letters of their names.
These furnish a clew to the discovery of the printer, where
1 Encyclopaedia Britannica, vol. v. p. 30.
14 LAW OF TRADE-MARKS. [$ 16.
they occur on books without the printers’ names. He who
desires to examine a treasure-house of lore upon this subject,
to assure himself how general was the adoption of proprietary
marks by painters, designers, engravers, and sculptors, can
consult the “Dictionnaire des Monogrammes, Marques figu-
rées, Lettres initiales, Noms abregés,” &c., of François Brul-
liot, published at Munich in 1832–34, and to be found in the
Astor Library in the city of New York, and also in the Con-
gressional Library.
§ 16. We can trace proprietary marks a long way back in
the history of England. In the Archaeologia for 1812, a roll
of 219 swan-marks is given, together with the ordinances re-
specting swans in the river Witham, in Lincoln, the same be-
longing to various gentlemen. This paper bears the date of
1570. The marks consisted of nicks, the nicking being done
by swan-herds, appointed by the King's license. A register of
all the marks was kept. None but freeholders were to have
marks, and they were to be perfectly distinct from those used
by other gentlemen. For instance, the company of the vint-
ners had two nicks on the bills of their shows. This mode of
indicating exclusive proprietorship is still annually illustrated
by the guilds of London, who are entitled to claim the cygnets
found with their old birds."
1 Care must be taken not to confound mere proprietary marks and technical
trade-marks. For examples of the former kind, see the act of the legislature
of Canada, of May 12, 1870, (33 Victoria, c. 36,) respecting the marking of tim-
ber. It enacts that every person engaged in the business of lumbering or
getting out timber, and floating or rafting the same on the inland waters of
Canada within the provinces of Ontario and Quebec, shall, (under certain pen-
alties for failure or neglect so to do,) within one month after he shall engage
therein, select a mark, or marks, and, having caused the same to be registered
as therein provided, shall put the same in a conspicuous place on each log or
piece of timber so floated or rafted. These marks are proprietary and not
trade marks. – The Indian Penal Code (Calcutta, 1861), Act No. XLV. of 1860,
sect. 479, provides that a mark used for denoting that movable property belongs'
to a particular person shall be known as a property-mark, as contradistinguished
from a trade-mark.
In various countries, and in our individual States, there are legislative pro-
visions for marks or brands for cattle, or ear-marks for swine, or paint-marks
for sheep. Such are simply means of identifying and proving property. Of
course, all such marks may be made to serve a secondary purpose, by being
adopted and known as symbols of commerce. t
§ 18.] INTRODUCTION. 15
§ 17. The case of Southron v. Reynolds, in England, in
1865, was in regard to a violation of a trade-mark used on
clay pipes made at Broseley. “Broseley” is a household word
with thousands who use the thing while wholly ignorant of
its derivation, being unaware that they perpetuate the name
of a quiet little village in Shropshire, on the banks of the Sev-
ern, whose chief reputation rests upon the excellence of the
quality of the tobacco-pipes there made ; although, singular
to state, not made of the clay there found. Of the pipes col-
lected near there, two hundred have marks upon the spur, no
two of which are alike. The manufactures at that place have
been traced back to the year 1575, a time anterior to the
introduction of tobacco into England, which suggests the in-
quiry as to what purpose said pipes could have been applied.
One mark is of an open hand, with the initials S. D., probably
Samuel Decon. Aubrey describes pipes made in his day by
one Gauntlett, who marked the heels of them with a gauntlet,
whence they were called Gauntlett pipes. It is not improb-
able, says the historian, that Decon might have learned the
“whole art and mystery” of pipe-making from Gauntlett, and
then have adopted his special mark with the addition of his
own initials, as a coat of arms is differenced in heraldry.
About ninety years ago, the pipe-makers there began to stamp
their distinctive symbols upon the stems instead of the spurs.
§ 18. As a rule, trade-marks are optional in England,
France, and several other European countries, as well as in
countries on our own continent; but there are exceptions in
connection with various kinds of business. Thus, in England,
an act of Parliament empowered the Goldsmiths’ Company
to call upon the manufacturers to bring all the articles made
by them to their hall, for the purpose of being assayed and
stamped with the hall-mark; but various exceptions from hall-
stamping were sanctioned by law. In the same manner, the
Cutlers’ Company, of Sheffield, were empowered to grant
marks to persons carrying on any of the incorporated trades,
with power of summary jurisdiction before two magistrates,
to enforce such regulation. We perceive that extraordinary
1 12 L. T. R. (N. s.) 75.
16 LAW OF TRADE-MARKS. [$19.
means have been required at all times to guard against the
fraudulent use of marks of manufacture. The protection of
innocent purchasers was the motive of legislation. Rogues
then dealt in the precious and useful wares, as they do now.
§ 19. Hall-marks are among obligatory emblems. The
first instance on record, in England, to reduce goldsmiths'
work to a certain standard, was in the reign of Henry III.,
A. D. 1238, when, in consequence of the frauds which had been
practised by the gold and silver smiths, it became necessary
to prescribe some regulation for their trade, because the mix-
ing of too much alloy in the composition of their wares tended
to encourage the melting down of the coin of the realm.
In 1300 (28 Edward I. c. 20) it was ordained that the pre-
cious metals be assayed; and further, that the articles be
marked with the “leopard's head.” By the goldsmiths' ordi-
nance of the year 1336, three distinct marks are mentioned:
1. The goldsmith's mark, to wit, his initials; 2. The assay
mark, probably a letter of the alphabet; and 3. The mark
of the Goldsmiths' Hall, a leopard's head, crowned. In 1879
(2 Richard II.) it was enacted by Parliament that every gold-
Smith should have his own proper mark upon his work, and
the mark of the city or borough where it was assayed; and
that, after the assay, the work should be stamped with another
mark, to be appointed by the King. There were many subse-
quent statutes and ordinances upon the same subject, penal in
their nature. Marks were obligatory as checks upon fraud.
In 1739 (12 George II.) it was ordained that the manufac-
turers were to destroy their existing marks, which were the
first two letters of their surnames, and to substitute the initials
of their Christian names and surnames. The curious can find
tables of all the marks recorded in Goldsmiths' Hall from the
thirteenth to the nineteenth century. In France there are
standard and assay stamps required by the law of April 7, 1838.
That country has also found it expedient to adopt a system of
stamps analogous to the English Hall-marks, although they
are not obligatory. A law of November 26, 1873, provides
for a stamp or special sign to be affixed to marks of commerce
or manufacture, as a guaranty thereof. Under its provisions
§ 19.] INTRODUCTION. 17
every proprietor of a mark duly registered conformably to the
law of June 23, 1857, shall be allowed, on his written request,
to have affixed by the state, either on his paper labels, bands,
or envelopes, or on his metallic labels, or stamps, a special
stamp or punch to authenticate his mark. The duty to be
paid therefor is from a centime to a franc. For affixing the
punch directly to merchandise, the duty is from five centimes
to five francs. A penalty is prescribed for counterfeiting or
falsifying a special stamp or punch.” The government of
Switzerland has recently recognized the necessity for obliga-
tory marking of gold and silver watch-cases and jewelry.
From the beginning of the year 1882, all watch-cases of gold
of 18 carats, or 750 thousandths, and above, were required to :
be officially stamped with the designated figure of the head of
a woman facing the left-hand side; and those of 14 carats,
or 583 thousandths, must be stamped with the representation
of a squirrel erect, facing the right-hand side. Silver cases of
875 thousandths, and above, must be stamped with the figure
of a lion rampant, looking to the left-hand side; and if of
800 thousandths, with that of an arbitrary heraldic fowl run-
ning towards the right-hand side. The part to be stamped
is also prescribed. The marking is obligatory, i. e. the article
must bear the federal assay-mark. For other gold and silver
ware, the marking is optional; but none such must bear any
untrue indication of standard. For the infraction of that law,
whether in manufacturing, selling, or offering for sale, severe
civil and criminal penalties are prescribed.”
1 See Law, in Appendix.
* See Journal Officiel, of Dec. 2, 1873; and 19 Annales, &c., 193.
* Horological Journal, London, 1882, vol. xxiv. p. 129. — See William Chaf-
fer's interesting book (5th ed., London, 1874), entitled “Hall-Marks on Gold and
Silver Plate,” &c.
18
LAW OF TRADE-MARKS. [$ 20.
§ 20.
§ 21.
§ 22.
§ 23.
§ 24.
§ 25.
§ 26.
§ 27.
§ 28.
§ 30.
§ 31.
§ 32.
§ 33.
§ 34.
$ 85.
CHAPTER II.
PROTECTION OF TRADE-MARK PROPERTY.
RIGHT TO PROTECTION, -gradual recognition of.
Alien friends, – protected the same as citizens.
Comity of nations requires protection.
Natural right of foreigners to protection.
Mutual confidence a bond among nations.
Progress of protection.
Legislation of various nations, – detail of.
Time come for equal protection.
Constantly increasing importance of trade-marks.
Limitation of right of protection to symbols.
Mere imposition on public not ground of private suit.
Equitable relief depends on legal right.
A right of user is a species of property. f
Colorable variation, — examples of infringements.
Principles on which infringement is prohibited.
Comparative quality of goods, – not necessarily an element.
The public should be protected.— Reason why.
Pecuniary damages: foundation of suit.
Question of fraud judged of as between immediate parties.
Principle that underlies right to protection.
Protection a powerful incitement to integrity in trade.
Fundamental rule as to use of symbolism.
Wherein consists the wrong in using another's mark.
Unfair competition in business, – meaning of term.
Seemingly exceptional case explained.
Foundation of title to marks. p
Right in mark neither tangible nor visible.
Statutory law not basis of right to protection.
Registration of mark not essential to right in it.
Right of property not always vindicable.
Registration creates a presumption of proprietorship.
A trade-mark not the creature of arbitrary law.
What time required for perfection of title.
Who may acquire property in trade-mark.
Mere selection of representation is not adoption.
Traders only can own trade-marks.
Not all natural persons can own marks.
Title by assignment.
$ 20.] PROTECTION OF TRADE-MARK PROPERTY. 19
§ 58. Who is an infringer.
§ 59. Confidence outraged by infringement.
§ 60. Protection should be secured by treaty.
§ 61. Fraud the basis of law's intervention.
§ 62. Whose rights are protected.
§ 68. Old books in doubt as to who is protected.
§ 64. The careless should be guarded against fraud.
§ 65. Doubts in minds of judges.
§ 66. Class of Goods,-definition of term.
§ 67. Class not so limited as to defeat justice.
§ 68. Same emblem in different classes.
§ 69. Importance of specific mention of class.
§ 70. A chopping-axe not in class of cutlery.
§ 71. A lack of truth debars mark from protection.
§ 72. Untrue use of word “patented,”—illustrations.
§ 73. Inaccurate representation not fatal to suit.
§ 74. Simulations of foreign marks.
§ 75. Punishment of counterfeiters by Turks.
§ 76. Spurious coins and notes.
§ 77. Unfair competition not always punishable.
§ 78. Manufacture and Commerce twin sisters.
§ 79. How shall we judge a mark?
$ 20. Right to Protection.— The right of protection to
trade-marks and their analogues, i.e. signs not technical marks,
has come to be recognized throughout the domain of civ-
ilization. It was not always so, even after arbitrary sym-
bols were recognized in commerce as exclusive property. As
was said by a writer in 1874, the law for the protection
of this species of property is almost exclusively the growth
of the last seventy or eighty years, and affords an interesting
illustration of the process by which a few principles, at
first doubtful and disputed, may be expanded into a complete
system of jurisprudence. In 1742, Lord Hardwicke, C.,” used
language that at the present day could not be countenanced
in any tribunal of equity in the known world. He said:
“Every particular trader has some particular mark or stamp;
but I do not know of any instance of granting an injunction
here to restrain one trader from using the same mark with
another, and I think it would be of mischievous consequence
to do it.” He, accordingly, for want of precedent, refused an
1 Adams on Trade-Marks, London.
* Blanchard v. Hill, 2 Atk. 484.
20 LAW OF TRADE-MARKS. [$ 20.
injunction to restrain the use of the Great Mogul stamp on
cards, no suggestion being made as to the validity of that
fanciful name as a trade-mark. His attention was called to
an action on the case for deceit," in which Doderidge, J.,
cited a decision of the same court in the reign of Queen
Elizabeth, that an action on the case for deceit would lie
against a clothier who had applied another's mark to his own
inferior cloth. But that case is somewhat in the mist. Pop-
ham says, that the action was brought by the defrauded
clothier, and Croke says, by the purchaser; but Rolle states
that this was not specified, and conjectures that it was by the
purchaser. —In 1783, Lord Mansfield, C. J., said plainly:”
“If the defendant had sold a medicine of his own under the
plaintiff's name or mark, that would be a fraud for which an
action would lie.”— It seems that no courts of equity favored
such proprietary rights until Lord Eldon, C., in 1803,” granted
an injunction to restrain the wrongful use of the name of a
publication, such name being of the nature of a trade-mark. —
// The right to protection in the Federal or State courts of the
United States was never contingent on registration, or even
publication. It might be thought otherwise, if the words of
Mr. Justice Clifford in the Supreme Court of the United
States were taken too literally.” He said: “Protection for
lawful trade-marks may be obtained by individuals, firms, or
corporations, entitled to the same, if they comply with the
requirements prescribed by the act of Congress.” Of course,
he did not mean that there is no protection irrespective of
a statute, for in his judicial practice he had had occasion
/ to rule otherwise. Many of the States of this Union have
enacted laws, both of a civil and penal nature, for the pro-
tection of marks of trade and commerce; but probably in no
one of them would it be deemed that a compliance with
registration acts is a condition precedent to a suit for vindi-
cation. We know that in Great Britain, France, and in other
1 Southern v. How, temp. Jac. I, Common Pleas, Popham, 144; Cro. Jac.
471; 2 Rolle, 28; R. Cox, 633.
2 Singleton v. Bolton, 3 Doug. 393. 8 Hogg v. Kirby, 8 Wes. 215.
4 McLean v. Fleming, 96 U. S. 248.
§ 21.] PROTECTION OF TRADE-MARK PROPERTY. 21
*
countries, it is absolutely necessary for the proprietor of a
trade-mark to comply with registry laws before asking for
judicial redress." When the reader shall come to Chapters
VI. and VII. of this treatise, he will see that registration is
in aid of common law and equity, and is not subversive of
pre-existing rights and remedies. The registration act of
Congress, referred to by Mr. Justice Clifford, contained the
words “may obtain protection ”; but the act of March 3,
1881, which takes the place thereof, has studiously avoided
the use of such misleading language. Certain and great ad-\\
vantages are given to him who registers thereunder; but if
our courts can entertain jurisdiction on general grounds, a
lack of registry will not defeat.”
§ 21. Alien Friends. – In the courts of the United States,
under the Constitution and laws, foreigners are entitled, being
alien friends, to the same protection of their rights as citizens.
And this does not depend upon reciprocity. “The cannibal
of the Fejees may sue here in a penal action though having
no courts at home for us to resort to. . . . But an alien is not
now regarded the outside barbarian he is considered in China,
and the struggle in all commercial countries for some centu-
ries has been to enlarge his privileges and powers as to all
matters of property and trade.”* Says Woodbury, J. : “Com-\
ity and courtesy are due to all friendly strangers, rather than
imposition and pillage. Taking their marks, and using them |\
as and for theirs, to their damage, is like preying on a visi-
tor or inhospitably plundering a wreck on shore.” 4 What
is thus said is equally the rule of the individual States of this
country. It is the law of England. In 1857 Vice-Chancellor
Wood said, that any fraud may be redressed in the country in
which it is committed, whatever may be the country of the
person who is defrauded.” In the same year, the same learned
jurist said as to the same attempted defence: “I apprehend
} i
1 See Statutes, in Appendix.
* Registration Act of March 3, 1881, sect. 10.
8 Taylor v. Carpenter, Story and Sprague, J.J., 3 Story, 458. 1844.
4 Taylor v. Carpenter, 2 Wood. & M. 1.
5 The Collins Co. v. Brown, 8 K. & J. 428; 3 Jur. (N. s.) 929; 29 L. T. 245;
3 L. T. 62.
22 LAW OF TRADE-MARKS. [$ 22.
that every subject of every country, not being an alien enemy,
—and even to an alien enemy the court has "extended relief
in cases of fraud, - has a right to apply to this court to have
a fraudulent injury to his property arrested. And here the
plaintiffs have the right, a right recognized, I imagine, every-
where in the world, or at least in every civilized community,
of saying, “We, being the manufacturers of certain goods,
claim that another man shall not manufacture goods, and put
upon them our trade-mark, and then pass them off as manu-
factured by us.’”—So, also, in 1858, Vice-Chancellor Stuart
said of the plaintiffs: “Though they are aliens, they are
entitled to sue in this court against any fraudulent invasion of
their right, and that notwithstanding that the tools stamped
with the marks, the fraudulent use of which is complained of,
are not usually sold by them in this country.” And one is
entitled to such protection, although at the time that the
cause of complaint arose he was an alien enemy. In the
German Imperial Court of Colmar, in 1873* the defence in a
case of piracy of a trade-mark was, that, by reason of the
war between France and Germany, the treaties of commerce
between the two countries had been suspended. In Germany,
merchants in various wines imitated the trade-marks and
labels of the French houses at Rheims, Epernay, and other
places. They relied for impunity upon the fact that others
had at the same time pirated on tobacco-marks. It was a
mixed case. The counsel for the appellants (defendants be-
low) spoke in German ; the respondents’ counsel spoke in
French; the court, in German. But there was no confusion
of tongues, nor of moral ideas. Held, that the state of war
did not tolerate dishonesty.
§ 22. The comity of nations makes new concessions and
demands in regard to the protection of commercial and indus-
trial property, whatever may be the nationality of the suppli-
ant for justice. The national sense of right, blunted by the
long-prevailing feudal rule, that might makes right, is becom-
1 The Collins Co. v. Reeves, 28 L. J. Ch. 56; 4 Jur. (N. s.) 865; 33 L. T. 101;
6 W. R. 717.
* Say v. Duringer et al., 18 Annales, 148.
§ 22.] PROTECTION OF TRADE-MARK PROPERTY. 23
ing more acute. Countries that have heretofore been honest
from policy are simultaneously rising to a high plane of
morality. Laws like that of Luxembourg, which denied to
foreigners, not domiciliated, redress for usurpation of marks
and names, and similar laws of other European countries, are
gradually fading out. The prevailing spirit is that displayed
in the Tribunal of Commerce of Geneva, in 1859.” It was
there substantially held that the name of a manufacturer,
and his mark, are his property under the law of nations.
This doctrine has long been maintained by eminent jurists
of England, France, and Germany; and as the nations find
it to be as much to their interest as to their glory to throw
down barriers, this doctrine is fast approaching world-wide
acknowledgment. For proof, let us look at the treaty agreed
upon in Paris, March 20, 1883, by the International Con-
ference for the Protection of Industrial Property, at which
twenty nations were represented.” It provides that sub-
jects or citizens of each of the contracting states shall en-
joy in all other states of the union, in that which relates
to patents of inventions, industrial drawings or models, trade
or business marks, and commercial titles, the advantages
which the respective laws accord now or shall accord here-
after to their own citizens. Accordingly they shall have the
same protection as such citizens, and the same legal remedy
for every infringement of their rights, under the reserve of
conformity with the formalities, and upon the conditions
imposed upon citizens by the interior legislation of each
state. (Art. 2.) The subjects of states not belonging to the
union, who are residents of, or have industrial or commercial
establishments within any of the states of the union, are as-
similated to the subjects or citizens of the contracting states.
1 Müller v. Haymann, 5 Annales, 62.
2 Christofle & Co. v. Deleiderrier, 6 Annales, 29.
* Art. 1 reads: “Austria, Hungary, the Argentine Confederation, Belgium,
Brazil, the United States of America, France, Great Britain and Ireland, Guate-
mala, Italy, Holland, Portugal, Russia, Sweden and Norway, Salvador, Switzer-
land, Turkey, Uruguay, and the United States of Venezuela, have entered into
a union for the protection of industrial property.” In 1885, our Senate post-
poned its consideration.
24 LAW OF TRADE-MARKS. [$ 23.
(Art. 3.) — But we are now considering only the distinctive
emblem of one's individuality, i.e. his signature or mark upon
his fabrics or merchandise, the existence of which depends
solely on his own will. He created it: it is his property.
Artificial rights, such as those pertaining to patents for inven-
tions, have heretofore been the subjects of authorized plunder
in even so enlightened a nation as the United Kingdom of
Great Britain and Ireland; and to the present time, in our
own country, the devouring of the children of the brain of
foreign authors has perfect freedom. But the laws of com-
merce have always been governed by the maxim, Debitum
et contractus sunt nullius loci, and a trade-mark belongs to
commerce, and rules and maxims of debt and contract are
applied to it; for the symbol has no vitality unless affixed in
some physical way to something that is the subject of barter
and sale. During all ages, in all parts of the commercial
world, he who counterfeited or simulated, either by design or
accident, that emblem of manufacture or traffic tersely des-
ignated a trade-mark, was deemed guilty of a tort. For such
tort there should be ample redress by local laws. As was
well said by Brady, J., in 1883," in regard to protection, the
ultimate object of the courts has been in all the cases of
trade-mark adjudication, not only to protect and encourage
honest competition, as a matter of public policy, but to con-
demn anything like dishonest traffic, or fraudulent or unjust
attempts to invade existing rights.
§ 23. The natural right of foreigners to exclusive owner-
ship of this arbitrary symbol for goods, while expressly or
tacitly admitted by the jurisprudence of all civilized nations,
has harshly been refused protection in default of specific
treaty stipulations to that effect. Legislatures and judicial
tribunals of even European states have so transgressed against
conceded rights, and refused all remedies. In 1841, the
Tribunal of Commerce of the Seine, by two judgments, de-
cided the principle, that the commercial name of a merchant
is a property that the laws of all countries should respect.
1 Electro-Silicon Co. v. Hazard, 29 Hun, 368.
§ 24.] PROTECTION OF TRADE-MARK PROPERTY. 25
Yet the plaintiffs, Messrs. Rowland & Son, of England,
whose name as a mark for Macassar oil had been pirated,
were eventually denied the aid of the court, because they
were aliens to France." But such a state of affairs is rap-
idly obsolescent. The shortest way out of the difficulty
has been taken, and treaties, conventions, and arrangements,
scores in number, have been made to secure such rights of
foreigners.
§ 24. Mutual confidence is the bond of union among na-
tions and peoples. It follows, therefore, that whoever weak-
ens such confidence by forgery, counterfeiting, or any other
fraud, and begets distrust in mercantile dealings, is an enemy
to all mankind. He becomes a pirate; and whether prey-
ing directly upon commerce on the high seas, or practising
knavery and trickery on land, he is regarded as a common
foe, to be dealt with, when coming within the iron grasp
of the law, with a just rigor. Chief Justice Hargis, of
the Kentucky Court of Appeals, in 1883, truly said:” “The
trade-mark and the trade-reputation pirate always undertakes
the difficult task of sailing between the Charybdis and Scylla
of the law, but he should never be allowed a successful voy-
age. If, on the one hand, he escapes the rock by not
infringing through the instrumentality of the trade-mark
itself, he will not, on the other, if courts of equity are
true to the principles of their own existence, be allowed a
safe passage by the use of any means of deceit or false repre-
sentation known to the inventive brain of man.” We know
that a general declaration of war against such spoliators
is about to be proclaimed. Mutual reliance must be the
rule. Every act of trade, by which operations to an al-
most boundless extent are daily transacted, is essentially
founded on confidence. By the simple delivery of bits of
paper bearing certain signs, millions of dollars are hourly
transferred ; and contracts of the greatest magnitude are
1 1 Annales, 36. (The matter has since been cured by a treaty between
Great Britain and France.)
* Avery & Sons v. Meikle & Co., Kent. L. Rep. and Journal, April, 1883,
23 Alb. L. J. 203.
26 LAW OF TRADE-MARKS. [$ 25.
made upon the description of a mark or name. Being a
common enemy, the robber of his neighbor's honor or prop-
erty is pursued by the accredited protectors of commerce.
It has been well said, that the degree of civilization to which
a people has arrived follows exactly the degree of guaranty
that the law of that people affords to property.” The eternal
principles of justice have been recognized; but an armed neu-
trality has been maintained, at the risk of sapping the foun-
dations of morality and self-respect. Harmony of action may
soon come. Jobard, in 1851, enthusiastically entered upon
the contemplation of this subject, as he welcomed the hu-
manitary palingenesis then preparing itself. Whilst deplor-
ing the state of things then existing, he indulged in a sad
tone; but there is no doubt that the animadversions of
such men as he greatly assisted in bringing about the desired
change.
§ 25. Monsieur Jobard said that the age of shepherds suc-
ceeded the age of hunters, the age of cultivators that of shep-
herds, and we have entered upon the industrial age; but we
enter thereon as foragers. We have free course, because the
domain is still without hedges, without ditches, without en-
closures; each encroaches on his neighbor, and hunts and
kills him if he be the weaker; all means are good, – trickery
and theft, ambuscade and violence. It is a conquered country,
without laws, without rules, without magistrates, where capers
the dishevelled anarchy that certain sophists decorate with the
title of free competition, as certain others call robbery a just
and courageous reclamation of the goods of their ancestors. —
After the lapse of twenty years, we see the bright dawn of
a more hopeful day. Nearly all the states of Europe have
combined to effectuate the desire of the heart of Jobard.
France itself has made more than forty treaties and conven-
tions on the subject of the protection of the fruits of intellect-
ual labor, and the enterprise of the manufacturer or merchant.
Philosophers, moralists, jurisconsults, statesmen, political econ-
omists, – all have paid their tribute to this and kindred sub-
jects, and now they see a clear horizon in the sphere of human
1 Jobard, Organon de la Propriété Intellectuelle.
§ 26.] PROTECTION OF TRADE-MARK PROPERTY. 27
activity, and behold the breaking down of the barriers of
suicidal proscription."
§ 26. Legislation of Various Nations. – It may be profitable
to glance at the course of legislation of various nations on this
subject. Perhaps France may be considered as the pioneer in
general provisions for protecting marks of manufacture and
trade. M. Treitt, of the French government, in an official
letter to Lord Lyons, British Minister, said: The origin of
trade-marks is as old as commerce itself. From the Middle
Ages we find laws and regulations concerning such marks.
But all those provisions were heterogeneous, unequal, and
sometimes contradictory.” Special manufactures were favored,
and the laws intended to protect their marks were sometimes
very severe. A French writer tells us that these early laws,
much anterior to industrial emancipation, were characterized
with the rigor and penal exaggerations which always mark
the essays of legislators. He says that a trace of this is found
in the statute of 1666, relating to the fabrication of cloth of
Carcassonne. The penalty for counterfeiting a trade-mark
was six hours in the carcan,” and that was not changed until
1745. There were a number of other subsequent French
laws on the subject, for special protection. The law of July
18, 1824, for the protection of property in commercial names,
is the one anterior to 1857 that most concerns us; for, as
M. Treitt says, recent judicial decisions have held that com-
mercial names of foreigners (coming within the conditions
of international treaties) are as implicitly protected in his
country as are the names of French houses, – absolutely as
fully as trade-marks are. On the 23d of June, 1857, France
enacted her present excellent trade-mark registration law;
and, to a greater or less extent, it has been imitated by divers
* In the Tribunal of First Instance of Ismailia, Egypt, in 1876, it was held:
In the absence of a special law in Egypt for the protection of industrial rights,
&c., natural law and equity shall be invoked. Hippolyte Arnoux v. Spiridione
Antippa and Georges Zanghaki. On appeal, this doctrine was affirmed. Reports
of Legislation in Foreign Countries, &c., Part II. p. 20.
* Reports of Legislation in Foreign Countries, p. 31.
* An iron collar by which the condemned was fixed to a post. The punish-
ment was entirely suppressed in 1832. See Littré's Dictionary; also Blanc,
Traité de la Contrefaçon, 773.
28 LAW OF TRADE-MARKS. [$ 26.
other nations. The matter had so carefully been considered
by statesmen and legislators that its original text remains
unchanged. -- In the edition of 1857 of the Code of Civil
Laws of Russia is found the law relative to the imposition
of marks on products of Russian mills and manufactures.
Austria enacted her registration law in 1858. In 1862, the
British Parliament passed “An Act to amend the law relating
to the fraudulent marking of merchandise.” This is a penal
statute directed against the forgery or counterfeiting of trade-
marks, or the false application to goods, or to a vessel, case,
wrapper, &c., of a false mark; the selling of articles by such
false mark; or the false indication by description or state-
ment, or respecting number, quantity, measure, or weight, of
a chattel or article, or the sale of articles bearing the same.
This statute did not affect the pre-existing common law
and equity rights of action or suit by the aggrieved owners
of the mark infringed on. The Kingdom of Italy passed
a registration act in 1868; Turkey, in 1872; France, in
1873 (special-guaranty stamps, etc.); the German Empiré,
and Chili, in 1875; the Argentine Republic, in 1876; Bel-
gium, Switzerland, Roumania, Dominion of Canada, in 1879;
Denmark and the Netherlands, in 1880. — In this country,
nothing was done by the national legislature until the regis-
tration act of July 8, 1870, was passed. The promoters of
the bill had very little knowledge of the general common law
of the matter, and not the slightest regard to the Constitution.
Indeed, it was not perceived what part of the Constitution
was applicable to it. By a very great blunder, it was classed
with inventions and authorship, and sandwiched in between
the patent law and the copyright law in the same chapter.
The writer of this book was the first officer who had to con-
strue and apply its provisions. He had been selected from
a belief that he possessed some knowledge of the principles
of the matter. Soon seeing its more gross faults, he drafted
bills and presented them to Congress. Committees did not
wish to act until the courts had expressed an opinion as to
validity. In 1871, an act was passed to prevent the importa-
1 Ante, § 19.
§ 26.] PROTECTION OF TRADE-MARK PROPERTY. 29
tion of watches, or parts of watches, bearing the counterfeit
marks of manufacturers in this country." In 1876 was passed
“An Act to punish the counterfeiting of trade-mark goods,
and the sale or dealing in counterfeit trade-mark goods.””
This act is still in force and effect, although, it must be ad-
mitted, it has for years been in a semi-comatose condition.
The cause of that condition is, that it has seldom been roused
into action, owing to misunderstanding as to its validity. An
explanation is demanded. Briefly, the facts are as follows.
In three cases, persons had been indicted for counterfeiting
trade-marks. It will be noticed that that penal act referred
only to trade-marks registered “pursuant to the statutes of
the United States.” The prisoners demurred to the several
indictments. That compelled an examination into the ques-
tion of the validity of the registration act of July 8, 1870; for
that was the fulcrum of the lever. On a division of opinion
in the courts below, the Supreme Court of the United States
had to decide the question. That act was declared to be
unconstitutional. Why? Because there had been a blunder-
ing looseness of phraseology, in not confining the provisions
of the act to the kind of commerce over which Congress has
control; viz. that with foreign nations, among the several
States, and with the Indian tribes. Said Mr. Justice Miller,
in delivering the opinion of the court: * “If that act is un-
constitutional, so that the registration under it confers no
lawful right, then the criminal enactment intended to protect
that right falls with it.” That is to say, the penal act of
1876 was inoperative in the cases before the court. It was
never intended to be declared unconstitutional per se. That
act was virtually re-adopted by Congress in passing the Sup-
plement to the Revised Statutes, on June 7, 1880. The court
having authoritatively indicated the errors that had been com-
mitted for lack of artificial language, the writer prepared a
new bill. After much mutilation, and some admixture of
absurdities in the first and last sections, it became the regis-
1 Revised Statutes, sect. 2496; amended in 1883 to include any other articles.
* Supplement to Revised Statutes, vol. i. ch. 274.
8 Trade-Mark Cases, 100 U. S. 99.
30 Law of TRADE-MARKs. [$ 27.
tration act of March 3, 1881. It was amended in a slight
particular, August 5, 1882.” As intelligence develops, it
will no doubt be amended and perfected. It does not require
a very keen intellectual vision to perceive that the penal act
of 1876 immediately thereupon started into full vigor, and
is operative in conjunction with the civil registration law.8–
In 1883, the Grand Duchy of Luxembourg passed a general
registration act, and, in the same year, Great Britain amended
the acts of 1875–76. — By Imperial decree, dated June 7, 1884,
very excellent trade-mark regulations were promulgated in
Japan, with elaborate by-laws for registration purposes.—From
these citations, it is manifest that the sentiments of nearly
all nations are in harmony.
§ 27. Said an able writer in France, in 1855:4 “The mo-
ment has now come for each state to prescribe in its legisla-
tion, that the names and marks of manufactures of its own
nation, or of foreigners, shall be inviolable, and shall find
equal protection before the tribunals.” His dream has come
true. Thanks to the annihilation of distances by the agen-
cies of steam and electricity, a noble and enlightened com-
petition has been established, and promises to exert a sway
over the whole earth. Commerce and industry are constantly
becoming less centralized, and the laws thereof are becoming
assimilated. Verily, the trade-mark has become a symbol of
importance. The mightiest monarchs respect it. The recog-
nition of it is world-wide, for it spurns the thraldom of terri-
torial limits. All peoples might adopt the ideas of Professor
Leone Levi, F. S. A., &c., in speaking of the lofty position
gained by British manufacturers. He spoke some years before
legislation had assumed definite proportions in this regard.
He said substantially, that the British manufacturers are well
alive to the demands upon their skill and energies, and we see
them everywhere striving to rival all competitors, and to
maintain untarnished the reputation they have gained. Their
1 See Chapters VI, and VII. of this book. *
* Providing that nothing contained in the act of 1881 “shall prevent the
registry of any lawful trade-mark rightfully used by the applicant at the time
of the passage of said act.”
* See Appendix. * 1 Annales, 83
§ 28.] PROTECTION OF TRADE-MARK PROPERTY. 31
aim is to produce articles which, for their price, may be un-
equalled and unexcelled in this or any other country; and
whenever they stamp such articles with their names, ciphers,
or labels, they enter into solemn guaranties that the goods so
marked shall invariably be of the quality represented. Their
endeavor is to establish such an intimate relationship between
the manufacturer and the manufacture, that, in whatever
market such goods may be exposed for sale, the same may be
received with the most implicit faith and reliance. A mark
on a manufacture is like the impress of the sovereign's coin, -
a sufficient evidence, everywhere accredited, that the coin is
of a specific weight and fineness. Why should it not be now as
in former times, when the mark was not simply the signature
of the merchant or the manufacturer, but also a certificate of
quantity, given by public authority, touching the quality of
the produce, its origin, weight, &c.’”
§ 28. With the constantly increasing importance of the
trade-mark, so much greater is the eagerness to ascertain and
apply the principle upon which its security depends. It has
the good wishes of honest industry and commerce. It incurs
the ill-will of nobody, for it has not the least taint of odious
monopoly or of restriction of trade. Competition is left free
to all. The counterfeiter pays it a tribute of respect by his
wrongful imitations. The principle on which relief and pro-
tection depend has been enunciated in a long train of decis-
ions of learned judges. It is, that a man is not to sell his
own goods under the pretence that they are the goods of
another man; he cannot be permitted to practice such a de-
ception, nor to use the means which contribute to that end.”
You may express the same principle in a different form, and
say that no man has a right to dress himself in colors, or
adopt and bear symbols, to which he has no peculiar or ex-
clusive right, and thereby personate another person, for the
purpose of inducing the public to suppose, either that he is
that other person, or that he is connected with and selling
the manufactures of such other person, while he is really sell-
1 Journal Soc. Arts, vol. vii. p. 262.
* Perry v. Truefitt, 6 Beav. 66; 1 L. T. 384.
32 LAW OF TRADE-MARKS. [$ 29.
ing his own. It is perfectly manifest that to do these things
is to commit a fraud, and a very gross fraud; " and the effect
of false representations, thus held out, is to deprive the owners
thereof of the profits of their skill and industry. One is only
required to depend for success upon his own character and
fame.” The court proceeds upon the ground that the com-
plainant has a valuable interest in the good-will of his trade
or business; and that, having appropriated to himself a par-
ticular trade-mark, indicating to those who wish to give him
their patronage that the article is manufactured or sold by
him, or by his authority, he is entitled to protection against
a defendant who attempts to pirate upon the good-will of the
complainant's friends or customers, or the patrons of his trade
or business, by sailing under his flag without his authority or
consent.” The manufacturer's trade-mark is an assurance to
the public of the quality of the goods, and a pledge of his own
integrity in their manufacture or sale. To protect him, there-
fore, in the exclusive use of the mark that he appropriates, is
not only the evident duty of a court as an act of justice, but
the interests of the public, as well as of the individual, require
that the necessary protection shall be given.” If an article by
representation be so assimilated as to be taken in the market
for an established manufacture or compound of another, the
injured person is entitled to an injunction.” The owner of
the mark has a right to say, not that other persons shall not
sell exactly the same article, better or worse, or an article
looking exactly like it, but that they shall not sell it in such
a way as to steal (so to call it) his trade-mark, and make
purchasers believe that it is the manufacture to which that
trade-mark was originally applied.”
§ 29. But when we speak of protection to a symbol of any
1 Croft v. Day, 7 Beav. 84.
2 Taylor v. Carpenter, 2 Sandf. Ch. 603; 11 Paige, 292; R. Cox, 45.
8 Partridge v. Menck, 2 Sandf. Ch. 622; 2 Barb. Ch. 101; 1 How. App. Cas.
558; R. Cox, 72.
4 The Amoskeag Manufacturing Co. v. Spear, 2 Sandf. S.C. 599; R. Cox, 87.
5 Coffeen v. Brunton, 5 McLean, 256; R. Cox, 132.
6 Farina v. Silverlock, 6 De G., M. & G. 217; 26 L. J. Ch. 11; 2 Jur. (N. s.)
1008; 27 L. T. 277; 4 W. R. 731.
§ 29.] PROTECTION OF TRADE-MARK PROPERTY. 33
kind claimed as a trade-mark, we must understand that there
is a limitation to the right. The trade-mark which is enti-
tled to protection must be such as will identify the article to
which it is affixed as that of the person adopting it, and dis-
tinguish it from others." For example: if a trade-mark con-
sist of words, as it may, such words must be specific and
distinctive in their meaning; * and words and names that may
be claimed and used by all cannot be exclusively appropriated
to advance the interest of any one person.” There is no prin-
ciple more firmly settled in the law of trade-marks, than that
words and phrases, which have been in common use, and which
indicate the character, kind, quality, and composition of the
thing, may not be appropriated by one to his exclusive use.*
No one can claim protection for the exclusive use of a trade-
mark which would practically give him a monopoly in the sale
of any goods.” The foregoing remarks, which are mostly in the
exact words of judges, are examples of the sayings of modern
courts in an unbroken current of decisions. We see that —
subject to necessary limitations against usurpation of the
rights of the public at large — one may have in a mere em-
blem affixed to his goods something more valuable than artifi-
cial property, such as a patent for invention or a copyright,
to neither of which has a trade-mark any relationship. Some-
times it is the sole means of protection, although its life is
limited only with that of the business of which it is the index.
The world-renowned Wedgwood produced many fine pieces
of work, which only his master-hand could afterwards im-
prove. He did not patent his inventions, but with a con-
sciousness of his own superiority—which he ever maintained
— he permitted all other potters to follow as nearly as they
could in his footsteps. His trade-mark was ample protection,
1 Gillott v. Esterbrook, 47 Barb. 455; R. Cox, 340; N. Y. Com. of App., 48
N. Y. 374; 8 Am. R. 553.
* Fulton v. Sellers, 4 Brewst. 42.
8 Newman v. Alvord, 49 Barb. 588; 35 How. Pr. 108; R. Cox, 404; 51 N. Y.
189 : 10 Am. R. 588. -
4 Caswell v. Davis, 58 N. Y. 223; 17 Am. R. 233.
5 Delaware & Hudson Co. v. Clark, 13 Wall. 311; 5 Am. L. T. 135; 1 Off.
Gaz. 79.
3
34 Law of TRADE MARKs. [$ 30.
and indeed was more efficacious than any patent could be,
unless we consider that he did possess an indefeasible patent,
—that bestowed by excellence itself. By means of his sym-
bol, he secured a full reward for his industry, his toil, his
genius. With the largest manufactory of china and queen’s-
ware in the known world, he could safely rely on this trade-
mark to point out to the people of all countries the goods in
which he so successfully combined the useful, the ornamental,
and the ingenious. A very recent case in England may serve
as an illustration. It appeared that iron manufactured in
Sweden by Baron de Geer had ever since 1643 been branded
(in compliance with Swedish law) with a device consisting
of a hoop and the letter L, which device was registered in
Sweden as a trade-mark as far back as 1718, and he was pro-
tected against imitators."
§ 30. Mere Imposition on the Public, by the fact of one
man selling his goods as the goods of another, cannot be the
ground of private action or suit. This is a definitively settled
rule. We must not, however, dismiss this rule from consid-
eration until sure that we comprehend the scope of this brief
enunciation. The point is, not the case of the purchaser who
has his action for deceit, but of the owner of a peculiar sym-
bol used as a trade-mark which has been encroached on by a
rival, or a pirate, and who has a right, in the words of Lord
Cranworth, C., to prevent others from selling wares which are
not his, marked with that trade-mark, in order to mislead the
public, and so, incidentally, to injure the person who is the
OWner of the trade-mark.” Lord Westbury, C., said that
“Imposition on the public is necessary for the plaintiff’s title,
but in this way only, that it is the test of the invasion by the
defendant of the plaintiff's right of property.” Substantially
the same thing was said by the Lord Chancellor in another
case.” But the object or purpose of the law in protecting
trade-marks as property, says Carpenter, J., is twofold: first,
1 Re Heaton's Trade-Mark, The Weekly Notes, July 5, 1884, p. 158.
* Farina v. Silverlock, 6 De G., M. & G. 217. *
* Hall v. Barrows, 4 De G., J. & S. 150; 33 L. J. Ch. 204; 10 Jur. (N. s.) 55.
* The Leather Cloth Co. case, 4 De G., J. & S. 141.
§ 31.] PROTECTION OF TRADE-MARK PROPERTY. 35
to secure to him who has been instrumental in bringing into
market a superior article of merchandise, the fruit of his in-
dustry and skill; and secondly, to protect the community from
imposition, and furnish some guaranty that an article pur-
chased as the manufacture of one who has appropriated to his
own use a certain name, symbol, or device as a trade-mark,
is genuine." Bynum, J., said, in substance, that this rule is
grounded upon a twofold reason: first, that the public may
be protected from being imposed upon by a spurious or infe-
rior article, as an imitation or counterfeit almost always is;
and secondly, that the owner may have the exclusive benefit
of his reputation.” Brady, J., said that the enforcement of
the doctrine that trade-marks shall not be simulated, does not
depend entirely upon the alleged invasion of individual rights,
but as well upon the broad principle, that the public are en-
titled to protection from the use of previously appropriated
names or symbols, in such a manner as may deceive them, by
inducing the purchase of one thing for another.” Van Brunt,
J., said that it is the duty of the court to protect the public
from fraud, even at the suit of a plaintiff who has not the
exclusive right to the use of words, numerals, or symbols,
used by him; * but Hargis, Ch. J., in 1883, dissented from
this opinion, saying, more properly, that the protection of
the public alone is not sufficient ground for the jurisdic-
tion. “However,” he said, “it is an element which enters,
and ought to enter, into every case. . . . If the plaintiff can-
not show that his rights or interests are injured, or taken
from him, he can have no standing in court, for strictly he
represents the public no more than any one else.” This
is the doctrine that is sanctioned by the current of de-
cisions. * -
§ 31. The Lord Chancellor, in Spottiswoode v. Clark,” in
1846, said: “These cases depend so much upon their own
1 Boardman v. The Meriden Britannia Co., 35 Conn. 402; R. Cox, 490.
* Blackwell v. Wright, 73 N. C. 310. -
* Matsell v. Flanagan, 2 Abb. Pr. R. (N. s.) 459; R. Cox, 367.
4 Kinney v. Basch, 16 Am. L. Reg. (N. s.) 596.
5 Avery v. Meikle, § 43, infra.
* 10 Jur. 1043; 8 L. T. 230–271; 2 Ph. 154; 1 Coop. 254.
86 LAW OF TRADE-MARKS. [$ 32.
circumstances, that all that the court can do is to lay down
principles under which such cases may fall. I have before this
had occasion to express an opinion, that, unless the case be very
clear, it is the duty of the court to see that the legal right is
ascertained before it exercises its equitable jurisdiction. For
this, there are good reasons. The title to relief depends upon
a legal right, and the court only exercises its jurisdiction on
the ground that that legal right is established. Our objection
to granting an injunction, in the first instance, is, that it pro-
motes after litigation. The order either grants an injunction,
and compels the plaintiff to bring his action, or suspends the
injunction, with liberty to the plaintiff to bring his action. If
you compel him to go to a court of law, you promote litiga-
tion; and this course is forced upon parties when their feel-
ings are deeply engaged in prosecuting their imaginary rights.
There is also another objection, which is, that the court ex-
presses a strong opinion, and it ought to be a strong opinion,
and then sends the right to be tried. I think it better that
the court should abstain from expressing such an opinion.
But, after all, the chief objection is, that the court runs the
risk of doing the greatest possible injustice.”
§ 32. When a person has adopted and used a particular
mark, to indicate to those who deal with him that an article
is manufactured or sold by him, or by his authority, others
have no right, without his assent, with the view of deriving
advantage from the same, to use such mark without change,
or even with such colorable difference as is calculated to de-
ceive the proprietor's customers, or the patrons of his trade
or business. Such mark, when it has become known, is a spe-
cies of property; and its owner will be protected against the
attempt of others to appropriate to themselves, by its use, the
benefit which he is entitled exclusively to enjoy. But there
can be no harm done to the owner of which he has the right
to complain, unless his trade-mark be appropriated without
change, or unless it is simulated in such a manner as probably
to mislead his customers or the patrons of his trade or busi-
ness, inducing them to suppose that in purchasing the article
marked they are purchasing that manufactured or sold by
§ 33.] PROTECTION OF TRADE-MARK PROPERTY. 37
such owner. Without unnecessarily multiplying examples,
the subject may be comprehended in this one saying, — that
every man has a right to the reward of his skill, his energy,
and his honest enterprise; and when he has appropriated, as
his trade-mark, even letters combined with a word before un-
known, and has used that word and has published it to the
world as his adopted trade-mark, he has acquired rights in it
which the courts will protect; * and he may use as his trade-
mark any symbol or emblem, however unmeaning in itself;
and if such symbol or emblem come by use to be recognized
in trade as the mark of the goods of a particular person, no
other trader has a right to stamp it upon his goods of a
similar description.” - º
§ 33. Colorable Variation. — It is frequently difficult to
determine, as fact, what is infringement. Two marks that
are supposed to conflict may resemble each other, and yet dif-
fer in striking particulars. This question then arises: Is the
difference only colorable? But no general or fixed rule can
be laid down as to what may or may not be a mere colorable
variation. All that can be done is to ascertain in every case,
as it occurs, whether there is such a resemblance as to deceive
a purchaser using ordinary caution.* To constitute an infringe-
ment of a trade-mark, exact similitude is not required, but an
infringement is committed when ordinary purchasers, buying
with ordinary caution, are likely to be misled;" it being enough
to show that the representations bear such a resemblance to
the plaintiff's mark as to be calculated to mislead the public
generally, who are purchasers of the article bearing it." That
means persons of ordinary intelligence, who adopt ordinary
precaution against imposition and fraud," and use such reason-
1 Partridge v. Menck, 1 How. App. Cas. 558.
* Burnett v. Phalon, 9 Bos. 193; R. Cox, 356. See the same case in the
N. Y. Ct. of App., 3 Keyes, 594; R. Cox, 397.
* The Leather Cloth Co., supra, in the House of Lords, 11 H. L. C. 523; 35
L. J. Ch. 53; 11 Jur. (N. s.) 513; 12 L. T. (N. s.) 742; 13 W. R. 873.
* Lord Cranworth, in Leather Cloth case, 11 H. L. C. 533; N. Y. Ct of App.,
Popham v. Wilcox, 66 N. Y. 69.
* Sup. Ct. of U. S., McLean v. Fleming, 96 U. S. 245.
* Walton v. Crowley, 3 Blatch. 440.
* Blackwell v. Wright, 73 N. C. 310.
38 |LAW OF TRADE-MARKS. [$ 33.
able care and observation as the public generally are capable
of using and may be expected to exercise." It is sometimes
the case that the names of articles are of a character to mis-
lead and deceive, they being idem sonans in the usual pronun-
ciation; or the form of the package, general appearance of
the wrapper, color of label, wax impressions on the top of the
box containing the goods, are well suited to divert the atten-
tion of the unsuspecting buyer from any critical examina-
tion,” and the courts do not require a critical examination.
It was well said by Wood, W. C., in 1854, that in every case
the court must ascertain whether the differences are made
bona fide in order to distinguish the one article from the other,
whether the resemblances and the differences are such as
naturally arise from the necessity of the case, or whether, on
the other hand, the differences are merely colorable, and the
resemblances are such as are obviously intended to deceive
the purchaser of the one article into the belief of its being the
manufacture of another person. Resemblance is a circum-
stance of primary importance for the court to consider, because
if the court finds, as it almost invariably does find in such
cases, that there is no reason for the resemblance except for
the purpose of misleading, it will infer that the resemblance is
adopted for the purpose of misleading.” Such is the reasoning
of all the courts. Probably Vice-Chancellor Shadwell did not
go too far, in 1847, when he 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.”
In this place it is convenient to give examples, the more fully
to illustrate the foregoing doctrines. Thus, the name “Wedg-
wood" was held to have been infringed by “Wedgewood”; *
“Perry Davis’ Pain Killer,” by “Perry's Vegetable Pain-
Killer,” 6 and “The Great Home Remedy, Kennedy's Pain-
Killer,” but with quite different labels; 7 “Shrimpton &
1 Gilman v. Hunnewell, 122 Mass. 139. * McLean v. Fleming, supra.
8 Taylor v. Taylor, 2 Eq. R. 290; 23 L. J. Ch. 255; 22 L. T. 271.
4 Guinness v. Ullmer, 10 L. T. 127.
5 Cox's Man., case 96. • Davis v. Kendall, 2 R.I. 566.
7 Davis v. Kennedy, Codd. Dig. 236.
§ 33.] PROTECTION OF TRADE-MARK PROPERTY. 39
Hooper,” by “Shrimpton Turvey ";" “Taylor's Persian
Thread,” by same name except that defendant had inserted
“Sam ” instead of “J. W.” before the name ; * “Bell's Life
in London,” by “The Penny Bell's Life and Sporting News”; 8
“The London Journal,” by “The London Daily Journal”; *
a cross and letters “C B,” by a cross and letters “C S ’’; *
an anchor on a metal label (from which plaintiff's wire had
acquired the name of “Anchor Brand Wire”), by an an-
chor and small crown (from which the defendant's wire was
called the “Crown and Anchor Wire”); * “Govan *” (from
which plaintiff's goods had acquired the name of star-iron), by
“Coats” ”;7 “Stephens',” by “Steelpen's,” for bottles of ink; 8
“Jülicks,” by “Josephs”;” “Cocoaine,” by “Cocoine”; 10
“Schweitzer's Cocoatina,” by “Otto Schweitzer, Atkins & Co.'s
Cocoatine”; ii. “The Hero,” by “The Heroine”; 14 “Charter
Oak” and a sprig of oak-leaves, by the name, omitting the
oak-leaves; * “Bovilene,” by “Bovina”;14 “Tonge's,” by
“Tung's"; it “Stark,” by “Star”; 16 “Hostetter & Smith,”
by “Holsteter & Smyte”;" the figure of a milkmaid, by the
figure of a milkman; * “1847, Rogers & Bros., A. 1,” by
“C. Rogers Bros., A. 1,” and “C. Rogers & Bros., A. 1"; 19
“Our Young Folks, an Illustrated Magazine for Boys and
Girls,” by “Our Young Folks' Illustrated Paper”;” “Wolfe's
1 Shrimpton v. Laight, 18 Beav. 164.
2 Taylor v. Taylor, 2 Eq. R. 290; 23 L. J. Ch. 255; 22 I. T. 271.
* Clement v. Maddick, 1 Giff. 98; 5 Jur. (N. s.) 592; 33 L. T. 117.
4 Ingram v. Stiff, 5 Jur. (N. s.) 947; 33 L. T. 195.
* Cartier v. Carlile, 3 Beav. 292; 8 Jur. (N. s.) 183.
6 Edelsten v. Edelsten, 9 Jur. (N. s.) 479; 7 L. T. (N. s.) 768; 11 W. R. 328.
7 Dixon v. Jackson, 5 Ct. of Sess. Cas., 3d series, 826; 2 Scot. L. R. 188.
* Stephens v. Peel, 16 L. T. (N. s.) 145. - e
* Farina v. Cathery, L. J., Notes of Cases, 1867, p. 134.
19 Burnett v. Phalon, 3 Keyes, 594.
11 Schweitzer v. Atkins, 37 L. J. Ch. 847; 19 L. T. (N. s.) 6; 16 W. R. 1080.
12 Rowley v. Houghton, 2 Brewst. 303; 7 Phil. 39; R. Cox, 486. -
13 Filley v. Fassett, 44 Mo. 173; R. Cox, 530.
14 Lockwood v. Bostwick, 2 Daly, 521; R. Cox, 555.
15 Tonge v. Ward, 21 L. T. (N. s.) 480.
16 Gardner v. Bailey, Codd. Dig. 131.
17 Hostetter v. Vowinkle, 1 Dill. 329.
18 The Anglo-Swiss Condensed Milk Co. case, Weekly Notes, 1871, p. 163.
19 The Meriden Britannia Co. v. Parker, 39 Conn. 450; 12 Am. R. 401.
20 Osgood v. Allen, 1 Holmes, 185; 6 Am. L. T. 20; 3 Off. Gaz. 124.
40 LAW OF TRADE-MARKS. [$ 33.
Aromatic Schiedam Schnapps,” by “Won Wolf's" or “Van
Wolf's Aromatic Schiedam Schnapps”; 1 “Rising Sun Stove
Polish,” by “Rising Moon Stove Polish”;” “Apollinaris
Water,” by “London Apollinaris Water ’’ (an artificial com-
pound, containing the same chemical constituents as the nat-
ural water, but in a different kind of bottles, and differently
labelled); 8 “Bethesda Mineral Water,” by “ Glenn-Bethesda
Mineral Water”;4 “Tamar Indien,” by “American Tamar”;"
“Lacto-Peptine,” by “Lacto-Pepsine”;” “Hemy’s Modern
Royal Tutor for the Pianoforte.” by “Hemy's New and Re-
vised Edition of Jousse's Royal Standard Pianoforte Tutor”
(the defendant having employed Hemy to prepare a new edi-
tion of an obsolete work, “Hemy’s ” being in large and con-
spicuous letters); 7 “Mottled German Soap,” with a device
of a circle containing a moon and thirteen stars, by “S. W.
McBride's German Mottled Soap,” in combination with a cres-
cent, within which was a single, star; * “Robert's Parabola
Needles,” by “William Clark & Sons' Parabola Needles”; 9
“The American Grocer,” by “The Grocer”; 10 “National Sys-
tem of Penmanship,” by “Independent National System of
Penmanship.” " — A case in England, in 1880, has some pecu-
liarities. From one of the essential features of the plaintiffs'
trade-mark ticket, their goods had become known as “two- .
elephant” yarn. The trade-mark was complex, —a golden
crown, on each side of which was a golden elephant, with its
head turned away from the crown, and suspended from the
elephants was a golden banner, which nearly filled the space
between the crown and the apex of the triangle (the shape of
1 Burke v. Cassin, 45 Cal. 467; 13 Am. R. 204.
* Morse v. Worrell, 9 Am. L. Rev. 368; Codd. Dig. 242.
3 33 L. T. (N. s.) 242.
4 Dunbar v. Glenn, 42 Wis. 118; 24 Am. R. 395.
* Grillon v. Guénin, Weekly Notes, 1877, p. 14.
* Carnrick v. Morson, L. J., Notes of Cases, 1877, p. 71; Chemist and Drug-
gist, 1877, p. 161.
7 Metzler v. Wood, 8 Ch. D. 208; 47 L. J. Ch. 625; 38 L. T. (N. s.) 541; 26
W. R. 577. -
8 Procter & Gamble v. McBride et al., 18 Off. Gaz. 1278; 8 Biss. 398.
9 Roberts v. Sheldon, 8 Biss. 398.
10 Am. Grocer Publishing Co. v. Grocer Publishing Co., 25 Hun, 398.
* Potter et al. (respondents), v. McPherson et al. (appellants), 21 Hun, 159.
§ 33.] PROTECTION OF TRADE-MARK PROPERTY. 41
the green ticket used). On the defendants’ yarn was a rec-
tangular ticket of a red color and a sitting figure with an ele-
phant's head. The ticket complained of was placed on the
main wrapper. It was of a similar shape and color to the
plaintiffs’ two-elephant ticket (that having a shape and a color
commonly used in the trade), and it had also two golden ele-
phants and a golden banner upon it. But although it differed
in several respects from that of the plaintiffs, it was held to be
an infringement." Courts of justice of continental countries
of Europe have very frequently had this class of cases to con-
sider. In the following citations, trade-marks have been held
to be infringed by attempted evasions, viz.: the fanciful name
“JOB,” by “Guerre à Job,”2 by “ J. H. B.,” by “JOC,”8
and by “JOP”; * “Liqueur du Mont Carmel,” by “Car-
meline ";" “Eau de toilette de Lubin,” by “Eau de toilette
aux fruits et fleurs Lupin”;" “Eau de mélisse des Carmes,” by
“Eau de mélisse des Carmes Saint-Jacques”; “Chartreuse,”
by “Chartreuse de Saint-Hugon”; * “Figaro,” by “Petit Fi-
garo,”9 and by “ Nouveau Figaro”; 10 “C P” followed by
the words “à la Sirène,” by the words “None genuine except
stamped C. P. and labelled a la Sirène,” and “E P” substi-
tuting “Sarazène” for “Sirène’”; ii “ Byrrh,” by “Bhyr,” 12
and “Byrrh Vital au Malvoisie”;18 “Abricotine,” by “Abrico-
tain * (and other circumstances); 14 “Tapioca des familles,” by
“Tapioca des familles brésiliennes”;” “Savons des Princes
brésiliens” by “Savon aux parfums brésiliens.” 19
1 Orr Ewing & Co. v. Johnston & Co., 13 Ch. D. 463.
2 See § 398, infra. 8 Bardou v. Berha et al., 18 Annales, 65.
4 22 Annales, 139. r 5 Faivre v. Boulan et al., 19 Annales, 378.
6 F. Prot & Co. v. Cabrideus et al., 20 Annales, 369.
7 A. Boyer v. C. Boyer et al., 21 Annales, 25.
* Grézier v. Rivoire, 23 Annales, 191. See also $$ 410, 582, infra.
* De Villemessant v. N. Estibal et al., 23 Annales, 269.
10 Le Figaro v. Le Petit Figaro, 25 Annales, 174. See also $ 547 et seq., for
other cases of publications.
11 Farcy et al. v. Epailly et al., 24 Annales, 123.
12 Violet Frères v. Thomas, 24 Annales, 125.
18 Violet Frères v. Vital, Liautaud, & Co., 27 Annales, 307.
14 Garmier v. Richard, 25 Annales, 353.
* Chapu v. Legrand et al., 27 Annales, 201.
16 Décressonière v. Celisse et al., 27 Annales, 349.
42 LAW OF TRADE-MARKS. [$ 34.
§ 34. Principles on which Infringement is prohibited.— Lord
Langdale, M. R., said, in 1842, that the principle on which
both courts of law and equity proceed in granting relief and
protection is well understood; viz. that a man is not to sell
his own goods under the pretence that they are the goods of
another man." He subsequently expressed the same princi-
ple in a different form of words.” – In 1846, the court of last
resort in New York said substantially, that, while one is at
liberty to manufacture and vend the same kind of goods as
his rival, he is required to depend for success upon his own
character and fame, and is only required not to pirate upon
the rights of others.” In 1848, Walworth, C., said, that the
question in such cases is not whether the complainant was the
original inventor or proprietor of the article made by him,
and upon which he puts his trade-mark, nor whether the arti-
cle made and sold by the defendant under the complainant's
trade-mark is an article of the same quality and value, but
whether 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 and business,
by sailing under his flag without his authority or consent.*
In 1849, in a leading case, Duer, J., said that an injunction
ought to be granted wherever the design of a person who
imitates a trade-mark, be his design apparent or proved, is
to impose his own goods upon the public as those of the
owner of the mark, and the imitation is such that the success
of the design is a probable or even possible consequence;"
and it is not essential that the article of the defendant be
inferior in quality, or that he should fraudulently represent it
so as to impose upon the public ; but if it be so assimilated
to the genuine mark as to be taken in the market for the
merchandise of another, the original person is entitled to an
1 Perry v. Truefitt, 6 Beav. 66; 1 L. T. 384.
2 Croft v. Day, 7 Beav. 84. s
8 Taylor v. Carpenter, 2 Sandf. Ch. 603; 11 Paige, 292; R. Cox, 45.
4 Partridge v. Menck, 2 Sandf. Ch. 622; 2 Barb. Ch. 101; 1 How. App. Cas.
558; R. Cox, 72.
* The Amoskeag Manufacturing Co. v. Spear, 2 Sandf. S. C. 599; R. Cox, 87.
§ 36.] PROTECTION OF TRADE-MARK PROPERTY. 43
injunction. The Supreme Court of Connecticut, in 1870,
said that the ground on which courts of equity afford relief
in that class of cases is 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.” -
§ 35. Quality of Goods, and Invention of Article or Mark. —
The question of comparative quality is not necessarily an ele-
ment, either at law or in equity. Yet it is sometimes well
to establish the fact that the infringer has not only usurped
trade, but by attaching the mark to inferior goods he has
also damaged the reputation of the goods of the owner of
the mark. In 1833, in Blofield v. Payne, an action on the
case, it was held by Lord Denman, C. J., that although no
specific damage was proved, and the jury found the defend-
ant's article to be not inferior to the plaintiff's, the plaintiff
was still entitled to some damages, inasmuch as his right had
been invaded by the fraudulent act of the defendant.” So
it was also held in another action on the case, in 1846, in a
United States Circuit Court.* No law case is found, where a
doctrine to the contrary prevailed. Courts of equity have as
uniformly so held.” As to original invention, Walworth, C.,
said, in Partridge v. Menck: “The question in such cases is
not whether the complainant was the original inventor or
proprietor of the article made by him, and upon which he
now puts his trade-mark.” Federal courts so rule. Nor is
the origin of the mark borne by the merchandise of moment,
provided the claimant shows title in himself. The Patent
Office so holds. Indeed no authority appears to the contrary.
§ 36. The Public should be protected. — It is frequently
necessary for courts of justice to consider the ground on
1 Coffeen v. Brunton, 5 McLean, 256; R. Cox, 132.
* Holmes, Booth, & Haydens v. The Holmes, Booth, & Atwood Manufacturing
Co., 37 Conn. 278; 9 Am. Rep. 324.
* 4 B. & Ad.410; 1 N. & M. 353; 2 L. J. K. B. (N. s.) 68.
* Taylor v. Carpenter, 2 Wood. & M. 1; R. Cox, 32; 9 L. T. 514.
* Taylor v. Carpenter, 2 Sandf. Ch. 603; 11 Paige, 292; R. Cox, 45; Par-
tridge v. Menck, supra; Coffeen v. Brunton, supra; Edelsten v. Edelsten, 1 De G.,
J. & S. 185; 9 Jur. (N. s.) 479; 7 L. T. (N. s.) 768; 11 W. R. 828.
44 LAW OF TRADE-MARKS. [$ 36.
which a party bases his demand for redress. In 1791, Lord
Chancellor Thurlow held, that a possible fraud on the public
gave no claim for an injunction." This ruling has been
followed in numerous instances in England and in this coun-
try. It means, doubtless, that something more than a general
wrong must be alleged and proved to warrant the stretching
forth of the judicial arm. While few courts have gone so far
as to discard the fact of injury to the public as an element
of damage to the one whose mark of authenticity has been
infringed, yet, even as late as 1879, a court, in discussing the
principle of protection, has used expressions seemingly as
limited as that of Lord Thurlow. Lord Justice James, in
Levy v. Walker, in the Court of Appeal, said: “The court
interferes solely for the purpose of protecting the owner of a
trade or business from a fraudulent invasion of that business
by somebody else. It does not interfere to prevent the world
outside from being misled into anything.”.” Mr. Justice
Duer, in 1849, in his very able opinion in the case of the
Amoskeag Manuf. Co. v. Spear,” enunciated, as one ground for
protection, the benefit to the public at large. The plaintiff's
trade-mark is an assurance to the public of the quality of the
goods, and the pledge of his own integrity in their manufac-
ture and sale. To protect him, therefore, in the exclusive use
of the mark that he appropriates, is not only the evident duty
of a court, as an act of justice, but the interests of the public,
as well as of individuals, require that the necessary protection
should be given. Brady, J., in 1867, in Matsell v. Flanagan,”
said, that the enforcement of the doctrine that trade-marks
shall not be simulated, does not depend entirely upon the al-
leged invasion of individual rights, but as well upon the broad
principle, that the public are entitled to protection from the
use of previously appropriated names or symbols, in such man-
ner as may deceive them, by inducing to the purchase of one
thing for another. He took the extreme ground, that it is
1 Webster v. Webster, 3 Swanst. 490.
2 10 Ch. D. 436; 48 L. J. Ch. 273; 89 L. T. (N. s.) 656.
8. The Amoskeag Manufacturing Co. case, supra.
42 Abb. Pr. R. (N. s.) 459.
§ 36.] PROTECTION OF TRADE-MARK PROPERTY. 45
not necessary to the exercise of judicial powers, that the
plaintiff should have any other property in the name used
than that possessed by other persons. He said, that there is
neither honesty nor honorable competition in adopting, for a
similar purpose, a name used by another, if it be employed
in such a manner that the public may be imposed upon ;
and such a result must follow if the simulation be so success-
ful that one article or creation is purchased or accepted for
another. He regarded those principles as established by the
adjudged cases of both England and this country. Robertson,
C. J., in 1865, in Swift v. Dey," — which was a controversy in
regard to a trade-mark on match-boxes, – said, substantially,
that it is eminently a question of fact, to be submitted to the
practical experience of a jury, whether, in a particular case,
a resemblance is likely to deceive the community. There is
no article of more general consumption, less value, or more
frequently bought by ignorant or careless purchasers, than
friction-matches; none, perhaps, where their degrees of ex-
cellence are more widely apart. In such a case, the general
appearance of whatever is adopted as a trade-mark must
control; because it is the unwary, and not the wary, who are
to be protected, as most likely to be taken in by its counter-
feits. Bosworth, J., in 1854, in Gillott v. Kettle,” said, that
the fraud complained of consists in selling an inferior article
of the plaintiff's manufacture as being one of a superior
quality. The fraud, to the extent that it may be successful,
is twofold: the public is defrauded by being induced to buy
the inferior for the superior article; the plaintiff is defrauded
by an unjust destruction of confidence that his pens are put
up for sale, and assorted, with reference to the quality, indi-
cated to dealers by the labels on the boxes which contain
them. By such a practice the defendant endeavors by a false
representation to effect a dishonest purpose: he commits a
fraud upon the public and upon the manufacturer. The pur-
chaser has imposed upon him an article that he never meant
to buy, and the manufacturer is robbed of the fruits of the
1 4 Robertson, 611; R. Cox, 319.
* 8. Duer, 624; R. Cox, 148.
46 LAW OF TRADE-MARKS. [$ 36.
reputation that he had successfully labored to earn. In such
a case, there is a fraud coupled with damage; and a court of
equity, in refusing to restrain the wrong-doer by injunction,
would violate the principles upon which a large portion of
its jurisdiction is founded, and abjure the exercise of its
most important functions, – the suppression of fraud and the
prevention of a mischief that otherwise may prove to be
irreparable. This language—which has the ring of the
true metal—is substantially that of Duer, J., of the same
court, in the Amoskeag case. Fraud and damage resulting
therefrom always entitle the injured party to relief; provided,
of course, that he comes into court with clean hands. The
public, as an innocent party, - for a party it must be con-
sidered, although not directly on the record, – should be
sedulously guarded by the action of the tribunal which holds
the culprit within its grasp. Duer, J., in the Amoskeag case,
said that it is the evident duty of a court, as an act of justice,
to protect the trade-mark, and the interests of the public as
well as of the individual purchasers require that it should
be protected. This does not operate as an injurious restraint
upon the freedom of trade. Its direct tendency is to produce
and encourage a competition, by which the interests of the
public are sure to be promoted, - a competition that stimu-
lates effort, and leads to excellence, from the certainty of an
adequate reward. Vice-Chancellor Sandford, in 1845, in
Coats v. Holbrook, laid considerable stress upon the duty of
protecting the public, as well as the complainant, from the
consequence of barefaced roguery; and Story, J., in 1844, in
Taylor v. Carpenter,” was no less emphatic; and Sandford,
Ch., in 1825, in Snowden v. Noah,” said, that the injury for
which redress is given in such cases results from the impos-
ture practised upon the customers of an existing establish-
ment or upon the public. But we need not multiply instances
to prove that courts will habitually regard the interests of the
public at large, in acting upon particular cases, or applying
the rules of justice to an individual wrong-doer.
1 2 Sandf. Ch. R. 586; 3 N. Y. Leg. Obs. 404; R. Cox, 20.
* 3 Story, 458; R. Cox, 14. 8 Hopkins Ch. R. 347; R. Cox, 1.
§ 39.] PROTECTION OF TRADE-MARK PROPERTY. 47
§ 37. In the case of Dixon Crucible Co. v. Guggenheim, Pax-
son, J., in 1870, remarked that “the jurisdiction of chancery
in trade-mark cases attaches because of the injury to the one
whose goods are simulated, by interference with his profits;
not because of the deception upon the public. The fraud
upon the public will not induce a chancellor to interfere,
unless the plaintiff has sustained, or there is good reason to
believe he will sustain, pecuniary damages.” -
§ 38. In Comstock v. White,” in 1860, Sutherland, J., said,
on the other hand, on a motion to dissolve an injunction :
“As to the public, if these pills are an innocent humbug,
by which both parties are trying to make money, I doubt
whether it is my duty, on those questions of property, of
right and wrong between the parties, to step outside of the
case, and abridge the innocent individual liberty which all
persons must be presumed to have in common, of suffering
themselves to be humbugged.” . It did not appear that the
pills were positively injurious. Hoffman, J., in Fetridge v.
Merchant,” in 1857, said the question of fraud, by means of
a false mark, should be judged of solely as between the
immediate parties, and that the public should be left to its
own guardianship.
§ 39. James, J., in the case of the Congress and Empire
Spring Co. v. High Rock Congress Spring Co.,” said, that the
doctrine of protection to trade-marks is now well established.
The principle which underlies the doctrine is, that he who
by his skill, industry, or enterprise has produced or brought
into market or service some commodity or article of con-
venience, utility, or accommodation, and affixed to it a name,
mark, device, or symbol, which serves to designate it as his, is
entitled to be protected in that designation from encroach-
ment, so that he may have the benefit of his skill, industry,
or enterprise, and the public be protected from the fraud of
imitators.
17 Phila. 408; 2 Brewst. 321; 8 Am. T. 288; R. Cox, 559.
* 18 How. Pr. R. 421; R. Cox, 232.
8 4 Abb. Pr. R. 156; R. Cox, 194.
* 57 Barb. 526; 4 Am. L. T. R. 168; 45 N. Y. 291; 20 Abb. Pr. R. (N. s.)
348; 6 Am. Rep. 82; R. Cox, 624.
48 Law of TRADE MARKs, [$ 41.
$ 40. An able French writer 1 remarks that it is clear that
the fabricant, who, by the superiority of his products, or by
the cleverness of his manufactures, has acquired a merited
renown, has a great object in investing with his mark articles
of his make, to the end that such mark, which certifies them
to the preference of the public, may thus secure an assurance
and facility of sale. It is clear that he who sees his mark
sought for by the public finds, in his own interest, strong
reasons to make incessant efforts of intelligence, and of obe-
dience to law, to conserve to himself the preference accorded
to him. It is manifest, also, that the example of marks
honored, eagerly looked for in commerce, and becoming for
their possessors a source of fortune, is for others a powerful
incitement to walk in the same path. But on what condi-
tion shall industry really find such signal advantages? On
the condition that such marks shall be truly and efficaciously
protected by the law ; that the manufacturer shall find entire
security in the use which he shall make of his mark; and
finally, that he shall receive from the law sufficient guaranties
for reclamation against the counterfeiter.
§ 41. In the House of Lords,” in 1865, Lord Kingsdown
said: “The fundamental rule is, that one man has no right
to put off his goods for sale as the goods of a rival trader, and
he cannot, therefore, in the language of Lord Langdale in the
case of Perry v. Truefitt, “be allowed to use names, marks,
letters, or other indicia, by which he may induce purchasers
to believe that the goods which he is selling are the manu-
facture of another person.” A man may mark his own
manufacture, either by his name, or by using for the purpose
any symbol or emblem, however unmeaning in itself; and if
such symbol or emblem comes by use to be recognized in
trade as the mark of the goods of a particular person, no
other trader has a right to stamp it upon his goods of a simi-
lar description. That is what I apprehend is usually meant
by a trade-mark, just as the broad arrow has been adopted
14 Annales, 19, 20.
2 The Leather Cloth Co. v. The American Leather Cloth Co., 11 Jur. (N. S.)
513; 11 H. L. Cas. 523.
§ 42.] PROTECTION OF TRADE-MARK PROPERTY. 49
to mark government stores; a mark having no meaning in
itself, but adopted by and appropriated to the government.”
§ 42. Wherein consists the Wrong in using the Trade-mark
of Another. — It is not in imitating a symbol, device, or fancy
name, for in such act may not be involved the slightest turpi-
tude. The wrong consists in unfair means to obtain from a
person the fruits of his own ingenuity or industry, an injus-
tice that is in direct transgression of that command of the
Decalogue: “Thou shalt not covet . . . anything that is thy
neighbor’s.” The most detestable kind of fraud underlies the
filching of another's good name in connection with trafficking.
The injury is not merely to the individuals who are cheated
in buying, nor to the owner of the mark, but to commerce in
general. Public faith is shaken. The wrong can be checked
only by systematic protection. Modern nations have acted
wisely in studying the ways of China in this matter. A
perfect system of trade-marks is ascribed by Jobard to the
Chinese. They excel in this institution of commercial guar-
anty; for nearly all the goods exported from China are en-
closed in boxes hermetically fastened by paper bands, and
have upon them the mark of the makers. Everything is
stamped and indorsed with the firm and title of the furnisher,
who is responsible for the quality of the contents of the pack-
ages bearing his name. A cargo of tea arrived one day from
Canton at London, when it was found that the boxes were
filled with nothing but rice-straw. The vessel and cargo were
immediately sent back to China; the Hongs were speedily
assembled, and every one recognized its own marks. It was
ascertained on examination that the adroit thieves, who had
been employed to convey the tea from the warehouses to the
ship, had slipped off with the chests to an island, and had
there opened them, and for their precious contents had sub-
stituted packages of rice-straw. To preserve their commer-
cial reputation, the Chinese merchants gladly made good the
loss. – In connection with patents and some other kinds of
property, resemblance may be the result of accident, or of an
honest difference of opinion; but in conflicts arising out of
the invasion of proprietary marks, resemblance may generally
4 *
50 LAW OF TRADE-MARKS. [$ 43.
be traced to meanness and cupidity. Truly did Senator Lott
say in one case: “A disguise is not generally assumed for
an honest object. It is a mark more characteristic of decep-
tion and fraud. It defeats the very end and object contem-
plated by legitimate competitors, – the choice to the public
to select between the articles for sale, – and operates as a
deception and imposition on the dealer.”” He might have
further said, that the wrong nearly always is a witness against
its author.
$43. Unfair Competition in Business. – In examining cases
classified in digests and books of reports as those of trade-
marks, the reader is sometimes puzzled. In the absence of
the slightest evidence that technical trade-marks have been
infringed, courts of equity have granted full and complete
redress for an improper use of labels, wrappers, bill-heads,
signs, or other things that are essentially publici juris. The
difficulty is, that wrong names are used. French-speaking na-
tions have a standard name for this kind of wrong. The term
used is concurrence déloyale. This term may fairly be Angli-
cized as a dishonest, treacherous, perfidious rivalry in trade.
In the German Imperial Court of Colmar, in 1873,” the court
said that current jurisprudence understands by concurrence
déloyale all manoeuvres that cause prejudice to the name of a
property, to the renown of a merchandise, or in lessening the
custom due to rivals in business. The euphemism employed
as a head to this section will answer the present purpose. It
implies a fraudulent intention, while on the contrary an en-
joinable infringement of a technical trade-mark may be the
result of accident, or misunderstanding, without actual fraud
being an element.” At law, special damage, unless damage
is necessarily presumed, deceit, or fraudulent intent, must be
proved in all cases to warrant a recovery. This is not always
so in equity; 4 but it is common both in law and equity where
the infringement is perpetrated by other modes and means
1 Taylor v. Carpenter, 11 Paige, 292; 2 Sandf. Ch. 608.
2 Say v. Duringer, 18 Annales, 148.
8 See Chapter XII., for examples.
* Leather Cloth Co. case, referred to in various sections.
§ 43.] PROTECTION OF TRADE-MARK PROPERTY. 51
than the use of any part of a trade-mark itself; 1 and whether
a trade-mark is shown to have been imitated or not, if the
goods of one have been intentionally and fraudulently sold as
the goods of another, and the latter has sustained damage, or
the former threatens to continue acts tending to that end, a
court of equity will restrain the further commission of them.
This subject belongs properly to the class of good-will cases;
but, nevertheless, it is necessarily an ingredient in a great
majority of trade-mark cases. As an illustration, take Croft
v. Day,” in 1843, which is not a technical trade-mark case.
In that, Lord Langdale, M. R., granted an injunction to re-
strain the defendant from using labels or show-cards calcu-
lated to mislead the public, saying that the right which any
person may have to the protection of the court does not de-
pend upon any exclusive right to a particular name of a man,
or to a particular form of words. His right, said he, is to be
protected against fraud, and fraud may be practised by means
of a name, though the person using it have a perfect right
to use that name, provided he do not accompany the use of
it with other circumstances to effect fraud. — The Supreme
Court of the United States has embodied what is now a well-
established doctrine, in the following language: * “Nor is it
necessary, in order to give a right to an injunction, that a spe-
cific trade-mark should be infringed; but it is sufficient that
the court is satisfied that there was an intent on the part of
the respondent to palm off his goods as the goods of the com-
plainant, and that he persists in so doing after being requested
to desist.”— The broad rule was laid down by Lord Langdale,
M. R., in Perry v. Truefitt, in 1842,” when he said that one
cannot be permitted to practise deception in the sale of his
goods as those of another, “nor to use the means which con-
tribute to that end.”—The Court of Appeals of Kentucky, in
1888,” in a case that furnished an excellent illustration, main-
1 B. F. Avery & Sons v. Thomas Meikle & Co., Kent L. Rep. and Journ.,
April, 1883, 17 Western Jurist, 292, wherein Ch. J. Hargis has ably discussed
this point.
2 7 Beav. 84.
8 McLean v. Fleming, 96 U. S. 245; 13 Off. Gaz. 913.
4 6 Beav. 66; 1 L. T. 384. * Avery case, supra.
52 LAW OF TRADE-MARKS. [$ 43.
tained the doctrine, that all fraudulent misrepresentations,
“whether oral, by signs, symbols, trade-marks, labels, words,
or figures,” should be prevented by a court of equity. Chief
Justice Hargis, in delivering the opinion of the court, spoke
as follows: “The fraud is most frequently accomplished by
the illegal use of names, forms, words, and numerals, which
ordinarily belong to the common stock, and are not the sub-
ject of exclusive appropriation. Instead of employing them
in their proper sphere to designate number, size, elements,
quality, description, or give direction or caution, they are se-
lected because of the known innocent purposes they generally
serve, and combined so as not to represent quality, or other
particles within the scope of their lawfully prescribed func-
tions, but to cause the goods or articles to which they are
attached to be purchased by the public as the make or manu-
facture of another, thus violating that great generic rule which
lies at the foundation of all law, that a man must so use his
own property as not to injure the property of another. . . .
The law says you may use anything which is the common
property of all, or that cannot be exclusively appropriated,
but you must use it to convey the ideas which it commonly
expresses, and of which it is the accepted sign. You must
use it to tell the truth, the whole truth, and nothing but the
truth. You cannot, under pretence of exercising a common
right of use, . . . by the seeming fairness which follows the
selection of a legal or innocent instrument or means, escape
the consequences of an illegal use thereof. This would be
stealing the livery of heaven to serve the devil in. This
would be perverting the privileges and uses of our language,
under the pretence of describing one's own, to take another's
from him. . . . The appellees selected the same letters, the
same words, the same numerals, and put them in the same col-
ors, and upon the same places on their ploughs, as was used by
appellants on their ploughs. For what? To represent size
and quality alone? Who could believe it? Why not take
type from a different font? Why not take other numerals
that would serve the same purpose better? Why adopt as a
number ‘k,” “1,” “2,’ ‘3,’ ‘8’? Why ‘AO,’ ‘BO,’ ‘CO,’
§ 44.] PROTECTION OF TRADE-MARK PROPERTY. 53
“PO’? No answer can be given, except that a man intends
the natural consequences of his own act, and the consequences
of this act are to take appellants’ trade, built up on their repu-
tation, and transfer it to appellees, by using that reputation to
sell appellees' ploughs. The appellees have not used a single
letter, figure, or word that belongs to appellants' trade-mark
proper, yet by the exact simulation of the plough in every per-
ceivable point exposed to an ordinary observer and purchaser,
and the use of the same coloring and staining, the same rela-
tive position of the letters and figures as employed and used
by the appellants, avoiding the literal appropriation of any
part of their trade-mark, the appellees have obscured their
own and appellants’ trade-mark, but at the same time sought
to avoid detection and responsibility in doing so. . . . Thus
by skilful combination of legal particles, taken one at a time
and in the aggregate, leaving the mere trade-mark untouched,
they have so confused its force and effect as to destroy its office
and real efficiency to distinguish the appellants' ploughs from
others.”— In Sawyer v. Horn, in 1880, the court said: “What
we decide is, that whether the complainant has a trade-mark
or not, as he was the first to put up bluing for sale in the
peculiarly shaped and labelled boxes adopted by him, and as
his goods have become known to purchasers, 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 imita-
tion thereof, in such manner as to mislead purchasers into
buying his goods for those of the complainant.”—The fore-
going cases illustrate the principle on which courts of equity
generally act.
§ 44. A seemingly exceptional case is found in a decision of
the New York Court of Appeals, in 1882; but a careful exami-
nation shows that it is not so.” That decision was one of fact,
and not of law. It is true that the learned judge who deliv-
ered the opinion of the court used this extraordinary language:
“Where there is a simulation of a trade-mark, and the intent
*4 Hughes, 439 (U. S. Circuit Court, Dist of Maryland).
* Enoch Morgan's Sons v. Troxell et al., 89 N. Y. 292 (reversing 23 Hun,
632).
54 LAW OF TRADE-MARKS. - [$46.
becomes a subject of inquiry, the form, color, and general ap-
pearance of the packages may be material; but to sustain an
action" there must be an imitation of something that can legally
be appropriated as a trade-mark.” On looking into the record,
it clearly appears that the matter was properly one of “unfair
competition in business,” and not a trade-mark case. In the
court of last resort, the judges, as well as the counsel on each
side, treated it as a trade-mark case. So does the syllabus.
If it had really been such, then the language above quoted
might demand criticism. But the opinion starts out with the
postulate that there was no imitation of any trade-mark. It
says that there was no fraudulent representation, and no device
to palm off goods as those of appellees; and that there was
too great a dissimilarity between the labels, etc. of the parties
to sustain the judgment below. The decision properly ends
there. The sentence that intimates that no action can be sus-
tained unless a technical trade-mark shall have been infringed,
has no force, and may be regarded as surplusage. In all prob-
ability, the judge could not have meant it to apply to any
other than an alleged infringement of an arbitrary symbol.
If possibly he were thinking of unfair competition, it does
not apply thereto; for it had already been declared that no
element of unfairness appeared.
§ 45. Foundation of Title. — Having satisfied our mind that
the conventional sign of trade has a history, and an acknowl-
edged right to protection, we next inquire upon what laws
does the claim to property in it rest. How does the owner
of a trade-mark obtain his exclusive right to its use in a par-
ticular manner, i. e. in connection with certain articles of
merchandise ? Is it by act of law, vesting in him the sole
right of user, or is it by mere volition ? Let us attempt to
2,InSWeI’. w
§ 46. The right to a trade-mark is neither tangible nor
visible, though the thing produced from the right is both.
The subject matter is not the symbol, but the exclusive
privilege of continually using the same to impress or other-
1. It must be rememembered that, under the New York Code, the term
“action” is as applicable to a suit in equity, as this case was, as to a common-
law action on the case.
§ 47.] PROTECTION OF TRADE-MARK PROPERTY. 55
wise mark articles of merchandise, so that purchasers may
instantly know the origin of such articles. Just as a person
may by his autograph indicate his workmanship, or his owner-
ship, so may he by any other sign as a substitute therefor do
the same. The right to mark one's name on a piece of per-
sonal property is a natural right ; so, therefore, must be the
right to use, as its substitute, any other emblem. This right
is founded upon possession: and possession rests upon the
mere act of adoption and use ; for, in contemplation of law,
without use there is no adoption. That this is the true doc-
trine, we may easily convince ourselves by reference to judicial
decisions.
§ 47. Rhodes, J., in delivering the opinion of the Supreme
Court of California in Derringer v. Plate," in 1865, said: “The
right of property does not in any manner depend for its incep-
tive existence or support upon statutory law, although its
enjoyment may be better secured and guarded, and infringe-
ments upon the rights of the proprietor may be more effectu-
ally prevented or redressed, by the aid of the statute than at
common law. Its exercise may be limited or controlled by
statute, as in case of other property; but, like the title to the
good-will of a trade, which it in some respects resembles, the
right of property in a trade-mark accrues without the aid of
the statute.” The learned judge was discussing a local statute
of his State, but the principle is quite as broad as he stated it.
He further said, that “the proprietor may assert and maintain
his property-right wherever the common law affords remedies
for wrongs.” He might have put it more strongly, and have
said that the right to the exclusive use of a man's commercial
signature, i.e. his trade-mark, exists throughout the world.
It is true that a remedy is not always promptly accorded,
owing to the narrow jealousies of various nations in affording
undue protection to their own manufactures and commerce;
but the right is recognized. A foreigner's property in a
promissory note, or in any other kind of personal property,
may be admitted; but possibly foreign courts are shut to him
as an alien, non-domiciliated. In this illiberal spirit, some
1 29 Cal. 292; R. Cox, 324.
56 LAW OF TRADE-MARKS. [$ 50.
European nations have striven to extort reciprocity and privi-
leges for their own citizens or subjects. Nevertheless, their
conduct cannot affect the natural right.
§ 48. In the Court of Paris, in 1863 (Aubertin v. Via et al.."),
the court held the same doctrine, and said: The deposit of
a mark of commerce is not necessary to acquire, and even
conserve, the property of the mark; although the deposit is
indispensable to enable one under the law of the 27th of June,
1857, to obtain the special guaranties which it institutes, and
benefits of the actions which it organizes. The same court,
the next year, recognized the same doctrine, in Stubs v. Astier
et al.; and the Court of Cassation, by its final judgment
on appeal, effectually shut the door in the face of confessedly
just claims, for the reason of alienage only.” -
§ 49. The Court of Cassation, in 1864 (Leroy v. Calmelº),
held that the deposit does not constitute the exclusive right
to the property of the mark; that deposit is necessary only
for the purpose of enabling the proprietor to sue for damages
for infringement; and that it was necessary to search whether
the mark in controvesy did not exist at a period anterior to
that of deposit.* Nothing can be plainer than this enunciation
of the supreme court of France. The right to a thing may
be perfect; but the right to claim reparation for an encroach-
ment upon that right may not have any foundation
§ 50. The Court of Paris, in 1867, in Sargent v. Romeu,”
said that in ancient legislation, as well as in the new, the legal
deposit of marks was simply declarative, and not attributive;
consequently, a deposit merely creates a presumption of pro-
prietorship. In the same court, in 1868 (Holtzer & Co. v.
Lendenberg & Co."), it appeared that the plaintiffs, proprietors
of certain steel-works in France, had ever since the year 1884
been using as a trade-mark the figure of a bell, and their pro-
1 11 Annales, 344. 2-10 Annales, 212.
8 10 Annales, 193. - -
4. By the term “deposit,” used in the French cases, is meant a filing for
registration. A right may exist to a trade-mark, but in nearly all European
countries this right cannot be enforced without previous registration; and a
right to registration depends on treaties of reciprocity.
* 13 Annales, 21. 6 14 Annales, 167.
§ 50.] PROTECTION OF TRADE-MARK PROPERTY. 57
ducts became known under the name acier8 d la cloche (bell-
steel), and acquired a reputation for superiority. After the
treaty of 1862, between France and the Zollverein, the Prus-
sian manufacturers, Lendenberg & Co., established a ware-
house in Paris, near that of Holtzer & Co., and their wares
were also marked with a bell. Holtzer & Co. sued them for
infringement of their trade-mark. The Prussian house there-
upon established the fact that, ever since 1817, they had
marked their products with the same device, and invoked on
their behalf the benefit of the treaty aforementioned. They
did not rest their claim to the exclusive right of user upon
aught but possession. It was held that, by virtue of the said
treaty, they had a right to prove their priority; and the court
awarded them three hundred francs as damages, and con-
demned the defendants to pay all the costs. The case was
thereupon appealed. The appellants' counsel argued, inter
alia, that the respondents' firm had not enjoyed any reputation
in France until very recently; that it was not shown that their
firm was established in France until after the date of the treaty;
that therefore their title should not be permitted to conflict
with one that had had a recognized popularity ever since 1834;
and that, in fact, their manufactures were inferior in quality
to those of the appellants, as was shown at the Great Exposi-
tion, where they got nothing, while Holtzer & Co. received a
gold medal. The respondents' counsel argued that they were
the seniors in their line of business; that the possession of
their mark had constantly been maintained in Germany, and
was proved by all the documents that could possibly be pro-
cured in a country where property in emblematic marks was
not regulated by law; that their possession was established
as far back as 1817; and that their long user was conclusive.
He further claimed judgment, irrespective of the said treaty,
by the French law of 1857 (the sixth article of which provides
that a foreigner, whose establishment is outside of France, is
admitted to enjoy the benefit of the law of deposit, if, in the
country where his establishment is situate, diplomatic conven-
tions had arranged reciprocity for Frenchmen). Concerning
trade-marks the treaty says that “the subjects of each of the
58 LAW OF TRADE-MARKS. [$ 52.
Iſ
contracting states shall respectively enjoy in the other the
same protection as the natives thereof.” Therefore, he argued,
Lendenberg & Co. had a right to invoke the protection of the
French laws, the same as if they were French themselves;
and that, by the law of 1857, the ownership of a trade-mark
did not depend upon deposit, but that property existed inde-
pendent of any species of deposit, although, by not depositing,
one ran the risk of a use by others. Finally, Lendenberg &
Co. had a pre-existing right: the treaty gave a remedy. The
court concurred in these views as matters of law. .
§ 51. The question thus raised was assuredly one of a most
delicate and difficult nature, involving the effect of a treaty,
affecting the rights of citizens of another country to a mark
long used, and to which up to the time of the treaty they had
the sole right of protection. But, for our present purpose,
it is necessary only to cite it as authority for saying, that a
trade-mark is not the creature of arbitrary law. That point
has been affirmed in other French cases, and may be said to
be definitively settled. And this is the recognized law of all
civilized nations. The Tribunal of Commerce of Geneva, in
1859 (Christofle & Co. v. Deleiderrier"), held that a manufac-
turer's mark is property under the law of nations; and other
nations by their judicial decisions have repeatedly affirmed
the same doctrine, one founded upon sound reason. Thus, in
1855,” the tribunal of Brussels held that a Frenchman, domi-
ciled in Paris, might, in a Belgian court, pursue an infringer
of his mark, although the plaintiff had no treaty to stand
upon, and based his claim to his mark upon the law of natural
justice.
§ 52. What Time is required for the Perfection of Title.—
That is, how long does it take to adopt it? The answer is
obviously this: the moment one who has selected a symbol
to indicate his merchandise applies the mark to his goods,
the act is complete. The avowal of his intention to adopt,
his registration of the mark, and notice to the whole world,
do not constitute adoption; but apply the mark to the articles
for sale, and, eo instanti, the act is complete. In McAndrew
1 6 Annales, 29. * 1 Annales, 45.
§ 55.] PROTECTION OF TRADE-MARK PROPERTY. 59
v. Bassett, the right of the plaintiff was disputed because of
his recent appropriation of the symbol to stamp his licorice,
just as a claim based upon mere prescription might be chal-
lenged. The Lord Chancellor said, that he had been much
pressed by the defendants' counsel to declare that there was
not sufficient time, between the termination of the month of
July and the 13th of September following, for the plaintiffs
to acquire a right of property in the particular trade-mark.
The substance of the argument of defendants is this: that, V
supposing the court interfere upon the ground of property in
a trade-mark, that property must be regarded as the offspring
of such an antecedent user as will be sufficient to have ac-
quired, for the article stamped, general notoriety and reputa-
tion in the market; and that the property cannot be held to
exist until the facts of such user, notoriety, and public repu-
tation have been proved. The plaintiffs won.
§ 53. Who may acquire Property in a Trade-mark. — As a
general proposition, any person who, in law, is capable of
acquiring and holding any species of property, may hold a
title to a trade-mark.
§ 54. Yet this sweeping assertion must be subjected to
some qualification; for unless the person be a trader, that is,
unless he or she be engaged in mercantile business of some
kind, such a title could not be acquired, as we shall hereafter
more clearly see. The reason of such a condition is this:
the object selected as a trade-mark does not become such by
the mere act of selection. Something more is requisite to
perfect an act of adoption. What is that something? It is
the union of the abstract representation of the object with a
vendible commodity. Instantly the inchoate right becomes
perfect, and title rests in the appropriator.
§ 55. But we shall see that certain persons cannot become
traders, and consequently cannot place themselves in a posi-
tion to obtain such a title. Take as an extreme hypothesis
the case of the person holding the office of Archbishop of
Canterbury. . He could not become possessed of a title to a
1 4 De G., 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.
60 LAW OF TRADE-MARKS. [$ 55.
trade-mark, for the law inhibits him from engaging in secular
pursuits of a mercantile nature. A corporation is an artificial
person, and under the former act of Congress of July 8, 1870,
the right of a corporation to a trade-mark is distinctly rec-
ognized. But when we come to consider the provisions of
that act, we shall be easily convinced that it is not every
corporation that can avail itself of the protection promised
thereby." Why? Because the corporation may not be a
trading corporation. For instance, a rector of a parish in
Massachusetts, New York, Maryland, and other States where
the Church of England once held legal sway, is a corporation
sole. Yet no sane person would dream of such a corporation,
or any other of a purely ecclesiastical nature, manufacturing
or selling goods. – This matter has recently been discussed
in several European judicial tribunals, especially in suits
brought by the Carthusians” for the protection of trade-mark
rights. In the Tribunal Correctionnel of the Seine, in 1879,8
the defendant raised the point that the prosecutor, being a
religious corporation, could not own a trade-mark. Held, that
the members of a religious community (although the same
is not recognized by law, nor authorized) enjoy individually
civil rights in France, and may maintain personal actions to
repress trespassing on their rights. – In the Court of Brussels,
in 1883,4 it was held, that, in Belgium, religious corporations
or orders are regarded as mere aggregations of individuals
enjoying ut singuli all civil rights. Monastic vows are no
bar to personally acquiring and possessing in their own proper
names titles to trade-marks. They are presumed to act in
their individual capacity. The Court of Appeal of Brussels
affirmed the decision. It was there objected that Grézier
1 The registration act now in operation—that of March 8, 1881—recog-
nizes the right of a corporation, the same as of any other owner.
* “A religious order instituted by St. Bruno in 1086, and named from La
Chartreuse, near Grenoble, Vienne, whither the saint retired with six compan-
ions to spend a life of pious solitude and austere severity. . . . The C. have
still two of the finest convents in the world, viz. La Grande Chartreuse, on the
site of their original home in the desolate valley near Grenoble, and Certosa,
near Pavia.”— The Globe Encyclopaedia. &
* Grézier v. Detang et al., 24 Annales, 313.
* Grézier v. Caumontal, 29 Annales, 183.
§ 57.] PROTECTION OF TRADE-MARK PROPERTY. 61
sued as agent of the convent of the Grande Chartreuse, but
the court said that that title belonged to him hierarchically
in the convent life, and that France and Belgium had placed
all religious bodies under the protection of the common law.
$ 56. Nor can every natural person hold title in a trade-
mark; for some persons are under interdict, — are felons un-
der sentence of death, or are not of sound mind. This phase
we shall also more fully investigate hereafter.
§ 57. Title to a Trade-Mark by Assignment. — The right to
the exclusive use of a symbol as a trade-mark being property,
as property, it is susceptible of being assigned, with certain
exceptions which hereinafter appear; and an assignee has the
good-will of the trade, and stands in the same relation to a
defendant as would the original appropriator of the symbol."
If the assignor imposes no limitation of place or time, the
right to use is deemed co-extensive with the whole country.”
As the Supreme Court of Pennsylvania said, in 1867, as-
signees are entitled to relief, even though in the use of a
trade-mark they have not designated themselves as assignees,
or that they were not the original owners of it. A trade-mark,
like the good-will of a shop or manufacturing establishment,
is a subject of commerce, and it has many times been held to
be entitled to protection at a suit of the vendees; 8 and the
title to it may pass under a creditors’ deed to trustees for the
creditors of the firm owning it.* The sale of a business is a
sale of the good-will ; but it is not necessary that the term
“good-will” be specifically mentioned. In such sale, the title
to trade-marks passes, whether they be specifically mentioned
or not.” The Supreme Court of the United States said that,
when the trade-mark is affixed to articles manufactured at a
particular establishment, and acquires a specific reputation in
1 Walton v. Crowley, 3 Blatch. 440; R. Cox, 166.
2 Kidd v. Johnson, 100 U. S. 617. * Fulton v. Sellers, 4 Brewst. 42.
* Bury v. Bedford, 4 De G., J. & S. 352; 33 L. J. Ch. 465; 10 Jur. (N. s.) 503;
10 L. T. (N. s.) 470; 12 W. R. 726; 4 N. R. 180; Hudson v. Osborne, 39 L. J.
Ch. 79; 21 L.T. (N.S.) 886; Helmbold v. The Henry T. Helmbold Manufacturing
Co., 53. How. Pr. 458; Ex parte Young, and Re Lemon Hart & Son, Cox's Man-
ual, case 537.
5 Shipwright v. Clements, 19 W. R. 599.
62 LAW OF TRADE-MARKS. [$ 57.
connection with the place of manufacture, and that establish-
ment is transferred to others, either by contract or operation
of law, the right to the use of the trade-mark may be lawfully
transferred with it." The title may pass by an assignment in
bankruptcy,” or to the assignee in insolvency of the owner.”
It has been held to be settled law, that the right of user in a
trade-mark is not a mere personal privilege, but within cer-
tain limits may be transferred as other property. But there
are exceptions to the susceptibility of emblems used as trade-
marks being transferred to others as such. The court said,
as to a trade-mark consisting of a man’s name, that it is a
difficult question to decide how far it is capable of assign-
ment. “We think the answer to this question depends upon
the effect which the use of the name, in each particular
instance, is shown to have upon the minds of the public. If
it leads the public to believe the particular goods are in fact
made by the person whose name is thus stamped upon them,
whereas they are in fact made by another person, then such
a use of the name will not be protected by the courts, for to
do so would be to protect the perpetration of a fraud upon
the people.”* By reference to another case,” it is seen that
the court said: “By the dissolution of the firm, and Oakes's
sale to Probasco, the latter acquired the rights of the firm to
the name. Oakes could so sell his name as to deprive him-
self of the right to use it for his own manufacture, and give
the right to another.” The matter was again judicially con-
sidered in a United States Circuit Court,” in which it was
said by Bruce, J.: “If there was anything in the nature of
the business of candy-making, any art or incommunicable
secret known only to the man Oakes, it might be said that
he [the assignee] did not carry on the same business, and
manufacture the same goods, as did the firm of Probasco &
Oakes.” – In such supposed case, there could not have been
a valid assignment. The right to manufacture or sell the
1 Kidd v. J ohnson, supra. * Ex parte Young, supra.
8 Warren v. Warren Thread Co., 134 Mass. 247.
4 Skinner & Co. v. Oakes et al., 10 Mo. App. 45.
5 Probasco v. Bouyon et al., 1 Mo. App. 241. -
* Oakes v. Tonsmierre, 4 Woods, 555 (June term, 1883).
§ 58.] PROTECTION OF TRADE-MARK PROPERTY. 63
merchandise to which the trade-mark is attached is essential
to property therein; 1 for the right cannot be so enjoyed by
an assignee that he shall have the right to affix the mark to
the goods different in character or species from the article
to which it was originally attached.” In some of the cases,
said the Supreme Court of Rhode Island, in 1876, the question
has been between partners, or there has been a sale of a busi-
ness, to be continued by a vendee, and more or less connected
with a place and the good-will of the business, in many of
which cases the sale of a trade-mark would be upheld. But
where the reputation of the goods and of the name has grown
out of excellence of manufacture depending on the honesty
and skill of the maker, it is more difficult to hold that it can
be sold to a stranger, or that it is generally assignable.” As
to partners it has been held that the title to a trade-mark
does not pass to any member of the firm by mere implication,
but each member may use it in a manner not to deceive the
public.”
§ 58. Who is an Infringer? — He who uses on merchandise
the peculiar mark to which another has the right of exclusive
use for substantially the same class of goods; or, under some cir-
cumstances, he who has falsely fabricated such mark, although
he has not actually affixed it to goods. A false fabrication of
the symbol, as an instrument of fraud, is constructively an
infringement.” One may be an infringer, although he took
no part in imitating or affixing the simulated mark. The
1 The Congress and Empire Spring Co. case, 45 N. Y. 291; 10 Abb. Pr. (N. s.)
348; 6 Am. R. 82; 4 Am. L. T. 168; R. Cox, 624.
2 Filkins v. Blackman, 13 Blatchf. 440.
8 Carmichel v. Latimer, 11 R. I. 395; 23 Am. Rep. 481; 16 Alb. L. J. 73.
4 Young v. Jones Bros. & Co., 3 Hughes, 274. (See §§ 522 et seq., on Good-
Will.) -
* The act of Congress of August 14, 1876, punishes with fine and imprison-
ment any person or persons who shall, with intent to defraud, “knowingly and
wilfully cast, engrave, or manufacture, or have in his, her, or their possession,
or buy, sell, or 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 representation, likeness, copy, or colorable imitation of
any die, plate, brand, engraving, or mould, of any private label, brand, stamp,
wrapper, engraving on paper, or other substance, or trade-mark,” etc. See
Appendix. - - & w
64 LAW OF TRADE-MARKS. [$ 58.
fact of selling, or offering for sale, goods falsely marked, is
sufficient to charge him, and any semblance is deemed an in-
fringement if calculated to mislead ignorant or careless pur-
chasers. The infringer may be either the pirate himself, or
an innocent vendor of the falsely marked goods. It matters
not how many hands they may have passed through. Courts
will arrest the wrong at any stage of its journey. A counter-
feit is not valid even in the possession of one quite ignorant
of its vicious character, although he may plead his good faith.
The New York Court of Appeals said," where the defendant,
who was a label-printer, sold labels bearing an imitation, that
it was not necessary to establish a guilty knowledge or fraudu-
lent intent on the part of the wrong-doer. It is sufficient
that the proprietary right of the party and its actual infringe-
ment are shown. In England, in 1847, Shadwell, W. C.,
enjoined certain engravers from making or disposing of labels
or plates in imitation of those from which the plaintiff's
labels were printed;” and, in 1852, Parker, V. C., enjoined
a printer, under similar circumstances, he giving up all the
false labels and paying £50 costs.” Wood, W. C., held that
the plaintiff was entitled to an injunction to restrain the de-
fendant, a printer, from “scattering over the world the means
of enabling parties to commit frauds upon the plaintiff.” “–
The courts of France have frequently had occasion to con-
sider this point. The Court of Bordeaux, in 1871,” held a
lithographer liable for imitating labels, as well as the owners'
rival, who had given the order to do the work. The Tribu-
nal Correctionnel of the Seine, in 1875,” held a printer to be
guilty, who executed imitations at the command of a third
person, when he might have ascertained who was the true
1 Colman v. Crump, 70 N. Y. (25 Sickels) 573; 16 Alb. L. J. 352; Cox's
Manual, case 579. -
2 Guinness v. Ullmer, 10 L. T. 127; Cox's Manual, case 89.
8 Farina v. Shaw, cited 3 Eq. R. 886, 887; 1 K. & J. 514; 24 L. J. Ch. 632;
25 L. T. 211; 3 W. R. 532.
4 Farina v. Silverlock, 1 K. & J. 509; 3 Eq. R. 883; 24 L. J. Ch. 632; 25
L. T. 211; 3 W. R. 532.
5 Martell & Co. v. Martell et al., 18 Annales, 263.
* Blancard v. Gutton et al., 20 Annales, 86.
º
§ 58.] PROTECTION OF TRADE-MARK PROPERTY. 65
owner. The same court, in the same year, convicted a lithog-
rapher under the following circumstances. At the order of
others he had made two thousand labels bearing the words
“Liqueur Grande Chartreuse,” a well-known trade-mark. It
was held that he could not plead ignorance of the fact that
he was dealing with counterfeiters; and that he was guilty,
although he had not delivered the false labels, for the non-
delivery was owing to a circumstance foreign to himself.”—
The Court of Paris, in 1878,” held that engravers or founders.
who execute, on order, moulds or matrices intended to repro-
duce the essential and characteristic parts of a trade-mark,
cannot be permitted to plead good faith. In the Court of
Lyons, in 1879.4 a lithographer, having counterfeited on
stones the plaintiff’s trade-mark, the plaintiff, through an
intermediary, ordered a number of the false labels printed
therefrom. The Tribunal Civil of Lyons had dismissed the
plaintiff's case on that ground. Held, on appeal, that no
law or principle of law prohibits an owner from obtaining,
by such means, proof of wrong doing. The Court of Paris,
in 1888,” held that such an imitator' will in vain pretend
that he does not deceive purchasers when he vends not to the
public directly, but to merchants or agents, who buy at their
own risk and peril. It suffices that he knows that the pro-
ducts that bear the false marks are destined for the public
at large. In his mind, as in contemplation of law, they are
the true recipients of the falsified marks. Nor can one shield
himself from even a criminal prosecution by the plea that he
is a mere agent or consignee. So the highest judicial tri-
bunal in France — the Court of Cassation — held, in 1882.6
The defendant was, at Paris, the sole agent of his princi-
1 Grézier v. Jouhate, 20 Annales, 92.
2 In this case, M. Pataille, for the prosecution, cited two cases in the Court
of Paris, in 1866 and 1868, where it had been adjudged that the sole fact of
fabrication, even in the absence of delivery, is sufficient evidence against a
lithographer to warrant condemnation of spurious labels.
8 Michaud et al. v. Lemenu et al., 23 Annales, 59.
4 Portallier v. Balay, 25 Annales, 384.
5 Blancard & Co. v. Fancher, 38 Annales, 288.
* Hayem v. Brisac, 27 Annales, 114. '
5
66 LAW OF TRADE-MARKS. [$ 60.
pals in Berlin. He solicited orders in Paris, and his prin-
cipals sent to him goods with the simulated marks of the
plaintiff upon them. It appeared in evidence that the plain-
tiff had a prosperous trade with foreign countries, especially
Brazil. The attempt was to divert that trade by sending
abroad falsely marked goods. He was therefore held to have
been properly convicted.
$ 59. So similar in external appearance are different arti-
cles of merchandise, that, without peculiar indication of some
kind, one would be in uncertainty. Some pledge of integrity
is demanded. We see a curious mark: it is enough, – it
conveys to the mind full assurance of excellence, or what we
are happy in believing to be such. Some such guaranty is
required in these days, when traffic moves swiftly, in har-
mony with agencies of modern genius. A glance 1 It is
enough. Down goes the cash, and the change is effected.
But what if the signal with its blazon of truth be false? Con-
fidence is outraged, – and that is a thousand-fold worse than
the immediate loss of money, for a scar of suspicion is left.
Severe measures must be enforced to restrain the commission
of crime which has no small resemblance to that of wretches
who display false signal-lights. Avarice and treachery ! Pi—
racy must be restrained by the iron grasp of justice, that laud-
able industry may flourish, and competition, the life of trade,
be stimulated to ever-fresh efforts for excellence. An ade-
quate security and protection may be found in the extension
of the powers of courts of justice in the endeavor to uphold a
high mercantile morality. In this there is no restraint of
the freedom of trade, no fostering of monopolies. Each man
stands upon his own merits, just as a knight at a tourney has
his own color to identify him with valor and high emprise.
Infamy would await the base dastard who took the pennon
not belonging to him. So should it be in the mammoth con-
test for the well-earned meed of honorable and laborious
enterprise. - -
§ 60. Protection. —What avails a mere naked title to any
thing, unless the law protect it? Any man may copy an
emblem, or a mere representation of an object, —no matter
§ 61.] PROTECTION OF TRADE-MARK PROPERTY. 67
whether it be of the rudest character, or whether it be deline-
ated with all the grace and beauty of accomplished art, — un-
less the exclusive property in it be secured by local law in
another person. We say local, for a right exclusively to make
and sell a representation of an object, or a fanciful picture, or
other mark of taste, rests upon nothing more extensive than
the laws of the country which has invested it with the aegis
of defence. One nation does not respect the defensive law
of another in respect to such work of art, unless bound to do
so by a treaty or compact. The people of one country, then,
may with impunity prey upon the people of any other in re-
spect to works of genius, unless, upon the condition of reci-
procity, mutual forbearance shall have been stipulated. This
reflection begets an idea!
§ 61. It is not the act of imitating that is unlawful in regard
to a trade sign or mark. Then what is the wrongful act? It
is this: the placing of that mark upon vendible goods, for the
purpose of fraud; — for fraud, actual or constructive. Of this
species of cheating, furtive and mean, the honest, the confid-
ing, are the victims. But then the law protects the innocent
against fraud? Yes. Now we perceive that fraud is the
basis of the law's intervention: that kind of fraud which a
person practises when he writes, paints, stamps, or brands a
certain sign upon articles for sale, with the design that the
public shall take them to be the manufacture of some person
else, or to have emanated from some place which is not the
true one. This is a matter of property. A trader's business
fails because another trader has illicitly copied his mark of
honest dealing. He loses what should come to him as just
profits, and the purchaser is deceived into paying for a false
article. A double wrong is done. Unless the law intervene
to preserve the credit of the mark, all faith in its integrity
will soon be destroyed. Commerce is wounded. Real, tan-
gible rights are struck at : money is lost. That, in the eye
of the law, as administered, is a greater wrong than to steal
the fruits of intellectual skill. Property has been despoiled,
and that by the simple act of causing a certain symbol to
utter a falsehood. Property must be protected.
68 - LAW OF TRADE-MARKS. [$ 64.
§ 62. Whose Rights are protected 3–Those of the manufac-
turer or merchant who has lost his just profits, or of him who
has been cajoled out of his money? or those of both? We must
examine into the theory of protection; for upon a right under-
standing of it frequently depends the possibility of redress.
§ 68. When we look at the case in Cro. Jac., we find that,
for an imitation of a mark placed upon cloth, an action upon
the case was brought by him who bought the cloth, for deceit,
which action was adjudged to be maintainable. In Southern
v. How,” which is believed to be the same case, a different
version is given. In Comyns's Digest, “Action on the case
for deceit, A. g.,” the case is thus cited: “So" (i.e. an action
will lie) “if a clothier sell bad cloths upon which he put the
mark of another who made good cloths.” Comyns does not say
by whom the action may be maintained; but as he cites Cro.
Jac. only, it may be inferred that he considered the case as
establishing the right in the purchaser, which it certainly
would, if that report be correct. In Southern v. How the case .
is certainly cited as a distinct affirmance of the right of a
manufacturer to maintain an action for an unauthorized use
of his trade-mark. Lord Rolle, however, expressly states that
“Doderidge did not say whether the action was brought by
the clothier or by the vendee’”; but he adds, “semble que gist
pur le vendee.” Therefore, if we depend upon the old books,
we are left in doubt as to who is the protected party. But,
fortunately, the question may be said to be settled in these
days; although in the minds of some chancellors there is a
lingering doubt whether the public have any right to protec-
tion in such a case. - -
§ 64. We may safely assume that it is the moral, if not the
legal, duty of a court to protect the public against fraud, per-
petrated by means of false tokens. The maxim quoted by
Lord Cranworth in the case of the Leather Companies,” —
66 Vigilantibus, non dormientibus leges subveniunt,”—is not
1 Cited by Upton, p. 10. *
2 Popham, 144; Cro. Jac. 471; 2 Rolle, 28; R. Cox, 633.
* 11 Jur. (N. s.) p. 518; 11 H. L. C. 528; 85 L. J. Ch. 53; 12 L. T. (N. s.) 742;
13 W. R. 873; 6 N. R. 209.
§ 64.] PROTECTION OF TRADE-MARK PROPERTY. 69
always approved doctrine; for not only the watchful, but the
careless, should be guarded against wily craft and cunning.
The morals of a nation are like those of an individual: they
must be guarded by the supervising power, whatever that may
be. In this matter it is the court of justice trying the ques-
tion of infringement upon a mark of trade. The law of gravi-
tation seems to operate in morals as in physics; and there is
an increased momentum at every stage of descent. Of this
we have had melancholy proof in recent developments in some
portions of our country, where corruption soiled even the er-
mine of the judge. When we read of excessive stickling for
legality, we are apt to suspect that moral obligations have not
due weight. When a rogue stands convicted of his offence,
why not punish him to the extent of his desert? In trade-
mark cases there is a great laxity; as if the community at
large had no interest in the upholding of mercantile honor.
Spasmodic pretences to severity do not help the matter. Let
punishment be sure, like the bodily pain which follows every
excess as a manifestation of Divine will, and fraud must de-
crease. Whether by corporal pain or pecuniary mulet, the
effect would be beneficent. The law should protect the weak
and the simple." Is the child or the illiterate clown to be
plundered at the will of any charlatan or knave? Is the law
to lend its aid only to the vigilant, who require it not? It
must be that the exponents of justice have sometimes, by mis-
taking the intent of the law, become false oracles. If the rea-
soning sometimes used is good in one case, then why not in
another? If the confiding purchaser of wares may be cheated
with impunity, why not also suffer the pickpocket to ply his
craft unmolested against the youthful, the thoughtless, the un-
suspecting? Would it be a good defence for a vendor of brass
watches bearing the mark of the American, the Elgin, or any
other reputable watch company, to plead that prudent exami-
nation would have detected the fraud? Verily not. Does one
prudent person in a thousand keenly scrutinize each article he
buys? What percentage of ordinarily cautious persons closely
* See opinion of Kindersley, W. C., in Glenny v. Smith, 11 Jur. (N. s.) 964;
13 L. T. (N. s.) 11; 13 W. R. 1032; 6 N. R. 363.
70 LAW OF TRADE-MARKS. [$65.
examine the printed national currency, to see that it bears all
its legitimate marks? We come to the conclusion that the
rule of Caveat emptor should be changed into Caveat venditor,
demanding sincerity in the seller, rather than extreme caution
in the purchaser. -
§ 65. There seems to be a contrariety of opinion among
judges, both in law and equity, as to the real principle upon
which is founded the duty of judicial intervention. Some
judges, remarkable for probity in private life, appear to permit
the ermine to stifle sentiments of the nobler morality, and to
deal with the rigid letter of the law, rather than with its equi-
table spirit. They base their action entirely upon the legal
right of the party complainant, and treat as a matter of little
or no consequence the fact that the public at large have some
right to protection. Conceding that a court cannot go outside
of the immediate case presented, is it not true that the rights
of the public may be guarded and vindicated, by holding the
simulator of trade-marks to a rigid responsibility? Wood-
bury, J., in one case,” uttered the true doctrine: “To elevate
our own character as a nation, and the purity of our judicial
tribunals, it seems to me we ought to go as far in the redress
and punishment of these deceptions as can be vindicated on
any sound principle.” Robertson, J., in the case of Corwin v.
Daly,” said that “the origin of the favor shown to trade-marks
was the protection of the public, and not merely of the indi-
vidual dealer”; and in speaking of the scope or design of a
bill in chancery, invoking protection for honest trade, Lott,
Senator, said: “Its object is to prevent the commission of a
fraud, not only on them, and to the prejudice of their rights,
but on the public, by the sale of an article with an imitation .
of their trade-mark thereon in such a manner as to deceive
purchasers, and, through the false representations thus held
out, to deprive the owners thereof of the profits of their skill
and enterprise. Honest competition relies only on the intrinsic
merit of the article brought into the market, and does not re-
quire a resort to a false or fraudulent device or token.” “It
1 Taylor v. Carpenter, 2 Wood. & M. 1. y 2 7 Bos. 222.
8 Taylor v. Carpenter, N. Y. Ct. of Errors, 11 Paige, 292.
Y
§ 66.] PROTECTION OF TRADE-MARK PROPERTY. 71
is undoubtedly the duty of courts to regard with disfavor every
establishment having any tendency to corrupt the public mor-
als, to create idle or dissipated habits, to encourage a craving
for undue excitement, or to impair the taste for domestic at-
tachments and domestic society,” said another judge."
§ 66. Class of Goods.- Protection will not be given unless
in connection with the class of goods to which the mark has
been appropriated. It is sometimes difficult to define the term
class, as the mark may have been affixed to but a small por-
tion of a class, in which case, as a general rule, only that small
portion can be protected. But there are instances where courts
stretch the rule to cover obvious infringements, and expand
a species into a genus. Lord Chancellor Westbury said, in
1863:” “There can be no right to the exclusive ownership of
any symbols or marks universally in the abstract; thus, an
iron-founder who has a particular mark for his manufactures
in iron could not restrain the use of the same mark when im-
pressed in cotton or woollen goods; for a trade-mark consists
in the exclusive right to the use of some name or symbol as
applied to a particular manufacture or vendible commodity,
and such exclusive right is property.” Vice-Chancellor Wood,
in 1866,” used the same ideas, saying that one has no property
in the mark per se, any more than in any other fanciful de-
nomination assumed for his private use, otherwise than with
reference to his trade. If he does not carry on a trade in iron,
but carries on a trade in linen, and stamps a lion on his linen,
another person may stamp a lion on iron; but when he has ap-
propriated a mark to a particular species of goods, and caused
his goods to circulate with this mark upon them, no one is at
liberty to defraud that man by using that mark. —Lord Chan-
cellor Westbury held that property in a word (Anatolia)
cannot exist; * but when applied by way of stamp upon a
1 Christy v. Murphy, 12 How. Pr. R. 77.
* Hall v. Barrows, 4 De G., J. & S. 150; 33 L. J. Ch. 204; 10 Jur. (N. s.) 55;
9 L. T. (N. s.) 561; 12 W. R. 322; 3 N. R. 259. *
* Ainsworth v. Walmesley, L. R. 1 Eq. 518; 35 L. J. Ch. 352; 12 Jur. (N. s.)
205; 14 L. T. (N. s.) 220; 14 W. R. 363. de
* McAndrew v. Bassett, 4 De G., 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.
72 LAW OF TRADE-MARKS. [$ 66.
particular vendible article, as a stick of licorice, it does exist
the moment the article goes into the market so stamped, and
there obtains acceptance and reputation, whereby the stamps
get currency from superior quality of goods or other circum-
stance. —Where registration is relied on to establish ownership
of a trade-mark, care must be taken that the description of
class be not too broad. It has been twice held that, while a
registration for the class of paints might be sufficiently specific
without further description of the particular goods, a prior use
by the defendant of the device on white-lead defeated the regis-
tration, which, being bad in respect to part of the class that it
purported to cover, was bad altogether.” — The Patent Office
has permitted the term “alcoholic spirits” to include bourbon,
wheat, and rye whiskeys, wines, brandies, and gins, but ex-
cluded the term “bitters,” as not being properly included
within the class.”— Federal Courts have made very nice dis-
tinctions in regard to the matter of class of goods. Thus,
where the complainants, holding American patents of a class
of prints known as “heliotypes,” had registered the word
“Heliotype,” as a trade-mark affixed to them, and the defend-
ant used the same word, or “Heilotype,” on prints not pro-
duced by the patented process, it was held that the goods of
the parties were not substantially the same.” So, where, the
complainant being manufacturer of the dry white oxide of
zinc, the defendant sold white oxide of zinc ground in oil,
under the same symbol used as a trade-mark, it was held that
the articles were different.” But a defendant vainly sought
to make a distinction in his favor in the case of the arbitrary
symbol “Lone Jack,” under which a certain smoking-tobacco
long since obtained a high reputation. That tobacco had
been put up in bales of a pound each, or halves or quarters.
The defendant had adopted a label for cigarettes, which label
was entirely unlike that of the complainant, with the exception
1 Smith v. Reynolds, 10 Blatch. 100; 3 Off. Gaz. 214; 13 Blatch. 458.
* Re Boehm & Co., 8 Off. Gaz. 319.
* Osgood v. Rockwood, 11 Blatch. 310.
* Société Anonyme des Mines et Fonderies de Zinc de la Vieille Montagne
v. Baxter, 14 Off. Gaz. 679.
$ 66.] PROTECTION OF TRADE-MARK PROPERTY. 73
of that word-symbol, and he had registered in the Patent Office
his Lone Jack cigarette-label. The examiner had assented to
the proposition that smoking-tobacco, and cigarettes made of
long-cut tobacco, were articles of different classes. That was
the defence, on application for an injunction, supported by
over fifty witnesses in the tobacco trade. The internal revenue
classification was also invoked, to the same end. The case
was elaborately and ingeniously argued by counsel for the
defendant. The writer and other counsel for the complainant
argued substantially thus. The complainant manufactures
and sells “Lone Jack” smoking-tobacco. The bags containing
the granulated article may be ripped, and some of the article
poured out. It may be put into a meerschaum pipe, a common
clay pipe, or a corn-cob pipe; or, for lack of any pipe, it may
be poured into little pieces of thin paper, and rolled up, in the
form known as cigarettes. The tobacco may have been gran-
ulated, or, as in the case of the defendant’s goods, it may have
been cut into long fibres. That does not affect the essential
quality of the tobacco. What should a consumer of the com-
plainant's article, in either shape, answer to the question,
What are you smoking? He must truthfully say, “Lone
Jack,” meaning this particular kind of carefully selected
and peculiarly cured tobacco that had acquired a world-wide
reputation. Why had the defendant adopted that peculiar
word-symbol? Was it not that he might thereby usurp the
complainant's trade? Butler, J. (after consulting with his
associate, McKennon, J.) dissolved the defence in smoke,
thus: “While the revenue laws, for purposes of taxation, dis-
tinguish between smoking-tobacco and cigarettes, there is, we
believe, no substantial difference. Cigarettes consist of smok-
ing-tobacco similar in all material respects to that used in
pipes. The circumstance that a longer ‘cut’ than that com-
monly used in pipes is most convenient for cigarettes is not
important; nor that the tobacco is smoked in paper instead of
pipes. It may all be used for either purpose, and is all em-
braced in the term smoking-tobacco.” But where the fancy
term “Iron-clad" is affixed as a trade-mark to India-rubber
1 Carroll v. Ertheiler, 1 Fed. R. 688.
74 LAW OF TRADE-MARKS. [$ 67.
boots, it is no infringement for another to use the same term
as a trade-mark for leather boots, for the reason that they
belong to distinct classes."
§ 67. The term “Class” will not be so strictly limited as
to defeat substantial justice. While it is true that the first
adopter of a trade-mark acquires an exclusive right only in a
specific class, protection may possibly be granted, although
in fact his mark may not have been affixed to every article
in that class. Boni judicis est ampliare jurisdictionem, is a
maxim that is well illustrated by a case in 1882.” The facts
are as follows, from the opinion. The complainant, a corpora-
tion, had the right to make all articles of metal. It was the
successor of “Collins & Co.,” and always stamped that name
upon its productions as a trade-mark. In 1856, the firm of
Oliver Ames & Sons began to put the stamp and label “Col-
lins & Co.” on shovels made by it and sent to Australia. The
complainant had not up to that time made shovels, but it had
a market in Australia for the articles it made, and stamped
“Collins & Co.” The object of Oliver Ames & Sons in put-
ting thát stamp on the shovels was to avail themselves of the
credit and reputation and market which the complainant had
established for itself for articles thus stamped. The complain-
ant, at the time of bringing this suit, had not sent nor sold
any shovels to Australia. The defendant, successor to Oliver
Ames and Sons, continued to do what the latter so began in
1856. Held, by Blatchford, J., that the acts of Oliver Ames
& Sons and of the defendant were always unlawful. The
complainant having, from 1843, the right to make any article
of iron, steel, or other metal, and having gone on from that
time, both before and after 1856, extending its manufacture
beyond edge-tools into digging-tools, such as picks and hoes,
and having put the mark “Collins & Co.” on its best quality
of articles, the fact that it did not before 1856 make a dig-
ging-tool, such as the shovels on which Ames & Sons put the
mark “Collins & Co.,” does not warrant the conclusion that
that mark was not in 1856 the mark of the complainant's
1 Hecht v. Porter, 9 Pacific Coast L. J. 569.
* The Collins Company v. Oliver Ames & Sons' Corporation, 20 Blatch. 542.
§ 67.] PROTECTION OF TRADE-MARK PROPERTY. 75
trade in respect to such shovels. This decision of the learned
judge must commend itself as an act of equitable justice.
The only question to be raised is this: Is it, strictly speaking,
a trade-mark case ? Tested by the severe technical rules that
a symbol cannot be a trade-mark unless actually affixed to a
vendible article, it may be thought not. But whether so or
not, it needs no defence. If not strictly a case of trade-mark
infringement, the facts furnish all the essential ingredients of
a case of unfair competition in business. – On the same point
may be cited a case in a State court, in 1869." The complain- .
ants, being manufacturers but not printers of cotton cloths,
had placed the name “Amoskeag ’’ on their cloths; and the
defendants, who were printers but not manufacturers of cot-
ton cloths, had placed the same name on their printed cloths.
An injunction had been granted; but it was dissolved, on the
ground that the trades of the parties were different, and there-
fore the goods not of the same class. In 1876, this decision
was reversed,” the reasoning of Barrett, J., in delivering the
opinion of the court, being the same in principle as that of
the later case above cited. His hypothesis was this. Sup-
pose that the complainant had received from the legislature
the name of “The Amoskeag Baking Company,” and had
manufactured almost every variety of bread, roll, muffin,
cracker, biscuit, cake, and pie, on which articles of food it had
invariably stamped its corporate name, or some abbreviation
thereof, but had omitted, or had not yet decided, to make and
vend the single variety known as the “crumpet”; and there-
upon a rival baker attempts to sell his crumpets as “Amos-
keag crumpets,” would not any customer, upon seeing the
name thus applied, naturally say that the Amoskeag Baking
Company had added crumpets to its other varieties of bread?
And would not the rival bakery be restrained upon the plain
principle of an unauthorized use of the company's name?
The parallel is not precise, as the printing of calicoes may
require some additional machinery. “But the difference,”
* The Amoskeag Co. v. Garner, 55 Barb. 151; 6 Abb. Pr. (N. s.) 265; R. Cox,
541.
*4 Am. L. T. (N. s.) 176. §
76 - LAW OF TRADE-MARKS. - [Š 69.
said he, “is only in degree.” The remarks made in regard
to the preceding case are quite applicable to this. Both are
cases of unfair competition in business, and not strictly those
of trade-marks.
§ 68. As the first adopter of a mark does not acquire an
exclusive right to its use, except in connection with the spe-
cific class to which he has applied it, it is not uncommon for
the same emblem, or fancy name, to be placed on articles of
different classes by different owners. Thus, the fanciful ap-
pellation “BISMARCK’’ may, in compliment to the statesman,
be used for cement,” notwithstanding the fact that another
had previously appropriated it for paper collars.” “STAR”
may be used for iron,” shirts,” lead pencils,” oil,” or soap 7;
“EUREKA,” for a fertilizer,8 or shirts”; “CENTENNIAL,” for
clothing,10 or alcoholic spirits”; “ST. JAMES,” for a news-
paper,” or cigarettes.” As has been shown, general classes
may be divided; and the name “IRON-CLAD,” used on India-
rubber boots, is held not to preclude its use on leather boots; *
and “MAGNOLIA" may properly serve to indicate a certain
manufacture of gin for one proprietor,” and a certain brand
of whiskey for another.”
$ 69. The importance of a specific mention of the class of
merchandise to which a certain emblem is to be attached as
1 Re Wendt & Rammelsberg, U. S. Registration, No. 585. -
* Messerole v. Tynberg, 4 Abb. Pr. (N. s.) 410; 36 How. Pr. 14; R. Cox, 479.
* Dixon v. Jackson, 2 Scot. L. Rep. 188.
* Morrison v. Case, 9 Blatch. 548; 2 Off. Gaz. 544.
* Faber v. Hovey, Codd. Dig. 79, 249.
6 Re The American Lubricating Oil Co., 9 Off. Gaz. 687.
7 Re Cornwall, 12 Off. Gaz. 138.
* The Alleghany Fertilizer Co. v. Woodside, 1 Hughes, 115.
9 Ford v. Foster, L. R. 7 Ch. 611; 41 L. J. Ch. 682; 27 L. T. (N. s.) 219;
20 W. R. 818.
10 Sternberger v. Thalheimer, 3 Off. Gaz. 120.
11 Re Bush & Co., 10 Off. Gaz. 164.
* Gibblett v. Read, 9 Mod. 459; Ex parte Foss, and Re Baldwin, 2 De G. &
J. 230; 27 L. J. Bankruptcy, 17; 4 Jur. (N. s.) 522; 31 L. T. 30.
* Kinney v. Basch, 16 Am. L. Reg. (N. s.) 596.
14 Ante, § 66. -
15 Re C. & W. A. Waters, U. S. Registration, No. 544.
16 Re Mills, Johnson, & Co., U. S. Registration, No. 241; Kidd & Co. v. Mills,
Johnson, & Co., 5 Off. Gaz. 337; Kidd v. Johnson, 100 U. S. 617.
§ 70.] PROTECTION OF TRADE-MARK PROPERTY. 77
a trade-mark, may be illustrated by the letters “I XL’” (I
excel). To guard against looseness in practice, the statute
requires, that the class, “and the particular description of
goods comprised in such class,” shall be set forth in the
application." Time out of mind, the manufacturing estab-
lishment of Wostenholm, in England, has used the letters
IXL upon cutlery. The exclusive right to the use of that
symbol had at common law become vested in that firm, -
so far as it was actually stamped upon certain articles. It
could properly have been appropriated for marking all kinds
of cutlery, fine and common, large and small. The mark was
known all over the world, and by it was understood that the
house of Wostenholm had manufactured the steel fabrics thus
stamped. The examiner was well aware of the existence of
that mark, and recognized its import. It was his duty to
refuse registration to any one else who claimed property in
that mark, as applied to the particular class of goods made
and so marked by the English house. It did not matter that
no official notice of the use of the mark in a foreign country
had been filed. It was enough that a claimant must have
been the prior adopter of it.
§ 70. An American firm, doing business at Evansville,
Indiana, applied for registration of that mark for a chopping-
are. They did not pretend to have adopted the symbol
before the year 1870, many years after it had acquired a
world-wide reputation through the English firm of Wosten-
holm. Held, that chopping-axes are not included in the
particular class of goods in which the Wostenholms used the
mark. Registration allowed.” In January, 1872, Wostenholm
& Son, of England, filed an application for the registration of
the said symbol, “I XL,” as a trade-mark for cutlery. They
set forth the long term of years during which their firm had
used it for the same purpose. The certificate of registry was
duly issued.” In March, 1872, a manufacturing company in
Hartford, Connecticut, filed an application for a mark, newly
1 First section of registration act of 1881.
* Re Boetticher, Kellogg, & Co., U. S. Registration, No. 83.
* Re Wostenholm & Son, U. S. Registration, No. 666.
78 LAW OF TRADE-MARKS. [$ 71.
adopted, of which the said symbol is the essential part. It
was to be applied to scythes. The case was suspended until
evidence was furnished that the English firm of Wostenholm
did not make scythes. The adoption by the Hartford com-
pany was therefore lawful, and the mark was registered for
the third time."
§ 71. A Lack of Truth debars a trade-mark from protec-
tion. The tale told by the symbol must be sincere. The
instant it ceases to be truthful, in spirit as well as in letter,
it becomes an instrument of fraud, and is not lawful. A
Qualification, true in itself, may become fraudulent by the
manner in which it is used.” But these general propositions
must be carefully considered in the light of judicial reasoning,
lest by misunderstanding we commit a wrong, in hastily con-
cluding a trade-mark to be devoid of truth, and an instrument
of fraud, when the reverse is the case. We will first examine
cases that illustrate the affirmative of the propositions. Mel-
lish, L. J., in Ford v. Foster,” said: “ According to the rule,
Ev turpi causa non oritur actio, if a trade-mark contain a false
representation, a representation calculated to mislead the
public, a man cannot, by using that which is itself a fraud,
obtain an exclusive right, or indeed any right at all.” Of
the correctness of this doctrine there can be no doubt, involv-
ing as it does the matter of misleading by fraud on others.
Purchasers have a right to the very thing paid for, no matter
what may be its comparative value. Therefore, where a per-
fume is wrongfully named “Night-Blooming Cereus,”* the
name is a misrepresentation that debars the claimant of a
right to any protection ; so, when one sells an unpatented
article as “patent pins,” ” or sells oysters under the title of
“Anglo-Portugo,” when they did not come from Portu-
gal, although none the less good for that reason ; and even
where a complainant had, in his advertisements, made a
1 Re Greenwoods Scythe Co., U. S. Registration, No. 788.
* See §§ 430–439, as to the fraudulent use of one's own name. º
8 L. R. 7 Ch. 611; 41 L. J. Ch. 682; 27 L. T. (N. s.) 219; 20 W. R. 818.
4 Phalon v. Wright, 5 Phila. 464; R. Cox, 307.
5 Morgan v. McAdam, 35 L. J. Ch. 228; 15 L. T. (N. s.) 348.
6 Re Saunion & Co., Cox's Manual, case 625.
s
§ 71.] PROTECTION OF TRADE-MARK PROPERTY. 79
number of false representations to the public with respect to
the origin, composition, and value of the tea bearing his trade-
mark, an injunction was refused until he had established his
right at law; Vice-Chancellor Shadwell saying, “It is a clear
rule, laid down by courts of equity, not to extend their pro-
tection to persons whose case is not founded in truth.”" The
rule applies when one has made misrepresentations in show-
cards; * or made false statements as to the qualities and prop-
erties of his merchandise, as in selling a medicine misnamed
“Balsam of Wild Cherry,” 8 or a toilet compound, the labels
of which contained untrue statements and exaggerations,”
or a cosmetic called “The Balm of Thousand Flowers,”
though the compound was not derived from flowers,” or
“Laird's Bloom of Youth or Liquid Pearl,” when the so-
called article contained carbonate of lead or other noxious
ingredients, although the manufacturers described it as being
free from all mineral and poisonous substances;" or improp-
erly represented their “Schnapps’” as not merely a spirit,
but also a medicinal preparation; 7 or sold a so-called “Hop
Essence ’’ for the purpose of enabling brewers to supply to
the public a liquid which they might represent as being
made with pure hops, which was not the truth; 8 or made
false representations of the origin and value of the plasters,
the word “Capcine " being shown to be quite unknown, and
not to imply any such qualities as were described by the
plaintiffs;" or falsely represented the place of manufacture,
as where the manufacturer of a skin-powder which he called
“Meen Fun” falsely represented his American compound to
have been made in England, and patronized by the Queen; 19 or
1 Pidding v. How, 8 Sim. 477; 6 L. J. Ch. (N. s.) 345.
* Perry v. Truefitt, 6 Beav. 66; 1 L. T. 384.
8 Fowle v. Spear, 7 Penn. L. J. 176; R. Cox, 67.
* Heath v. Wright, 3 Wall. Jr.; R. Cox, 154.
5 Fetridge v. Wells, 4 Abb. Pr. 144; 13 How. Pr. 385; R. Cox, 188.
6 Ilaird v. Wilder, 2 Bush (Ken.) 131; 15 Am. R. 707.
7 Wolfe v. Burke, 7 N. Y. Sup. Ct. 151; 56 N. Y. 115; 2 Off. Gaz. 441.
* Estcourt v. The Estcourt Hop Essence Co., 31 L. T. (N. s.) 567; L.R. 10
Ch. 276; 44 L. J. Ch. 223; 32 L. T. (N. s.) 80; 23 W. R. 313.
9 Seabury v. Grosvenor, 53 How. Pr. 192; 14 Off. Gaz. 679.
10 Hobbs v. Français, 19 How. Pr. 567; R. Cox, 287.
80 LAW OF TRADE-MARKS. [$ 71.
misrepresented his cigars as having been made in Havana; 1
or falsely denoted or indicated to the public, in the title of his
merchandise, that the formula for his medicine was prepared
in the East Indies; * or untruly represented the place of ori-
gin as well as the manufacturer; * or continued the use of the
name of a predecessor after he had ceased to be connected
with the business.” But it must be remembered that, in all
the above cases, fraud was a predicate. —Where no actual or
constructive fraud is shown, and no intention to harmfully
mislead purchasers, manifested by the use of instrumentali-
ties that would naturally tend to that result, the rule does not
apply. The Supreme Court of Connecticut said, in the case
of Meriden Britannia Company v. Parker,” that the deception
need not be of such a character as to work a positive in-
jury to purchasers, nor, on the other hand, can every erro-
neous impression which the public or a portion of the public
may receive, be sufficient to destroy the validity of a trade-
mark. — There are abundant illustrations of this principle.
Thus, it has been held that the facts in the following cases did
not disentitle the complainant to an injunction: an incorrect
statement that a work was “By William Granger, Esq.”;"
the assumption of the title of “Professor,” and some exagger-
ated commendations of medicines; 7 a statement on the title-
page of a song, “Written by George Linley,” he having written
the words, though he did not compose the music, though Linley
was better known as a composer than as a poet; * a representa-
tion that it was the six hundredth edition of the complain-
ant's work, it being proved to be a custom to style every issue
of two hundred and fifty copies a new edition, or by a state-
1 Palmer v. Harris, 60 Penn. 156; 8 Am. L. Reg. (N. s.) 137; R. Cox, 523.
2 Connell v. Reed, 11 Mass. 477; 35 Am. R. 399.
8 Manhattan Medicine Co. v. Wood, 108 U. S. 218; Siegert et al. v. Abbott,
61 Md. 276. -
4 Partridge v. Menck, 2 Sandf. Ch. 622; 2 Barb. Ch. 101; 1 How. App. Cas.
558; R. Cox, 72; Helmbold v. The Henry T. Helmbold Manufacturing Co., 53
How. Pr. 453. -
5 39 Conn. 450; 12 Am. R. 401; 13 Am. L. Reg. (N. s.) 153.
6 Hogg v. Kirby, 8 Wes. 215. 7 Holloway v. Holloway, 13 Beav. 209.
8 Chappell v. Sheard, 2 K. & J. 117; 1 Jur. (N. s.) 996; 3 W. R. 646; Chap-
pell v. Davidson, 2 K. & J. 123; 8 De G., M. & G. 1.
§ 71.] PROTECTION OF TRADE-MARK PROPERTY. 81
ment that the work was specially revised by the author, the
words being properly interpreted to mean that it was a
specially revised edition, but not to distinguish it from all
previous ones in this respect; a representation by defendant
that the name placed on plaintiff's thread was fictitious;”
misrepresentation in selling, as quart and pint bottles, bottles
that contained less, the deficiency amounting to about ºn
there being no evidence that any one had been or was likely
to be deceived; * untruly stating in circulars, advertisements,
etc. that they were carrying on the business formerly carried
on by the defendant, plaintiffs having in fact purchased the
stock in trade, etc. of the business carried on by the defend-
ant from his assignees in bankruptcy.” — A trade-mark will
not be defeated by the unwarranted use of the word “im-
ported ” in connection with it, unless such use is intended to
deceive the public.” Plaintiff, as a trade-mark for oleomar-
garine, used the word “Alderney,” which he stamped on his
merchandise. It was held to be merely arbitrary, and not
calculated to deceive.”—In Conrad v. Joseph Uhrig Brewing
Company, the defendant alleged fraud on the part of the
plaintiff in his use of “Budweiser Lager-Bier,” when in
truth his beer was not made in Budweis, in Bohemia, but
was made by the Budweiser process. The court did not heed
such defence.” In Clark v. German Mutual Fire Insurance
Company,” it was held that trading under the name of
“National Slipper Company” does not necessarily imply a
corporation, nor an association of powers, but it may be the
trade-name of one man. — The use of the words “Number
10, South Water Street,” as indicating the place of busi-
ness of a manufacturer, has been protected by injunction,
1 Metzler v. Wood, 8 Ch. D. 606; 47 L. J. Ch. 625; 38 L. T. (N. s.) 541;
26 W. R. 577. -
* Stewart v. Smithson, 1 Hilt. 119; R. Cox, 175; Dale v. Smithson, 12 Abb.
Pr. 237; R. Cox, 282.
3 Hennessy v. Wheeler, 51 How. Pr. 457; 69 N. Y. 271; 15 Alb. L. J. 454; 25
Am. R. 188.
4 Hudson v. Osborne, 39 L. J. Ch. 79; 21 L. T. (N. s.) 386.
5 Funke v. Dreyfus, 44 Am. R. 413; 34 La. Ann. 80.
6 Lanferty v. Wheeler, 11 Abb. N. C. 220.
7 8 Mo. App. 277. * 7 Mo. App. 77.
82 - LAW OF TRADE-MARKS. [$ 71.
the words being a mere arbitrary designation, and not cor-
responding with any real number."—Selling coal under the
name of “Wallsend,” though all original collieries of that
name had previously been worked out, was not considered a
misrepresentation to the public, as purchasers do not attach
a definite meaning to the word, but would understand by
it any good coal from the Northern districts.” — It was not
a harmful misrepresentation to sell a preparation of infu-
Sorial earth under the name of “Electro-Silicon,” silicon not
being susceptible of being an object of general commerce,
for the reason that in nature it exists in such minute quan-
tities.” It was held that the name “Alderney’’ was a valid
trade-mark for oleomargarine; and yet we can understand
that it might possibly have conveyed a wrongful impression.*
In that same case, the plaintiff had placed the words “Patent
Sept.” upon his goods, and although the patent had been
allowed, but had not actually issued, the statement did no
harm. — In Smith v. Sixbury,” the name “Magnetic Balm ’’
was held to be a valid trade-mark, on the expressed ground
that the medicine contained neither magnetism nor electricity,
and that it did not contain any fraudulent suggestion. — In
the Court of Paris, in 1881,” the following illustration was
given. The plaintiff, a tailor in Paris, had assigned to his
step-son, Bizet, his place of business, with the right to take
the title of “Successeur de Montagne.” Bizet, whose mother
had espoused the plaintiff, put up a sign, and printed on his
papers, the denomination, “Maison L. Montagne et fils, Bizet,
dit Montagne fils, successeur.” In his defence, he insisted
that in so doing he only continued a situation created by
Montagne, who had always presented him to customers as
his own son and partner; that if there had been between
them only an apparent association, the business name of the
place was nevertheless that of “Montagne et fils.” This
1 Glen & Hall Manufacturing Co. v. Hall, 61 N. Y. 226; 19 Am. R. 278.
2 Lee v. Haley, 21 L. T. (N. s.) 546; 18 W. R. 181; L.R. 1 Ch. 155; 39 L. J.
Ch. 284; 22 L. T. (N. s.) 251; 18 W. R. 242. -
8 Electro-Silicon Co. v. Hazard, 29 Hun, 369.
* Lanferty v. Wheeler, supra. 5 25 Hun, 232.
6 Montagne v. Bizet, 27 Annales, 191.
§ 71.] PROTECTION OF TRADE-MARK PROPERTY. 83
claim to pass in business as the son of the plaintiff was
denied by the latter, who prosecuted him for usurping the
false quality of son of his predecessor. The tribunal below
had held that, inasmuch, as long prior to the cession by Mon-
tagne of his house of commerce to Bizet, the house, although
carried on alone by Montagne, bore the name of himself “et
fils,” the denomination had become the property of Bizet ;
and although there was a lack of strict truth, it was harmless,
and not obnoxious to the charge of deceit. — The question of
harmless untruth came up in the French Court of Cassation,
in 1882, in Bardou v. Lacroix, with the same result as in the
foregoing case. The plaintiff and his son, makers of cigarette
paper at Perpignan, had given to their product the fanciful
name of papier goudron, which had acquired great popularity.
In the tribunal of first instance, the defendant was victorious,
as he was also in the Court of Paris, on appeal; one of the
grounds of decision being that the plaintiff was disentitled
to redress, by reason of false representation. The court of
last resort reversed the action below, and said that the law
does not prohibit denominations purely arbitrary and fanciful;
and that the plaintiff was not to be defeated under the plea
of untruth, it appearing that, while the article was called
“tar-paper,” not a particle of tar entered into its composition;
and that, there being no intention to deceive as to the nature
of the merchandise, it could not be regarded as a lying trade-
mark. — At this point is needed a reference to a case decided
by the Court of Appeals of Maryland, in 1884.” That case
takes extreme views, seeming to go to the length of holding
that a misrepresentation, although innocent of wrongful in-
tention, and essentially harmless in consequences, vitiates all
right to redress for infringement. The bill charged a sim-
ulation of a trade-mark and label. Among other things that
label read, “Angostura Bitters, prepared by Dr. Siegert, at
Angostura, now Port of Spain, Trinidad.” The court said,
inter alia: “It is conceded that Dr. Siegert died in 1870.
1 27 Annales, 214.
* Siegert et al. v. Abbott et al., 61 Md. 276 (citing with approbation $$ 71
and 474 et seq. of the first edition of this treatise).
84 LAW OF TRADE-MARKS. [$ 71.
ſ The bill so charges. He never lived at Port of Spain. The
complainants, his sons and successors in business, removed to
Port of Spain after his death. One of the complainants was
associated with Dr. Siegert in the business as his partner, and
alleges that, as survivor, he succeeded to the business, and sub-
sequently he associated his brothers, the other complainants,
with him as partners in the trade. . . . It is true a removal
from ‘Angostura or Ciudad Bolivar to Port of Spain’ is noted
on the label; but it is so noted as to leave the impression that
Dr. Siegert, the inventor and original proprietor, had so re-
moved, and was continuing his manufacture at Port of Spain;
... no intimation is to be found in the label that he is
dead. . . . It should be remarked that, in the note of warning
against counterfeits, at the left hand of the label, it is stated
that bottles bear the complainants' signature, which inspection
shows to be not theirs, but the original inventor's. We are
ſ/unable to distinguish this case from the Manhattan Medicine
Company's case.” The defendants relied on the case of Siegert
v. Findlater," wherein the same complainants, after the death
of their father, were awarded an injunction, although the
same point as to misrepresentation was made. The court
relied on a particular case as a conclusive precedent.* Let
(ſus compare the two by the records. The complainant, a
New York corporation, derived all its right, through various
mesne assignments, from one Moses Atwood, of Georgetown,
Mass. Its bottles bore, blown in the glass, the words, “At-
wood's Genuine Physical Jaundice Bitters”; and the labels
thereon stated the article to have been manufactured by Moses
Atwood, Georgetown, Mass., and sold by his agents. The court
said, inter alia : “It is admitted that whatever value the med-
icine possesses was given to it by its original manufacturer,
Il Moses Atwood. He lived in Georgetown, Massachusetts.
He manufactured the medicine there. He sold it with the
designation that it was his preparation. . . . As the medicine
was tried and proved to be useful, it was sought for under
that designation, and that purchasers might not be misled,
1 7 Ch. D. 801; 47 L. J. Ch. 233; 38 L. T. (N. s.) 349; 26 W. R. 459.
2 Manhattan Medicine Co. v. Wood, 108 U. S. 218.
§ 72.] PROTECTION OF TRADE-MARK PROPERTY. 85
it was always accompanied with a label showing by whom,
and in what place, it was prepared. These statements were
deemed important in promoting the use of the article and
its sale, . . . yet they could not be used with any honest
purpose when both statements had ceased to be true. It is
not honest to state that a medicine is manufactured by Moses
Atwood, of Georgetown, Massachusetts, when it is manufac-
tured by the Manhattan Medicine Company, in the city of
New York.” The court, in fixing fraud upon the complain-
ants, cited nine cases as illustrations." All but the first were
tainted with fraud. But wherein consisted the fraud in the
Maryland case ? If Dr. Siegert did not himself prepare the
bitters, his sons and survivors, and one of them a former part-
ner of his father, did, and there is not a suggestion that the
article differed from their original manufacture, or that any
one had been deceived, or was likely to be. The name of “Dr.
Siegert” in his lifetime represented more than his individual
self. The single name of a man in trade may come to mean
many men, his successors in business, not one of them having
his surname. The ratio decidendi differs in the two cases.
The purchasers of Angostura bitters require a specific arti-
cle. They care not which one of the original firm makes it,
nor whether it is made at one place or at another. It was
the manufacture of the same concern. Quite the contrary was
the truth in the Manhattan case. Quaere, What rank does
the Maryland decision take as an authority?
§ 72. An Untrue Use of the Word “Patented,” or its Equiv-
alent. — If a trade-mark, or the label bearing it, untruly and
fraululently represents an article as protected by a patent,
it is prima facie the misrepresentation of an important fact,
and the owner of the mark is generally for that cause dis-
entitled to equitable relief against a pirate.” That has been
1 Manufacturing Co. v. Trainer, 101 U. S. 51; The Leather Cloth Co. case,
11 H. L. C. 523; Pidding v. How, supra; Perry v. Truefitt, supra; Fetridge v.
Wells, supra; Seabury v. Grosvenor, supra; Hobbs v. Français, supra; Connell
v. Reed, supra; and Palmer v. Harris, supra.
* The Leather Cloth Co. (Limited) v. The American Leather Cloth Co. (Lim-
ited), 11 H. L. C. 523; 35 L. J. Ch. 53; 11 Jur. (N. s.) 513; 12 L. T. (N. s.) 742;
13 W. R. 873; 6 N. R. 209. Morgan v. McAdam, 36 L. J. Ch. 228; 15 L. T.
86 LAW OF TRADE-MARKS. [$ 72.
held to be positively so when the pretended patent never
existed. Wood, W. C., in Flavel v. Harrison, gives a reason
therefor; viz. that the use of the word “patent” operates to
prevent the public from testing the article bearing it, as they
otherwise might; they are dissuaded from examining the
article with a view to imitation; and prevented from making
that free use of it which every purchaser has a right to make
of an unpatented article. The knowledge that there was no
patent would enable and encourage others in the trade to
take it to pieces, and examine, and make copies and models
of all the parts, for the purpose of imitation, if they thought
it likely to be useful, which they would not think of doing
with regard to a patented article. Mellish, L. J., said, in Ford
v. Foster,” that the test must be whether the use of the term
is still calculated to deceive the public, inducing them to buy
goods not made by the original owner of the trade-mark, as
if they were his goods. In Lamplough v. Balmer,” the plain-
tiff's labels contained the words “Royal Letters Patent,” he
not having taken out any patent, and Wood, W. C., refused
an injunction notwithstanding an explanation by the plaintiff
that he had used the term in consequence of his having long
paid duty as for a patent medicine. In Edelsten v. Vick,” Wood,
W. C., intimated a doubt whether the rule would be the same
if there had originally been a patent, and the statement, being
true at first, had been continued after it had ceased to be
true; but in Cheavin v. Walker,” the Court of Appeal held
that the plaintiff was disentitled, by reason of his reference
to a lapsed patent being such as to induce the belief that it
was still in force. In Nizey v. Roffey,” the plaintiff described
himself on his labels as “Manufacturer and Patentee,” though
he had taken out no patent, which was held to be equivalent
to describing his article as patented; and his bill was dis-
(N. s.) 348. The Leather Cloth Co. v. Lorsont, L. R. 9 Eq. 345; 391. J. Ch. 86;
21 L. T. (N. s.) 661; 18 W. R. 572. Nixey v. Roffey, W. N. 1870,227.
1 10 Hare, 467; 22 L. J. Ch. 866; 17 Jur. 368; 1 W. R. 213.
2 L. R. 7 Ch. 611; 41L. J. Ch. 682; 27 L. T. (N. s.) 219; 20 W. R. 818.
8 W. N. 1867, 293.
4 11 Hare, 78; 1 Eq. R. 413; 8 Jur. 7. p e
5 5 Ch. D, 850; 46 L. J. Ch. 686; 85 L. T. (N. s.) 938. * Supra.
§ 72.] PROTECTION OF TRADE-MARK PROPERTY. 87
missed, with costs. And when a patent had been held to be
invalid, it was held by a United States Circuit Court that the
complainants were disentitled to relief, by reason of the refer-
ence to the invalid patent as if it were valid.” In all the
foregoing cases, a fraudulent intention, or a tendency to mis-
lead, was the ground of decision. But the untrue use of the
word “patent,” or an equivalent expression, does not neces-
sarily disentitle to relief. Intent, or a tendency to mislead,
is, after all, a question of fact to be determined by the cir-
cumstances of each individual case. Thus, in the King's
Bench, in 1824, in an action on the case,” the plaintiff having
been in the habit of marking his shot-belts, powder-flasks,
etc. with the words “Sykes Patent * (though the patent
which had been taken out had been held to be invalid), and
the defendants having copied this mark on their own goods,
the plaintiff was allowed to prevail. Abbott, C. J., said that it
was established most clearly that the defendants marked the
goods manufactured by them with the words “Sykes Patent”
in order to denote that they were of the genuine manufacture
of the plaintiff. It has been held by Wood, W. C., that an
injunction must be granted, and an inquiry as to damages
directed, notwithstanding that the plaintiff's trade-mark label
contained the words “tanned leather cloth patented June
24th, '56,” and that the plaintiff's leather cloth was in fact
no longer tanned or patented; since the statement was cor-
rect when it was first inserted in the trade-mark.8 In 1856, in
a case where the plaintiffs sold thread the labels of which
described “patent thread,” and the defendants copied the
words, it was held that it could not constitute a defence to
show that no patent therefor ever existed.4 In Ford v.
Foster,” the plaintiff had in his advertisements called him-
self “patentee,” but the misrepresentation was held not to
disentitle, being at most collateral. — Sometimes the word
1 Consolidated Fruit Jar Co. v. Dorflinger, 2 Am. L. T. (N. s.) 511.
* Sykes v. Sykes, 3 B. & Cr. 541; 5 D. & R. 292; 3 L. J. K. B. 46.
* The Leather Cloth Co. (Limited) v. Hirschfeld, 1 N. R. 551; and see 1 H.
& M. 295.
4 Stewart v. Smithson, 1 Hilt. 119; R. Cox, 175.
5 L. R. 7 Ch. 611; 41 L. J. Ch. 682; 27 L. T. (N. s.) 219; 20 W. R. 818.
88 LAW OF TRADE-MARKS, [$ 72.
“patent” is used through a misconception of its import, as
in Cave v. Myers, in 1868, before Gifford, W. C., where it ap-
peared that the plaintiffs had registered a design, but had not
a patent, yet had described themselves as patentees, and they
prevailed, notwithstanding. In the Supreme Court of Lou-
isiana,” it was held that the use of the word “patented”
must be with the purpose of deceiving the public, to be a
valid objection; and if a fraudulent intention does not exist,
and the use of the word may be explained in any reasonable
sense consistent with truth and honesty, the party will not
be prejudiced. Had the words “Registered in the Patent
Office” been used, no question could have arisen, but the use of
the word “patented” as applied to a trade-mark so registered
is so common that the court was referred to a case where so
learned a jurist as Judge Cooley uses the language, “In the
United States, trade-marks may be patented.”*—In the case
of Marshall v. Ro88.4 in 1869, it was held that the use of the
word “patent” as part of the description in a label or trade-
mark of goods not protected by a patent, is not such a mis-
representation as to deprive the owner of his right to be
protected against an infringement of his label, where the goods
have from the usage of many years acquired the designation
in the trade generally of patent. Sir W. M. James, W. C.,
said that he could grant the plaintiff the relief which justice
requires without interfering with the decision of the House
of Lords in the Leather Cloth Company's case, above cited;
for the word “patent” may be used in such a way as not to
deceive the public. For instance, he said, the term “patent-
leather boots” is in constant use; but no one supposes that
it is thereby intended to convey the impression that the
leather is protected by any patent. In this case, it was shown
that the term “patent thread” had been used in the trade
for many years past, and was the name by which thread of
a certain class is known by manufacturers, and in the trade.
It had in fact, he said, become a word of art.
1 Seton, 4th ed. 238.
* Insurance Oil Tank Co. v. Scott, 33 La. Ann. 946.
* Cooley on Torts, p. 361, note.
* L. R. 8 Eq. 651; 39 L. J. Ch. 225; 21 L. T. (N. s.) 260; 17 W. R. 1086.
§ 74.] PROTECTION OF TRADE-MARK PROPERTY. 89
§ 73. The case of Edelsten v. Vick, in the High Court of
Chancery, in 1853, is as follows. T. took out letters patent,
which expired in 1844, for the manufacture of solid-headed
pins, and carried on the business under the firm of T. & Co.
till 1838. In such business T. used particolored labels, in pink
and green, in which the pins were described as “Patent Pins,
exclusively manufactured by T. & Co.,” and had engraved
platés and blocks for striking off said labels. In 1838, T.
assigned to S. the letters patent, together with his business
and good-will, and the right to use the plates, labels, &c., and
the name of “T. & Co.” In 1839, S. became bankrupt. His
assignees carried on the trade till 1841, when they assigned
the business, patent, plates, labels, &c., with the right to use
the name of “T. & Co.,” to Edelsten, the plaintiff, who con-
tinued the business and the use of the labels. In 1853,
Edelsten discovered that Vick, the defendant, was using
labels like those of the plaintiff. Held, first, That Edelsten
was entitled to restrain such palpable imitation. Secondly,
That Edelsten was not disentitled to sue by reason of the
representation on his label being no longer accurate, although
the pins were not still protected by patent, nor manufactured
strictly according to the patent, nor exclusively or at all by
T., who had long since retired. Thirdly, That Vick was not
to be precluded altogether from representing that his pins
were manufactured according to T.’s (expired) patent, but
he was not to do so in a manner liable to mislead."
§ 74. Argument is not necessary to persuade any thinking
person of the necessity that exists for the protecting instru-
mentalities of the law. In olden times in England, the
trade guilds and corporate bodies looked especially to the
maintenance of a high character of workmanship on broad-
cloths, cutlery, hardwares, and other principal manufactures.
The penal law of that country is severe upon the reprobates
who turn the lawful guard of defence into the weapon of
the robber, by simulating the marks that commerce uses as a
safeguard. The Crown has its distinguishing broad arrow for
some kinds of property, and its yellow thread in cordage; and
1 18 Jur, 7.
90 Law of TRADE Marks. [$ 74.
the possession of either kind by a private individual is pre-
sumptive evidence of felony, as much as the possession of
false dies or tools for eounterfeiting the currency. Our own
government finds it necessary by similar stringent measures
to protect its own peculiar marks, as, for example, in the
matter of the various-colored threads scattered through the
fibre of the paper on which the national securities are printed.
Nearly all nations have observed the absolute necessity of
severe penal laws to the same end; while not a few have
adopted the same rules as ours in regard to the fraudulent
invasion of private rights. The more flourishing becomes
commerce, the more general are piracies of this kind. While
we may reasonably infer from circumstances that no ancient
nation was exempt from such roguery, we have indubitable
evidence that all nations of our own times are wonderfully
enterprising in this respect. Almost all articles of merchan-
dise possessing a high reputation in Europe are extensively
imported into the United States. Their excellences and ready
sale excite the cupidity of the fraudulent dealer; and there-
fore Heidsieck champagne, other wines and brandies, Piesse's
and Lubin's extracts, and all the various descriptions of toilet
articles, Rodgers's cutlery, Worcestershire sauce, Burton ales,
Irish linen, French silks, Scotch shawls, in short, the innu-
merable other articles of luxury or of necessity, are imitated,
falsely marked, and sold. These frauds are committed under
the very eyes of the honest manufacturer, and carried out
with so much satanic skill as to elude any but the most vigi-
lant search. Our country has probably been the greatest
victim. Even fabrics in which our workshops excel have
been brought from Belgium, France, Switzerland, and put
into competition with the genuine goods. The reputation of
American watches has brought an avalanche of miserable
imitations from Geneva, till Congress has been compelled to
pass a statute expressly for the purpose of interposing a bar-
rier against them." The Germans imitate the Irish marks on
linen; the French, the English marks on ales, cutlery, &c.;
the English, the French marks on wines. No nation can
ſº -
1 Act of March 3, 1871.
$ 76.] PROTECTION OF TRADE-MARK PROPERTY. 91
claim precedence of any other in such illicit competition, so
far as means allow. In the Supreme Court of Calcutta, in
1854, the native defendant was shown to have pirated the
English trade-marks on gray shirtings of an inferior quality.
That case developed the fact that such imitations had been
carried to a considerable extent. We are told that it was the
custom at Worcester, England, to copy a great variety of
Chinese and Japanese patterns on porcelain, and with such
good effect that the copies were frequently mistaken for origi-
mals. The marks were simulated exactly.”
§ 75. M. Jobard, nearly twoscore years ago, expressed his
sorrow that the Revolution in France in 1793 had broken
down the law of obligatory marks, that honorable source of
confidence and of commercial prosperity, which lost to France
all the openings of the Orient. The Levantines, habituated
for centuries to the sincerity of the marks guaranteed by the
arms of the city of Nîmes, Avignon, Lyons, &c., with horror
observed the inroads of counterfeiters. The Turkish mer-
chants, no longer confiding in the honor of the French, them-
selves repaired to Marseilles, Beaucaire, and Lyons. But they
were cheated as easily near by as afar off; several of the
principal ones having paid at Lyons for golden fabrics (by
order of the Grand Seigneur) unwittingly delivered brass to
him. He beheaded them. Thus much for implicit faith in
trade-marks.”
$ 76. We may instance the injury done to national confi-
dence by false coinage, the simulation of the mark of the
sovereign. Private coinage is not allowed. Coin is intrin-
sically worth nothing, or next to nothing, beyond its weight
of gold or silver, in mass, which is generally much short of its
value as a legal tender, as, for example, the standard United
States silver dollar of 412% grains, the gold value of which
in 1885 is 86.18 cents. The public faith is a sufficient
guaranty of the genuineness of a coin. Counterfeit coins are
almost always of inferior composition and value, and are fab-
1 Leech v. Doorgachurn Seal et al., Journal Soc. Arts, vol. vii. p. 271.
* Binns's Century of Potting in Worcester (London, 1865), p. 93.
* Organon, etc. --
92 LAW OF TRADE-MARKS. [$ 77.
ricated for the purpose of imposing them upon the public as
genuine, and gaining the difference of values. And yet it is
possible that the public may be deceived, and at the same time
not injured. This may be illustrated by a case which occurred
in Tunis in 1828. A coinage of new piasters was effected un-
der the direction of the Bey, and on account of his government,
the sovereign reaping the enormous profit of more than forty
per cent. Piasters of a similar impression, weight, and value
were fabricated in Europe, and found their way to Tunis,
where they entered into the circulation, and procured for their
makers a division of the spoils. Still the piracy was no less
in law, even had the counterfeiters furnished a superior coin;
the rule being that the public may not be deceived, even for
its own benefit. Not many years ago, the base silver money
of Hayti was imitated by artisans in this country, upon simi-
lar speculative ideas." It may also be remembered that, dur-
ing our late civil war of the rebellion, the worthless notes of
the Confederate States were imitated by lithographers and
printers in the North, and, being more artistically executed
than were the genuine, were all the more greedily sought for.
Yet the man who sold a cow for a pretty-looking counterfeit
note was declared in law to be cheated, even although the
genuine note was doomed never to be redeemed; for his con-
tract was for a genuine promise to pay. The cases fairly
illustrate the principle of trade-marks, so far as the obligation
exists to deliver to the purchaser the thing bargained for,
whatever its intrinsic value.
§ 77. None of the actors in the following case would
have had any standing in court, as applicants for protection.
Years ago, the wine-growers of Mont Rachet and of Chablis
heard that monks in Bordeaux were exporting white wine
to Turkey, under the name of mineral water. So thrifty an
example was not to be despised ; so white wine from Bur-
gundy was sent to the Turks under the same disguise, and
was declared by the consignees as well as by the exporters
to be as good mineral water as that of Bordeaux. Here was
a case of competition in business by unfair means. Suppose
1 Eckfeldt and Du Bois, Manual of Coins and Bullion.
§ 79.] PROTECTION OF TRADE-MARK PROPERTY. 93
that the pious fathers of Bordeaux had prosecuted their
rivals in trade for the imitation of their mark, to wit, the
meaningless arbitrary symbol “Mineral Water,” could a suit
have been maintained 2 No. But nobody was deceived ?
True; but the business was immoral. Immoral to sell wine?
No ; but immoral to sell to Turks, because their religion for-
bids them to drink it. - -
§ 78. Manufacture and Commerce are, it is plain to per-
ceive, twin sisters. As they began life together, so in the
race do they keep side by side. The plastic hand of the
cunning workman moulds and fashions and shapes; while
the merchant, scattering his products afar in all directions,
by barter receives from afar the products of other countries.
All the world should be enabled to test the genuineness of
goods by the mark placed upon them. When the distin-
guishing symbol is once published, it should be susceptible of
being read as easily as the child or the dog, by intuition or by
instinct, reads the marks that nature has legibly written on
the countenance of man. The first glance of the eye decides.
This is a rule in connection with trade-marks. -
§ 79. How shall we judge a Mark 3 — We must learn some-
thing of its peculiar nature; for it is not every heterogeneous
assemblage of objects that comes within the category of trade-
marks; nor every Protean representation, that may be one
thing to-day, another to-morrow. We must apply a touch-
stone to anything claiming to be the symbol of trade. We
must learn to discern the true from the false, – i. e. the one
having the true essence from that which has but a faint
semblance of reality. We need not err. There are certain
tests. But this leads us to another chapter, which treats of
the nature of the thing.
94
LAW OF TRADE-MARKS, [$80.
CHAPTER III.
DEFINITION AND NATURE OF A TRADE-MARK,
§ 80.
§ 81.
§ 82.
§ 83.
$84.
$ 85.
§ 86.
§ 87.
§ 88.
§ 89.
Necessity for definition.
Trade-mark distinguished from its analogues.
A clear conception must exist.
Label, advertisement, sign of inn, not trade-marks.
Convenience of statutory definition.
Marque de Fabrique et de Commerce.
Right to mark founded in immutable law.
Of what trade-mark may consist.
Mark is emblem of owner.
Mark to be valid must be well defined.
§ 89 a. Word-symbols as trade-marks.
$89 b. Mere form of commodity not mark.
§ 89 c.
Seeming contrary decisions reconciled.
§ 89 d. General type of objects not appropriable.
§ 90.
§ 91.
§ 92.
Trade-mark confounded with its analogues.
Trade-name distinguished from trade-mark.
“What-Cheer House” case.
§ 93, 94. “A C A* case.
§ 95.
§ 96.
§ 97.
§ 98.
§ 99.
§ 100.
§ 101.
§ 102.
§ 103.
§ 104.
§ 105.
§ 106.
§ 107.
§ 108.
§ 109.
§ 110.
§ 111.
§ 112.
§ 113.
§ 114.
§ 115.
“Irving House” case.
Name of hotel not a trade-mark.
“McCardel House” case.
“Howe's Bakery” case.
Howe's name not a trade-mark.
“Antiquarian Book Store” case.
Name of hotel and trade-mark not convertible terms.
British “Merchandise Marks Act,”—definitions.
Is name of newspaper a trade-mark?
“National Advocate” case.
“New Era, ’’ case.
“Porter's Spirit of the Times” case.
“National Police Gazette” case.
“La Cronica ’case.
Copyrights and trade-marks distinguished.
Name of newspaper discussed.
Meaning of design-patent.
Trade-mark, copyright, and patent, —little analogy between.
Patented design may be adopted as mark.
Judicial opinion as to newspaper name.
Name of newspaper a trade-mark.
$ 82.] DEFINITION AND NATURE OF A TRADE-MARK. 95
§ 116. Trade-marks on books.
§ 117. Books regarded as merchandise.
§ 118. Title of book as a trade-mark.
§ 119–125. “Yankee” soap case.
§ 126–128. Leather Cloth case discussed.
§ 129. No abstract right in a symbol.
§ 180. A trade-mark one's commercial signature.
§ 181. Generic terms to be avoided.
§ 132. Why labels are evidence.
§ 133. Matters not sufficiently arbitrary.
§ 134. Generic names not valid marks.
§ 135. Valid trade-marks may suggest quality.
§ 136. Line of demarcation not easily drawn.
§ 137. Style or peculiarity of package not mark per se.
§ 138. Misconceptions as to nature of symbolism.
§ 139–142. What is merchandise q
§ 143. Essential characteristics of trade-mark.
$80. A DEFINITION of the term trade-mark is requisite, in
order that we may know exactly what we are discussing. This
definition is not without difficulty. To arrive at certainty
therein, we must examine the laws and the judicial decisions
of various countries, whose jurisprudence on this subject is
harmonious with that of our own tribunals. Indeed, this
species of property cannot advantageously be considered sim-
ply in its relationship to a locality; but it must be viewed in
connection with affinitive subjects embraced by the all-pervad-
ing spirit of commerce. Names sometimes deceive. The
difficulty of defining this thing called a trade-mark has been
recognized by the ablest minds.
§ 81. We must seek the differential quality by which a
trade-mark is discriminated from its analogues, or we shall'
find our ideas tripped up by the improper use of names.
Nomenclature does not consist in the mere naming of tools,
but is the expression of distinctions which convey in a sin-
gle word the nature of the thing meant. When we use the
terms trade-mark, label, sign, envelope, design, &c., we men-
tion things which are analogues of one another, and are not
similar in their natures.
$ 82. The exposition of the comprehension of a notion is
called its definition, says Sir William Hamilton." For exam-
1 Logic, Lect. VIII.
96 LAW OF TRADE-MARKS. [$ 82.
ple, the concepts man, horse, dog, &c., are contained under the
general concept animal; and the concepts triangle, square,
circle, rhombus, rhomboid, &c., are contained under the general
concept figure (concept and notion being convertible terms).
The same clear thinker says that conception, the act of which
concept is the result, expresses the act of comprehending or
grasping up into unity the various qualities by which an object
is characterized. It has been for lack of a clear conception of
the natures of the things which they had occasion to discuss
or comment upon, that at times judges, essayists, and reporters
have misused terms, and named one thing when they meant
another. The uninitiated are misled by the wrongful use of
terms; and find to their sorrow, in court, that what they sup-
posed were veritable trade-marks are mere labels or adver-
tisements, not within the pale of the law's protection. The
opinions abounding with fallacious obiter dicta remind one of
the illustration used by Sir William Hamilton: “In countries
where bank-notes have not superseded the use of the precious
metals, large payments are made in bags of money, purporting
to contain a certain number of a certain denomination of coin, ©
or at least a certain amount in value. Now these bags are
often sealed up, and passed from one person to another, with-
out the tedious process, at each transference, of counting out
their contents, and this upon the faith that, if examined, they
will be found actually to contain the number of pieces for
which they are marked, and for which they pass current.”
Still the door is open to error and fraud. In the same way,
we too frequently accept the loose sayings of a judge for law,
because they bear the judicial impress; but when, from abun-
dant caution, we open and examine the bag purporting to
contain pure gold, we find but withered leaves. In no unkind
spirit, we scan words that should be fortresses of thought,
and find a heap of chaff. No one has a right to complain
of our attempt to separate the chaff from the wheat. Locke
tells us, in speaking “Of the Abuse of Words,” that some
take so little care to lay by words, which in their primary no-
tation have scarce any clear and distinct ideas which they are
* Logic, Lect. X.
$83.] DEFINITION AND NATURE OF A TRADE-MARK. 97
annexed to, that by an unpardonable negligence they famil-
iarly use words which the propriety of language has fixed to
very important ideas, without any distinct meaning at all.
Men having been accustomed from their cradles to learn words
which are easily got and retained, before they knew or had
framed the complex ideas to which they were annexed, or
which were to be found in the things they were thought to
stand for, they usually continue to do so all their lives; and,
without taking the pains necessary to settle in their minds
determined ideas, they use their words for such unsteady and
confused notions as they have, contenting themselves with the
same words other people use, as if their very sound necessarily
carried with it constantly the same meaning.
§ 83. Thus, a careless speaker applies the term trade-mark
to a mere label, although such mere label is not protected by
law, unless by some local statute; * or to a mere advertise-
ment; * or to the good-will of a shop; * or to the sign of an
inn or hotel.” It is true that we may read and analyze for
ourselves; and it is quite as true that we accept the phrase-
ology of a judge on trust. The universality of a term, says
Watts, in his book on Logic, is many times restrained by the
particular time, place, circumstance, &c., or the design of the
speaker; as when it is said in the Gospel that “all men did
marvel,” it reaches to only those men who heard of the mira-
cles of our Saviour. By a careful perusal of a case, we may
generally ascertain the import of the language of a judge while
he is attempting to expound the law ; but, unfortunately, we
find that he is sometimes completely in the mist. “The one
exclusive sign,” says Aristotle, “that a man is thoroughly
cognizant of anything, is that he is able to teach it.” We
may, therefore, conclude that, if a judge cannot convey to
the mind of another person an intelligent idea of his mean-
ing, he must himself be deficient in the understanding of
his subject. We require a definition, and that definition the
1 Falkinburg v. Lucy, 35 Cal. 52.
2 Leather Co. case, 11 Jur. (N. s.) 513.
8 Howe v. Searing, 10 Abb. Pr. R. 264; 6 Bos. 354; and 19 How. Pr. R. 19.
4 Howard v. Henriques, 3 Sand. S. C. 725.
7
98 LAW OF TRADE-MARKS. [$ 85.
analysis of a complex concept into its component parts or
attributes.
$84. A definition is a brief enunciation of the law govern-
ing a particular subject, or branch of a subject, known by a
particular name. Thus, the law of contracts is, in outline,
stated in the definition of the word contract. Out of an accu-
rate definition can be drawn a vast amount of law. But, in
the nature of legal things, a definition can never be established
by adjudication. The absolute truth of this proposition ap-
pears when we consider that the object of every lawsuit is, so
far as the law of the case is concerned, to determine the rights
of the parties as growing out of certain facts admitted or
proved. But facts, as shown in courts of justice, are just as
variant in nature from a definition as is a triangle from an
emanation of the mind. There is no concord or harmony be-
tween the one and the other. Yet, although a court cannot
adjudge a definition to be so and so, it may, in assigning
reasons for its judgment, take into the account the idea of the
true principle of a definition. In other words, the judge, in
giving the opinion of himself and his associates upon the law
as applied to the facts, may state what he and they deem the
true definition to be. But this statement is a mere dictum ;
it creates no law; it is of no higher authority than are similar
statements made by text-writers; and indeed it is not so likely
to be found correct as is theirs." In his treatise on trade-
marks, Lloyd" states his opinion that there would be much
convenience in having a statutory definition of a trade-mark,
which should distinguish, as was done by the old French law,
between the marques de fabrique, or trade-marks properly
so called, consisting of a stamp affixed to or incorporated
with a manufactured article, and the use of a name, label,
sign-board, or placard, and all those less permanent marks
of distinction which are used in trade; and again separating
from them all cases which involve literary or industrial
property.
$ 85. The French have probably given this subject as keen
and thoughtful a scrutiny as any jurists in the world; and yet,
1 Bishop's First Book of the Law, §§ 261, 262. * 2d ed., p. 33.
$ 85.] DEFINITION AND NATURE OF A TRADE-MARK. 99
in the report of the commission to examine the project which
crystallized into their legislative act of the 23d of June, 1857,
it is said: “In what do marks consist? The plan of the law,
avoiding the peril of a definition, and leaving to doctrine and
to jurisprudence the task of defining, has remained mute in
this respect.” The Council of State concurred in this idea
of the impolicy of attempting an exact enunciation of the ele-
ments which constitute this thing, and said: “The mark is
any sign serving to distinguish the products of a manufacturer,
or the objects of commerce, and the law cannot enumerate the
signs.” The Court of Paris, in 1859, calls it the character-
istic sign by means of which commerce distinguishes the pro-
ducts of one's manufacture, or the objects of his commerce."
By resorting to what was until lately the general language
of diplomacy, — the French, – and which is a safe guide to
the meaning of all leading nations when speaking upon this
subject, we find that the trade-mark of English-speaking
countries is the same thing as the marque de fabrique et de
commerce of Continental Europe. This is placed beyond all
question by the “Code International de la Propriété Indus-
trielle,” &c., by MM. Pataille and Huguet (Paris, 1855), and
the Appendix thereto (1865), by the former eminent jurist.
Our term is so translated, and so its synonym in the English
“Merchandise Marks Act ’’ of 1862. All treaties and con-
ventions of commerce agree in this respect. The uniformity
of expression proves that the same thing is understood by all
alike; and that in the minds of statesmen and jurists there is
no doubt as to what is meant by the general comprehensive
term trade-mark. As corroborating instances of this preva-
lent understanding, see our treaty with Russia,” where the
phrase “trade-marks affixed to merchandise” is rendered in
the counterpart des marques de fabrique apposées dans l'autre
sur certaines marchandises ; and see, also, our conventions
with Belgium 8 and France.* The German term Fabrikzeichen
is translated into the same words in French.” We find a
1 Lalande et Liot v. Appel et al., 5 Annales, 248.
2 Jan. 27, 1868. 8 Dec. 20, 1868. 4 April 16, 1869.
* Technologisches Wörterbuch, in three languages. Paris, 1855.
100 LAW OF TRADE-MARKS. [$ 87.
more comprehensive definition of the term mark of trade, in
German."
$ 86. This perfect agreement leads to the inevitable con-
clusion that a trade-mark is not a new kind of creature; and
that its meaning, purpose, and value are well known to all
manufacturing and commercial peoples, and that it requires no
definition in a treaty, every word of which is subjected before
ratification to the most rigid scrutiny. The manifest object of
the many national compacts was reciprocity of protection, and
not to give vitality to the thing. When we come fully to
consider the subject, it will be amply demonstrated that, as
much as any other species of property, a right to a distinctive
mark of authenticity has its foundation in immutable law; and
we shall perceive that any arbitrary law—as a treaty, a con-
vention, or a statute — cannot be a parent of this ideographic
sign. The right pre-existed: a compact only recognizes that
right, and opens the door to a remedy for encroachment
thereon.
$ 87. Of what a Trade-Mark may consist. — The mark may
consist in the name of the owner, whether manufacturer or
vendor of the merchandise (provided it be written, printed,
branded, or stamped in a mode peculiar to itself); in a seal,
a letter, a cipher, a monogram, or any other sign or symbol
that can serve to distinguish the products of one man from
those of another. It may be any symbol or emblem, however
unmeaning in itself, as a cross, a bird, a quadruped, a castle,
a star, a comet, a sun ; or it may, and frequently does, con-
sist of a combination of various objects, copied from nature,
art, or fancy; and if such symbol or emblem comes by use to
be recognized in trade as the mark of the goods of a particular
person, no other trader has a right to affix it to goods of a .
similar description.” It may be adhesive or non-adhesive. It
1 “Unter den Waarenbezeichnungen (Fabrikzeichen, Marken) werden die-
jenigen Zeichen verstanden, welche dazu bestimmt sind, die in den Handel
gebrachten Erzeugnisse als von einem bestimmten Urheber oder Zwischenhän-
dler herrührend zu bezeichnen.” Klostermann on Trade-Marks, &c., Berlin,
1869.
2 The British Trade-Marks Act of 1883, sect. 64, says: “A name of an indi-
vidual or firm printed, impressed, or woven in some particular and distinctive
§ 89.] DEFINITION AND NATURE OF A TRADE-MARK. 101
may be put inside of the article, or on the outside. It may
be written, printed, stamped, painted, stencilled, branded, or
otherwise, and either on the article itself, or on its case,
covering, envelope, or wrapper."
$ 88. We must not be misled by a sweeping definition.”
We must judiciously compare, reason, generalize. Mere words
may deceive. The physiology of the thing called a trade-
mark must be examined and carefully analyzed. It has an
individuality of nature. Meaningless in itself, when placed
in a certain juxtaposition it involves an idea, as the digit 9
does not represent the word nine, but the idea itself of the
number. It is the legitimate hieroglyph. It is the emblem
of a man; and it virtually says that the vendible object
to which it is attached is the workmanship, or the selected
article, of the owner of the mark. It is intended to strike
the eye by its clearly defined character, and sometimes the
ear by its sound when spoken of, and thus excite inquiry; and
for this reason it must be peculiar in form, although possibly
not susceptible of utterance in sound.
§ 89. To be a valid Trade-Mark a Symbol must be well de-
fined and certain. — We may readily understand why a non-
descript vignette, a grouping of flowers and fruits, an elaborate
landscape having no striking features, or a mere advertisement,
or common print of a man's name, should not be regarded as
manner; or a written signature or copy of a written signature of the individual
or firm applying for registration thereof as a trade-mark.”
1 “A distinctive device, mark, brand, heading, label, ticket, or fancy word or
words not in common use.” Ibid. See also $102, infra.
The Trade-Mark law of the German Empire, of Nov. 30, 1874, does not at-
tempt an elaborate definition; but it expressly excludes from registration such
marks as consist exclusively of figures, numerals, letters, or words, or which
contain a public escutcheon or any device tending to cause scandal or offence.
The French law of June 23, 1857, says: “Sont considérés commes marques
de fabrique et de commerce les noms sous une forme distinctive, les dénomina-
tions, emblemes, empreintes, timbres, cachets, vignettes, reliefs, lettres, chiffres,
enveloppes, et tous autres signes servant a distinguer les produits d’une fabrique
ou les objets d'un commerce.” g
* Standard authorities sometimes make a slip. For example, Webster's
Unabr. Dict., ed. of 1883, has the definition of “Reproduction. The act or pro-
cess of reproducing; as, the reproduction of plants or animals from cuttings or
slips.” See also note to § 1.
102 LAW OF TRADE-MARKS. [$ 89.
the distinctive mark that the law of commerce requires. It
should possess such salient features as might at once arrest
attention, and put the intended purchaser on the alert. If
such an undefined object could possibly be regarded as a valid
trade-mark, what would be, the consequences? There would
be neither protection for the owner nor guaranty for the
buyer; for any other combination of flowers and fruits, of
houses and trees, having the same pictorial effect, might be
mistaken for it. There are, however, arbitrary symbols that
require more than a single glance to have their true charac-
ter understood. It may be that purchasers are required to
be specially instructed as to intent and signification ; but
when once explained in connection with certain merchandise
they become reliable exponents. Examples will appear in
other parts of this work; but, for present illustrations, the
following instances, which have all been approved as valid
trade-marks, may be cited. — Exporters of cotton cloths to
Turkey and the Levant affixed to their cloths a certain head-
ing, consisting of different-colored threads in combination." —
A selvage and a single thread in a woven fabric. It was held
that by their color, their disposition, and the places occupied,
they became a distinctive sign, especially when their distinc-
tive character resulted principally from contrast with the
color of the product to which they were attached.”—So of a
simple Selvage or edging composed of one of several threads
woven into the top or border of a stuff.”— A simple band of
gilt paper rolled around the lower part of a wax candle.*—
Inscriptions and emblems, notably medals, in relief in the
glass of a flask, when the arrangement is original.”— A star,
printed on a colored card by itself.”— A hidden mark on the
part of a cork that is inserted in the bottle." — The union of
1 Harter v. Souvazoglu, W.N. 1875, p. 11; L. J. Notes of Cas., 1875, p. 20;
W. N. 1875, p. 101.
? Ph. Vrau & Co. v. Pouillier-Loughaye et al., 26 Annales, 92.
8 Cuillieron-Policard v. Gadobert, 21 Id. 62.
* Cusimberche v. Debard et al., 27 Id. 304.
* Robert v. Grandjean, 28 Id. 145.
* Lelarge v. Brossom, Journ. du Palais, 1840.
7 Ministère Pub. v. Bernard, Id., 1845.
$89.] DEFINITION AND NATURE OF A TRADE-MARK. 103
divers embléms that had previously become publici juris.
The highest court in France, in 1875, held that, the instant the
union became of a nature to indicate a product in a distinctive
and characteristic manner, it became a valid trade-mark."—
A peculiarly formed stick, in two pieces fitted together, with
the ends of an octagonal shape, upon which carpet was rolled.”
— A perfectly formed metallic bell of the height of about an
inch, with clapper, a miniature of the great bell at Moscow,
and used to be hung by a ribbon to the neck of a bottle
containing champagne wine entitled “Bell of Moscow,” was
rejected by the Trade-Mark Examiner. On appeal to the
Commissioner, on authority of the carpet-stick case, registra-
tion was allowed.” Very recently, a novel style of symbolism
has favorably been considered by the Patent Office, as pos-
sessing all the essential characteristics of a trade-mark. This
species of symbolism is of an ancillary nature, being the
groundwork upon which is laid another and distinct trade-
mark, and the matter is printed on a wrapper for bars of
soap. It was found to be necessary to protection, that the
general aspect of the wrapper of a cake of soap should be
strictly defined and guarded. One configuration for a wrapper
is thus described: “Within a parallelogram, with a triple-
ruled border, is a mosaic tessellation, the same being an ag-
gregation of uniform squares, separated from one another by
straight lines. Every one of said squares contains four sepa-
rate triangular figures formed by continuous straight lines,
bent so as to form two acute angles and one right angle, yet
separate, so as to leave a space between them, thus forming
a diagonal cross. Laid upon, and extending across, said paral-
lelogram, is another and smaller parallelogram narrower in
proportion.”*— Another for a groundwork has a represen-
tation of clover leaves, the greater number of which are four-
1 Fox v. Meurgey et al., 20 Annales, 213.
* Lowell Manuf. Co. v. Larned, in 1873, Codd. Dig. 341; Cox's Man., Case
428. In a note to this case, Mr. Cox expresses his opinion that the said stick
was a perfectly good trade-mark. Certainly the device is sui generis.
* Re Charles Narcisse Farre, cert. No. 8,939.
* Re Procter & Gamble, cert. No. 11,927, dated Feb. 10, 1885.
104 LAW OF TRADE-MARKS. [$ 89 a.
leafed." Another has a complex groundwork, formed by a
multiplication of fine curved lines spreading, from a point, in
every one of a great number of connected somewhat irregular
figures, forming a neutral tint. Interspersed are circular de-
vices, all similar and bearing the representation of a half-
moon.”— There are many others of the same owners that
are just as peculiar. The designs are novel, and require an
inspection of the fac-similes to understand the verbal de-
scription. -
§ 89 a. Word-Symbols 8 as. Trade-Marks. – A combination
of words, or a single word, or a collocation of letters of the
alphabet not recognized as a word, if non-descriptive of the
vendible commodity to which the same is affixed, may be a
trade-mark. When so used, words cease to be mere words,
and become denominations of fancy. The arbitrary use of a
word, a compound phrase, or letters in a certain juxtaposition
or arrangement, indicates that the thing is a technical trade-
mark. But there is sometimes a conflict of laws in regard, to
word-symbols; and strange contradictions arise in respect to
judicial protection for them. It is possible that a right may
exist, and yet protection therefor be in abeyance. Thus, in
Great Britain, under the trade-mark act of 1875, a word was
not entitled to recognition as a trade-mark unless it had pre-
* Same firm, cert. No. 11,959, dated Feb. 17, 1885.
* Same firm, cert. No. 11,962, dated Feb. 17, 1885.
* The author of this treatise coined the expression “word symbol,” because
Some new definite term seemed to be necessary. The convenience of the term
is recognized in the Patent Office and in practice. “Word” is equivocal; for
a word may be merely a vocal sound or a combination of vocal sounds; or a
talk, discourse, or language; or it may be a written or printed character. If
written or printed, a word may be spelled in several ways. Thus Anotto may
be spelled in five ways, Carbineer in four ways, Gantlet and Palette each in three
ways. (See Webster's Unabr. Dict, ed. 1883, Orthography, pp. lxviii.-lxxi.)
The assemblage of letters may be substantially the same, yet be varied to eye
and ear. A symbol is a sign by which one knows or infers a thing. It is
positive, invariable. A word-symbol is therefore understood to mean precisely
this ; a combination and arrangement of letters that remain in the same rela-
tive position, a definite character addressed to the eye. Why not employ the
simple noun “word”? Because it has been deprived of its proper office; or,
indeed, the emblem formed of letters may not be a recognized word at all,
or it may be a word distorted out of all natural shape. See §§ 38, 68, 192,
and Index, for examples.
§ 89 a.] DEFINITION AND NATURE OF A TRADE-MARK. 105
viously been in use as such, so that there might be protection
for one man's fancy name when another's would be refused,
because he adopted it a day too late. Under the act that
went into operation at the beginning of 1884, arbitrary words
may be valid marks. – So in France, as well as in this coun-
try. But the legislation of some countries positively excludes
them from protection. For example, the law of Novem-
ber 30, 1874, of the German Empire, refuses registration to
such marks as consist exclusively of words. – An interna-
tional convention for the formation of a Union for the Pro-
tection of Industrial Property was held on March 20, 1883.
Many nations have already acceded to the terms of the con-
vention. Article 6 thereof reads thus: “Every mark of
manufacture or of commerce, regularly registered in the coun-
try of origin, shall be admitted to registration and protection
in all the other countries of the Union.” In his circular of
August 26, 1884, M. Ch. Herisson, Minister of Commerce,
properly says: “The legislation of divers nations does not
admit as trade-marks certain signs, certain emblems. As
to those concerning the states of the Union, the marks of
French manufacture and commerce shall be admitted to regis-
tration, as they shall have been registered in France.”” It is
intended that all the principal countries shall accede to the
terms of the convention, just as they have in regard to pos-
tal matters. This strange state of affairs may be possible.
An Englishman or a Frenchman may be entitled to registra-
tion and protection of his word-symbol in a foreign country,
when a citizen of that country would be excluded by local
legislation. But, for the purposes of this discussion, arbitrary
words shall be regarded as entitled to plenary protection.”
In the adoption of a word, or of words, it is not for the adopter
to determine its technical validity. That is a judicial ques-
tion. Yet it is not difficult to reason from authorized rulings.
The word “Swing ” for a socket of a scythe-snath was
1 29 Annales, 289 et seq.
2 The United States has thus far declined to join the Union, – although
represented at the convention, —for the reason that trade-marks had become
complicated with patents.
106 - LAW OF TRADE-MARKS. [$89 b.
decided not to be sufficiently arbitrary.” So of “Masonic.””
“Snowflake ’’ was held not to be a valid trade-mark for bread
or crackers, because, said the court, “In the common or
ordinary sense it is understood to be descriptive of whiteness,
lightness, and purity.”* The words “Homoeopathic Medi-
cines” were held not to be arbitrary.” “Albany Beef,”
(slang term for sturgeon) was rejected.” So was “Crys-
talline” for artificial stones or brilliants.” “Nappes de Fa-
mille’” (family table-cloths, &c.), applied to all cloths of a
certain dimension, of whatever material, could not be exclu-
sively appropriated. Words in ordinary and common use,
such as “Charity” or “Faith,” are not susceptible of ap-
propriation as a title or designation for a book, or a play,
to treat or symbolize the virtues.”
$89 b. The mere Form of a vendible Commodity not a Trade-
Mark.”—A demonstration of this doctrine should hardly be
necessary; but it is not always remembered that the mark
is merely the authenticating sign or emblem. The following
are illustrations of misconceptions in this regard. In the
year 1844, the Tribunal of Commerce of Morlaix emphasized
this rule.” In that instance, the plaintiff claimed the form of
the article of commerce — a pipe — as a trade-mark, but his
claim was rejected. In 1865, the Court of Paris held that the
cylindrical shape of a package of cigarette-paper was not a
trade-mark.” In the last-named court, in 1870," the plain-
tiff, as assignee of one Gibbs, of a mechanical patent and
also an alleged trade-mark, claimed as a technical trade-mark
1 Re Thompson, Derby, & Co., 16 Off. Gaz. 137.
* Re Smith, Ibid. 764. -
* Larrabee v. Lewis, 67 Ga. 561 ; 44 Am. R. 735. (A questionable ruling.)
* Humphrey’s Specific Homoeopathic Medicine Co. v. Wenz, 14 Fed. R. 250.
* Re Ams, 24 Off. Gaz. 344. 6 Re Kipling, Ibid. 899.
* Chicot & Co. v. Vespierre & Rozé, 25 Annales, 162.
* Isaacs v. Daly, 39 N. Y. Superior Ct. 511.
* See § 137, infra: “The style or peculiarity of package is not per se a
trade-mark.” ; -
19 Fiolet v. Duval, Traité de la Contrefaçon, by Etienne Blanc, 763; Huard,
Marques de Fabrique, 19.
11 Prudhon v. Villaret, 11 Annales, 443.
* Willcox v. Aubineau et al., 17 Annales 31.
$89 b.] DEFINITION AND NATURE OF A TRADE-MARK. 107
the form “G,” of his sewing-machine arm. In 1867, the
plaintiff had registered in France two alleged trade-marks,
one the form “G” of the machine and the other the letter
“G” embodied therein, and affixed thereto. On appeal the
court said: “To accept as a trade-mark the product itself in
its particular form, without other sign borne by the product
to distinguish it, would be to exceed the intention of the
special law of the matter. Such a doctrine would not only
recognize the privilege of the inventor, but also the privilege
of the very form of the product, that, in effect, by means of
the deposit of the product under pretext of its being a mark,
the product would become the privilege of the manufacturer
to the prejudice of the liberty of trade; and, as by the regis-
tration act of 1857 the privilege of the mark is indefinitely
renewable, one might acquire thereby the perpetuity of an
indefinite privileged property in the form of the product itself,
contrary to the principles of patent law. Inasmuch as the
mark claimed by Willcox, as a distinctive sign of his sewing-
machines, is the design of the manufacture itself, and is not
an emblem or detail affixed in any manner whatsoever to the
complete machine, if the peculiar form were entitled to any
protection it was only by virtue of the patent, and, on the ex-
piration of that, the public had a right to make machines in
the form of the letter.” — The exact point has recently been
passed on in a United States Circuit Court with the same re-
sult, and probably without any intimation of the foreign de-
cision. A design-patent for the form of the letter “G” had
been granted, August 10, 1858, and its re-issue of June 10,
1867, had expired by limitation. The complainant had also,
on June 14, 1881, registered the same device in the United
States Patent Office, as a trade-mark, claiming title by user
back to 1859.” Wheeler, J., said, inter alia, that, in the patent,
the shape of the frame, the letter “G,” was particularly de-
scribed, and its advantages set forth thus: “Which not only
stamps it with a peculiar character, but is also exceedingly use-
1 Willcox & Gibbs Sewing Machine Co. v. The Gibbens Frame, 17 Fed. R.
623; 24 Off. Gaz. 1272. -
* U. S. registration certificate No. 8,356.
108 - LAW OF rºadenaars. [$89 b.
ful, as it affords the greatest possible space for the cloth or
material to be sewed of being turned and twisted under the
needle and upon the table”; and there was claimed as a part
of the patented invention “combining with the vibrating
needle-arm a frame shaped substantially like the Roman letter
G, as herein shown and described, and for the purposes set
forth.” Per Curiam : “The frames in this form were a part of
the manufacture to be identified as to source, and not an iden-
tifying mark, merely, of source, indifferent to the main feature.
All right acquired under the patents expired with them. . . .
All the effect which these frames have in representing ma-
chines to be those of the orator appears to be due to the mo-
nopoly enjoyed under the patents; and to give the orator the
benefit of the effect by calling the frame a trade-mark contin-
ues the monopoly indefinitely, when under the law it should
cease.” – In a United States Circuit Court, in 1871, Sawyer, J.,
said: “I find no case where the use of a package of peculiar
form and dimensions has been restrained, without having im-
pressed upon or connected with it some other word, symbol,
letter, or form, adopted as a trade-mark.” ” In that ease the
claim was for the peculiar form, construction, and capacity
of a barrel for whiskey.—So, in 1877, in a United States Cir-
cuit Court it was held that the complainant could not legally
enjoy the exclusive right to use a decorated tin pail as a box
for paper collars, notwithstanding the fact that he was the
first to employ it for that purpose, and had registered it as a
trade-mark.”—It was correctly held by the Patent Office, in
1875, that “galvanized iron hoops placed on a barrel of a
dark color,” as a trade-mark in respect to spirituous liquors,
could not be such, even if the applicants were the first to use
them on barrels of spirits, as they convey no distinctive idea.”
– In 1877, that Office had before it an application for the
registration of a strip of leaf-tobacco, intended to be wrapped
around the mouth-piece of a cigarette, and to vary with the
size of the cigarette, as a trade-mark. The application for
1 Moorman v. Hoge, 2 Sawyer, 78; 4 Am. L. T. 217; 6 Am. L. Rev. 865.
2 Harrington v. Libby, 12 Off. Gaz. 188.
8 Re Kane & Co., 9 Off. Gaz. 105.
§ 89 c.] DEFINITION AND NATURE OF A TRADE-MARK. 109
registration was rejected, because it was in fact adopted to
serve a mechanical purpose rather than to distinguish the appli-
cant's goods from those of others." — In an analogous case, in
1878, under an indictment for counterfeiting an alleged trade-
mark, consisting merely in the color of oil used for illuminat-
ing purposes, United States District Judge Giles doubted the
possibility of protecting such a matter as a trade-mark, although
it had been registered; and the prisoner was acquitted.”
$ 89 c. There are decisions which, at the first glance,
seem to hold that the mere form of the vendible article may
constitute a technical trade-mark. Careful analyses cannot
fail to induce the conclusion, that the principles of unfair
competition, rather than those appertaining to trade-marks,
were the bases of judgment. In the Tribunal of Commerce
of the Seine, in 1856,” it appeared that the plaintiff sold
chemical paper enclosed in a maroon-colored pasteboard roll.
Injunction and damages. – In the Court of Paris, on appeal,
in the same year,” a biscuit manufacturer had for his biscuits
four packages of white glazed paper, with a label “At the
Biscuits of the Crown’’ printed thereon in gold, with the
representations of medals at each corner, the national arms
in the centre, and at the two ends an escutcheon with the
words “à la vanille.” The defendant wrapped his biscuits
in the same kind of paper, with a label printed in gold, and
the representations of medals at each angle, with same na-
tional arms, and at the corners escutcheons with the words
“Glaces à la vanille.” No technical trade-mark had been
violated; but the court held that the form and color of the
package would be likely to cause confusion. — In the Court
of Lyons, in 1857,” the plaintiffs were manufacturers of solid
laundry-bluing in cakes in the form of sad-irons, having on
one side raised figures of women in the act of ironing, and
on the other side women washing or placing clothes on lines
to dry. The defendant made bluing in same form of sad-
1 Re Gordon, 12 Off. Gaz. 517.
* U. S. v. Rider, Dist. of Maryland (reported in newspapers).
* Poupier v. Laurençon, 2 Annales, 363.
* Gillout v. Richard, 3 Id. 123. 5 Boilley v. Jollivet, 3 Id. 253.
110 LAW OF TRADE-MARKS. [$ 89 d.
irons, bearing on one side the figure of a woman in the act of
washing or of ironing. The tribunal below had dismissed
the case because the resemblance of form and figures was not
sufficient to deceive, each package bearing the name of the
respective manufacturer, and the boxes enclosing the articles
being unlike in color and inscriptions, not being a servile imi-
tation. The appellate court reversed the decision, holding
that the marks and emblems of the plaintiff had been imi-
tated, and that the change of manufacturers' names was im-
material. It does not appear that a technical trade-mark
had been infringed. — In the Tribunal of Commerce of the
Seine, in 1858, it was held that, although the manufacture of
“l'eau de Botot” had become public property, a manufacturer
of that water had no right to use the same form of bottles and
seals as did the successor in business of Botot, the originator,
nor to sell the product as “veritable eau de Botot.” The
decision was affirmed on appeal. — In the Court of Aix, in
1872,” there was a decision that seems to go a great way in
this direction. The plaintiff's peculiar symbolism consisted
in the demi-cylindrical form of tablets for chocolate, having
six divisions with incrustations of a letter of his surname on
the flat face of every division. The court sustained the plain-
tiff's case; but it is not at all clear that the form of the pro-
duct was held to be a technical trade-mark.
$ 89 d. A General Type of objects cannot be exclusively
appropriated.—The arbitrary symbol can consist only in spe-
cific form ; and the representations must be so precise, definite,
and certain, as to exclude all reason for doubt of description.
A case in the Patent Office, in 1884,3 involved an elabo-
rate discussion of this theme. When stripped of redundant
verbiage, the claim was for a cross represented pictorially,
or by the word “Cross.” Trade-Mark Examiner Seely, in
refusing to register the case as presented, reasoned substan-
tially thus: Suppose the alleged trade-mark to consist of the
1 Barbier v. Simon, 4 Annales, 191.
* Menier v. Rochebrun, 18 Id. 29.
* Re Hamilton Disinfectant Chemical Works, Case No. 18,678, filed July 31,
1884. Affirmed on appeal, 27 Com. Dec. 342.
§ 89 d.] Dºrismon and NATURE or a trademark. 111
representation of an eagle. The species should be shown,
since, in the eye of an ordinary observer, all eagles are much
alike. It should be shown as sitting, flying, or as the spread-
eagle of American coins, or as the double-headed eagle of
Austria, etc. — The different forms of crosses, Greek, Maltese,
Latin, Egyptian, St. Andrew's, and others, are as distinct
from one another as are reciprocally the letters of the alpha-
bet. No one who has used one of the specific forms to dis-
tinguish his goods can, by his appropriation of the same,
exclude all the rest of the world from a use of any of the
other forms, any more than he could by the adoption of the
letter A exclude others from using the remainder of the alpha-
bet, from B to Z both inclusive." An attempt to include so
many undescribed forms would necessarily result in just what
the applicant should avoid, -an annihilation of all distinct-
iveness in his chosen symbol. If he has adopted a Greek or
other particular form of cross, and made it known to the
public as a distinguishing mark for his goods, every departure
from the clear, sharply outlined figure which he has already
employed must destroy its identity, and he ceases to that
extent to have a trade-mark. Purchasers accustomed to buy
goods distinguished by a peculiar well-defined mark must
distrust goods having a mark in some respects similar, but on
the whole different. It is not the same. The advantage of
the applicant is in adopting a specific form and not departing
from it. If the application were admitted, the registration
would go for naught. This is a common-sense enunciation
of the rule that a broad claim to a common emblem cannot
be allowed. — The Court of Appeals of New York, in 1876,
had this case.” The plaintiff below was a manufacturer of
refined lard, which he sold in vessels stamped with the figure
of a fat hog, his name, and “Prime Leaf Lard”: the defend-
ants began to sell a similar article in vessels stamped with
a globe, a small wild boar, their name, and “Prime Leaf
Lard.” Monell, J., in the Superior Court of the City of New
York, thought that the defendants' mark was likely to attract
1 He cited $ 588, infra, which see.
2 66 N. Y. (21 Sickels) 69; 23 Am. R. 22.
112 LAW OF TRADE-MARKS. [$ 89 d.
to itself the same name as the plaintiff's, namely “the pig
brand,” and continued an injunction previously granted. The
general term of that court dissolved the injunction, it being
shown that the pig mark had been used by various other
refiners. The court of final resort concurred in the decision
in favor of the defendants, on the ground that there was not
sufficient resemblance between the marks to be calculated to
deceive; and because it was doubtful whether the figure of
the animal from which the lard is derived was not descriptive,
and therefore incapable of being appropriated. If the plain-
tiff had prevailed, he might have appropriated to his exclusive
use all animals of that genus.-In the Court of Nîmes, in
1876, and the Court of Cassation, in 1877, a case of the same
nature came up." Held, that where it is established that,
from time immemorial, merchants of truffles had employed on
the common label, or letter-heads, a representation of a hog
seeking truffles, the vendor who adopts and registers a label
of this kind, intended to distinguish boxes of truffles put into
the market, cannot claim, in a general and absolute manner,
the mark of a hog, but only the distinctive configuration.
It is, therefore, no infringement when another uses the repre-
sentation of a hog, the peculiar design, arrangement, color, and
bordering of which so completely differ as not to cause confus -
sion in the mind of purchasers. — These two decisions held
virtually that there might have been infringement of an ar-
bitrary emblem, if the specific hog had been copied.— In the
Patent Office, in 1884,” the gist of an application for registra-
tion was as follows: “The essential feature of my trade-mark
is the red bag, and I therefore claim the use broadly of a red
bag in which pea-seed is packed for the trade.” Trade-Mark
Examiner Seely, in rejecting the claim, observed that in a
similar application, filed at the same time, a blue bag was
claimed as a trade-mark for spinach-seed. In all other re-
spects, the cases were identical, and a decision in one would
conclude the Office upon the other, and upon an entire series
1 Bonfils Frères v. Naquet et Fils, 26 Annales, 101.
* Re Oliver Landreth, Case No. 17,431. The Office cited $$271, 272, infra,
which were approved by the U. S. Cir. Ct. (S. D. of N.Y.) in Harrington v.
Libby, 12 Off. Gaz, 188.
$ 89 d.] DEFINITION AND NATURE OF A TRADE-MARK. 113
that, in event of decision in his favor, would be presented by
the same applicant, involving the right of use of bags of
different colors to distinguish various kinds of seeds from
those of other dealers. He said, further, that it was evident,
from considering more than one case, that the purpose was
to secure the exclusive use of a system of packing seeds, in
which the kind of seed should be indicated, and its origin
shown, by the color of the package only. He demonstrated
the uselessness of such a registration if it were possible, in-
asmuch as it would be in any one's power, without infringing
any so-called trade-mark, to employ a similar system, or any
number of systems, within the limits of arithmetical permu-
tation. Except as to the color of the receptacle, there was
no limitation in respect to the matter claimed as essential.
As to shape and material, they were limited to nothing, ex-
cept that the receptacle must be of some material that could
be made into a bag, — paper, silk, canvas, leather, India-
rubber, mosquito-netting, flannel, or any other textile stuff
capable of receiving color; and the bag might be of any shape
or size, as, for example, a lady's reticule or a gunny sack. He
argued further, that, as red-colored materials suitable for being
made into bags are commonly on sale and in use, there can
be no legal restriction on their use by any person, for any
lawful purpose that suits his convenience. If the law were
otherwise, other persons might appropriate other colors and
shades ad infinitum. — Appealed to the Commissioner, who,
for the reasons stated above, affirmed the decision. —In an
appeal from the trade-mark officer in England, the court held
that the symbol of a crown, or of a horse-shoe, being common
to the iron trade, could not be private marks." — In the Court
of Aix, in 1876,” it appeared in evidence that in 1862 the
plaintiff had adopted and deposited at the city of Marseilles,
as a trade-mark for soap, a device enclosing the image of the
Virgin Mary, her head crowned with an aureole and sur-
rounded with stars, and her fingers emitting rays. It had
no denomination. In 1866, the defendant, another Soap-
1 Re Barrow's Application, 5 Ch. D. 353; 46 L.J. (N. s.) Ch. 725; 25W. R. 564.
* Eydoux v. Morel, 23 Annales, 252. - -
8
114 LAW OF TRADE-MARKS. [$ 90.
manufacturer in the same city, adopted as a trade-mark for
soap a device also enclosing the image of the Virgin Mary
with a crown on her head, and the infant Jesus on her left
arm, a vine in her right hand, and with the inscription “La
Bonne Mère’’ in the margin. In 1875, the plaintiff made
a new deposit of his trade-mark of 1862, but he added
thereto the words “La Vierge,” and thereupon sued for in-
fringement. The opinion of the court commends itself by
good sense. Held: When one adopts as a trade-mark a gen-
eral type susceptible of being represented under different
figures and denominations distinct from one another, he has
not a vested right of exclusive user, except as to the figure
and denomination that he has specially chosen; and this
right cannot be extended to the general type of which he has
availed himself, and of all the modes of manifestation. Being
only an owner of an exterior and visible sign, registered and
placed under the eyes of the public, he will not be permitted
to complain of the use by a rival in trade of a mark differing
from his own in effigy and denomination, nor to allege the
identity of type from which the two are borrowed, when no
confusion between the two is possible to be seen, and they
present to the vision quite different aspects. It is a matter
of indifference that confusion may be awakened in the imagi-
nation. The property in a trade-mark has not for an object
a pure abstraction. It is not permissible for a manufacturer
who has taken such an image, to absorb into exclusive prop-
erty all varieties of forms and appellations in which that
image has been comprised and reproduced in the domain of
arts, and by the piety of people who have appropriated it.
$90. It is not very strange that casual readers, or ordinary
observers, should fall into the error of confounding the techni-
cal mark of manufactures or commerce with things of quite an-
other nature, by which is meant rights which are protected
on principles analogous to those on which trade-mark decisions
rest, such as the good-will of an establishment of trade, and
literary rights, – especially when we find at times a judge,
a commentator, or a reporter, falling into the same error.
The importance of observing the distinction will be more
§ 91..] DEFINITION AND NATURE OF A TRADE-MARK. 115
manifest as we proceed in this investigation. It should be
borne in mind that a trade-mark carries the idea of a man's
personality, like his ordinary autograph, and therefore pre-
serves its essential characteristics wherever it may go. This
is not so with a quasi trade-mark, as the name of a hotel or
shop of trade, or the title of a stage-coach, or mere literary
property, or a patent for an invention or a discovery; for such
things have no inherent extra-territorial force, and for recog-
nition depend upon compact, or the tacit acknowledgment
of nations other than those where such rights originated.—
With rare exceptions, this important distinction is observed.
Mr. Lloyd, in his treatise on Trade-Marks, preserves the line
between the good-will of a trade, so far as it is contained in
the title and style of a partnership, or the name of a trader,
or the description of his place of business, and property in a
name or distinguishing style as connected with a literary
publication or a work of art. So do also the Continental
writers and jurists; for although in their tribunals a single
action may, it seems, embrace a claim for damages for in-
fringement of a patent, a demand based on a trespass on the
good-will property by false representations, the piracy of a
label and violation of a mark, and may unite a demand for
both civil and criminal penalties, – i. e. when all the alleged
wrongs shall have arisen from one transaction, — yet we find
that the different classes of injuries are separately considered
in arriving at a conclusion, although constituting the warp
and woof of the same web; and in adjusting remedies each
species has its own peculiar redress. This mode of procedure,
so different from that of countries under the domination of
the common law of England, springs from the flexibility of
the Code Napoléon. Yet this complexity need cause no con-
fusion of ideas, except in the minds of superficial readers and
unreflecting dabblers in law. .
§ 91. Trade-Name, as contradistinguished from Trade-Mark.
—Care should be observed not to confound these two techni-
cal terms. Sometimes, in the discussion of principles, or in
reasoning from analogy, learned courts fall into error in using
these terms convertibly, when the rules applicable to them
* ,
116 LAW OF TRADE-MARKS. [$91.
respectively are in their natures mutually antagonistic. The
distinction will be readily comprehended, when it is remem-
bered that a trade-mark owes its existence to the fact that
it is actually affixed to a vendible commodity." A trade-
name is more properly allied to the good-will of a business.”
Trade-names may, for the convenience of the present discus-
sion, be divided into distinct classes: 1. Of men, their busi-
ness, or their pseudonyms; 2. Of places become famed for
manufactures, commerce, health, or even luxury; and 3. Of
coaches, and other vehicles for the transportation of pas-
sengers or merchandise. As illustrations of Class 1 may
be taken the name of a firm, which may continue to be a
trade-name long after the firm has been dissolved, as “John
G. Loring & Co.”; * or the name of a person long deceased,
that may represent several persons, as “Perry Davis”; * or
the title of a corporation, as “Brooklyn White-Lead Com-
pany”;" or the name of a mere firm, as “The Guinea Coal
Company”;" or a mere sobriquet, as “Tom Pouce” (Tom
Thumb);7 or “Little Jake”; 8 or “Twin Brothers”; 9 or
“National Slipper Company,” 19 assumed by a single person.
As illustrations of Class 2 may be taken names, as “Con-
gress Spring”; it “Old Oscar Pepper Distillery”;1* “Taper
Sleeve Pulley Works”; 18 “Grande Chartreuse”; 14 or “La
Bodega,” for a wine-shop. As illustrations of Class 3 may
1 See §§ 52, 382, 384. 2 $$ 521–536. -
* Bowman v. Floyd, 85 Mass. (3 Allen) 76.
* Davis v. Kendall, 2 R. I. 566; R. Cox, 112. -
* Brooklyn White-Lead Co. v. Masury, 25 Barb. 416; R. Cox, 210.
* Lee v. Haley, L. R. 5 Ch. 155; 39 L. J. Ch. 284; 22 L. T. (N. s.) 251; 18
W. R. 242.
* Trib. of Commerce of the Seine, in 1845, Tom Pouce v. Roqueplan, Blanc
on Counterfeiting, 732. -
8 Grow v. Seligman, 47 Mich. 607. 9 Burton v. Stratton, 12 Fed. R. 696.
19 Clark v. German Mutual Fire Ins. Co., 7 Mo. App. 77.
* The Congress and Empire Spring Co. v. The High Rock Congress Spring
Co., 45 N.Y. (6 Hand) 291; 10 Abb. Pr. (N. s.) 348; 6 Am. R. 82; 4 Am. L.T.
168; R. Cox, 624. -
1* Pepper v. Labrot et al., 8 Fed. R. 29. -
18 Gray et al. v. Taper Sleeve Pulley Works, 16 Fed. R. 436.
14 See infra, § 407 et seq.
* Trib. of Commerce of the Seine, in 1878, Lavery & Co. v. Fajardo, 24
Annales, 71. - -
§ 92.] DEFINITION AND NATURE OF A TRADE-MARK. 117
be taken such names as “Conveyance Company,” for an
omnibus; 1 or “Revere House,” for a passenger-coach.”
These are only examples, for the books contain many cases of
the various kinds. It is somewhat remarkable that nearly
all are improperly spoken of as trade-marks, when, as pre-
sented to the courts, they were not trade-mark but trade-name
cases. The distinction rests upon the manner of use; for, as
was properly held by the Supreme Court of Massachusetts,
in 1861,” a thing may be a trade-name for one person, as in-
dicating his business, and a trade-mark for another, who has
affixed it to his merchandise as such ; and, as the House of
Lords of England afterwards said, “It is true that a name
or the style of a firm may by long usage become a mere trade-
mark, and cease to convey any representation as to the fact of
the person who makes, or the place of manufacture.” 4 Lord
Blackburn, in the House of Lords, in 1882, said that a name
may be so appropriated by user as to come to mean the goods
of the plaintiffs, though it is not and never was impressed on
the goods, or on the packages in which they are contained."
But it must be protected as a trade-name, and not as a trade-
mark, as it would be, of course, when the name is stamped on,
or otherwise affixed to, goods for sale. But sometimes the
error is committed of calling a mere sign of a building a trade-
mark, as when a sign “ IXL General Merchandise Auction
Store ” had been registered under a State law as a trade-mark,
and the court seems to have treated it as such ; * and, in
1883, in the course of a very able opinion, a high court cited
“Revere House,” “What-Cheer House,” and “Irving Hotel.”
as trade-marks."
§ 92. In the case of Woodward v. Lazar,” in the Supreme
Court of California, in 1863, before all the justices, the name
of a hotel was treated as a trade-mark. It was an appeal
1. Knott v. Morgan, 2 Keen, 213. 2 Marsh v. Billings, 7 Cush. 322.
* Bowman v. Floyd, supra.
4 The Leather Cloth Co. case, 11 H. L. C. 523.
* Singer Manufacturing Co. v. Loog, 5 L. R. App. Cas. 8.
° Lichstein v. Mellis, 8 Oregon, 464; 34 Am. R. 592.
7 Avery v. Meikle, Kent. L. R., April, 1883; 17 West. Jur. 202.
8 21 Cal. 448.
118 LAW OF TRADE-MARKS. [$ 93.
(ſ
from an order refusing to dissolve an injunction, by which the
defendants were restrained from using the name of “What-
Cheer House” as the title or name of a hotel in the city of
San Francisco. Norton, J., in delivering the opinion of the
court, said: “It has been decided, and with good reason, that
the name established for a hotel is a trade-mark, in which the
proprietor has a valuable interest, which a court of chancery
will protect against infringement. Howard v. Henriques, 3
Sand. S. C. 725. The point of dispute in the case is as to
whom the name ‘What-Cheer House, as a business sign, be-
longs. The plaintiff claims that it belongs to him, as the
keeper of the hotel, which he continued to conduct under that
name after he surrendered the leased premises; while the
defendants claim that it is the designation of the building in
which the business under that name was first conducted, and
became theirs when they became owners of the building.”
Now let us examine the case cited by the judge, and decide
for ourselves whether or not there was a mistake made in the
name of the thing, — a mistake quite as wide of the truth as
would be the confusion of the terms freehold, mortgage, lease,
all relating to landed property, yet distinct in their natures.
Names are sometimes things. -
$93. In Amoskeag Manufacturing. Co. v. Spear,” in 1849, a
distinguished jurist, Mr. Justice Duer, inadvertently misused
terms. The defendant had pirated plaintiffs’ label, making
it correspond in size, color, fancy border, position, general
arrangement and size of the letters, including the alleged
trade-mark, the capital letters “A CA.” These letters were
decided not to be a trade-mark, being merely indicative of
quality. What, then, was the trade-mark? Nothing. Com-
pare the language of the two labels. That of the plaintiffs
read thus: “Amoskeag Manufacturing Company. Power
Loom. Yds. A C A. Amoskeag Falls, N. H.”
That of the defendant read thus: “Lowell Premium Tick-
ing. Power Loom. Yds. . A C A. Warranted In-
digo Blue.” The judge had a clear conception of all the
principles involved, and his decision was unquestionably
1 2 Sand. S. C. 599.
§ 94.] DEFINITION AND NATURE OF A TRADE-MARK. 119
w \
correct. The extraordinary powers of a court of equity Y
had been invoked to prevent the continuance of fraud. In
what did that fraud consist 2 In a “designed, studied,
elaborate imitation ” of the label of the plaintiffs, said his
Honor. The defendant endeavored by a false representation
to effect an unlawful purpose. To quote the judge's own
words: “In this case there is a fraud coupled with a damage;
and a court of equity, in refusing to restrain the wrong-doer
by an injunction, would violate the principles upon which a
large portion of its jurisdiction is founded, and abjure the
exercise of its most important functions, – the suppression of
fraud, and the prevention of a mischief that otherwise may
prove to be unbearable.” The remedy could not be denied.
The error of the judge manifestly consisted in the loose use
of one word for another, those words being in no sense con-
vertible terms. The words were uttered more than twenty
years before the first case of the kind had been reached
in the highest court in the land, and in a case which re-
quired no definition of species. If there had been any need
of a nice discrimination of technical terms, the acute mind of
the judge would have seized upon it, and, by using the exact
word, would have prevented the possibility of misunderstand-
ing. The objectionable phraseology was this: “When I
compare the original trade-mark of the plaintiffs,” &c. The
correct word was label, not trade-mark. It must be obvious
at a glance, to any one who has acquainted himself with the
law and principles of trade-marks, that the single element
that could possibly be a trade-mark was the “A CA.” symbol.
The three letters were found not to constitute a lawful trade-
mark, and were struck from the injunction. Nothing there-
after remained but words in ordinary use, common to all the
manufacturing world. But, as this was not a trade-mark case,
what was it? Answer: it was a case of unlawful competition /
in trade, by means of a simulated label.
§ 94. In another place it will be seen that the Patent
Office took action upon this question, and decided the three
letters “A C A* to be at least a prima facie trade-mark, from
its long user and general recognition.
4
120 LAW OF TRADE-MARKS. [s 95.
ſ/ § 95. The case of Howard v. Henriques," in 1851, was
decided by five out of six judges of the Superior Court of
the City of New York, when that court was composed of as
able minds as any in the land. The plaintiff was proprie-
tor of a hotel known as the “Irving House,” or “Irving
Hotel,” and which was opened and named by him “Irving
House,” in 1848. The defendants opened another hotel in
the same city, which they named the “Irving Hotel.” An
injunction was granted, by one of the justices of the court,
restraining the defendants from using the name thus taken
by them. A motion was made to dissolve this injunction.
Observe, the plaintiff's house, although originally designated
by him as the Irving House, very soon became generally
known also as the Irving Hotel, and was designated by both
names indiscriminately for more than a year before the de-
fendants opened their hotel. All these facts appear in the
opinion of the court, delivered by Mr. Justice Campbell. It
was urged by the defendants' counsel, first, that the plaintiff
had not appropriated the name, because no such name ap-
peared on the external walls of his house; and, secondly,
even if it did so appear, the name was not the subject of ap-
propriation as applied to a hotel; that the principle upon
which trade-marks and other similar rights had been protected
was applicable alone to personal property, to manufactured ar-
ticles, to such things as were necessarily movable, and in ref-
erence to which frauds could be practised without being easily
detected, or, at all events, frauds could be practised operating
injuriously upon the party claiming the trade-mark, and also
upon the public. The answer of the court was, that there
would be no more necessity for the plaintiff to place in large
letters upon the front of his building, “This is the Irving
House,” in order to designate it and secure an appropria-
tion of the name, than there would be to write on the public
edifices of the city, “This is the City Hall,” and “This is
Trinity Church.” As to the second objection of the defend-
ants, the court spoke thus: “We think that the principle of
- the rule is the same, to whatever subject it may be applied,
1 3 Sand. S. C. 725.
§ 96.] DEFINITION AND NATURE OF A TRADE-MARK. , 121
and that a party will be protected in the use of a name))
which he has appropriated, and by his skill rendered valuable,
whether the same is upon articles of personal property which
he may manufacture, or applied to a hotel where he has built
up a prosperous business. We are not disposed to interfere
with the lawful pursuits of any one. Every man may and
ought to be permitted to pursue a lawful calling in his own
way, provided he does not encroach upon the rights of his
neighbor or the public good. But he must not by any deceit-
ful or other practice impose upon the public; and he must
not, by dressing himself in another man's garments, and by
assuming another man's name, endeavor to deprive that man
of his own individuality, and thus despoil him of the gains
to which by his industry and skill he is fairly entitled. To
make the application. If one man has, by close attention
to the comfort of his guests, and by superior energy, made
his hotel desirable for the traveller, and caused its name to
become popular throughout the land, another man ought not
to be permitted to assume the same name in the same town,
and thus deprive him who first appropriated the name of
some portion of the fruits of that good-will which honestly,
belongs to him alone.” Z
§ 96. The perusal of this case of Howard v. Henriques |
relieves the mind from all doubt or embarrassment as to the
meaning of the court. The counsel had been reasoning from
analogy; and the court pursued the train of ideas thereby
evolved. No one in that case assumed that the mere name
of a hotel could be a trade-mark, but argued upon principle.
How could any one so assume? Did the proprietor of the
name affix it to any vendible article? No. But, it may be
replied, he did use it upon all the bills rendered to his guests,
on cards, and in numerous advertisements circulating through-
out the country. True; but advertisements are not trade-
marks." Nothing short of the sheerest sophistry could twist
the title of a hotel into a mark of commerce, a visible mark
affixed to a thing sold, or for sale. We cannot detect the
essential elements of the thing technically so known. Then,
1 Lord Chancellor, in Leather Co. v. Am. Leather Co., 11 Jur. (N.S.) 518.
122 LAW OF TRADE-MARKS. [$ 98.
if not a case of trade-mark, what was it? It was exactly what
the Superior Court, by the lips of Mr. Justice Campbell, called
it, the “good-will” of the establishment. The case did not
call for a definition. All that was required was substantial
justice, upon the allegation of an invasion of an equitable
right.
§ 97. MeCardel v. Peck, before the Supreme Court of New
York, in banc, in 1864, is a case that is sometimes cited to
prove that the name of a place of business is a trade-mark.
The misconception is the fault of the syllabus of the reporter.
The matter in dispute was the right to use the name of a
restaurant known as the “McCARDEL House,” in the city of
Albany. The court certainly did not treat the case as any
other than a question of the right to the good-will. The
language of Miller, J., who delivered the opinion, misled the
reporter. He said, “The use of names and trade-marks in
business, when made valuable, has always been protected by
the courts, and any improper appropriation of them without
the authority of the owner will be restrained by injunction”;
and in another place, “the use of a name or trade-mark.”
This is all that was said of trade-marks, –“ names and trade-
marks,” and “a name or trade-mark.” It needs no great
power of discrimination to perceive that the employment of
the conjunctions implied a distinction between name and
mark. -
§ 98. Howe v. Searing, 1860,” is another case that is quoted
in support of the theorem that the name of a place of business
is essentially a trade-mark. But a careful examination of that
case will show that the majority of the court placed it in its
proper category. The plaintiff, a baker by trade, brought an
action to restrain the defendant from designating the bakery
establishment kept by him, in the city of New York, as
“Howe's Bakery,” and from otherwise using the name of
Howe, so as to induce the public to believe that the business
carried on at his place was conducted by the plaintiff. It was
not in any wise discussed as anything other than what it really
/ 1 28 How. Pr. R. 120.
* 10 Abb. Pr. R. 264; 6 Bos. 854; and 19 How. Pr. R. 14. .
§ 99.] DEFINITION AND NATURE OF A TRADE-MARK. 123
was,—“the good-will of the business of baking.” All the
authorities commented upon by the learned Judge Hoffman,
who delivered the opinion of the court, are good-will cases.
He adopted the language of Vice-Chancellor Wood, in Churton
et al. v. Douglass : * “The name of a firm is a very important
part of the good-will of the business carried on by the firm.
A person says, I have always bought articles at such a place
of business; I know it by that name, and I send to the house
of business identified by that name for that purpose.” Mon-
crieff, J., dissenting, said: “The name or words ‘Howe's
Bakery’ was nothing but a trade-mark, and, as such, is now
sought to be protected by the plaintiff. The name or trade-
mark passed by the assignment and transfer of the ‘good-
will’; and, if it was not the thing itself, it was an integral
part of it.” - -
§ 99. What warrant had the dissenting judge to use the
technical term trade-mark? We look in vain for any authority
to sustain his expression. Consider the circumstances. The
plaintiff, who had been doing a lucrative business as a baker at
No. 432 Broadway, sold the lease of the premises, with all the
stock, wagons, and fixtures, and the good-will of the concern,
to one Baker. Baker subsequently sold back to Howe the
right to resume business at another place, No. 850 Broadway,
in the same city; and still later sold the lease to Searing, the
defendant, subject, however, to Howe's right to conduct busi-
mess in his own name. Searing continued the old sign-name,
to the prejudice of the plaintiff’s rights, and in a way calcu-
lated to mislead the public. Howe had a clear title to his own
name; and so, indeed, had any other Howe the same right,
and if he chose could put up a sign informing the public of
the location of his place of business. Searing, the defendant,
had no right to use Howe's name. Hence the suit. The
mere name of Howe could not be a valid trade-mark, for it
was not the exclusive property of the plaintiff. It was not a
trade-mark unless intended to be stamped upon, or otherwise
affixed to, the articles sold. It was at best a mere advertis- .
ing sign. Even if stamped upon the bread, it would not be a
1 28 L. J. Ch. 841; 5 Jur. (N. s.) 887; 33 L. T. 57.
124 LAW OF TRADE-MARKS. [$ 102.
trade-mark; for it would not indicate origin. The purchasers
could not tell by the mere name which one of many persons of
the same name had baked the bread. Conclusion : the re-
marks of Mr. Justice Moncrieff were not a judicial decision,
and must be classed with unauthoritative obiter dicta.
§ 100. We must not infer from the foregoing decisions, that
the name of a place of business cannot become a valid trade-
mark. If it possess the true characteristics of such a mark;
if it be not generic, merely descriptive, or one that any other
person in the same trade may truthfully use; and if it be
affixed to a vendible article, then it may be made a trade-mark
as well as any other symbol. The case of Choynski v. Cohen,"
in the Supreme Court of California, in 1870, before all the
justices, is in point. The plaintiff claimed the exclusive right
to the name “Antiquarian Book Store,” which name was
placed upon his sign, stamped upon all articles sold by him,
and used in his correspondence. Held, to be a mere designa-
tion of trade.
§ 101. It was of little or no moment in the cases cited what
term a judge may have used to express an idea. Substantial
justice did not depend upon preciseness of terminology. It is,
however, of moment in our present purpose accurately to
define, lest by looseness of language we fall into looseness of
application of principles, and so end in egregious error. In
judicial matters, a rose by any other name may not smell as
sweet. A name is sometimes of the very essence. We could
not arrive at any result other than this: the name of a hotel,
and trade-mark, are not convertible terms.
§ 102. The British “Merchandise Marks Act,” of 1862, says
that “the word “mark’ shall include any name, signature,
word, letter, device, emblem, figure, sign, seal, stamp, diagram,
label, ticket, or other mark of any other description; and the
expression “trade-mark’ shall include any and every such
name, signature, word, letter, device, emblem, figure, sign,
seal, stamp, diagram, label, ticket, or other mark as aforesaid,
lawfully used by any person to denote any chattel, or (in
Scotland) any article of trade, manufacture, or merchandise,
1 39 Cal. 501; 2 Am. R. 476; R. Cox, 598.
§ 103.] DEFINITION AND NATURE OF A TRADE-MARK. 125
to be an article or thing of the manufacture, workmanship, or
production, or merchandise of such person, or to be an article
or thing of any peculiar or particular description made or sold
by such person ; and shall also include any name, signature,
word, letter, number, figure, mark, or sign which in pursu-
ance of any statute or statutes for the time being in force
relating to registered designs is to be put or placed upon or
attached to any chattel or article during the existence or con-
tinuance of any copyright or other sole right acquired under
the provisions of such statutes or any of them.” This language
savors more of enumeration than definition, and may possibly
mislead by its breadth of expression, embracing as it does
things incongruous in their several natures, as registered
designs and copyright matters. Being a statute applicable
only to British courts, its form of expression cannot be taken
as an infallible guide for our present purpose. Many of the
terms used cannot be understood unless taken with their
judicial definitions, as name, word, label, &c. It should, how-
ever, be observed, that the expression “trade-mark” not only
includes every mark lawfully used by a person to denote any
chattel to be an article of the manufacture, workmanship, or
production of such person, but also to be an article of the
merchandise of such person, or to be an article of any peculiar
or particular description made or sold by such person. This
will include such cases as Motley v. Downman," where it was
contended that the right to use the trade-mark was attached
to a particular place and works, and to cases where the articles
are distinguished by the name of a person who did not manu-
facture them, and to similar cases.” -
§ 103. Is the Name of a Newspaper a Trade-Mark?– This
question has been thoroughly discussed pro and con in the
Patent Office, but has probably not been definitively decided
by the courts. Upon an application for registration, all the
authorities bearing upon this point were examined. If a tech-
nical trade-mark, the application would be favorably acted on ;
if not, it would be rejected. The matter being ea parte, the
1 3 M. & C. 1; L. J. Ch. (N. s.) 308. * -
* See notes of H. B. Poland, Esq., to the English Act of 1862.
126 LAW OF TRADE-MARKS. [$ 104.
pleasing task of collating judicial decisions devolved upon the
Office. We will let the cases cited again pass in review.
§ 104. Snowden v. Noah, in the Court of Chancery of New
York, before Sandford, Chancellor, in 1825," was treated by
counsel and by the court as a good-will case. The Chancellor
said: “The defendant Noah was the editor, but not the pro-
prietor, of the newspaper establishment called the “National
Advocate”; and immediately after the sale of that establish-
ment by its former proprietor to the complainant, Noah estab-
lished another newspaper, under the title of the “New York
National Advocate.” This new gazette thus established is
sent to the subscribers of the former ‘National Advocate,’
and Noah has solicited and continues to solicit the support
of the patrons of the former paper and of the public to his
newspaper. This is briefly and in substance the case upon
which an injunction is now asked.” After some other re-
marks, he continued: “The subject in respect to which an
injunction is asked, is what is called the good-will of the
establishment, or the custom and support which the “National
Advocate” had before received from its subscribers and pa-
trons, or from the public. The effort of Noah is to obtain
for his newspaper the support of the public in general, and
especially the custom and good-will of the friends of the
“National Advocate.” This object is distinctly avowed; and
an open appeal is made to the friends of the “National Ad-
vocate’ and to the public, to give their support to the new
paper. The question is, whether the acts of Noah are an in-
vasion of the private rights of Snowden, as the proprietor of
the ‘National Advocate,” or merely an exercise of the common
right to print and publish a new journal, and to obtain for it
patronage. . . . The only circumstance in this case which has
any appearance of an undue encroachment upon the rights
of Snowden is, that Noah's new paper is published under a
name nearly the same with that of Snowden; but the name
of the new paper is sufficiently distinct from the name of
Snowden’s paper to apprise all persons that these are really
different papers. I do not perceive that any person can be
1 Hopkins Ch. R. 347; R. Cox, 1.
sº
§ 105.] DEFINITION AND NATURE OF A TRADE-MARK. 127
misled in this respect. The good-will of an established trade,
the custom of an inn, and the right of a publisher of books,
may be injured by acts of deception and piracy; but the
injury for which redress is given in such cases results from
the imposture practised upon the customers of an existing
establishment, or upon the public.” It is evident that the
Chancellor did not contemplate the case as a mere infringe-
ment of a trade-mark right, or he would not have mingled
the matters of an injury to trade, to the custom of an inn,
and the right of a publisher of books. If he had regarded
the name, “National Advocate,” as a trade-mark, then he
must necessarily have passed upon the question, whether
the name that the defendant had adopted was not an in-
fringement of that trade-mark. Yet he chose to discuss the
question in controversy under the comprehensive thought of
an injury to the good-will. Therefore that case does not solve
our inquiry. g
§ 105. Bell v. Locke," in the same court, before Walworth,
Chancellor, in 1840, was a similar case. This case came
before the court upon an order for the defendant to show
cause why an injunction should not issue, restraining him
from printing, publishing, or circulating a newspaper under
the name of the “New Era,” it being contended that such
name was an infringement of the rights of the plaintiff, who
published the “Democratic Republican New Era.” The Chan-
cellor said: “The allegation in the complainant's bill is, that
the defendant has assumed the name of the complainant's
newspaper for the fraudulent purpose of imposing upon the
public, and supplanting him in the good-will of his estab-
lished paper, by simulating the name and dress thereof, with
the intent to cause it to be understood and believed by the
community that the defendant’s newspaper was the same as
the complainant's, and thereby to injure the circulation of
the latter. If this were in fact so, I should have no difficulty
in making this order absolute.” He observed, farther on in
his opinion, that “there could be very little excuse for the
editor of a new paper who should adopt the precise name
1 8 Paige, 75; R. Cox, 11.
128 LAW OF TRADE-MARKS. [$ 107.
and dress of an old-established paper which would be likely
to interfere with the good-will of the latter by actually de-
ceiving its patrons.” This case comes closer to our notions
of one involving the mark of trade or commerce; and al-
though the Chancellor used the term “good-will” and did not
mention the term “trade-mark,” we conclude that the latter
term was strictly applicable.
§ 106. In Dayton v. Wilkes," at a special term of the
Superior Court of the City of New York, in 1859, Hoffman,
J., in regard to the right to use the name of “Porter's Spirit
of the Times,” said: “It has been very correctly argued,
by the counsel for the plaintiff, that the analogy of the rules
as to trade-marks should apply to this case.” It is manifest
that the court did not regard the thing in controversy as a
mere trade-mark; nor was it necessary for the solution of
the matter. We must look farther.
§ 107. Matsell v. Flanagan,” at a special term of the Court
of Common Pleas, in 1867, is of assistance in elucidating the
mooted question. The plaintiffs were, and had long been, the
publishers and proprietors of the “National Police Gazette,”
which was commonly known to the public as the “Police
Gazette.” The defendants prepared and published a news-
paper, in imitation of the plaintiffs' newspaper, with nearly
the same title and device, which misled and deceived pur-
chasers. So the complaint alleged, and so the court found.
The language of Brady, J., relieves us from any doubt as to
the class of wrongs to which he assigned a case of the kind.
After reciting the power of the court in trade-mark cases,
he continued: “The enforcement of the doctrine that trade-
marks shall not be simulated does not depend entirely upon
the alleged invasion of individual rights, but as well upon the
broad principle that the public are entitled to protection from
the use of previously appropriated names or symbols, in such
manner as may deceive them, by inducing or leading to the
purchase of one thing for another.” This case was treated
as purely an infringement of a trade-mark; and the court, in
1 17 How. Pr. R. 510; R. Cox, 224.
* 2 Abb. Pr. R. (N. s.) 459; R. Cox, 367.
§ 108.] DEFINITION AND NATURE OF A TRADE-MARK. 129
commenting on Snowden v. Noah and Bell v. Locke, treated
it as a parallel case. . -
§ 108. Stephens v. De Conto, at a special term of the Supe-
rior Court of the City of New York, in 1868, has a somewhat
different complexion. The plaintiffs owned and published a
newspaper called “La Cronica.” The single question in con-
troversy was as to restraining the publication by the defend-
want of the paper called “El Cronista.” Monell, J., discussed
some of the general principles of “good-will,” and assumed the
case to be of that nature, if indeed any right at all existed;
and, in delivering his opinion, he wandered off into fields for-
eign to the real nature of the case presented. He said: “If
this case was to be determined solely upon whether the simi-
larity, if it could be established there was any, of the names
‘La Cronica” and “El Cronista’ could mislead the public into
the belief that they were the same, I should have no difficulty
in reaching the conclusion, upon the evidence, that no such
effect could or would result. . . . I do not understand that
the protection which the law affords to ‘trade-marks,” even
assuming the name of a newspaper to be a trade-mark, goes
so far as is claimed in this case. The protection which has
been granted to that species of property has never, I believe,
been extended over anything that was the subject of a patent
or a copyright, but is confined to appropriations of names des-
ignating some particular manufacture or business. There
can be no such property in a newspaper, which is the only
continuing portion of it. The contents of each issue are the
composition or creation of the editor or contributors, are
varied each day, and when given to the public all literary
proprietorship in them is lost. And the law of trade-marks,
like the law of copyright, cannot be applied to a work of so
fluctuating and fugitive a character. Clayton v. Stone, 2
Paine, 392. I do not mean to say that a newspaper pro-
prietor cannot appropriate, and, by long use, acquire a prop-
erty in a name, which the courts will protect against piracy.
In this respect the analogy of trade-marks would apply. Day-
ton v. Wilkes, 17 How. Pr. R. 510. And I have no doubt
1 4 Abb. Pr. R. (N. s.) 47; 30 N. Y. Superior (7 Robertson), 343.
'9
130 LAW OF TRADE-MARKS. [$ 109.
that the names, so long appropriated and used, of ‘The New
York Herald,” or ‘The Sun,’ would be protected as trade-
marks, against the assumption of those names by another
proprietor. But that I understand to be the extent of the
rule, and that any mere assimilation of the name — unless it
was clearly to deceive the public — would not be unlawful.”
The injunction was accordingly dissolved, and the complaint
dismissed with costs. This opinion has been quoted a num-
ber of times on each side of the question, which is evidence
that it has misled. Let us hastily analyze it. What was the
point? It was this: Was the use of the name “El Cronista”
an infringement upon the exclusive right in the name of
another newspaper, “La Cronica”? The general contents
of the respective papers had nothing to do with the contest.
The judge said the protection given to trade-marks had not
been extended over anything that was the subject of a patent
or a copyright. Nothing more true. But the name of a news-
paper is not the subject of a patent or of a copyright, as we
shall see hereafter in this treatise. But the judge expressly
conceded that the long-used names of certain papers would
be protected as trade-marks. That is our case, so far as this
decision goes. With it our American authorities on this point
are exhausted. We look in vain for an English case that
exactly touches the present question. Hogg v. Kirby 1 was
cited in each of the foregoing discussions; but it does not
help us in reaching a determination. In no instance have we
the opinion of more than one chancellor or judge. Let us
think whether the true principle cannot be deduced there-
from.
§ 109. The question recurs, Is the name of a newspaper a
trade-mark? If not, upon what principle is it protected? The
question arose in the Patent Office upon an application to
register the name of a paper. It was suggested that, as the
name had been copyrighted, protection must be sought under
section 86 of the law in relation to copyrights.” It is there
1 2 Wes. 226.
* An Act to revise, consolidate, and amend the statutes relating to patents
and copyrights, July 8, 1870. — Rev. Stat., sect. 4948–4971.
§ 109.] DEFINITION AND NATURE OF A TRADE-MARK. 131
provided, that any citizen of the United States, or resident
therein, who shall be the author, inventor, designer, or pro-
prietor of any book, map, chart, dramatic or musical compo-
sition, engraving, cut, print, &c., may, upon complying with
certain specified conditions, have the sole liberty of printing,
publishing, and vending the same, &c. The heading of said
paper consisted of an ornamental engraving on wood, com-
monly known as a wood-cut. It was also a print. Did those
literal facts determine the right? We will examine for our-
selves. The Librarian of Congress, not being a judicial officer
in any sense, was not required to pass upon the legality of
copyrighting the thing presented to him for that purpose.
The fee was paid : the act was done. But does a mere news-
paper heading come within the spirit and meaning of the law?
The Constitution” gives power to Congress “to promote the
progress of science and the useful arts, by securing, for lim-
ited times, to authors and inventors the exclusive right to
their respective writings and discoveries.” We can nowhere
else find the power to legislate upon copyrights. The rights
of inventors and authors, as long settled in Great Britain,
were familiar to the framers of the Constitution; and, as Mr.
Justice Story says,” it is doubtless to this knowledge of the
common-law and statutable rights of authors and inventors
that we are to attribute this constitutional provision, being
beneficial to all parties. It was beneficial to authors and
inventors, because it maintained their rights to the product
of their intellectual labor; and beneficial to the public, as it
would promote the progress of science and the useful arts,
and admit the people at large, after a short interval, to the
full possession and enjoyment of all writings and inventions
without restraint. In short, the only boon which could be
offered to inventors to disclose the secrets of their discoveries
would be the exclusive right and profit of them, as a mo-
nopoly, for a limited period. A copyright is limited by time:
a trade-mark is not. A copyright is limited territorially, but
1 Art. I. sect. 8, sub-sect. 8.
* Story on the Constitution, vol. ii. § 1152.
132 LAW OF TRADE-MARKS. [$110.
a trade-mark acknowledges no boundaries. They are unlike
in their natures."
§ 110. Literature, invention, and the fine arts needed a
fostering hand, and found it. The consideration paid by
them for a monopoly was a surrender to the public after a
limited time. The consideration was the coin of their brains.
Authors' What claim has the adopter of a trade-mark to be
considered an author? He may adopt any symbol, the sign of
anything in heaven above or in the earth beneath; it may
a representation of a real object, or it may be entirely
fabulous. It does not require any genius for one to call a
newspaper by the name of sun, moon, or star. The name of
a newspaper is a sign to arrest attention, as it catches the eye.
It points to something else. The heading is not offered for
sale. Its office is simply to inform the public that the paper
on which it is printed is the Herald, the Sun, or the Globe,
as the case may be. The public care not a straw whether the
heading be ornamental or plain; for the advantage in buying
it is the intelligence, the editorials, the advertisements. The
purchaser does not glance at the heading, the title, the name,
except to be assured that he is getting the newspaper of his
choice. He takes no delight in gazing upon the name or
heading, as a work of art. But the copyrighted article is
the thing that is sold. The book, the map, the dramatic
composition, the engraving, cut, or photograph, is the thing
bought. The name of a newspaper is but the guide to the
thing. In the case of the heading of a newspaper, if its
owner should elect to abandon it after a certain period, what
value would he render to the public? None. If considered
as a work of art, what would be the measure of damages for
infringement?” As a penal law, the statute must be strictly
1 Scoville v. Toland, 6 West. L. J. 84, U. S. Cir. Ct., Dist. of Ohio, held that
labels or marks of commerce could not be protected under the copyright law.
So held also in Osgood v. Allen, U. S. Cir. Ct., Dist. of Maine, 1 Holmes, 185;
6 Am. L. T. 20; 3 Off. Gaz. 124. In the latter case, the title of a publication
was sustained as a trade-mark. To the same effect is Coffeen v. Brunton, U. S.
Cir. Ct., Dist. of Ohio, 4 McLean, 516; and Collender v. Griffith, U. S. Cir. Ct.,
S. Dist. of New York, as to an engraving. Simonds on Design Patents, p. 51.
2 See sect. 100 of copyright law of 1870. Rev. Stat., sect. 4964, 4965.
§ 112.] DEFINITION AND NATURE OF A TRADE-MARK. 133
construed. Again, it would be absurd to suppose that Con-
gress intended to include such a thing, from the requirement
of deposit in the mail before publication," a description of the
book or article, and within ten days after publication the trans-
mission of two copies to enrich the library of the nation. The
heading of the “Herald" as a work of art | We cannot con-
ceive a mere newspaper heading to be a subject for copyright.
§ 111. In Stephens v. De Conto, the judge mentioned “the
subject of a patent,”— meaning, doubtless, a design-patent.
Is such a heading the subject of a patent? Examine: Mr.
Upton, in his work on Trade-Marks,” has taken the correct .
position in the construction of the act of 1842, for patents
for designs. The language, “any new and useful pattern, or
print, or picture, to be either worked into or worked on, or
printed or painted or cast, or otherwise fixed on any article
of manufacture,” &c., has been relied on as conferring a right
to an exclusive privilege that may be made to serve the pur-
pose of designating articles of merchandise. He says: “It is
quite obvious that such was not the purpose of the law; but,
on the contrary, it was manifestly intended that the design
for which such protection was provided should constitute a
portion of the manufactured article, either as an ornamental
adjunct, or as controlling its figure or proportions, by no
means as a mere name or designation by which to identify or
distinguish the article.” He maintains that the right thus
acquired is in no sense a trade-mark property.” We must
agree with him that the construction sometimes given to that
act was quite unwarrantable. The design that is patentable
is asthetic. The mark of manufactures or of commerce is
not essentially a thing of taste. The abstract symbol has no
intrinsic value. The value is in the article to which it is
affixed.
§ 112. The Supreme Court of the United States in its first
trade-mark case, in 1872, said: “Property in a trade-mark, or
rather in the use of a trade-mark or name, has very little
1 Sect. 90 of copyright law of 1870; Rev. Stat., sect. 4956.
* Albany, N. Y., 1860, pp. 17, 18.
* See case of Whyte, Commissioner's Decisions, 1871, p. 374.
134 LAW OF TRADE-MARKS. [$ 116.
analogy to that which exists in copyrights, or in patents for
inventions.” "
§ 113. In Swift v. Dey,” Robertson, Ch. J., said: “A pa-
tented design may be adopted as a trade-mark, by consent
of the patentee, and thereby its use by others for the same
purpose prevented. There is no rule, however, which makes
the test of the infringement of such rights the same in both
cases. The defendants may be liable in both the Federal and
State courts: in the former, for imitating the design; in the
latter, for passing off, by means of such design, spurious
wares as being the plaintiff's : and the cause of action would
clearly not be the same.”” -
§ 114. Paxson, J., in The Dixon Crucible Co. v. Guggen-
heim,” expressed an opinion that “the name of a newspaper
is a trade-mark, as much so as a label stamped upon a bale of
muslin,” although it is true that that was not the exact ques-
tion before the court.
§ 115. From the foregoing train of reasoning, we deduce
this conclusion. A newspaper, being a vendible article, is as
much a matter of merchandise as anything can be. It would
not be bought unless it contained or bore an authenticating
sign. That sign is its name. Each issue may be ephemeral,
and be at once consumed; but the name, its emblem, is per-
manent and invariable, and is the stamp of genuineness. We
see, therefore, that the Office was unquestionably right in
admitting the name of a newspaper to registration as a trade-
mark.” •
§ 116. Trade-Marks on Books. – Can printed books be pro-
tected by trade-marks? Yes, as mere merchandise; no, as
literary productions. They are articles of manufacture, and
may bear a particular mark to designate their author, or the
merchant who sells them. Sometimes they are impressed
* Delaware & Hudson Canal Co. v. Clark, 13 Wall. 311; 5 Am. L. T. 135;
1 Off. Gaz. 279. º - 2 *
* 4 Robertson, 611; R. Cox, 319.
* In Re Lee & Shepard, 23 Off. Gaz. 1271, it was decided that a patented
design cannot afterwards be registered as a trade-mark.
* 3 Am. L. T. 288; 2 Brewst. 321.
* F. C. Barksdale, “Our Society,” No. 424.
§ 118.] DEFINITION AND NATURE OF A TRADE-MARK. 135
with a peculiar symbol, to indicate the place of sale: but not
so much so as in preceding ages, especially the sixteenth and
seventeenth centuries, and the earlier portion of the eighteenth;
for then every shop had its emblematic sign, as a dolphin, a lion,
the king, &c., and a representation of that sign indicated the
place of sale quite as well as could the name of the merchant
or publisher. The mark of the dolphin, for example, would
satisfy the purchaser, for he would reflect that he had always
obtained correct editions of books at that place, — the Dol-
phin. In Savary’s “Dictionnaire Universel de Commerce,” 1
we find that in France, and probably in other European coun-
tries, the legalized mark of a bookseller was an image placed
by him under the title of a book, or on the first page thereof.
This establishes the fact that books were then regarded as
proper objects for the reception of trade-marks. So the courts
... now uniformly hold.”
§ 117. But it must be borne in mind that it is as merchan-
dise merely, and not as intellectual creations, that books are
protected by the mark of commerce. Why so? Because a
book, as such, has its protection under the copyright law. If
printed, ample remedy is afforded by the copyright law of .
July 8, 1870. That is the security which the Constitution
and the statute provide for infringement upon works of liter-
ary genius, even though the pirate change the title of the
book, and, as it were, hoist a false flag. It is the contents
of the book that would be copied, and not its emblem, title,
or mark. t
§ 118. There seems to be no sufficient reason why the title
of a book may not be deemed a valid trade-mark; for example,
when, two centuries ago, in England, the five Presbyterian
divines (Stephen Marshal, Edward Calamy, Thomas Young,
1 Copenhagen, 1761, title Marque. Under this head may be found much
interesting information in regard to the compulsory use of trade-marks in the
various branches of manufactures. ºf
2 Kelly v. Hutton, L. R. 3 Ch. 703; 37 L. J. Ch. 917; 19 L. T. (N. s.) 228;
16 W. R. 1182. Bradbury v. Dickens, 27 Beav. 53; 28 L. J. Ch. 667; 38 L. T.
54. Clement v. Maddick, 1 Giff. 98; 5 Jur. (N. s.) 592; 33 L. T. 117. Ingram
v. Stiff, 5 Jur. (N. s.) 947; 33 L. T. 195. Osgood v. Allen, 1 Holmes, 185; 6 Am.
L. T. 20; 3 Off. Gaz. 124. Estes et al. v. Williams et al., 21 Fed. R. 189.
136 LAW OF TRADE-MARKS. [$ 120.
Matthew Newcomen, and William Spurstow) combined the
initials of their names, which made the word SMECTYMNU-Us,
and adopted it as their joint signature, they had a valid trade-
mark, if they had chosen to use it as such. It was good for
the publication bearing that name, and would be entitled to
protection as a trade-mark for any books which the owners
of the newly coined word might offer for sale. .
§ 119. Here is a case which is usually classified with trade-
mark cases; but, if we keenly scrutinize and analyze for our-
selves, we may conclude that, although of the nature of a
trade-mark, the thing in controversy had for a time but
doubtful claim to the name. We examine Williams v. John-
son, before the general term of the Superior Court of the
City of New York, in 1857. The court contented itself with
ascertaining the justice of the case, without caring about much
nicety in terms. We shall soon be able to answer this perti-,
nent question: Is not this an instance of unfair competition in
trade, by means of false labels? A wrong was done. Let us
try to name it. -
§ 120. The plaintiff alleged that, in or about the year 1845,
he and his brothers were manufacturers of soap at Manchester,
Conn., and made a particular kind of soap, to which, in order
to identify it as their manufacture, they gave the name of
“Genuine Yankee Soap.” It was made in cakes of about
two inches square, each cake covered with tin-foil; upon one
side of each cake was attached an octagonal pink label, with
the words printed thereon: “Genuine Yankee Soap, manufac-
tured at Manchester, Conn., by Williams & Brothers, Chemists
and Apothecaries. To prevent counterfeits, their signature will
be upon each cake.” Upon the other side of each cake was
attached another octagonal pink label, with the words printed
thereon: “The Genuine Yankee Soap is warranted superior
to any foreign compound for shaving and the toilet, affording a
copious and heavy lather, which does not dry on the face, leav-
ing the skin soft and smooth.” And at one end of each cake
was attached another pink label, with the words in writing,
or in resemblance to writing, “Williams & Bros.” The said
1 2 Bos. 1.
§ 122.] DEFINITION AND NATURE OF A TRADE-MARK, 137
soap was put up in pasteboard boxes, containing one dozen
cakes each, and each box was covered with a brown paper
wrapper, with the words thereon: “One dozen Genuine
Yankee Soap, warranted superior to any foreign compound
for shaving and the toilet. Manufactured at Manchester,
Conn., by Williams & Brothers, Chemists and Apothecaries.
To prevent counterfeits, their signature will be upon each
cake.”
§ 121. It was alleged that the defendant manufactured
soap of an inferior quality, put up in a style and manner
precisely similar to the plaintiffs'; that it was cut up into
cakes of the same size as those of the plaintiffs, each cake
encased in tin-foil; and upon each cake were three labels of
the same form as the plaintiffs’. Upon one were printed the
words: “Genuine Yankee Soap, manufactured at New York,
by L. Williams & Co. To prevent counterfeits, their signa-
ture will be upon each cake.” Upon another were printed the
words: “The Genuine Yankee Soap is warranted superior
to any foreign compound for shaving and the toilet, affording
a copious and heavy lather, which does not dry on the face,
leaving the skin soft and smooth.” And upon the third were
the words in writing, or in resemblance to writing, “L. Wil-
liams & Co.” Each box was covered with a brown paper
wrapper, with the words thereon : “One dozen Genuine Yan-
kee Soap, warranted superior to any foreign compound for
shaving and the toilet. Manufactured by L. Williams & Co.,
New York. To prevent counterfeits, their signature will be
upon each label.” Upon these several labels the arrangement
of the lines, the form of the letters, and the style of printing
were, in almost every particular, an exact copy of the labels
used by the plaintiffs. It was further alleged that the name
of L. Williams & Co. was fictitious, and used to deceive.
§ 122. The defendant's answer denied that the plaintiffs
had any exclusive right to use the designation “Genuine
Yankee Soap,” averring that that term described a particular
style and quality of soap, and did not identify the person or
persons by whom, or the place where, it was manufactured;
and that the article known in the market by that name had
138 LAW OF TRADE-MARKS. [$ 124.
been for years manufactured by different manufacturers of
soap in different parts of the United States, and sold by that
name, and could not be appropriated by the plaintiffs. It
further denied that the name L. Williams and Co. was ficti-
tious, or used as a colorable imitation, as simulating the trade-
mark of the plaintiffs, and deduced the title of the defendant
to its use from a firm of that name, which had assigned the
business and name to the defendant.
§ 123. An injunction was granted at special term, restrain-
ing the defendant from “selling, or in any way disposing of
any soap in boxes or otherwise, with labels or wrappers con-
taining the words ' Genuine Yankee Soap' printed or written
thereon ; and from advertising, selling, or offering to sell any
soap whatever (unless the same has been manufactured by
or procured from the plaintiffs) as and for the ‘Genuine
Yankee Soap,’” &c. From the order so made, the defendant
appealed.
§ 124. In delivering the opinion of the court in banc,
Woodruff, J., said: “The defendant is engaged in a gross
and palpable endeavor, by imitating the marks and labels
used by the plaintiffs, to deceive the public, and obtain pa-
tronage which would in all probability be attracted to the
plaintiffs. This the defendant is doing, not only by closely
imitating the plaintiffs' marks and labels, but by falsely rep-
resenting, his soap as a Yankee manufacture, and made by
persons named Williams, when, in truth, it is made in the city
of New York by the defendant, William Johnson.” After
characterizing the acts of the defendant as a fraud upon the
plaintiffs, the learned judge said of the latter: “They have
adopted, in reference to their manufacture (of an article which
any and every one may manufacture and sell, if he please), a
form and size of cake, a particular mode of covering and
packing, a combination of three labels on each cake, an exte-
rior handbill upon the box, and have so arranged the whole
as to suggest to any one desiring to purchase their soap, upon
an inspection, that the article is theirs, and made by them,
like that heretofore made, sold, and known as their manu-
facture. All this the defendant has copied, with an exact-
§ 125.] DEFINITION AND NATURE OF A TRADE-MARK. 139
ness which is calculated to deceive even the wary, much more
to entrap those who are not in the exercise of a rigid scru-
tiny. It is true that the defendant has put upon his labels
New York as the place of manufacture, and L. Williams &
Co., instead of Williams & Brothers, as manufacturers. But
the latter designation imports a falsehood, and tends rather to
create than destroy the impression that the soap is made by
the plaintiffs; and the use of the word New York, in its
obscure printing, if it be read, falls far short of suggesting to
the public that it is not the soap manufactured by the plain-
tiffs. Whether, upon taking the proofs in the cause, it will
appear that the particular words “Genuine Yankee Soap'
are to be deemed descriptive of the kind of soap which any
one may make and sell by its proper name, or are terms
properly designating the plaintiffs' manufacture, and so to be
descriptive of their peculiar skill in making an article already
in known and common use by its proper and only generic
name, soap, is perhaps not free from doubt. It is quite
clear, that, so far as it indicates the place of manufacture, it is
a fraud on the part of the defendant to use it. . . . Without
deciding whether the defendant may or may not use either of
the words “Genuine’ or ‘Yankee' in any possible combina-
tion, we think it sufficent to say that he may not use the la-
bels, or devices, or handbills, which he is using, nor any other
like labels, devices, or handbills used by the plaintiffs, as set
forth in the bill of complaint, or any other similar labels,
devices, or handbills calculated to deceive the public, or
create the belief that the soap he sells is the soap made or
sold by the plaintiffs under the name of Genuine Yankee
Soap.”
§ 125. So far as trade-mark law is involved, the foregoing
contains very little instruction. None of the words on the
plaintiffs' labels were susceptible of being made a technical
mark, except the word “Yankee.” The court did not an-
nounce the precise nature of the case. It was not necessary
to do so, although the matter, as presented, was one of wh-
Jair competition. The object was not definition, but equita-
ble relief. But the time came when allegations were more
140 LAW OF TRADE-MARKS. [$ 127.
technical, and a court was called on to decide the exact ques-
tion. In a Circuit Court of the United States, in 1879,
Blodgett, J., held, on clear evidence, that the name “Yankee”
was a valid trade-mark for soap. -
§ 126. In the endeavor to ascertain the true nature of a
trade-mark, we will examine the case of The Leather Cloth
Co. v. The American Leather Cloth Co.” The plaintiffs' al-
leged trade-mark reads as follows: “Crockett International
Leather Cloth Company, Newark, N.J., U. S. A. West Ham,
Essex, England,” which words form a circle. Within and
near the top of that circle is the representation of an Ameri-
can eagle, with outstretched wings, and, over the eagle, the
word “Excelsior.” Below the eagle are the words: “Crock-
ett & Co. Tanned Leather Cloth. Patented Jany. 24, '56.
J. R. & C. P. Crockett, Manufacturers. -- 12 Yds. --.”
Besides that, within the circle are two other similar crosses,
and this character from the printer's font : — — — —
§ 127. To enable a party to obtain the intervention of a
court for an infringement of a trade-mark, he must first
establish the fact of his having a trade-mark. He cannot
apply that name to anything that he chooses, despite its utter
lack of suitableness for the purpose. The law will examine
and apply the proper term of the thing presented. Now,
what is the essential constituent element of this stamp 2 Is
it the eagle, the words, or both ? We must not be misled by
the application of the term “trade-mark” to the whole stamp,
or label, even by a court. In the House of Lords, on appeal
from the Lord Chancellor, Lord Cranworth said: “The plain-
tiffs’ trade-mark, if trade-mark it is to be called, is contained
in a circle. . . . Each of the trade-marks, it is true, as well that
of the plaintiffs as that of the defendants, contains within its
periphery an eagle, but not at all resembling each other.
The rest of the device, if it is to be called device, consists
merely of words intended to indicate the nature or quality of
the article, the place of its manufacture, and the names of the
manufacturers.” Lord Kingsdown, in the same case, uses
* Williams v. Adams, 8 Biss. 452.
* 11 Jur. (N. s.) 513. -
§ 127.] DEFINITION AND NATURE OF A TRADE-MARK. 141
this language: “The plaintiff's trade-mark, or what they call
such,” &c. It is undeniable that he used the term “trade-mark”
to indicate the subject before the court; but it was not neces-
sary to define that particular subject. The term was a con-
venient one by which to express the collocation of words and
the eagle. The real question under consideration was, whether
the defendants had been guilty of a fraud upon the public, in
selling their goods as the plaintiffs'. The Lord Chancellor,
whose decision was in process of affirmation, then rose to
speak. His language, as to the matter of defining, relieves us
from embarrassment. He saw the necessity of giving the
alleged trade-mark its true name. He said: “I am satisfied
that I assigned for my decision in the court below a ground
narrower than I might have taken, as the basis of that
judgment. There were circumstances which induced me to
think that it was necessary to consider the case from the
particular point of view which I adopted, and having found
that the ground was sufficient for the judgment which I gave,
I did not enter into the consideration of the wider view of
the subject, which has been so forcibly urged by my noble
and learned friends. But, in truth, my lords, not only do I
concur with them, but I am satisfied that I ought to have
regarded this affix to the plaintiffs' goods, which is here
denominated a ‘trade-mark,’ as something which, according
to the anterior usage and application of the word ‘trade-mark’
by no means resembles or comes within the description of
anything that has hitherto been properly designated by that
name. What is here called by the appellants a ‘trade-mark’
is, in reality, an advertisement of the character and quality of
their goods; and, dropping for a moment all reference to the
incorrect and untrue statements contained in that adver-
tisement, I will take only what is called the ‘trade-mark ” of
the plaintiffs and the rival or antagonistic trade-mark of the
defendants, and compare them together, taking them as if
they were simply— what in reality they are—two adver-
tisements, each affixed, by way of label, to the articles manu-
factured by the parties respectively. . . . The advertisement
is the sole foundation of the plaintiffs' case, and their alle-
142 - LAW OF TRADE-MARKS. [$130.
gations must be reduced in substance to this: that, having
advertised and described their goods in a particular manner,
the defendants have borrowed their advertisements, and de-
scribed their goods in substantially the same manner.”
§ 128. What language could more clearly convey the idea
that, independent of the two eagles, there was not one ingre-
dient of a real trade-mark in either of the labels presented 2
The distinction between a mere advertisement and the tech-
nical commercial emblem is important.
§ 129. An abstract right in a symbol has no existence. The
subject must be considered in its concrete relation. Herein a
trade-mark differs from a patent or a copyright. The former
exists the instant it is issued; and the latter as soon as entered.
The patentee, or the author, may not choose to immediately
avail himself of the benefits of the grant; and still the right
exists in full vigor, unless, of course, the invention or the book
be dedicated to public use by abandonment. But the regis-
try of a trade-mark does not ipso facto make the mark, but
merely operates as evidence of adoption, and the right to it is
inchoate, and does not become a perfect right until the owner
consummate his intention and stamp the symbol upon an
article of merchandise which he desires to sell. When that
is done, he will have entered into possession of the exclusive
right to affix that particular symbol to the class of goods to
which it has been appropriated. The symbol and the article
for sale are complements of each other; and it would be as
illogical to term such symbol a trade-mark before affixing it
to goods in trade, as to term one's loose autograph his signa-
ture, although it be the exact representation of the signature
which he intends to apply to an instrument in writing."
§ 130. A trade-mark is nothing more nor less than one's
commercial signature to his goods; * and the mark and the
1 “There can be no right to the exclusive ownership of any symbols or
marks universally in the abstract.” Ld. Ch. Westbury, in Hall v. Barrows,
4 De G., J. & S. 150; 33 L. J. Ch. 204; 10 Jur. (N. s.) 55; 9 L. T. (N. s.) 561;
12 W. R. 322; 3 N. R. 259. By same, Leather Cloth Co. v. Am. Leather Cloth
Co., 11 Jur. (N. s.) 513. See also The Dixon Crucible Co. v. Guggenheim, and
Candee, Swan, & Co. v. Deere & Co., ubi supra. All courts agree in this doctrine.
* The court, in Leidersdorf v. Flint, 8 Biss. 327, borrowed this phrase.
§ 131.] DEFINITION AND NATURE OF A TRADE-MARK. 143
goods bear the same relation to each other as do the positive
and the negative forces of electricity to each other; and in'
their apposition they mutually uphold and sustain. We must
be cautious to discern between things whose natures differ,
and assign to each its peculiar and appropriate sign, by words
which fit close to the thoughts, or the mind will be confused
by a jumble of marks of commerce, of patented designs, of
copyrights, of labels, of advertisements, and other matters
of incongruous natures. A definition should instantly convey
the true idea of the thing, and indicate the precise species of
a genus. A trade-mark is in its nature separate and distinct
from everything else in the world; and yet we frequently
hear of writers, lawyers, judges, by the most heedless use of
the term, leading others into error. Things must be called
by their right names. A homicide may mean a murderer
amenable to criminal law; or he may be one whose action was
justifiable as necessary to the preservation of his own life; or
a sheriff reluctantly carrying into execution the sentence of
a court; or a soldier in the performance of imperious duty.
Astrology, in its etymological signification, is the science of
the stars, and among the ancients it was synonymous with
astronomy; yet no thoughtful person would confound the two
terms at the present day. Before the nice distinctions con- .
nected with the law of trade-marks were well understood,
learned jurists, who adorned the bench, might have been
pardoned for ambiguity of expression, in confounding labels
and marks; but the time for palliating such carelessness is
past, and the particular symbol of commerce must be care-
fully distinguished from its analogues.
§ 131. The sciolist asks, Why need we seek the technical
name 2 Cannot justice be applied under one name as well as
under another? Rights are rights, says he, whatever name
they bear; and the tendency of this utilitarian age is towards
simplification, so that one comprehensive term may signify
many things. Now, what necessity is there for the loose,
indefinite application of a scientific designation, so that it may
signify many things, perhaps of natures very unlike? It may
be, indeed, that in some cases the paucity of terms of art or
144 LAW OF TRADE-MARKS. [$ 133.
/
science compels a plurality of uses for one word; but as re-
gards our present subject, no such necessity exists. We must
be exact in specifying the name of any kind of legal right, in
order to obtain the remedy that the law prescribes for a given
case. Generic terms must be avoided. For example, in a
statute to punish horse-stealing, we would not use “horse”
and “animal” as convertible terms, for the word “animal’’
might mean a cow, a sheep, a hog, or a dog. To prevent
confusion, we must say exactly what we mean. We would
not charge a person with the commission of a crime; but
would specify the exact offence imputed to him. We must
seek to ascertain the peculiar physiology of the thing; then
its proper designation is the key that unlocks many of the
secret places of the law connected with it.”
§ 132. This question may be asked: If labels, for instance,
are not technical trade-marks, why permit evidence of their
contents to be introduced, as is done in many cases? For
this reason: although labels are not constituent elements of
trade-marks, and are but vehicles for the same, all the details
may be proved as surrounding facts, circum stantia, and should
be brought forward as witnesses of a fraudulent intention. It
must be conceded that any one may lawfully copy another's
signature, or emblem of personality, and may publish it to the
world; but if, in addition to the act of imitating, he use it in
a peculiar manner to obtain a false credit, as by applying it to
merchandise intended for sale, then his intent may be inferred
from all the minor facts. The maxim, NoScitur a sociis, is
applicable. It is known by its companions: it is discoverable
by what precedes and follows.
§ 133. We know that mere labels, notices, advertisements,
and business cards, possess none of the essential characteristics
1 Since this section was first published, events have furnished many demon-
strations of the necessity for strict definitions. Uncertainty in this respect may
thwart all attempts to gain protection. Nearly all the principal nations now
require registration as an indispensable prerequisite to judicial redress; and
registration is applicable only to technical trade-marks. If, by inadvertence
or error of judgment, matter that is insufficient in law be admitted to registra-
tion, courts will set the registration aside.
* See “Physiology of Contracts,” in Anthon's Law Student.
§ 133.] DEFINITION AND NATURE OF A TRADE-MARK. 145
of the common-law symbol of trade, and therefore are not en-
titled to registration. For that reason, a label reading, “For
Sale at Record Office, Topeka”; 1 or one with “Gold Medal
Clothing,” for a legend to be affixed to wearing-apparel; * or
“Schenck's Water-proof Tags and Labels’’; 8 or the name
of manufacturer, place of business, and description of goods,
stencilled, or painted, or labelled on said goods, would be re-
jected by the Patent Office as not being technical marks of
manufactures or commerce. In one case, the applicant, a cor-
poration created by authority of the State of Pennsylvania,”
for the purpose of manufacturing and selling “fruit-jars, bot-
tles, and other vessels which are automatically and hermeti-
cally sealed when full,” claimed the simple name of “Valve
Jar,” which was the true name of the thing made and sold by
them. Those words on a label could not have the magical
effect of transmuting the label into a thing of another nature.
The application was rejected. So, also, where the proposed
mark consisted of the words “Musical Note Paper,” and the
name and residence of the manufacturers of a certain kind of
note-paper.” A few bars of music were printed upon the first
page of each sheet, as a fanciful heading. The counsel in-
geniously argued that there was nothing descriptive in this
designation, as the paper could not truly be termed musical,
and that the words were not a mere label, but in verity
were an arbitrary symbol, - a good trade-mark. Rejected.
— The words “Johnson's American Anodyne Liniment "
shared the fate of the preceding case, and upon the same
grounds.” The answer to the application was, that any person
by the name of Johnson has a perfect right to make and vend
liniment, anodyne liniment, or American liniment; and, in of-
1 Ex parte Crane & Byron. Not reported.
2 Ex parte Hammerslaugh & Co. The New York Ct. of App. in Taylor v.
Gillies et al., 59 N. Y. (14 Sickels,) 331, cited with approbation the rejection of
the words “Gold Medal.” See case of Batty v. Hill, 1 H. & M. 264; 8 L. T.
(N. s.) 791; 11 W. R. 745; 2 N. R. 265. “Prize Medal, 1862,” not a valid mark.
8 Ex parte C. S. Schenck; and Ex parte Atlantic White Lead Co. Not
reported.
4 Ex parte Valve Jar Co. Not reported.
5 Ex parte Schmidt & Curtius. Not reported.
6 Ex parte J. S. Johnson & Co., 2 Off. Gaz. 315.
10
146 LAW OF TRADE-MARKS. [$ 134.
fering it for sale, to call it by its proper name. The right to
the use of the combination of words not being exclusive, said
words could not be a trade-mark, being merely a label or
advertisement, and nothing more. — A slight degree of hesita-
tion was felt in rejecting the words “True-fit Shirts,” and
“Cable-stitched Kid Gloves"; but upon reflection it was de-
cided that these combinations of words expressed the correct
names of the articles to which they were affixed, and were
but the use of ordinary language, free to all who sell true-
fitting shirts and gloves made with the cable-stitch." — And
still more hesitation was experienced when were filed the
words “James Hennessy, Cognac,”” as a mark used upon
brandy by the applicants or their predecessors in business
for fifty-five years. This seemed to be a matter of hard-
ship. Yet for more than half a century the firm had mis-
taken a mere label for the time-honored, dignified trade-mark.
Remedy for its violation must be sought under local laws,
or under the general powers of a court of equity for unfair
competition in trade. —If one claim titles of firms, or names
of manufactures, to which he shows no vested right, he will
not be deemed to possess even a label. As an instance of
persons seeking their own discomfiture, while swelling the
revenue of the Patent Office by one hundred dollars, read
these four applications.” Claims, – the words “Bristol
Watch Co., Bristol, Mass.”; “G. M. Wilson, Chicago, Ill.”;
“New England Watch Co., Providence, R. I.”; and “Chicago
Watch Co., Chicago, Ill.” These names, said the applicants,
are used upon watches and watch-movements; and this same
petition states that no other person, firm, or corporation has
a right to the use of said trade-marks, or of marks substan-
tially the same. Not even substantially the same! Rejected.
§ 134. Generic Names, or names merely descriptive of an ar-
ticle of trade, of its qualities, ingredients, or characteristics, are
not valid trade-marks.” This is a general doctrine, but it has
1 Ex parte Two cases, Fisk, Clark, & Flagg. Not reported.
2 Ex parte James Hennessy & Co. Not reported.
* Ex parte Louis Strasburger & Co. Not reported.
* Canal Co. v. Clark, 13 Wall. 311.
§ 134.] DEFINITION AND NATURE OF A TRADE-MARK. 147
its exceptions that will be noticed. Under the general rule,
courts will refuse protection to claims for exclusive right of user
in names of vendible commodities, that others must use in ne-
cessary description. As illustrative of this rule, the following
cases may properly be cited. The first dates back to 1783, in
the King's Bench, where the plaintiff manufactured and sold,
in succession to his father, a medical preparation under the
name of “Dr. Johnson's Yellow Ointment,” and the defend-
ant did the same thing. Lord Mansfield, C. J., nonsuited the
plaintiff, on the ground that the name was property common to
all." So, also, “Schiedam Schnapps,” ” or “Aromatic Schie-
dam Schnapps”; * “Club-House Gin’”;4 “Paraffin Oil”; 5
“Night-Blooming Cereus”;% “Old London Dock Gin"; 7
“Liebig's Extract of Meat”; 8 “Desiccated Codfish "; 9
“Ferro-phosphorated Elixir of Calisaya Bark”; 19 “Lacka-
wanna Coal”; it “Razor-Steel”;” “Cundurango Ointment,
C. O. ”; 18 “Macassar Oil”; 14 “Lieutenant James' Horse
Blister”; 15 “Golden Ointment”; 16 “Parson's Purgative
Pills, P. P. P.,” and “Johnson’s American Anodyne Lini-
ment "; 17 “True-fit Shirts,” and “Cable-stitched Gloves”; *
“New Manny Harvester”; 19 “American Sardines”; * “Chlo-
1 Singleton v. Bolton, 3 Doug. 293.
2 Wolfe v. Goulard, 18 How. Pr. 64.
8 Burke v. Cassin, 45 Cal. 467; 13 Am. R. 204; Wolfe v. Hart, 4 Vict. L. R-
Eq. 125, 134.
4 Corwin v. Daly, 7 Bos. 222.
5 Young v. Macrae, 9 Jur. (M. s.) 322.
6 Phalon v. Wright, 5 Phila. 464.
7 Binninger v. Wattles, 28 How. Pr. 206.
8 The Liebig’s Extract of Meat Co. (Limited) v. Hanbury, 17 L. T. (N.S.) 298.
9 Town v. Stetson, 5 Abb. Pr. (N. s.) 218; 3 Daly, 58; R. Cox, 514.
10 Caswell v. Davis, 58 N. Y. 223; 17 Am. R. 233.
11 Canal Co. v. Clark, supra.
12 Re Roberts, Com. Dec., 1871, p. 100.
18 Re Blakeslee & Co., Com. Dec., 1871, p. 284.
14 Rowland v. Breidenbach, 1 Trade Marks, 261.
15 James v. James, L. R. 13 Eq. 421; 41 L. J. Ch. 353; 26 L. T. (N. s.) 568;
20 W. R. 434.
16 Green v. Rooke, W. N. 1872, p. 49; L. J. Notes of Cases, 1872, p. 54.
17 Re Johnson & Co., 2 Off. Gaz. 315.
18 Re Fisk, Clark, & Flagg. Not reported.
19 Re Graham, 2 Off. Gaz. 618.
20 Re The American Sardine Co., 3 Off. Gaz. 495.
148 LAW OF TRADE-MARKS. [$135.
rodyne”; 1 “Nourishing Stout”;” “Tasteless”; 8 “Für Fa-
milien Gebrauch” (For Family Use), and “Lawrence Fei-
ner Familien Flannel” (Lawrence Fine Family Flannel); *
“Croup Tincture”; * “Cough Remedy” ; 6 “Crack-Proof”; 7
“Cachemire Milano,” in connection with the picture of the
Cathedral of Milan, etc.; * “Highly Concentrated Compound
Fluid Extract of Buchu”; 9 “Egg Macaroni”; 19 “Angostura
Bitters”; ii “ Allcock's Porous Plasters”;” “Post-Office Di-
rectory”;18 “Rye and Rock”;14 “Sliced Animals,” “Sliced
Birds,” and “Sliced Objects”;” and “Straight-Cut,” as ap-
plied to cigarettes.” In all these instances, collections of
words and letters were adjudged to be merely ordinary lan-
guage for ordinary purposes. These are names of things ne-
cessarily or commonly descriptive of them. To the foregoing
citations may be added, sometimes, descriptive geographical
names of the same class as “Lackawanna ’’ above cited ; as
“Moline,” it “Durham,” 18 and “ Glendon.” 19
§ 135. A Trade-Mark may be valid, although suggestive of
Quality. — Brown, J., in Burton v. Stratton, said,” that if the
primary object of the trade-mark be to indicate the origin or
1 Browne v. Freeman, W. N. 1873, p. 178.
* Raggett v. Findlater, L. R. 17 Eq. 29; 43 L. J. Ch. 64; 29 L. T. (N. s.) 448;
22 W. R. 53.
8 Re Dick & Co., 9 Off. Gaz. 538.
4 Re Lawrence & Co., 10 Off. Gaz. 163. 5 Re Roach, 10 Off. Gaz. 333.
6 Gilman v. Hunnewell, 122 Mass. 139.
7 Re The Goodyear Rubber Co., 11 Off. Gaz. 1062.
8 Re Warburg & Co., 13 Off. Gaz. 44.
9 Helmbold v. Helmbold Manufacturing Co., 53. How. Pr. 453.
10 Re Dole Brothers, 12 Off. Gaz. 939.
11 Siegert v. Findlater, 7 Ch. D. 801; 47 L. J. Ch. 233; 38 L. T. (N. s.) 349;
26 W. R. 459. See also $194, infra.
12 Re Brandreth, 9 Ch. D. 618; 47 L. J. Ch. 816; 27 W. R. 281.
18 Kelly v. Byles, 40 L. T. 623.
14 Van Beil v. Prescott et al., 82 N. Y. 630.
15 Selchow et al. v. Baker, 93 N. Y. 59.
16 Ginter v. Kinney et al., 12 Fed. R. 782.
17 Candee, Swan, & Deere v. Deere & Co., 54 Ill. 439; 5 Am. R. 125; 4 Am.
L. T. 266; 10 Am. L. Reg. (N. s.) 694.
18 Blackwell v. Wright, 73 N. C. 310.
19 The Glendon Iron Co. v. Uhler, 75 Pa. St. 467; 15 Am. R. 599; 13 Am. L.
Reg. (N. s.) 543; 6 Off. Gaz. 154.
20 12 Fed. R. 696. tº
§ 135.] DEFINITION AND NATURE OF A TRADE-MARK. 149
ownership, the mere fact that the article has attained such a
wide sale that the mark has also become indicative of quality
is not of itself sufficient to debar the owner of protection, or
make it the common property of the trade. To hold other-
wise would be to deprive the owner of the exclusive right of
his trade-mark just at the time when it had become most valu-
able to him, and stood most in need of protection. Rand, J.,
in Sohl v. Geisendorf,' held that the fact that the mark, to
some extent, indicated quality, did not disentitle the plaintiffs.
Bacon, W. C., in Ransome v. Graham,” held that, where a
manufacturer placed on his goods a series of combinations of
letters as trade-marks, each of which served to indicate to pur-
chasers, (1.) that the goods were made by the person using
the mark, and (2.) the quality of the goods, as compared
with the goods respectively bearing the other marks in the
series, the marks being exclusively used by the manufacturer,
such series of letters were valid trade-marks, and might be
registered, notwithstanding that they were indicative of the
quality of the goods to which they were applied.— Section 66
of the English Trade-Marks Act of 1883 adopts and amplifies
this decision. The Earl of Selborne, L. C., in a recent case,”
said: “I do not at all mean to say that it is impossible that
a word which is used to describe an article may also, if the
proper means are taken at the proper time, be used as a trade-
mark; but when any such double use takes place, it is most
important to remember the difference between the use of a
name as a trade-mark, and the use of it as a descriptive term.
If the article itself is publici juris, and anybody may make it,
the people who make it are at liberty—providing they do so
honestly—to describe it by the descriptive term by which it
is properly known in the trade, and no right of monopoly to
that descriptive term can be acquired otherwise than by using
it as a trade-mark.”—The Supreme Court of Pennsylvania, in
1867, held that the words “Dr. J. M. Lindsey's Improved
1 1 Wilson (Ind.) 60. 2 51 L. J. Ch. 897; 47 L. T. 218.
8 Re Leonard & Ellis's Trade-Mark, and Leonard & Ellis v. Wells, 26 Ch. D.
288,
* Fulton v. Sellers, 4 Brewst. 42; Cox's Manual, case 279.
150 Law of TRADE-MARKs. [$135.
Blood Searcher” constitute a legitimate trade-mark, although
clearly indicative of the medical preparation that their as-
signor, Lindsey, had originated. So, under similar circum-
stances, the Supreme Court of Louisiana held “Bocker's
Stomach Bitters” to be a valid trade-mark." The words
“Family Salve” were held to be a distinctive heading within
Section 10 of the English act of 1875; * but it was doubted
whether the scientific name of a tree, “Limetta,” was so suf-
ficiently a distinctive word as to be capable of registration as
an old mark in respect of lime-juice.” In France, as great lib-
erty prevails in this respect of words that are not essentially
necessary to a description of articles to which they are applied.
Thus the Tribunal of the Seine, in 1875, held that the fancy
denomination “Veloutine” affixed to a mixture of powder of
rice and bismuth, for the toilet, constituted a valid trade-
mark, notwithstanding its suggestion of a velvety appearance
of cheeks, on which it might be used.* The Court of Paris,
in 1878, considered the words “Savon de Paris” sufficiently
arbitrary for the purpose, although used for soap made in
Paris.” In the Court of Appeal of Paris,” it appeared that A.
was patentee of a process of neutralization and refining of
oils. To distinguish his products obtained through the process,
he registered, as a trade-mark, the words “Huiles neutres
raffinées.” Notwithstanding the fact that each of the words,
taken separately, belongs to the common language, the union
of them forms a denomination which, before the deposit (for
registration) had been made by the plaintiff, had never been
used in commerce. It specifies in a distinct manner his pro-
ducts under Article 1 of the French law of June 23, 1857.
This case goes to an extreme length, even surpassing that
wherein, in 1843, the Tribunal of Commerce of Paris, in ad-
vance of the statute, held that the words “Siccatif brillant”
(brilliant dryer), although indicative of quality, were never-
1 Funke v. Dreyfus, 34 La. Ann. 80; 44 Am. R. 413.
* Reinhardt v. Spalding, 49 L. J. Ch. 57; 28 W. R. 300.
8 Rose v. Evans, 48 L. J. Ch. 618.
4 Fay v. Durand, 20 Annales, 245.
5 Michaud et al. v. Lemenu et al., 23 Annales, 59.
* A . . . . v. Z. ..., Bulletin Officiel for 1884, p. 278.
§ 136.] DEFINITION AND NATURE OF A TRADE-MARK. 151
*
theless not a necessary title of the article to which they were
affixed, and were therefore a valid trade-mark." The Court
of Orleans, in 1882, held that the words “Papier hygiènique”
and “Papier Goudron de Norwege,” for cigarette-paper, con-
stituted valid trade-marks, although more apt words could not
be chosen to indicate that one was health-preserving paper,
and the other Norway-tar paper.” In 1879, the Court of Cassa-
tion held that, in the phrase “Eau de toilette de Lubin,” the
name of Lubin, the originator, was a valid trade-mark.” This
decision of the supreme court of France seems to settle the
law for that country. It is safe to conclude, in the language
of our own Patent Office, that a trade-mark which is merely
inferentially or remotely descriptive is valid.*
§ 136. The Line of Demarcation is not always easily
drawn. — A considerable amount of close reasoning upon
stated facts is at times demanded, before a court can deter-
mine whether or not a name is necessarily descriptive, and
therefore not entitled to protection. One cannot wonder
that on that point mistakes are made. Infallibility does not
belong to this subject. Let us take as illustrations of a
contrariety of opinions the case of “Worcestershire,” as ap-
plied to sauce. The Supreme Court of New York held that
the name, being that of the local city of manufacture, could
not be protected as a trade-mark.” The Supreme Court of
Missouri seemed to hold otherwise, in a criminal case.” Later
yet, Jessel, M. R., held that, because the name had long been
used by sauce manufacturers other than the plaintiffs, it was
not a trade-mark.7 Finally, a United States Circuit Court
decided it to be a generic term, holding that the former
decree in England, not appealed from, was a complete bar to
a suit in this country.” There is not much doubt that it was
1 Re Raphauel, Huard, Marques de Fabrique, p. 15.
2 Bardou & Son v. Lacroix, 29 Annales, 226.
* F. Prot & Co. v. Jules Avice et al., 24 Annales, 345.
4 Re Heyman, 18 Off. Gaz. 922.
5 Lea v. Wolff, 15 Abb. Pr. 1; 46 How. Pr. 157; 1 Am. L. T. (N. s.) 400.
6 Missouri v. Gibbs, 56 Mo. 133.
7 Lea v. Millar, Seton, 4th ed., 242.
* Lea et al. v. Deakin, 11 Biss. 23.
152 LAW OF TRADE-MARKS. [$ 136.
originally a valid trade-mark; but by tacit abandonment it
had become common property to describe a particular kind
of sauce. “Yankee” is another term about which lawyers
did not at first agree, although a court in the city of New
York, in 1857, granted an injunction against its use as an
element of an elaborate label.” In 1879, a United States
Circuit Court, by Blodgett, J., in an able opinion, put all
questions at rest.” He said that it is not a geographical
term, nor a proper name, but a designation applied by the
dwellers in one locality to the dwellers in another; that it
is not the name of any certain locality, and the complain-
ants had a right to adopt it as their trade-mark. Further, if
it had, since the date of its adoption, by a more general use
and definite application, come to designate any certain local-
ity, which was not conceded, such subsequent use cannot
affect the complainants’ rights. This reasoning seems to be
more just than that of the Supreme Court of Pennsylvania,
which apparently held that a lawful trade-mark might be
extinguished by the fact of incorporation of a borough of the
same name.” “Vienna" was upheld as a trade-mark for
bread, in 1881, in New York; 4 and, in 1883, the St. Louis
Court of Appeal said that, “Vienna bread” being a common
article, no person can acquire by use an exclusive right to
sell it.” That virtually decided that it was not a trade-mark.
“Bocker's Stomach Bitters,” although the true name of the
medicine, was recently, by the Supreme Court of Louisiana,
held to be a valid trade-mark;" yet, about the same time, the
Supreme Court of Georgia held that the word “Snowflake ’’
could not be a trade-mark for crackers, for the reason that
it is a mere descriptive term of the quality of flour." It is
difficult to understand the philosophy of this decision; for
1 Ante, § 119 et seq. 2 Williams v. Adams, 8 Biss. 452.
* The Glendon Iron Co. v. Uhler, 75 Pa. St. 467; 15 Am. R. 599; 13 Am. L.
Reg. (N. s.) 543; 6 Off. Gaz. 154.
4 Fleischmann v. Schluckmann, 62 How. 92; 3 L. Bull. 91; 20 Daily Reg.,
No. 55.
* Snodgrass v. Welle, 11 Mo. App. 590.
* Funke v. Dreyfus, 34 La. Ann. 80.
* Larrabee v. Lewis, 67 Ga. 561; 44 Am. R. 735.
§ 137.] DEFINITION AND NATURE OF A TRADE-MARK. 153
surely it seems, to the common mind, that that word is not
necessarily descriptive, and, if not, it is capable of being used
as an arbitrary symbol. It is a general rule that a man has
an absolute right to affix his own name to his merchandise; I
yet the Supreme Court of Iowa lately forbade a man to place
his own name, the same as that of his rival, on his manufac-
ture, and held “Shaver Wagon” to be a valid trade-mark for
his competitor's wagons.” The rule is against the right of
exclusive use. of a geographical name; * yet a court held
the name of a place to be a valid trade-mark for the party
that originally manufactured there, but who had removed,
and against a new-comer who manufactured there. That was
the law of the case until a superior court reversed it; but
it ceased to be law when the court of last resort, the House
of Lords, reversed the decision of the intermediate court, and
established “Glenfield " as a legal trade-mark.” So a new
name of a medicine was held by one court of New York to
be an arbitrary symbol, because not philologically correct;"
but the Court of Appeals reversed the case, and said that it was
a necessary designation, and therefore not a technical trade-
mark.” By this time, the reader will agree with the Federal
Judge Brown, who said, in 1882, “There are few classes of
cases in the whole domain of the law so difficult to reconcile
as those wherein the validity of a trade-mark is discussed.”7
§ 137. The Style, or Peculiarity of Package, is not per se a
Trade-Mark. — But the package, case, or vessel, in which the
commodity is put, if prepared in a peculiar or novel manner,
though in itself not a trade-mark, may very properly be a
very important part or adjunct of it.” The following alleged
1 Meneely v. Meneely, 62 N. Y. 467. (See §§ 201–203, 393, as to use of one's
own name.)
* Shaver v. Shaver, 54 Iowa, 208; 87 Am. R. 194.
8 See § 182 et seq., infra.
* Wotherspoon v. Currie, Malins, W. C., 22 L. T. (N. s.) 260; 18 W. R. 562.
James, L. J., 42 L. J. Ch. 130; 23 L. T. (N. s.) 443; 18 W. R. 492. House of
Lords., L. R. 5 H. L. 508; 42 L. J. Ch. 130; 27 L. T. (N. s.) 393.
5 Caswell v. Davis, 4 Abb. Pr. (N. s.) 6; 85 How. Pr. 75; R. Cox, 429.
6 58 N. Y. 223; 17 Am. R. 233.
7 Burton v. Stratton, ante, § 135.
8 Cook v Starkweather, 13 Abb. Pr. (N. s.) 392.
154 LAW OF TRADE-MARKS. [$ 137.
trade-marks were not sustained as such by courts: a whiskey
barrel of peculiar dimensions; * a small pail of ornamented
tin for paper collars;” a package of a certain size, shape, and
color, when defendant’s label contained his own name in dis-
tinct characters;* a silver-foil paper with a blue band, as a
wrapper for soap, the band being carried around the cake
lengthwise.*—Yet, in many instances courts have granted in-
junctions against the use of such things; but it will be found
on examination that there generally existed.circumstances
of fraudulent intent to encroach on a technical trade-mark,
without actually imitating it; or, at least, there was evidence
of unfair competition. Thus, in England, in 1831, where
the plaintiff, in succession to his father, prepared calcined
magnesia, and sold it in bottles of a peculiar shape, labelled
“Henry's Calcined Magnesia, Manchester,” and the defend-
ant began to prepare magnesia, and to sell it in similar bot-
tles, similarly labelled, (although it does not appear that a
technical trade-mark was copied,) an injunction was granted
against such acts.” — So, also, where it appeared that there
was sufficient doubt about the exclusive right of the plaintiff
to use the words “Genuine Yankee * in connection with soap,
the court granted an injunction, because, having adopted a
form and size of cake, a particular mode of covering and
packing, a combination of three labels on each cake, an ex-
terior handbill upon the box, so arranged as to indicate their
manufacture, the defendant had copied the form, appearance,
color, style, and substantial characteristics in all respects,
which distinguished the plaintiff’s goods.” – In 1872, Lord
Romilly, M. R., not only restrained defendants from publish-
ing a book with a title somewhat resembling that of the com-
plainant, but also from imitating the arrangement, binding,
&c. in such a way as to deceive.7 — In the same year, where
1 Moorman v. Hoge, 2 Sawyer, 78; 4 Am. L. T. 217; 6 Am. L. Rev. 365.
* Harrington v. Libby, 12 Off. Gaz. 188.
8 Frese v. Bachof, 13 Blatch. 234.
4 Enoch Morgan's Sons v. Troxell, 89 N. Y. 292; 11 Abb. N. C. 86.
5 Henry v. Price, 1 Leg. Obs. 364.
6 Williams v. Johnson, 2 Bos. 1.
7 Mack v. Petter, L. R. 14 Eq. 431; 41 L. J. Ch. 781; 2 W. R. 964,
§ 137.] DEFINITION AND NATURE OF A TRADE-MARK. 155
the plaintiff, being a manufacturer of a preparation for dress-
ing leather, sold his preparation in bottles enclosed in wrappers
peculiarly colored and arranged, and the defendant sold a
similar preparation in similar bottles, and gradually assimi-
lated his wrappers more and more to those of the plaintiff, an
injunction was granted."— A complainant had always used
on cigarettes the symbol “*” in red, and registered that as
his trade-mark, and the defendant sold other cigarettes under
labels essentially different. Held, that a limited injunction
should be granted, restraining the use of that symbol in the
identical form, style, size, and color, in which the complain-
ant had used and registered it, and that notwithstanding that
the defendants had used it on a label which was in other re-
spects quite unlike that of the complainant; and yet the court
expressed a doubt as to the validity of the symbol as a tech-
nical trade-mark.” — The complainants, a firm of tea-mer-
chants, sold “Hamburg Tea” in a peculiar form of package,
the tea being enclosed in long, cylindrical parcels with pink
wrappers, and with crimson papers of directions, and yellow
ones of warning, tied in, and having a white label with the
firm name within a circle pasted across the ends of the string,
and another white label with the same and the words “Ham-
burg Hopfensack, 6’ embossed thereon pasted on the package.
The defendant at first put up his tea in a precisely similar
way, with the firm name and address; but after the com-
mencement of the suit discontinued the use of the firm name
and address, and substituted his own. Injunction and account
ordered.”— In the Supreme Court of the United States, in
1877, it was held that, where the defendant had placed his
goods in boxes sealed similarly to those of the complainant,
and enclosed in wrappers of similar color and appearance,
'under a name having the same sound as complainant's, it was
not necessary to prove infringement of a specific trade-mark,
if the defendant had acted with a fraudulent intention.*—
1 Brown v. Mercer, 37 N. Y. Superior Ct. 265.
* Kinney v. Allen, 1 Hughes, 106; 4 Am. L. T. (N. s.) 258.
8 Frese v. Bachof, 13 Off. Gaz. 635.
* McLean v. Fleming, 96 U. S. 245; 13 Off. Gaz. 913.
156 LAW OF TRADE-MARKS. [S 137.
Although an alleged trade-mark, the name “Aromatic Schie-
dam Schnapps,” was held to be descriptive and incapable of
appropriation, an injunction was granted, as the bottles and
wrappers used by the defendant were intended and calculated
to deceive ; and on appeal to the full court the decree was
affirmed. Per Stawell, C. J.: “We are to consider whether
the infringement of the plaintiff’s rights has been proved, not
by taking particular isolated points, but by looking at the
general resemblance of the packages, labels, bottles, and other
points.” 1 — A complainant alleged that, to individualize and
identify his bluing, he adopted a peculiar and original form
and style of package, consisting of the blue cylinder having
a red top, by which they were known. He also set forth
that his method of packing, including the size, shape, and
color of his large packages, was original with him, and had
never been varied. All the leading incidents and character-
istics thereof had been imitated by the defendant. It was
one element of defence that there was not any technical trade-
mark in the case. The court said: “What we decide is, that
whether the complainant has a trade-mark or not, as he was
the first to put up bluing for sale in the peculiarly shaped
and labelled boxes adopted by him, and as his goods have
become known to purchasers, 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.””— In a case in the Court
of Appeals of Kentucky, in 1888,” both parties were manu-
facturers of ploughs. The defendants dismantled ploughs of
the complainants’ manufacture, and with great accuracy cop-
ied every important and ordinarily noticeable part of them.
They branded them substantially in the same manner and
style. They copied letters, numerals, and words of caution
borne by the genuine ploughs, and stencilled them on the same
1 Wolfe v. Hart, 4 Vict. L. R. Eq. 125, 134.
* Sawyer v. Horn, 4 Hughes, 239. —Same principle applied in Joseph Dixon
Crucible Co. v. Benham, 4 Fed. R. 527.
* B. F. Avery & Sons v. Thos, Meikle & Co., supra, § 43.
§ 137.] DEFINITION AND NATURE OF A TRADE-MARK. 157
eorresponding places. They even varnished their ploughs as
the genuine ploughs were varnished. They had had a consul-
tation before they attempted the imitations above described,
and determined, in the language of one of the members of
their firm, “come what may, to take the bull by the horns.”
About their intention there was no doubt.” Yet, in the face
of all these facts, the court below decided against the com-
plainants. They appealed. The appellate court conceded
the fact that the trade-mark proper had not been imitated in
the slightest degree. The purpose of all the crafty cunning
was to neutralize and in effect destroy its efficiency. Injunc-
tion and account for resulting profits. – A case in the Tri-
bunal Civil of Bordeaux, in 1875,” is to the same effect as that
of the Avery case. It was held that, where distinctive com-
plex signs consist in the denomination, the style of package,
special form and color, and particular mode of corkage, it is a
fraudulent act to imitate the general aspect and principal dis-
tinctive signs, although the infringer should use a completely
different denomination, the details being such as would escape
the attention of the illiterate. In that case, the defendant
had carefully avoided an imitation of the trade-mark proper,
the fanciful name “La Benedictine’’; but the court said that,
in creating the receptacle for his liquor, styled by him “Saint
Emilion,” the author of the wrong had evidently before his
eyes the genuine package. He was accordingly condemned to
pay fifteen thousand francs as damages, and costs. Frequently,
since the last-cited case, the French and other Continental
courts, have considered the principle therein involved, and,
where unfair competition has been apparent, the decisions have
been parallel. In the Tribunal Civil of Lille, France, in 1883,”
the following state of facts appeared. The plaintiff, a corset-
maker, had adopted and registered a label bearing his trade-
mark, consisting of the initials “N. T.” and a hive surrounded
by bees, and also the fanciful denomination “à la Ruche.”
The firm of Paul Dutoict & Co., of Brussels, Belgium, had
1 See quotation, ante, § 43.
* Legrand ainé v. Louit frères, 26 Annales, 75.
* Notelle v. Dutoict, Marlin, & Co., and Paul Dutoict & Co., 27 Annales, 344.
158 LAW OF TRADE-MARKS. [$137.
also registered a label bearing a beehive of a yellow color
on an azure ground, with the inscription, “P. D. Bruxelles,
Paris.” The firm of Dutoict, Martin, & Co. had obtained
from P. D. & Co. a license to use the trade-mark in France on
similar goods, and they had deposited it in the proper office,
in their own name. The plaintiff attacked both firms, de-
manding that the registrations be annulled, with damages.
The point in dispute was as to the defendants’ right to use
the emblem of a beehive, although it was dissimilar to that of
the plaintiff. The plaintiff had attached so little importance
to the details of the hive, that, in later registrations, he had
the figure, form, and colors completely different from the first,
with diverse accompanying attributes; but, despite these
notable differences, it was held that the dominant and essen-
tial element remained always the same, - the emblem of
the hive and the bees. The court said, in substance: Inas-
much as in the escutcheon forming the centre of the vignette
of the defendants is found a hive surrounded by bees, it
imports little that their escutcheon is accompanied with nu-
merous accessories, for that which forms the object of the
emblazonry, of which the surrounding attributes are but the
supports, is the beehive of Notelle. That is so much so,
that the corsets invested therewith are offered and sold as
“Corsets à la Ruche.” As to applications external to the
products themselves, D., M., & Co. have employed the em-
blem of the hive on their letter-paper and their envelopes,
and such use by a rival merchant of an emblem, the use
of which properly belongs to the plaintiff, is of a nature to
lead to confusion, so that the latter has a right to redress
for the injury resulting to him. Notelle is the exclusive
proprietor of the trade-mark, the emblem of the hive, and
the denomination “à la Ruche ’’ together, and separate, and
independent of all form, color, and accessories. The mark
of the defendants is an imitation. They are therefore en-
joined from further use of the emblem of a hive in any
form or way on products similar to those of the plaintiff, or
on prospectuses or papers of correspondence."
1 See ante, § 89b, “The mere Form of a Vendible Commodity.”
§ 138.] DEFINITION AND NATURE OF A TRADE-MARK. 159
§ 138. Misconceptions as to the Nature of arbitrary Symbol-
ism. — A few examples on this point cannot fail to be instruct-
ive. An application for registration described the thing as
“a label to be used for supplementary dials, by application or
transfer of the same on the crystal glasses of watches, clocks,
or other timepieces.” The article was a disk of thin paper
having the usual gradations, and figures indicating hours,
painted on it, as ordinarily in watch-dials, so that when
pasted to the inside of a watch-crystal the figures could be
read from the outside in their positions." Rejected, because,
1. not a label; * 2. because matter that enters into the struc-
ture of an article, so as to have a mechanical function, is a
part of the article itself, it being a common right to use any
mechanical device, unless the use is restricted by patent; *
3. the identical thing claimed as a mere label was already
covered by a mechanical patent to another.” The Examiner
also referred to two applications” for registration of dials for
calendar-clocks. Moorman v. Hoge, in 1871,” is a leading case
on this point. The plaintiffs, whiskey manufacturers, sold
their product in a barrel of peculiar dimensions and form,
which barrel they claimed as a trade-mark, irrespective of the
brands on it. Sawyer, J., said that he had found no case
where the use of a package of peculiar form and dimensions
had been restrained. In Harrington v. Libby, in 1877, the
complainant, a manufacturer of paper collars, sold his goods
in small pails of ornamented tin. Held, that the form of the
pail could not constitute a trade-mark. In White v. Schlecht,
in 1880,8 the device of a drum to contain paper collars was
used, having on the outside a representation of a drum, as
indicating in the market the “drum collar.” The decision,
1 Re George J. Carney, case No. 17,933, filed March 26, 1884.
2 Ex parte Moodie, Com. Dec., Sept. 22, 1884, adopting Worcester's defini-
tion of “label.”
8 Re Gordon, Com. Dec., 1877, p. 108.
4 Trenor's Pat., No. 262,513, of Aug. 8, 1882.
5 Re Daniel J. Gale, Nos. 15,212 and 15,213, one finally rejected Dec. 8, 1882,
and the other June 20, 1883, and neither appealed.
6 U. S. Cir. Ct. of Cal., 2 Sawyer, 78; 4 Am. L. T. 217; 6 Am. L. Rev. 865.
7 U. S. Cir. Ct., S.D. of N. Y., 12 Off. Gaz. 188.
8 14 Phila. R. 88.
160 LAW OF TRADE-MARKS. [$ 140.
refusing an injunction against its use, was necessarily vague,
for the reason that the bill was very indefinite; but at any
rate, it does not controvert the doctrine of this section. The
Patent Office rejected an application 1 where a barrel, con-
structed of light and dark staves alternately placed, for
packages of flour, constituted the alleged mark; and also
where the supposed mark consisted merely of straight lines
intersecting one another, as a guide in cutting off any desired
quantity of the article.” Many other examples of the same
kind of error are referred to in other parts of this book.”
One of the wildest vagaries was manifested as to the sup-
posed validity of a red color for illuminating-oil.” The Com-
missioner indicated a doubt as to its possessing the essential
nature of an arbitrary symbol, but concluded to let it be regis-
tered for what it was worth, for the simple reason that there
was no appeal from his decision. A person having been in-
dicted for imitating it, the court expressed a strong opinion
against its being a trade-mark, and the person was acquitted.”
§ 139. What is Merchandise 2 – This seems at the first
glance to be a puerile question ; and yet it is one that has
sometimes puzzled experienced men of business. We all
know that it means the objects of commerce: whatever is
usually bought or sold in trade, or market, or by merchants;
wares, goods, commodities. Yet a case may easily be sup-
posed where the question cannot be answered without hesi-
tation, when considered in its relation to a trade-mark.
§ 140. This question came up in the Patent Office, in 1872,
in an application for a design-patent for a label with a coupon
attached.” The whole value of the label depended upon the
peculiar configuration, and was intended to be sold to manu-
facturers of a certain kind of paper collar, &c. He who bought
that label thereby obtained a license to sell that particu-
1 Re Halliday Bros., 16 Off. Gaz. 500.
2 Dousman & D. T. Co. v. Ruffner, 15 Off. Gaz. 559.
* See §§ 87 et seq.
4 Re Teter, 17 MS. Com. Dec., p. 120.
5 U. S. v. Rider, before Giles, J., published in Baltimore American, Oct. 8,
1878.
6 C. C. Morgan, assignor to Union Paper Collar Co. of New York.
§ 141.] DEFINITION AND NATURE OF A TRADE-MARK. 161
lar kind of goods, and at the same time he was furnished
with a certificate of good workmanship. Now, what was in-
tended to be sold 2 It was the label. But the label would
have been incomplete without a peculiar mark. Then that
peculiar mark could not be considered to be a trade-mark,
strictly speaking; for a trade-mark is merely the index to
something that is offered for sale. In this case, it was actu-
ally incorporated into, and became an essential component
part of, the commodity. That answers the requirement of the
law in relation to designs. The label was a design, – a matter
of configuration of a new and useful article of manufacture;
and without the peculiar mark it would have no more served
its destined purpose than would a college diploma without
signature. After deliberation, the matter was decided to be
a design.
§ 141. In the Court of Paris, in 1859, Lalande et al. v.
Appel et al., it was decided that tickets or labels, composed
and sold by a lithographic printer, could not be considered as
trade-marks. The plaintiffs, lithographers, complained that
the defendants had counterfeited the designs upon tickets or
labels destined to be sold to vendors of liquors and cosmetics,
to be placed by them upon flasks or bottles. The defendants,
as a point of law, contended that the plaintiffs had no right to
recover, for the reason that the designs upon the tickets were
neither designs of manufactures nor marks for the same, in
the sense of the law of 1793. The reasoning of the court is
perfectly convincing. Among other matters, it was held,
that the plaintiffs' claim was ill-founded, because the tickets
in question were the special objects of their commerce, and
therefore could not be regarded as trade-marks; that the trade-
mark, regulated by the law of the 25th of June, 1857, is the
characteristic sign by means of which commerce distinguishes
the products of fabric or objects of commerce; that the mark
itself cannot be an object of commerce; that by the use which
a merchant makes of a ticket, in applying it to a vase contain-
ing the product of his manufacture, it is possible that the
ticket may become for him a trade-mark, -subject to the
1 5 Annales, 248.
11 *
162 tº LAW OF TRADE-MARKS. [$ 143.
fulfilment of all legal formalities, –for it may be then, as to
him, a sign or distinctive seal of his products, without being
the very object of his commerce: but, as to the plaintiffs,
the tickets can be nothing but the special object of their
industry. Judgment for defendants. On appeal, the decision .
was affirmed.
§ 142. The same question was considered in a case in the
Patent Office, where a lithographer' applied for a trade-mark
to be affixed to labels manufactured and sold by him to
merchants and others. It appeared, however, that he in-
tended the mark to be stamped or printed upon the label, not
as a constituent element, but as a sign of authenticity. Under
that view of the matter, a certificate of registry was allowed.
§ 143. Essential Characteristics. – There are certain infal-
lible indicia of the nature of the symbol known to commerce
and jurisprudence as a trade-mark. These are: 1. Invariabil-
ity, i. e. fixed, positive, unmistakable; 2. Individuality, such
a difference from other symbols as to indicate origin and
ownership; 3. Universality of a right to its use, i. e. good as
a representative of, or substitute for, the owner's signature all
the world over; 4. Eacclusiveness of the right to use; 5. Ap-
plication to merchandise; 6. Use in lawful business ; 7. Truth
and good faith; 8. Duration unlimited but by the trade itself.
(Protection, however, may sooner cease.)”
1 Samuel Crump, Cert. No. 637. * Act of March 3, 1881, sect. 5.
§ 144.] INDICATION OF ORIGIN OR OWNERSHIP. 163
CHAPTER IV.
INDICATION OF ORIGIN OR OWNERSHIP.
§ 144, 145. A phrase not always understood.
§ 146, 147. “Congress Water ’’ a sufficient indication.
§ 148. “Charter Oak” and “Balm of Thousand Flowers.”
§ 149–151. Davol Mills, letter “K” case.
§ 152. Mint-marks denoting origin. .
§ 153–155. Letters of alphabet, — as indicative of quality.
§ 156. Final decision in “A C A * case, — U. S. Supreme Court.
§ 157–160. Stokes v. Landgraff discussed (“Galen,” “Lake,” etc.).
§ 161. Terms in common use to designate trade, etc. ... •
§ 162, 163. “XXX” case discussed.
§ 164, 165. Instances of common or generic terms rejected.
§ 166. “Serpent of Pharaoh’’ case.
§ 167–169. “Cable-Twist Tobacco” case.
§ 170. Colored wax, as seals for bottles.
§ 171–174. “Cable-Twist” case further discussed.
§ 175—177. Decided to be invalid, because descriptive.
§ 178–181. Man's name may lose all personality.
§ 182. Geographical names as trade-marks.
§ 183. “Brooklyn White-Lead” case. -
§ 184, 185. “Anatolia,” “Mount Carmel,” and “Glenfield” cases.
§ 186. “Aramingo Mills” case.
§ 187. “Vallée d’Aure” and “Massy” cases.
§ 188. “Akron” case.
§ 189. “Lackawanna ’case.
§ 190. “La Valentine” case.
§ 191. Examples of geographical names sustained.
§ 192, 193. When is a name merely geographical ?
§ 194. “Angostura Bitters” case.
§ 144. Indication of “Origin or Ownership.”—This is a
phrase that has been the source of much perplexity, simply
because not understood in its legal acceptation. In 1871, in
the first case ever decided by the Supreme Court of the United
States,' Mr. Justice Strong, delivering the opinion of the
* The Delaware & Hudson Canal Co. v. Clark, 13 Wall. 811; 5 Am. L. T.
135; 1 Off. Gaz. 279. " --
164 LAW OF TRADE-MARKS. [$144.
court, said, inter alia: “The office of a trade-mark is to point
out distinctively the origin or ownership of the article to which
it is affixed, or, in other words, to give notice who was the
producer.” But that learned jurist did not mean to intimate
that the name of the producer must necessarily be an element
of the mark, or even accompany it ; for he qualified his lan-
guage by further saying, that “a trade-mark must, either by
itself or by association, point distinctively to the origin or
ownership. . . . The trade-mark must, therefore, be distinct-
ive in its original signification, pointing to the origin of the
article; or it must become such by association.” The forego-
ing was intended as the enunciation of a settled rule. A pur-
chaser feels assured that he is getting a genuine article, when
it bears the same device, emblem, or fanciful denomination
that has been borne by genuine articles of the same kind pre-
viously bought by him. The language of the Supreme Court
1 This language is too limited in scope. A trade-mark may not only denote
origin and ownership, but also indicate the time of manufacture, as in the case of
the marks on fine porcelains of Sèvres. In 1745, a company of eight partners-
under the trade-name of Charles Adam — obtained the privilege of manufactur-
ing the said porcelains during a period of thirty years. Their establishment
was located in the official building of the commission of Vincennes. In 1752, a
decree of Council revoked the privilege, and decided that the pieces of the por-
celains should be marked with a double L introduced in the form of a cipher.
In the following year, King Louis XV. shared a third of the expenses. To
give the mark a chronological value, a letter of the alphabet was added to it,
which was changed every year. Changes went on until the L’s were supplanted
by C's under Charles X. ; a different series, including IP in the form of a mon-
ogram under Louis Philippe ; under the Republic of 1848 the letters RF (Repub-
lique française); and under Napoleon III. an N surmounted by the imperial crown
between the words Décoré à Sevres. Thus authenticity and chronology were
conveniently combined. (See “Chefs-d'OEuvres of Industrial Arts,” edited by
W. Chaffers, F. S.A., pp. 156 et seq.) Another example of a similar nature may
be cited. About the year 1760, a modeller named Kandler executed the prin-
cipal groups that made Saxony famous, and which are only equalled at Sèvres
and Chelsea. To authenticate his productions, the manufacturer began with a
monogram of the king, — Augustus Rex. A sort of caduceus is the mark of the
first period; the crossed swords succeeded it in 1742; and when the swords are
accompanied with a star or a dot, they signify extremely delicate and choice
workmanship executed about the year 1780. (Ibid., pp. 153,154.) See Ex parte
the King of Saxony, before Hall, V.C., in 1878 (1 Trade-Marks, 245). This was
a case involving a right to protection of said marks, another person having
applied for registration of marks resembling them.
§ 145.] INDICATION OF ORIGIN OR OWNERSHIP. 165
of Connecticut, in 1868, throws some light upon this point:
“It may be difficult to give to bare numbers the effect of indi-
cating 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
trade-marks, as any other symbol or device.” This is an opin-
ion that mere numerals may sometimes. indicate origin or
ownership of the merchandise bearing them. But it was not
necessary for the court to positively decide the exact point;
for the numerals were associated with the name of the plain-
tiffs, and the form, color, and general arrangement of the
labels; and, by virtue of that connection, said the court,
formed an important part of the trade-mark itself. The sub-
ject matter of this section will hereinafter be further discussed.
It is sufficient for the present to quote the language of the
Court of Appeals of New York in 1880, in Godillot v. Harris
et al.:* “It is not essential to property in a trade-mark that
it should indicate any particular person as the maker of the
article to which it is attached.” *
§ 145. The difficulty is this: What does distinctively indi-
cate such origin or ownership? This question can be intelli-
gibly answered only after the examination and collation of
many adjudications. Each case necessarily depends to a great
extent upon its own peculiar surroundings. What might indi-
cate origin in one matter might not in another. Sometimes
the name of a proprietor or of a place is required clearly to
convey the indication; again, any simple device may by
association with a particular person or place convey all the
information required. What impression does the mark of
commerce leave upon the vision of the beholder? What asso-
ciations are called up by the sound of a word? A purchaser
usually recognizes a symbol instantly, and buys on its faith,
just as one might purchase bonds of the United States upon
the most superficial glance. He asks for a 10-40, a 5-20, or a
l Boardman v. The Meriden Britannia Co., 35 Conn. 402; R. Cox, 490.
2 81 N. Y. 263.
166 LAW of TRADE-MARKS. [$ 146.
we
7-30, and does not think of keenly scrutinizing its various
indicia of genuineness. Its origin is clearly indicated. He
has not the slightest suspicion that the thing a broker sells to
him has been simulated. One buys a barrel of flour or a
fancy toilet article with the same apparent carelessness. The
true test is confidence. The brand, or the mere name of the
article, satisfies him. Good faith is the bond of commerce;
and, without it, doubt and hesitation will fetter enterprise
and restrain trade. , *
§ 146. The words “Congress Water” were held by the
New York Court of Appeals, in Congress and Empire Spring
Co. v. High Rock Congress Spring Co.,’ to appropriately indi-
cate both the origin and the ownership of the water flowing
from Congress Spring, to which place the plaintiffs had the
sole title. The defendants’ counsel argued that the words, as
applied to a natural element, were an inexplicit name, express-
ing no idea of property or origin, and that the said mark
lacked the essential elements, being used to designate the arti-
cle itself by its proper appellation, and was therefore not the
subject of exclusive appropriation; that, in fact, it expressed
no more than the name of the spring, like “Avon Springs,”
“Lebanon Springs,” “Sharon Springs,” and “Cheltenham
Springs,” being names of particular fountains, indicative only
of the place whence they issue. It was also insisted that the
doctrine of trade-marks has never been applied, and is not
applicable, in letter or in spirit, to the sale of spontaneous
natural products of substantially the same nature, being ap-
propriate only to artificial compounds, or products, origi-
nated by the science, skill, or diligence of man; and that
this water, not being the creation of man's skill or indus-
try, but being the gift of Nature to all, no one could bottle,
and name the elements, and claim exclusively the new appel-
lation by which they have become known in the market. It
was said by counsel, that one might as well bottle the pure air
of the mountain, and prevent another from selling the same
air by the same name. A preliminary injunction having
been dissolved at special term by Rosekranz, J., the plaintiff
• 57 Barb. 526; 4 Am. L. T. R. 168; R. Cox,624.
§ 147.] INDICATION OF ORIGIN oR ownBRSHIP. 167
appealed to the general term, which affirmed the action of dis-
solution. James, J., in rendering the opinion of the court in
bane, said, that he was not aware that the question of the ap-
plication of the law of trade-marks to names given to sponta-
neous or natural products had, prior to that time, ever come
before the courts for adjudication; and that, in all the cases,
the principle of the law is stated and restated, as applicable to
protect the skill, industry, and enterprise of mechanics, man-
ufacturers, and inventors, and hence only applicable to artifi-
cial products. He seems to have excluded from consideration
the idea of commerce, which may deal in commodities with
which the skilled industrial classes have nothing to do ; and
which, although natural products, as coal, marble, or animal
deposits, like guano, have distinctive marks entitled to protec-
tion. The case went to the highest court. The true principle
involved had by that time become clearly apparent.
§ 147. The Court of Appeals considered these two ques-
tions: 1. Can the owner of a peculiar product of nature be
protected in the exclusive use of a name belonging to it alone,
and employed by him as his trade-mark in the sale thereof.”
2. Does the name or trade-mark used in the case before us by
the plaintiffs indicate the origin, ownership, or place of that
product, and is it one in the exclusive use of which the plain-
tiffs should be protected ? The court, by Folger, J., said,
inter alia, that here is a particular article of which the owners
of this spring possess the only source, and which can be had
only from them. The violation and the wrong are the same
whether the commodity is one which the hand has made, or
which Nature has put into the hand of man. Certainly so, if
into the hand of but one man it has been put. It is a matter
of property, and the profitable use of property. If one use the
name of another for the purpose of securing to himself, in the
disposition of property, advantages which belong to that other,
the fraud is complete, and the remedy ought to be complete.
By the application of capital, business sagacity, and enterprise,
this spring and its products have become extensively known,
and favorably received. When one wishes for the medicinal
water which he has used before, he inquires for it by its spe-
168 LAW OF TRADE-MARKS. [$148.
cific name. And it is this name, the trade-mark of the plain-
tiffs, which is the short phrase between buyer and seller which
indicates the wish to buy, and the power to sell, water from
that origin, that place, of that ownership. This phrase, this
device, is the trade-mark of the plaintiffs, and is of value to
them, as thus designating the verity of its origin. They have
the right to be protected in its exclusive use, for none other
can use it with equal truth, and none other has equal-right to
employ it for the same purpose. Held, that the words “Con-
gress Water ’’ are, under the circumstances set forth, a valid .
trade-mark, indicating origin, and also ownership. The judg-
ment below was reversed, with costs, and a new trial ordered.
§ 148. In Falkinburg v. Lucy, before all the justices of the
Supreme Court of California, in 1868, the court said that the
owner of a mark would be protected in its exclusive use, but
only so far as it serves to indicate the origin, or ownership,
of the goods to which it is affixed, to the exclusion of such
symbols, figures, and combinations of words as may be in-
terblended with it, indicating the name, kind, or quality of
the article. In this case, the plaintiffs claimed the entire
label as their trade-mark, and asked to be protected in the
use of it as a whole. The court said: “Only so much of
their label as serves to indicate that they are the manufac-
turers or vendors of the washing-powder can be considered as
constituting the legitimate characteristics of a common-law
trade-mark.” The symbol must tell its own story. It does
not serve its intended and true purpose until associated with
a certain person or article. In Filley v. Fassett, before the
Supreme Court of Missouri, in bane, in 1869.2 it was held that
the words “Charter Oak,” cast on cooking-stoves, were suffi-
cient to point out the true source and origin of the stoves,
and were therefore possessed of the requisite characteristics
of a trade-mark. In Fetridge v. Wells, in 1857,8. Duer, J.,
held that the words “The Balm of Thousand Flowers”
might suffice for this purpose, unless, of course, they were
descriptive or fraudulent. Boardman v. The Meriden Bri-
1 35 Cal. 52. * 44 Mo. 173.
* 4 Abb. Pr. 144; 13 How. Pr. 385.
§ 149.] INDICATION OF ORIGIN oR ownBRSHIP. 169
tannia Co., in the Supreme Court of Connecticut, in 1868,1
fully recognizes and enunciates this doctrine. -
§ 149. As an instance of the disagreement of judicial mind
as to what in contemplation of law constitutes indication of
origin, we will cite Ferguson v. The Davol Mills, in the
Common Pleas of Philadelphia, in 1868.” The facts are
briefly these. More than thirty years before, the complainants
had devised, and ever since used for certain goods, known as
silesias, or bleached and dyed cotton twillings, a certain
mark, consisting of a circular label with the letter “K”
in the centre, which letter is surrounded by plain lines and
ornamental tracings, extending outward from the centre, and
having nothing on it except the printed letters “ No.” at the
top, and at the bottom of the same space the letters." Yds.”
By long use this mark had become identified with the said
goods, and the goods came to be known in the markets of the
world, and to the trade everywhere, by the said mark, and are
known and called by the name of the “K” silesias. The
defendants manufactured and offered for sale goods similar
in appearance, but greatly inferior in quality to the com-
plainants’ “K” silesias, put up in wrappers similar to theirs,
and a counterfeit of their label and mark. The defendants
asserted that the use of the letter “K” and accompanying
device, as printed by the complainants and pasted on their
goods, did not constitute a trade-mark such as the law will
protect. Allison, P. J., said: “The device and letter ‘K,’
which constitute the alleged trade-mark, have no name, words,
signs, marks, by which in any possible manner or degree the
origin or ownership of the silesias manufactured by the com-
plainants are indicated, or the place of sale or manufacture
pointed out, to distinguish them as the goods manufactured or
sold by the complainants. And, failing in this, it follows that
this application for an injunction cannot be granted. And
this will justify itself when it is remembered that these cir-
cular lines and spaces, and intervening ornamental tracings,
and letter “K” in the centre, with elliptical cross lines upon
its face, afford no protection to the public against imposition
1 35 Conn. 402. * 2 Brewster, 314; and Leg. Int., Jan. 1, 1869.
170 LAW OF TRADE-MARKS. [$150.
by the complainants from the sale of a spurious or inferior
article of silesia. They could flood the market with such
inferior article, stamped with what they call their trade-mark,
and the public would be wholly unable to ascertain who had
manufactured and sold the goods. Protection is given only
in consideration of the guaranty of the integrity of the manu-
facturer or merchant, certified by his trade-mark. When the
device fails to accomplish this end, it is no trade-mark, and
all claims founded thereon must be rejected. The simplest
case of a trade-mark is the name and address of the claimant;
and it is absolutely requisite that a device or symbol should
perform the office of a finger-board, should indicate the name
and address of the manufacturer, to invest it with the attri-
butes, and entitle it to the protection, of a trade-mark. The
device of the complainants does not contain, within itself, a
declaration to the public that Ferguson Brothers are the
manufacturers of the silesias stamped with their device: it
points to any other person as clearly as to them, and therefore
it is obvious that the Davol Mills, or Fales, Wharton, & Co.,
in imitating this device and placing it on an article of silesias
of their own manufacture and sale, have committed no legal
wrong of which Ferguson Brothers have any right to com-
plain. The morality of the use by them of the simulated label
is another question; for simulated it. is, beyond all doubt, —
so much like the original as to be scarcely distinguishable
from it.” Injunction refused.
§ 150. This decision is sui generis. The course of reason-
ing of the learned judge does not commend itself to any calm,
thoughtful intellect. With all due deference to the opinion
of Judge Allison, criticism is imperatively demanded; for it is
the emanation of a respectable tribunal, and cannot be silently
acquiesced in, without positive injury to the cause of justice.
It has been quoted in more than one case by counsel driven to
desperate shifts, and has been strenuously urged as an author-
ity. He has said that the device of concentric circles enclos-
ing the letter “K” does not in any possible manner or degree
indicate origin or ownership. Why not? Because, said he,
the place of sale or manufacture is not pointed out; and he
§ 151.] INDICATION OF ORIGIN OR OWNERSHIP. 171
intimated that the device, to be a valid trade-mark, should
contain the name and address of the claimant. If so, how
could a great number of symbols reported in adjudicated cases
have been recognized as perfectly valid, when those symbols
were no more expressive than that under discussion ? As
instances, consider the distinctive names and designations
“Excelsior,” “Climax,” “Empire,” “Charter Oak,” which
were deemed perfectly good trade-marks for stoves ;” the word
“Excelsior,” for soap;” “Ethiopian,” for stockings;* “Coco-
aine,” for hair-oil;4 and “Champion,” for flour.”
§ 151. Not one of these cases indicated the name, or even
the address, of the manufacturer, or of the merchant. Yet
they fully answered the legitimate purposes of a trade-mark.
The judge said that the symbol in the Davol Mills case was
no protection to the public against imposition by the com-
plainants from the sale of a spurious article; for they could
flood the market with an inferior article, and the public would
be wholly unable to ascertain who had manufactured the goods.
Now, a trade-mark to be worth anything must be recognized
by the public, and must be associated with a particular person
or firm, so that the purchaser instantly says in his own mind,
That is the article I wish : I know it is genuine, because it
bears the well-known mark of So-and-so. What is the logical
deduction of the judge? The mark is not associated in the
mind with anybody, or any place. It has not the slightest in-
timation of origin. By looking at it, the public cannot possi-
bly guess who made the goods, or where they were made, or
who offered them for sale. It promises nothing. No faith is
given to it; for it is absolutely meaningless. It is virtually
a blank. Well, the public not recognizing the symbol as any
man's manufacturing or commercial signature, and perceiving
in it no guaranty of the integrity of the manufacturer or
merchant, yet bestow upon it the most implicit confidence 1
1 Filley v. Fassett, 44 Mo. 173; 8 Am. L. Reg. (N. s.) 402.
2 Braham v. Bustard, 1 H. & M. 447; 9 L. T. (N. s.) 199; 11 W. R. 1061; 2
N. R. 572.
3 Hine v. Lart, 10 Jur. 106; 7 L. T. 41.
4 Burnett v. Phalon, 3 Keyes, 594.
* Atlantic Milling Co. v. Robinson et al., 20 Fed. R. 217.
172 LAW OF TRADE-MARKS. [$153.
Through their infatuation the market is flooded ! We answer,
if the public buy on the credit of the mark, that is the highest
evidence of its validity. Knowing the currency of their mark,
its owners strain every nerve to sustain its reputation. To
send out spurious goods with its impress upon them, would be
to kill the goose that lays the golden egg. We must con-
clude that his Honor erred. If its thirty-year-old reputation
had not made the symbol valuable, it would not have been
counterfeited. Yet it was simulated by the defendants, so
that their false token was not distinguishable from the gen-
uine. What essential ingredients of a lawful trade-mark
did it lack? None.
§ 152. When there are several mints for coining money in
one country, some distinctive letter or mark usually indicates
at which one a piece was coined. In the United States, the
three branch mints at Charlotte, Dahlonega, and New Orleans
have used the initial “C.,” “D.,” or “O.,” respectively. The
principal mint at Philadelphia had no such mark. Yet the
single letter, when found upon a coin of precious metal, was
a sufficient indication of its precise origin. In South America,
some of the mints have used monograms, or involutions of
letters, – one complex character indicating Lima, and another
Potosi.” The metal in one coin may be finer than that in
another of the same nominal value. Preference can be awarded
by means of the mark. It is just the same with any other
commodity. Two articles may be of the same outward appear-
ance, the same color, weight, size. The purchaser has no
guide to assist his judgment, except the reputation of a certain
manufacturer. He discovers his mark of authenticity and
guaranty. It is enough: he buys.
§ 153. The Amoskeag Manufacturing Co. v. Spear,” before
Duer, J., in the Superior Court of the City of New York, in
1849, and already discussed, is a leading case. The plain-
tiff averred that the letters “A C A,” relied upon as a valid
trade-mark, were intended to denote, “A C,” Amoskeag Com-
pany, and “A,” first quality. These letters were affixed to
1 Eckfeldt and Du Bois, Manual of Coins and Bullion, p. 17.
2 2 Sand. S. C. 599.
§ 154.] INDICATION OF ORIGIN OR OWNERSHIP. 173
a kind of cloth called “tickings,” which by much care and
skill, and at great expense, the plaintiff had brought to such
a state of perfection, that the best quality had obtained a high
reputation throughout the country. The defendants denied
the allegation of the meaning of the said letters, and averred
that they referred altogether to the quality of the tickings;
and they denied that the plaintiff's goods were known as the
“A C A tickings,” without the addition of the name or place
of manufacture, but that they were known as the “Amoskeag
A C A tickings,” in like manner as the defendants' goods
were known as the “Lowell Premium A C A tickings.” The
answer also averred that all manufacturers of tickings used
letters to denote the different qualities, and that, in every case,
the name of the maker or place of manufacture was added, to
enable the public to distinguish between articles of similar
quality made by different manufacturers. The answer further
denied that the defendants had used these letters to enable
them to sell their tickings as those manufactured by the plain-
tiff, or that their use had produced that result; and, admitting
that they had sold their goods as the genuine “A C A tick-
ings,” it was always with the designation that they were
“Lowell,” and not “Amoskeag,” tickings. The defendants,
for five years before the action was brought, had used a label
corresponding with that of the plaintiff in size, color, fancy
border, position, general arrangement, and size of the letters;
and also containing, in large capitals, the letters “A CA.”
A preliminary injunction was granted, restraining the defend-
ants, according to the prayer of the complaint, from using on
their tickings any label such as that which they had used,
or any label similar to the plaintiff’s, or any imitation of it, or
having thereon the letters “A C A.” This was a motion to
dissolve, or modify, the injunction, which had been granted ea.
parte, on giving security.
§ 154. The legal title of the plaintiff in the present case to
the exclusive use of these significant letters, “A C A,” was
denied. They were said to be but an indication of the qual-
ity of goods, and were used merely as all manufacturers use
letters to denote the different qualities. If so, it is clear to
174 LAW OF TRADE-MARKS. [$ 154.
any comprehension that they did not constitute a trade-mark.
The question to be decided was whether they did merely
denote quality, or whether they did not constitute the peculiar
symbol that indicated origin. If the said letters, as used by
the plaintiff, were merely an indication of the relative qual-
ity of its tickings, they must be expunged. As the plaintiff
could not have acquired, by prior occupation, an exclusive
right in the use of the words “First Quality,” or “Superfine,”
it could not have acquired by similar means a right to an
exclusive use of any letters, marks, or other signs, which are
merely a substitute for the words, and intended to convey the
same meaning. It is immaterial, said the judge, whether
words, letters, figures, or any other signs, are used, if the
single fact which they are used to indicate or declare is a
truth that other manufacturers or dealers have an equal right
to express and communicate. The judge found, as a fact,
that its letters “A CA.” were employed by the plaintiff to
indicate quality, and for no other purpose. He said: “It is
doubtless true, as is stated in the complaint, and sworn in
many of its affidavits, that the tickings of the plaintiff to which
its ‘A C A' is attached, have for many years been known in
the market as the ‘A C A tickings'; but this fact neither
alters the meaning of the letters, nor takes from others the
right to employ them. If the letters designate only the quality
of the goods, and not their origin or ownership, the tickings
of the defendants, if the best quality of those which they sell,
are as truly ‘A C A tickings’ as those of the plaintiff. The
words “Power Loom’ are found upon the label of the plain-
tiff, yet it is not contended that I could restrain the defend-
ants from using the same words as they have done upon their
own. If there exists a distinction, I am unable to perceive it.
The claim of an exclusive right rests in both cases upon the
same grounds: it is valid in both, or in neither.” The
learned judge held that the conclusion was irresistible, that
the three letters were used to designate the best quality of
tickings, and for no other purpose. He therefore struck from
the injunction the words “ or having thereon the letters
* A C A,” but retained the rest.
§ 156.] INDICATION OF ORIGIN OR OWNERSHIP. 175
§ 155. What conclusions are deduced from this Amoskeag
case? Let us again glance at the facts. A preliminary
injunction had been granted upon the ea parte application of
the plaintiff. It had made out a prima facie right. Upon
the coming in of the answer, which denied the plaintiff's
allegation of an exclusive right to the letters “A C A,” it
was moved to dissolve, or modify, the injunction. As to the
imitation of the label in all its features, there could be no
gainsaying. It was apparent. Testimony could not counter-
vail the evidence of ocular demonstration. But the label was
not a technical trade-mark. Perhaps the three letters were.
It was so asserted on one side, and denied on the other. It
was an equipoise. In such a case, an equitable remedy would,
by the rules of equity, be withheld. Take the language of the
judge in rendering his decision : “I can give to the defend-
ants, however, the benefit of the general rule, by so modifying
the injunction as not to restrain them from using the letters
‘A C A, until the legal right of the plaintiff shall have been
established by the verdict of a jury in this suit, and I am
satisfied that it is this course I should be bound to follow, even
were my opinion as to their legal right widely different from
that which I have expressed.” The court did not decide that
the three letters could not be a lawful trade-mark. It decided
that the case as presented did not establish the plaintiff's
right. A jury should pass upon the disputed question.
§ 156. This matter came to the Patent Office in 1872,
and, a prima facie right having been made out, (necessarily
on ea parte testimony,) registration was allowed." It finally
came up in the Supreme Court of the United States, in 1879.”
The court said: “It is clear from the history of the adoption
of the letters ‘A C A,” as narrated by the complainant, and
the device within which they are used, that they were only
designed to represent the highest quality of ticking which is
manufactured by the complainant, and not its origin.” The
court further said, that as they were used to denote only
quality, and that fact was so understood, they could be used
1 No. 713, dated March 26, 1872.
* Manufacturing Co. v. Trainer, 101 U. S. 51.
176 LAW OF TRADE-MARKS. [$ 158.
by others for a similar purpose, equally with the words
“superior,” or “superfine,” or other words or letters having a
like signification. -
§ 157. In Stokes v. Landgraff, at a special term of the
Supreme Court of New York, in 1853, Strong, J., clearly
laid down the doctrine of the Amoskeag case. In respect to
words, marks, or devices, which do not denote the goods or
property or particular place of business of a person, but only
the nature, kind, or quality of the articles in which he deals,
no property can be acquired. There is obviously no good
reason why one person should have any better right to use
them than another. They may be used by many different
persons at the same time, in their brands, marks, or labels on
their respective goods, with perfect truth and fairness. They
signify nothing, when fairly interpreted, by which any dealer
in a similar article could be defrauded. The plaintiff was a
manufacturer of glass, at the village of Clyde, in the town of
Galen, in the county of Wayne, State of New York. His
complaint alleged that he was entitled to the exclusive use of
the words “Galen,” “Lake,” “Cylinder,” “Wayne,” and
“New York,” which had long been used by his predecessors
and himself to denote the qualities of glass made at his estab-
lishment, and to distinguish the same from that made by
others. A temporary injunction was granted, which the
defendants applied to have vacated. The question to be
determined was whether the words so used by the plaintiff
were embraced by the law of trade-marks. Did they indi-
cate origin or ownership 2 or merely denote quality?
§ 158. In his complaint, the plaintiff alleged that the word
“Galen”, was used to denote the first quality; the word
“Lake,” to denote the second quality; the word “Cylinder,”
to denote the third quality; the word “Wayne,” to denote the
fourth quality; and the word “New York,” to denote the fifth
quality of glass manufactured at his works; and that the
said marks or brands had ever been, and still were, used to
denote and distinguish the respective qualities above men-
tioned. It was also alleged that the defendants “have manu-
i 17 Barb 608; R. Cox, 137
§ 160.] INDICATION OF ORIGIN OR OWNERSHIP. 177
factured for sale large quantities of window-glass, greatly
inferior in quality and value to that manufactured by the
plaintiff, and caused it to be put up in boxes or packages, and
fraudulently caused the said boxes or packages to be branded
or marked with the words” mentioned, “in imitation of the
several brands or marks used by the plaintiff, and with intent
to cause it to be believed by the purchasers, builders, and the
public, that such glass was manufactured at the glass-works
belonging to the plaintiff, and to enable the defendants to sell
the said glass as the manufacture of the plaintiff.” The.
answer denied that the said words were used by the plaintiff
to distinguish the glass manufactured by him from that man-
ufactured by other persons, or at other manufactories; and
insisted that they were used by both parties to distinguish the
several qualities of their glass. They also denied any design
to divert the plaintiff's trade, and that they made an inferior
article.
§ 159. The court held, that in regard to the words “Cylin-
der,” “Lake,” and “New York,” there was no propriety, or
even plausibility, in the claim that they were used by the
plaintiff, in part, to distinguish his glass, or glass of his manu-
facture, — that they were not adapted to that end. Besides,
the practice of manufacturers of glass, as above stated, and the
appearance of the plaintiff's marks or brands in connection
with it, showed that they were used to denote, quality; and
the plaintiff admitted that that was, in part, his object.
Some others of the words had not been used by the defend-
ants. Injunction dissolved. This case was appealed to the
general term, in 1854, and the decision was affirmed.
§ 160. Let us take another look at Stokes v. Landgraff.
What principles governed the decision? Here are facts that
will assist in the elucidation. The plaintiff's complaint was
rather inartificial, to begin with. It admitted too much.
The word “quality” was used in a loose sense. Did it mean
merely to denote the different grades of a common article of
manufacture? Was it not meant to be said that the words
were employed only “to distinguish the glass manufactured
by the plaintiff from that manufactured by other persons, or
12
178 LAW OF TRADE-MARKS. [$ 160.
at other manufactories”? To say the least, the language was
unhappy. Annexed to the answer are transcripts of the sev-
eral marks or brands, both of the plaintiff and defendants,
from which it appears that in each of the plaintiff's marks or
brands, in addition to one of the words above named, are his
name and that of the village where his manufactory is situ-
ated, with a representation of the size and number of feet of
glass, as “Stokes — Clyde – Galen, 8 × 12– 50 feet ’’; or
“Stokes—Clyde—Cylinder, 8 × 12–50 feet,” &c.; and that
each of the defendants' marks or brands, having either the word
* Galen,” “Lake,” or “ Cylinder,” has, in addition, the name
“Landgraff,” with a representation of the size and quantity of
glass, as “Landgraff's Galen, 8 × 12–50 feet ’’; or “Land-
graff's Cylinder, 8 × 12– 50 feet,” &c. The brand of the
defendants having the name “New York’ is in this form:
“Cleveland, New York,” with a representation of size and
quality as above given. Each party used the name of the
place of manufacture, — Clyde, and Cleveland. The names
in dispute were not so affixed as to be the salient points that
would strike the purchaser's eye, arrest attention, and operate
as a guaranty. No one would pin his faith to any one of the
words by itself. The names had no blandishments to allure
and captivate. They meant no more than would the numerals
1, 2, 3, &c.; indications of comparative quality. But the
strongest objection is this: most of the words claimed are
names of localities. No one can usurp geographical names,
which all in common have a right to use. But the rule as to
the exclusive use of a name of a locality must be taken with
its limitations and qualifications. If the plaintiff had owned
the whole village or spot the name of which was borrowed, he
might have a right to the name, as in the Congress Spring
case; * or if he had used a name which others in the same vil-
lage had a right to use to denote a peculiar natural product,
—one not found in any other place,”— although that would
not be, strictly speaking, a trade-mark, for it would lack the
essential element of exclusive right, he would have rights
1 57 Barb. 526, and 4 Am. L. T. R. 168.
* “Akron’ case, 49 Barb. 588.
§ 162.] INDICATION OF ORIGIN OR OWNERSHIP. 179
which a court of equity would protect. The plaintiff's case
did not make out his claim to any remedy. The words were
not used as trade-marks. It was therefore unnecessary to
consider the question of priority.
§ 161. Terms in Common Use to designate a Trade or Ocew-
pation, in connection with other words indicating that a par-
ticular class of merchandise of the same general description is
specially dealt in, cannot be exclusively appropriated by any
one as a trade-mark. In Choynski v. Cohen," Supreme Court
of California, 1870, the plaintiff claimed the words “Anti-
quarian Book Store” as his peculiar symbol. The court said
that the case depended upon the effect of the word “Anti-
quarian,” as used in connection with the words “Book Store.”
As applied to a book-store, it can have no other meaning or
effect than to indicate to the public that the proprietor deals
in a certain class of books; to wit, ancient books, or books
pertaining to antiquity. Any one reading the sign “Anti-
quarian Book Store,” over the door, would naturally expect
to find there for sale either ancient books, or books treating
on subjects connected with antiquity. It could not, by even
a forced construction, be made to signify that the plaintiff’s
business had been long established, and was of ancient origin;
for the complaint informs us that the business was established
in 1863, and that it had the name of the “Antiquarian Book
Store ” from the beginning. It was used precisely in the
same sense that the words “Law Book Store,” or “Medical
Book Store,” or “ Divinity Book Store,” would indicate that
law, medical, or religious books were for sale. In all such
cases, the words employed are but advertisements that certain
goods are there sold. *-
§ 162. The ease of R. W. English, appeal from the Exam-
iner, November 2, 1870, to the Commissioner of Patents,” has
been the source of error to all who cited it as an authority.
The applicant offered for registration three so-called trade-
marks. The first reads thus: “R. W. English's X Brooms.
Buffalo, N. Y. Order English's X Brooms.” The two others
are precisely the same, except that in one the character XX
1 39 Cal. 501. 2 Com. Dec. for 1870, 142.
180 LAW OF TRADE-MARKS. [$163.
and in the other X X X are substituted for the X in the first.
“X” was alleged to be the distinguishing feature. The ap-
plicant set forth as follows: “Heretofore I have been in the
habit of using X’ to distinguish my brooms, using ‘X’ for
one quality, “XX’ for another quality, and ‘KXX’ for still
another quality, by printing, stamping, or affixing the same
to the brooms in any convenient manner.” The Examiner
rejected the applications. He said: “The label filed has no
new or peculiar characteristic to make it a lawful trade-mark.
The letters used in printing it are of the ordinary kind, set up
in a common way, and the letter X, used to express quality, is
commonly used for this purpose by all liquor dealers, particu-
larly for marking the qualities of ale.” A late Commissioner,
in his decision overruling the officer below, said: “The ques-
tion, with reference to trade-marks, is not whether the partic-
ular mark is new in its application to goods of all kinds, but
whether it is new in the special application proposed for it.
In the case of this species of property a double use is permissi-
ble. The fact that a mark has been used for a bottle is no
bar to its use by another for a broom, or by another for dry
goods, or by another for an agricultural implement, or for
hardware. One man may choose to call his knives ‘K L’
knives, and another his baskets X L’ baskets. The use of
this mark in no way implies that the baskets were made by
the manufacturer of the knives, or vice versa.” He therefore
held that the letter X, when employed to denote a particular
article of manufacture, being in no way descriptive, but a mere
arbitrary character, which may, when adopted and used, indi-
cate the origin and ownership of the goods to which it is
applied, may well constitute a proper trade-mark. He further
held that XX and X X X are as distinguishable from X as
the latter is from Y or Z, or any other character. He also
said that the use of the letter X is not an ordinary mode of in-
dicating quality. The three cases were thereupon registered."
§ 163. The general legal proposition, that two men may
adopt the same symbol, if to be used upon different classes of
goods, requires no comment. The question is this: Did the
1 Certificates Nos. 86, 87, and 88, Dec. 6, 1870.
§ 164.] INDICATION OF ORIGIN OR OWNERSHIP. 181
letter X, under the circumstances presented, constitute a law-
ful trade-mark? If used merely to indicate quality, it clearly
did not. This point is too well settled to be disputed. What
idea is conveyed by the use of the letter X 2 Has it not from
its long association come to be well recognized as a mere indi-
cation of quality, as much as the numerals 1, 2, 3 2 This is
a pure question of fact. It was a bare assumption to hold
the contrary, in the absence of the slightest evidence. How
could any tribunal take judicial note of the fact that it was
otherwise? The case before the Office was one where the
applicant positively alleged that he used the letter, single,
doubled, or trebled, as an indication of the respective qualities
of his brooms. The allegation of the specification was con-
clusive. The fact was there enunciated. The Commissioner
travelled out of the record. His opinion, then, as to the doc-
trine that the letter X does not generally indicate quality,
is but an obiter dictum, - a wayside opinion, not binding in
other cases.
§ 164. There must be some word, sign, or device, other
than the generic name, and words descriptive of quality.
Under this rule, the proposed trade-mark “Beeswax Oil"
was refused registration." The name “oil” is generic. The
word “beeswax" is doubtless intended to be more or less
descriptive of the quality or nature of the oil. The words
“Razor Steel,” as applied to the blades of knives, shears, and
other cutlery, were rejected.” The word “razor’ is purely
descriptive, and the word “steel ” a generic name, and being
limited to neither person nor place, so as to indicate either
origin or ownership, they cannot be regarded as constituting
a legal trade-mark. “Cundurango Ointment, C. O.,”* is not
a legitimate trade-mark; “ointment * being a generic term,
and “Cundurango” the name of a plant extensively known,
and the initials “C.O.” immaterial, and not likely to be
noticed. The applicant in another case sought to register the
word “Invisible,” to be applied to packages of powder in-
tended for beautifying the complexion. Mr. Commissioner
1 Re Hauthaway & Sons, Com. Dec. 1871, p. 97.
* Re Roberts, Ibid. 113. 8 Re Blakeslee & Co., Ibid. 284.
182 LAW OF TRADE-MARKS. [$ 164.
Leggett said: “That the word ‘invisible’ might be used
as a lawful trade-mark, I have no doubt. But when used to
indicate the character of the thing to which it is attached,
it becomes descriptive, and cannot be monopolized. Such,
without doubt, is the application of the word ‘invisible' in
this case. The intention of the applicant in the use of the
word evidently is to indicate that the powder, when applied
to the skin, is imperceptible or invisible; hence the word is
used with its ordinary signification, as in the description of
shades of colors, and when so used is, by the rulings of the
courts, excluded from the list of devices that may become
legitimate trade-marks.” In the Supreme Court of Califor-
nia, in 1883, the following case arose.” The plaintiff below
was a saloon-keeper in San Francisco, particularly engaged in
the sale of beer, known as Philadelphia Beer. His shop sign
consisted of a row of beer barrels, painted upon the sign and
printed upon the labels so as to show the top head and out-
line of each barrel, with the letters “P. B.,” indicating and
standing for Philadelphia Beer, stamped or painted upon the
head of each barrel, together with the words “Depot of the
Celebrated ” over, and the words “Philadelphia Lager Beer”
below the row of barrels. The act of the defendant com-
plained of was the erection by him, over his place of business,
of a sign similar to that of the plaintiff, the chief difference
being the insertion of the letters “F. B.,”, indicating and
standing for “Fredericksburger Beer,” in lieu of the letters
“P. B.,” and the insertion of the word “Fredericksburger"
where the word “Philadelphia’’ appears on the sign and labels
of the plaintiff. Per Curiam (substantially): The sign in-
dicated that he sold beer; the letters and words, that he
sold Philadelphia Beer. Anybody has the same right to sell.
The sign and label of the plaintiff relate only to the descrip-
tion of the beverage dealt in by him, and therefore cannot
be protected as a trade-mark.8
* Re Solon Palmer, Com. Dec., 1871, p. 289.
* Eggers (appellant) v. Hink (respondent), 63 Cal. 445.
* Sect. 3196 of the Political Code (of California) defines a trade-mark:
“Every description of word, letter, device, emblem, stamp, imprint, brand,
§ 166.] INDICATION OF ORIGIN OR OWNERSHIP. 183
§ 165. The courts of France have made a number of decis-
ions upon this point. In the Court of Colmar, in 1857 (Rian
v. Bernheim *), it was held that the denomination toile ménage
is not a special denomination which can become the exclusive
property of a manufacturer. The term had by long use be-
come common to commerce. The Tribunal of Commerce of
the Seine, in 1858 (Thibierge v. Dupont et al.”), for the same
reason rejected the words benzine parfumée. The Tribunal
Civil of the Seine, in 1861 (Mauprivez v. Buchet et al.8), had
this case. The plaintiff's mint-drops were marked in relief,
“Peppermint, London.” The defendant, who had imitated
the mark upon the same class of goods, for defence argued that
the words were but an indication of the nature of the prepara-
tion, and therefore could not become private property. But
the court held that the union of the two words, placed in re-
lief, and with characteristics determined and distinct, were a
particular sign to indicate to the public that they belonged
to the inventor thereof. This in effect decided that, by the
manner of use, these words had acquired an individuality suf-
ficient for the destined purpose. The same parties appeared
before the Court of Paris, in 1864, on appeal.” Held: “Pep-
permint" is but the English appellation, but by long use in
France it has become common to commerce. The simple in-
dication of this product, in one language or the other, cannot
be protected. The court plainly intimated that a particular
form or disposition of letters might make it valid as a per-
sonal sign. This would virtually make it a distinctive sign
of origin. -
§ 166. When a chemical product takes naturally, in certain
given conditions, the form of a known object, its denomina-
tion cannot become private property. The case of Barnett v.
Rübler, in the Court of Paris, in 1866,” illustrates this doc-
trine. Everybody knows, at least by name, the scientific toy
called the “Serpent of Pharaoh.” It is sold under the form
printed ticket, label, or wrapper, other than any name, word, or expression
denoting any goods to be of some particular class or description.”
1 4 Annales, 216. 2 Ibid., p. 400. 8 7 Id. 335.
* 10 Id. 320. 5 12 Id. 144.
184 LAW OF TRADE-MARKS. [$ 166.
of a little cone covered with tin-foil. When set on fire, it
acquires an extraordinary development, and, with the move-
ments, takes the form, length, and color of a real serpent.
The demandant described its mode of manufacture. He
employed the sulphocyanide of mercury, obtained by the action
of nitrate of mercury on the sulphocyanide of potassium. The
containing box had upon it a notice of “Poison.” The de-
mandant had patented the toy, but the patent had been inval-
idated, as being for a worthless invention. As inventor, he
had given to it the name of “Serpent of Pharaoh.” It was
sometimes called the “Artificial Serpent ’’ and the “Eggs of
Pharaoh.” The defendant sold a similar article under the
name of “Magic Serpent.” An action was brought for in-
fringement of the alleged trade-mark. Among other things,
the defence set up that the toy was poisonous, and conse-
quently contrary to law and to the public security; but on
that point the court ruled, that, as the attention of the Coun-
cil of Health had several times been called to the article, and
nothing had been done to prohibit the sale of it, the conclu-
sion was warranted that it presented no serious danger, and
therefore was not unlawful. The next question was this:
Do the words “Serpent of Pharaoh,” as used, constitute a
trade-mark? If yea, is the use by the defendant of the term
“Magic Serpent,” for a similar article, an infringement upon
that mark, as a colorable imitation ? In support of the claim,
the counsel, M. Pataille, eminent for learning in the law of
the subject, argued thus: The words “eggs” and “serpent,”
employed to designate the thing which was neither eggs nor
a serpent, but which, upon combustion, gave a resemblance
more or less removed, are clearly fancy names, belonging to
him who first makes use of them. In support of that theory,
he cited the decisions of the Court of Paris and the Court of
Cassation in the instance of “Pearls of Ether,” a title given
to ether pills, which, as pharmaceutical products, belong to
the public in general, and by their form and silvery enve-
lope resemble pearls, and which words notwithstanding were
held to be a trade-mark." Held, that the term “serpent”
1 Clertan et al. v. Charpentier, 10 Annales, 340.
§ 168.] INDICATION OF ORIGIN OR OWNERSHIP. 185
does not constitute a trade-mark, it being natural and neces-
sary to describe the article." The use of the word “serpent”
by the defendant is not piracy. As the case stood, it was not
necessary for the court to decide that the words “Serpent of
Pharaoh,” being a fanciful term, constitute a valid trade-mark.
The arbitrary word “Pharaoh’’ had not been copied.”
§ 167. Since the foregoing was decided, the following case
has arisen. A claim was made to the exclusive use of the
words “Cable-Twist Tobacco,” as a trade-mark for plug chew-
ing-tobacco. The applicahts * set forth that they had used said
words for that purpose for about two years last past, i. e. from
about the year 1870. The Examiner rejected the application,
on the ground that the words “Cable Twist" are purely
descriptive of the goods to which they are attached. An in-
terlocutory appeal was thereupon taken to the Commissioner,
in person, the main question being this: Are these words the
proper denomination of the article of manufacture?
§ 168. Upon the argument, the counsel for the applicants
produced a piece of the manufactured tobacco, and a drawing
filed in the Office, in an application for a patent for their
mechanical process of coiling the tobacco into the exact repre-
sentation of an ocean-telegraph cable, which thing, said the
counsel, had first suggested the name.* The new article of
manufacture consists of a strand or rope of tobacco coiled
spirally about a “filler” or core, and then pressed flat, or
into any other desired form. The object of the invention is
alleged by the specification to be to provide a plug-tobacco
in such shape, and of such arrangement, that the portion of it
desired for use may be severed from it without uncoiling the
remainder of the plug. After the coil is wound round the
core, the bunch is placed in a mould, and reduced, by hydrau-
lic or other pressure, to the shape of a flat plug. After this
1 In Selchow et al. v. Baker et al., in 1883, 93 N. Y. 59, the Court of Ap-
peals of New York cited this section from the first edition, and applied its
principles.
2 In Barnett v. Leuchars, 13 L. T. (N. s.) 495; 14 W. R. 166, in England, in
1865, the name “Pharaoh's Serpents” was protected as a trade-mark.
8 Harris, Beebe, & Co.
* As to the form of a product not being a trade-mark, see ante, $89 b.
186 LAW OF TRADE-MARKS. , [$170.
operation, a number of the plugs are placed in a tobacco-
caddy and pressed; the process of filling and pressing being
repeated until the caddy is full.
§ 169. It was conceded by the counsel that any article's
appropriate name, which has become a part of our common
language, cannot be registered or recognized as a valid trade-
mark; but it was strenuously denied that the words “Cable-
Twist,” as here used, could be brought within the rule. It was
admitted that the words “Cable,” “Twist,” and “Tobacco "
are the common property of the public, and the words “Cable”
and “Twist,” when combined, are also in general use, desig-
nating as they do a kind or class of tobacco; but the counsel
denied that such is the case in respect to the combination of
the three words. “Cable-Twist Tobacco,” it was contended,
is a combination quite unknown to the public, except as the
mark or symbol of a particular firm, - the kind or class being
twist, and the word cable being purely fanciful. The objec-
tion that the word cable is descriptive seemed to the counsel
to be untenable. The case was instanced of the famous smok-
ing-tobacco put up in green drums, and sealed with green
wax, and having applied to it as a trade-mark the words
“Green Seal Tobacco.” .
§ 170. The Examiner said, that the color of the drum
and wax was a mere mark or symbol of the merchandise;
and as green paint or green wax cannot enter into the com-
position of tobacco, the color in such case cannot be deemed
to be descriptive, any more than the color of wax on bottles,
as illustrated in the French case of Badoit v. André, in the
Court of Appeal of Lyons, in 1851. (In that case the parties
both sold the water of Saint Galmier, though each drew from
a different spring. They had adopted very dissimilar exterior
signs to distinguish their bottles. Badoit used a green seal,
bearing the inscription, “Mineral Water of Saint Galmier,
Badoit Spring,” &c. André, who had quite another kind of
designation, in 1850, without abandoning his peculiar mode
of indication, all at once adopted the green wax. The court
held that the color of the wax, as thus employed to seal bot-
1 Le Technologiste, tome xiii. p. 213.
§ 172.] INDICATION OF ORIGIN OR OWNERSHIP. 187
tles of mineral water, constituted a trade-mark, and a sign of
good-will worthy of protection as the exclusive property of
the plaintiff; and the defendant was accordingly enjoined
from using for that purpose wax of the same color as that
used by the plaintiff.) - *
§ 171. The counsel further said, inter alia, that one might
make candy to resemble a cable, and color it, and mould it
into an exact representation of the applicants' tobacco, and
use the words “Cable-Twist Candy,” and enjoy the exclusive
right of the employment thereof for that purpose. The words
would necessarily be descriptive. The public would come to
know the candy as “Cable-Twist Candy.” The words might
in time become the appropriate name of the article; and still
the sole right to use the designation would remain in him who
first applied it to candy. That is, that any person might
apply the term cable-twist to any goods, as a fancy name, and
hold the same as a valid trade-mark, although the words might
possibly be to some extent descriptive.
§ 172. The case of “Brown's Jamaica Ginger” was cited
as an illustration of the idea ; and the remarks of Paxson, J.,
in the suit of The Diavon Crucible Co. v. Guggenheim,” were
relied on as confirming the same. We turn to that case, and
ascertain that what the judge said was this: “Our late fellow
townsman, Frederick Brown, for many years before his death,
prepared and sold a valuable article of Jamaica ginger. It
was known as his article, and protected by his trade-mark.
His son continues its manufacture. No one doubts his right
to do so, or that equity would restrain an unlawful interfer-
ence with his rights.” The article would be “protected by
his trade-mark,” says the judge. He did not say what that
trade-mark was. Was it the mere appellation of “Brown's
Jamaica Ginger,” as the counsel contended ? It assuredly
was not. The Patent Office has answered that question.
Upon the application of the very gentleman mentioned, as
successor in business, the point was passed upon. Mr. Brown
applied for the registration of a fac-simile of the signature
of his father and predecessor, as his lawful trade-mark for
18 Am. L. T. R. 288, and 2 Brewst. 821. *
188 & LAW OF TRADE-MARKS. [$175.
Jamaica ginger; and his claim was allowed." The name of
the commodity does not constitute any essential part of that
mark.
§ 173. The counsel then said, that a fine-cut chewing-
tobacco of a bright yellow color, might be properly marked
“Yellow Moss Chewing-Tobacco.” (Conceded, and for this
reason: the first term is purely fanciful. Yellow moss does
not enter into the composition of chewing-tobacco.)
§ 174. The counsel then suggested that the words “Snow-
Flake Starch " would be a valid trade-mark, although applied
to starch manufactured to resemble snowflakes.” (Denied,
unless the claimant of a right to the exclusive use of the
words have also the exclusive right, by virtue of a patent,
to make starch of the appearance of snowflakes; which is
hardly a supposable case. If a person have a patent to make
an article of any peculiar conformation, he may undoubtedly
give it its proper descriptive name, and he would be protected
therein, unless that name be generic, or broad enough to
describe articles which others have an equal right to make
and vend.) “Cable-Twist Tobacco,” the counsel contended,
“although used as a brand, is not yet properly a name, and
cannot become a name until the diligence of the applicants
make it such. It may doubtless pass into common use, and
in time come to be a quasi generic term, but at present has
nothing more than a fanciful significance. Perhaps every
valuable [word] trade-mark in existence is more or less gen-
eric; and each may in the course of time take its appropriate
place as a common noun, and be entered as such in the lexi-
cons of future generations.”
§ 175. The Commissioner of Patents affirmed the decision
of the Examiner; and held that the words “Cable-Twist
Tobacco” are descriptive, notwithstanding the transformation
of the ropes or cables into rectangular blocks. He said that
the words clearly indicate an article of chewing-tobacco manu-
1 Frederick Brown, Certificate No. 715.
* In Larrabee v. Lewis, 67 Ga. 561; 44 Am. R. 735, in 1881, the Supreme
Court of Georgia held that “Snowflake” was not a valid trade-mark for bread
or crackers, because descriptive of whiteness, lightness, and purity.
§ 176.] INDICATION OF ORIGIN OR OWNERSHIP. 189
factured in a peculiar manner, by twisting and coiling the
plant into the form of a cable, just as hemp and other vege-
tables are manipulated. A cable continues to be a cable even
if pressed out of shape. The idea is conveyed that the article
offered for sale is tobacco, manufactured by the twisting or
coiling process. No one would attach any other meaning to
the term cable-twist, as used in connection with tobacco. It
describes an article of merchandise that all manufacturers of
tobacco have a right to make and sell. The applicants can-
not have the monopoly of all tobacco manufactured in the
form of a cable, although they have made an application for
a patent for a peculiar kind of cable-shaped tobacco pressed
flat. They may have the sole right to make it in one way,
and somebody else may have quite as good a right to make it
in another way. If others have, or may acquire, a right to
manufacture any other kind of cable-twist tobacco, they have
the legal right to call the thing by its right name. But if
the claim of these applicants were allowable, that would not
be so. They would to that extent control the use of words
in common use.
§ 176. The applicants by their counsel made a motion
before the Examiner for a rehearing. Since the judgment
of affirmance by the Commissioner, they had obtained the
grant of a patent for seventeen years for their peculiar mode
of manufacturring tobacco, as hereinbefore described ; and it
was argued that that fact put a new phase upon the matter,
inasmuch as thereby they now had the sole right to make and
vend chewing-tobacco made first in the form of a cable, and
then pressed into flat plugs. The counsel urged the necessity
of the recognition of the name as a trade-mark, as the appli-
cants (stated to be the most extensive tobacco-manufacturers
in the world) made a profit of twenty thousand dollars a year
by the sale of cable-twist tobacco, and required the sole use of
the name as a protection to their legal rights. Admitting
that there is propriety in drawing a line of demarcation with
nice discrimination in a case of mere description, it was said
by the counsel that such an objection was obviated by the
grant of a patent.
190 LAW OF TRADE-MARKS. [$ 178.
§ 177. The Examiner, in reply, referred to a patent, more
than three years old, for another kind of improvement in the
manufacture of chewing-tobacco. In that case, as is seen by
the specification, the tobacco is spun or twisted together into
one continuous “brake’’ or rope, and then coiled or pressed
down into the keg, box, or other package, in which it is to be
packed for market. The benefits claimed by the earlier pa-
tentees are the same as now set forth, – the convenience
afforded to the consumer in breaking off only so much of the
weed as he may need at the moment. The article manufac-
tured under that patent is one kind of cable-twist tobacco.
The public have a right to apply to it that descriptive name.
The counsel insisted that the term was not understood by
the trade to be descriptive; and asked leave to present evi-
dence to that effect. The response of the Examiner was,
that the obvious and legitimate meaning of words in com-
mon use cannot be explained away by any possible amount
of testimony. The Office must judge for itself. No cause
for a rehearing has been shown. Case dismissed.
§ 178. The Name of a Man may lose all Personality, and
become a mere indication of quality. This point was decided
by the Court of Cassation of France, in the case of Stubs v.
Astier et al., in 1865.” The plaintiff, a manufacturer in Eng-
land, brought suit to restrain the use of his name upon arti-
cles of merchandise made and sold in France. Under the
treaty made in 1860 between the two countries, he had a
standing in court. His claim having been refused in the
court below, on the ground that the name had attained a
generic significance before the treaty of reciprocity had taken
effect, the case was appealed to this, the court of last resort.
It was contended on one side that the name of Stubs had lost
its primary use, which was to indicate certain articles of hard-
ware and cutlery as being his manufacture, and that by long
user it had acquired a new attribute, and that to hold other-
wise would be to take away rights that had become vested in
the French people. On the other side, it was strenuously
1 No. 85,613, to William and David Rinehart.
2 11 Annales, 81.
§ 179] INDICATION OF ORIGIN OR OWNERSHIP. 191
contended that a man's name is his distinct property, and
remains a property sanctioned by the law of nations; and
although the mark attached to it had fallen into the public
domain from any cause, the name did not cease to be the
exclusive property of him who bore it. The court said that,
for more than sixty years, the French manufacturers had
made a certain kind of saws and files, on which they placed
the mark “Stubs,” with the initials “P. S.” inverted; that
said mark had become, in France, the indication of a product
of superior quality; that it was not the indication of the
origin of the manufacture, but was rather the designation of
the nature and the quality of a product, of which it was the
denomination, so that a purchaser could not be deceived into
the belief that to him was presented an English product of the
manufacture of Peter Stubs; that the files seized at Astier &
Lechevallier's place bear, independent of this mark, “Stubs,
P. S.,” inverted, the initials “G. S.,” indicating the real
maker; that the files and saws seized at Reinaud's were
wrapped in labels which made known the real place of manu-
facture; and that those divers circumstances manifested good
faith and the absence of wilful injury. The same court, in
1864, in Spencer & Sons v. Peigney,” held the same doctrine.
In that case the English manufacturer's name had for fifty
years been employed in France to indicate, not the origin, but
the nature of certain products. As foreigners, the parties in
both cases had no privileges in the courts of France until the
treaty of 1860, and that although the English courts were
open to alien and subject alike. By the time they could be
heard in the assertion of natural rights, their names had been
turned to another than the original purpose, so far, at least,
as the territory of France was concerned. The soundness of
these decisions is questioned by distinguished jurists, among
them M. Pataille.
§ 179. In the case of Bournhonet & Basille (successors of
la maison Ternaux) v. Tisseron et al., in the Court of Cassa-
tion, in 1869,” we have an instance in point. It was held,
that the successor of a merchant cannot prevent other mer-
1 10 Annales, 197. 2 15 Id. 90.
192 LAW OF TRADE-MARKS. [$ 181.
chants from using the name of his predecessor to designate
the products of their fabrication, when the name has long
been used as the designation of a certain kind of products
manufactured by the generality of the trade, and which has
thus become public property as a qualifying term, - a mere
adjective. It is especially so in the employment of the name
of Ternawa, to designate a certain kind of broché shawls.
§ 180. The case of Singleton v. Bolton, before Lord Mans-
field, in 1783, is an illustration of the doctrine that a man's
name Inay become a mere qualifying word. The plaintiff's
father sold a medicine called “Dr. Johnson's Yellow Oint-
ment.” The plaintiff, after his father's death, continued to
sell the medicine, marked in the same way. The defendant
also sold the medicine, with the same mark; and for that
alleged injury an action was brought. The plaintiff was non-
suited. A rule having been obtained for a new trial, Lord
Mansfield said, that if the defendant had sold a medicine of
his own under the plaintiff's name or mark, that would be a
fraud, for which an action would lie. But here both the
plaintiff and defendant use the name of the original inventor,
and no evidence was given of the defendant having sold
it as if prepared by the plaintiff. The only other ground on
which the action could be maintained was that of property
in the plaintiff, which was not pretended, there being n
patent. *
§ 181. We have familiar instances of a person's name
becoming a mere indication of a certain article or class of
goods. Wellington, Brougham, Stanhope, Blücher, and Man-
ton, are personal names that have given us the wellington
boots, the brougham or the stanhope carriage, the blücher
boots, and the manton fowling-piece. But it is not under-
stood upon what principle a person's mercantile name can be
wrested from him by the mere lapse of time. In the Stubs
and Spencer cases, the fact was apparent that in England
those names were regarded as marks of origin and warranty.
If good for that purpose in one country, they were equally
efficacious for the same purpose in any other. The rights
1 3 Doug. 293.
§ 182.] INDICATION OF ORIGIN OR OWNERSHIP. 193
of their owners might be in abeyance, but they could not
be lost. -
§ 182. Geographical Names.—Instances are not rare where
these have been sustained as technical trade-marks. But in
every case of the adoption of the name of a country, nation,
region, or place, such name has been used in an arbitrary
sense, and not adjectively; except where the owner of the
mark was also the sole possessor of the place of origin, or
had the monopoly of the vendible product, as, for example,
of a mineral spring, or an established place of manufacture.
Under circumstances of an exclusive right of sale, such a
name cannot be said to be merely geographical. To be such,
all or many others than the claimant, should have a right
equal to his own to apply the name. A merely geographical
\\
name cannot be a trade-mark. Yet decisions are sometimes \
relied on to support a contrary doctrine; but if carefully
scrutinized, it will be perceived that they are trade-mark)
matters in name only, and in reality belong to the domain )
of good-will. The distinction is important. The following
citations illustrate the difference between cases depending for
protection on principles of trade-mark law, and others depend-
ing on those appertaining to good-will. One of the latter-
mentioned kind is Newman v. Alvord. The name “Akron’’
was the subject of the controversy. The plaintiffs were man-
ufacturers of cement, or water-lime, at the village of Akron,
in the county of Erie, New York. The defendants were en-
gaged in the same line of business at Syracuse, New York.
The court, on appeal, held’ that this name, although geo-
graphical, designated the origin of the article made and dealt
in by the plaintiffs, as well as the place of manufacture, and
was appropriately used in these respects; for the material
used by the plaintiffs was obtained and manufactured into
water-lime cement at the village having that name. The
doctrine that the name of a locality may be exclusively appro-
priated was distinctly enunciated ; but it was also held that
what may be claimed or used alike by all in the said place
cannot be exclusively appropriated to advance the interests
1 49 Barb. 588; 35 How. Pr. 108; R. Cox, 404.
- 13
194 LAW OF TRADE-MARKS. [$182.
of one. Daniels, J., delivered the opinion of the general term.
After reviewing various authorities bearing upon the question
at issue, he said: “In the present case, the term selected to
identify and distinguish the plaintiff's manufacture from those
of a similar character placed upon the market by others, had
never been previously used for any such purpose. The use
of it imposed a new attribute or office upon the word, which
specially adapted it to indicate and distinguish the origin and
place of the plaintiffs' manufacture; and it in no way in-
trenched upon the previous use or purpose to which the term
had been in any way devoted by others. The term was made
to bear and perform an entirely new duty or office, which
could result in no embarrassment, prejudice, or injury to any
other person whatsoever. And from the continued use made
of it in that respect, it has become an important and valua-
ble element in promoting and securing the prosperity of the
plaintiffs' business, and as such the defendants should be re-
strained from making a similar use of it.” While, for the
purposes of that controversy, the court upheld the doctrine
that the name of a place does indicate origin, we must not be
misled by the broad language of the court. The plaintiffs
came into court with clean hands, asking redress for an at-
tempted fraud by the misuse of the word “Akron.” What
did that case decide? It virtually decided that that word did
not, as presented, possess all the ingredients of a lawful trade-
mark, for it lacked exclusiveness of the right of user. Mr.
Justice Strong, of the Supreme Court of the United States,
in the case in that court” before cited, said that the decision
in the Akron case substantially concedes that the plaintiffs,
by their prior appropriation of the name of the town in con-
nection with the words “cement " and “lime,” acquired no
exclusive right to its use as against any one who could use it
with truth. All the inhabitants of the village of Akron had
the same right to brand or label their goods with the name as
had the plaintiffs; therefore it was not purely a trade-mark
in its broadest sense. As against a wrong-doer who had at-
tempted by fraudulent means to divert custom from its legiti-
1 Delaware and Hudson Canal Co. v. Clark, 13 Wall, 311.
§ 182.] INDICATION OF ORIGIN OR OWNERSHIP. 195
mate channel, it was good. The important word is the name
of the place where the cement is made. The article manufac-
tured is taken from the earth. It is a bed or quarry of lime.
There is no special art or skill in making it into cement.
The cement taken from different beds differs greatly in
value, as in quality. The reputation of the plaintiffs' cement
arises from the reputation of the bed or quarry from which
it is made, – the Akron bed. They speak the truth in us-
ing the name. They tell the public by their bills, This is
Akron lime. It is made from the Akron beds or quarries.
The public have used it for years, and appreciate its qualities.
The defendants, at a distance of one hundred and fifty miles,
change the name of their quarry, and incorporate the most
significant word, used by the plaintiffs for many years, and
then prepare bills with this word prominent in them, and
bring their article into market in competition with the plain-
tiffs'. It was not necessary for the purposes of the particular
case under discussion for the court to decide, in so many
words, that the word “Akron’’ was a technical trade-mark.
The concluding sentence of the decision is sufficient to de-
termine what was really decided. Held, that the plaintiffs'
right to restrain the defendants from making use of the word
“Akron,” as their trade-mark, is reasonably plain, and the
judgment awarding the injunction should therefore be af-
firmed. – In the court of last resort, — the Commission of
Appeals, — in delivering the affirmance of the foregoing,
Earl, Commissioner, said, inter alia: 1 “ The Question is not
before us, and it is not necessary for us to determine, whether
any other owners of a portion of the same quarries could
not manufacture cement, and label it Akron Cement.’ The
whole question to be determined is, whether the plaintiffs,
who were the only persons engaged in manufacturing and
selling the real ‘Akron Cement,’ which is known and has
a reputation in market as such, can be protected in the use
of the word ‘Akron’ against the defendants, who used it to
defraud the plaintiffs, and deceive the public.” This decision
does not show that “Akron” was a trade-mark; but rather
* 51 N. Y. (6 Sickels) 189; 10 Am. R. 588.
\\
196 LAW OF TRADE-MARKS. [$183.
that the case was one of unfair competition in business. –As
an illustration of the Akron principle we have a decision of
the Court of Cassation, of 1880. Sixteen pieces of cloth had,
in 1879, been sent from Aix-la-Chapelle to the defendant, a
commission merchant in Paris. The cloth of the German
manufacturer had embroidered on its ends the indication
“Drap de Sedan’’ on some of the pieces of cloth, the words
“Drap de France" on others, – all marked so as to cause
belief that they were made in France. All the goods were
confiscated. -
§ 183. In The Brooklyn White-Lead Co. v. Masury,” the
general term of the Supreme Court of New York, in 1857,
said that it is to protect a man's right of selling his own that
the law of trade-marks has been introduced. It must include
the right to sell to all, - to the incautious as well as to the
cautious. Any false name that is assumed in imitation of a
prior true name is in violation of this right, and the use of it
should be restrained by injunction. The plaintiffs had been
engaged for more than twenty years in the manufacture of
white-lead, and had habitually marked their kegs with their
name; adding the words, “Premium lead, warranted pure.”
Both parties manufactured in the city of Brooklyn. As they
both dealt in the same article, they had the same right to
describe it as Brooklyn White-Lead; and it was shown that
many other companies had used the same designation. The
defendant changed his mark, and assumed one to which he
had no title, in imitation of the plaintiffs', with only a color-
able difference, that of “Brooklyn White-Lead and Zinc
Company.” He had no such company; and that part of his
new title seems to have been adopted to imitate the plain-
tiffs', and to make his paint pass as theirs. This was a fraud.
| Held, that the defendant should be enjoined from the use of
the word “Company,” or “Co.” He may continue to use the
title, “Brooklyn White-Lead and Zinc,” only omitting the
word “Company.” - -
1 Cunin-Gridaine and other manufacturers of Sedan v. Crocius, 25 Annales,
179. These cases came under Art. 423 of the Penal Code, against affixing to a
manufacture a name other than that of fabrication. -
2 25 Barb. 416.
§ 184.] INDICATION OF ORIGIN OR OWNERSHIP. 197
§ 184. In McAndrew v. Bassett, in 1863, the Lord Chan-1)
cellor said: “I am told that this word “Anatolia, being a
general expression, — being in point of fact the geographical
designation of a whole country, -is a word common to all,
and that in it, therefore, there can be no property. That is
nothing in the world more than a repetition of the fallacy
which I have frequently had occasion to expose. Property in
the word for all purposes cannot exist; but property in that
word, as applied by way of stamp upon a stick of licorice,
does exist the moment the licorice goes into the market so
stamped, and obtains acceptance and reputation in the mar-
ket, whereby the stamp gets currency as am indication of
superior quality, or of some other circumstance, that render
the article so stamped acceptable to the public.” This is a
recognition of the doctrine that a geographical name may
cease to be merely such, and acquire a new function, as an
arbitrary symbol. . If it were not so, any word that might be
found to be composed of the same letters in the same order,
as the name of any country in the world, might be rejected
as a trade-mark; and that, although the adopter of the word
had never heard of the country bearing the name of his
chosen word. The licorice was stamped with the name \
“Anatolia’’ by way of contradistinction from other kinds of
licorice. It was not intended as a mere representation that
the article was Anatolia licorice. It acquired reputation.
The defendant knew that, or he would not have simulated
it. — It was upon the same principle that, in 1862, the Tri-W
bunal Civil of the Seine (Faivre v. Duguaire et al.) held that
“Mount Carmel,” although geographical, was good as a fancy
name.” The case of Wotherspoon v. Currie,” in W. C. Malin's W
court in England, in 1870, is sometimes cited as an authority
upon the same point. It appeared on a motion for an injunc-
tion, that, for several years before 1847, Messrs. Fulton & Co.,
of Glenfield, near Paisley, manufactured powdered starch,
principally from East India sago, called “Glenfield Patent Dou-
ble-Refined Powder Starch,” commonly known as “Glenfield
\\
t
1 10 Jur. (N. s.) 550. 2 8 Annales, 238.
8 22 L. T. (N. s.) 260; 18 W. R. 562.
198 LAW OF TRADE-MARKS. - [$ 185.
Starch.” In January, 1847, the plaintiff, William Wother-
spoon, purchased of Messrs. Fulton & Co. their business and
works at Glenfield, and the exclusive right of manufacturing
starch and selling it under the name of “Glenfield Patent
Starch.” The plaintiff afterward removed his manufactory to
Maxwelton, near Paisley, where he made and sold his starch.
|| The defendant, Currie, rented from Messrs. Fulton & Co. a
small building attached to their dyeing-works at Glenfield,
and manufactured starch, which was sold in packets of a size
and appearance similar to the plaintiff's, and labelled “The
Royal Double-Refined Patent Powder Starch, manufactured
by Currie & Co., Glenfield.” The plaintiff's case was, that
the defendant had taken the small building at Glenfield for
the express purpose of inducing people to believe that his
starch was the article made by the plaintiff. For the defend-
//ant, it was urged that, as he was an actual resident at Glen-
field, and his manufactory was there, he had as much right
to put his address upon the labels of the starch as had the
plaintiff, who did not actually reside at Glenfield. An in-
} / junction was granted, the Vice-Chancellor remarking that
he had never known a case in which a defendant had been
guilty of more reprehensible conduct.
§ 185. This case came up on appeal before Lord Justice
James, on a motion by the defendant to dissolve the injunc-
tion.” Lord Justice James said: “I am of opinion that the
injunction in this case cannot be sustained. The word “Glen-
field’ is not a fancy name, like the ‘Victoria, or the ‘Albert,’
or the “Excelsior,’ and various names of that kind, which
were fancy names, actually constituting a trade-mark in them-
selves; but Glenfield, although it is not a place as big as
London, Glasgow, or Paisley, and is not even a post-town, or
a market-town, or village, is a place which has an actual
existence as the site of some manufactory, is yet a place con-
taining some few houses, and is a place at which the plain-
tiff's starch was manufactured. The defendant, no doubt
moved by the great reputation which the plaintiff’s “Glen-
field Starch' had acquired, was minded to establish works at
142 L. J. Ch. 130; 23 L. T. (N. s.) 443; 18 W. R. 942.
§ 187.] INDICATION OF ORIGIN OR OWNERSHIP. 199
Glenfield. That was what any one might do. Although the
works of the plaintiff had been removed from Glenfield, Glen-
field was not, as it seems to me, tabooed to all the world as a
place or site for the manufacture of starch.” The act of the
defendant was legitimate; for there are two classes of buyers,
said the court. One is the class who can read, and the other
is the class who cannot read. They who can read cannot be
misled, if the language differs. To the persons who cannot
read, the packets are dissimilar, and could not deceive. — But,
on appeal to the House of Lords," an injunction was granted
to restrain the defendant from using the word “Glenfield"
in connection with his starch, notwithstanding that his own
name had also been placed on his packets.
§ 186. In Colladay v. Baird,” 1860, the complainant al-
leged that he was the manufacturer of a certain style of
goods known in the market as “Aramingo Check.” That, in
1854, he had devised a certain trade-mark, or name, to wit,
the words “Aramingo Mills,” which mark became identified
with the goods manufactured by him, although his name did
not appear upon the label as manufacturer; and that the
defendant, intending to deprive him of the exclusive use and
benefit of his trade-mark, cunningly devised a label upon
which the words “Aramingo Mills” appeared; and thus, by
a colorable artifice, succeeded in defrauding him of a portion
of his well-earned reputation and profit. It appeared that
both parties manufactured their checks at the same establish-
ment, the defendant being in fact the lessor of the complain-
ant. The defendant asserted his perfect right to use the
words. The labels were of different sizes and colors, so that
the most ignorant could not fail to detect the differences in
their general appearance; and the court said that there was
not a colorable imitation, device, or artifice. The court re-
fused a special injunction, leaving the complainant to maintain
his title as best he could in an action at law.
$187. In the Tribunal Civil of Havre, in 1859 (Levigoureuz
et al. v. Léon Lecompte & Co."), this matter came up. Both
1 L. R. 5 H. L. 508; 42 L. J. Ch. 130; 27 L. T. (N. s.) 393.
* 4 Phila. 139. * 5 Annales, 279.
200 LAW OF TRADE-MARKS. [$ 189.
|
parties imported the same kind of merchandise. The plain-
tiffs' mark was “Vallée d'Aure,” in a semicircle, and under-
neath in a straight line the words “Levigoureux et Postel”;
and that of the defendants was “Vallée d'Aure,” and the
initials, “L. L. et Ce,” of their firm. It was shown that
Vallée d'Aure was the name of a place in South America.
The defendants truthfully employed it to indicate the origin
of their products. Held, no infringement. In the Court of
Paris, in 1859 (Bisson-Aragon v. Aragon*), the plaintiffs'
mark was “Massy,” their place of manufacture. Held, that
defendant had a perfect right to use the words “près Massy,”
his manufactory being really near Massy, and that, although
others had previously adopted the word “Massy’” as a dis-
tinctive symbol. s
§ 188. Newman v. Alvord” resembles the last case. There
it appeared that the complainants had been manufacturers of
cement or water-lime at Akron for about thirteen years, and
that they had always designated and sold their products as
“Akron Cement,” and “Akron Water-lime.” The defend-
ants commenced a similar business twelve years later, at a
place far distant from Akron, and called their product “Onon-
daga Akron Cement or Water-lime.” It was a fraud upon
the complainants and upon the public. Consequently, an
injunction was granted. The court substantially conceded
that the complainants had not acquired an exclusive right to
the name as against one who could use it with truth; and
that, as no one had the exclusive right to the name, it was
not a trade-mark.
§ 189. The question of the appropriation of the name
of a region, to the exclusion of others who produce, or who
sell, a similar product of the same region, may be consid-
ered as definitively settled. The case of The Delaware and
Hudson Canal Co. v. Clark, already referred to, was well
presented and argued in the Supreme Court of the United
States, in 1872. The leading question was whether the com-
plainants had an exclusive right to the use of the words
1 5 Annales, 216.
2 49 Barb. 588; 35 How. Pr. 108; R. Cox, 404.
§ 190.] INDICATION OF ORIGIN OR OWNERSHIP. 201
“Lackawanna Coal,” as a distinctive name or trade-mark
for the coal mined and sold by them. The word “Lacka-
wanna’’ was not devised by the complainants. They found
it a settled and known appellative of the district in which
their coal deposits, and those of others, were situated. The
defendant invaded no right in employing the name, for he
made no false representation. All the coal taken from that
region is known in trade, and rated in public statistics, as
“Lackawanna coal.”
§ 190. The case of Désiré Michel & Co. v. Achard & Co.,"
in the Court of Cassation (the supreme court of France), in
1863, bears a striking family likeness to the Lackawanna case.
Many years before, in the commune of Peypin, the plaintiffs
had established a manufactory of cement, to which they gave
the name “La Valentine.” Their works were situated near
a brook bearing this name, which it takes from the hamlet
La Valentine, situated in the commune of Saint-Savournin,
contiguous to that of Peypin. The defendants had recently
constructed cement-works in the commune of Saint-Savournin,
not far from the hamlet of La Valentine. Both parties took
their limestone from the same quarry. The defendants adver-
tised their product under the name of cement of “La Haute
Valentine.” Was “La Valentine” a lawful trade-mark 2 If
yea, did the defendants infringe it by the use of the words “La
Haute Valentine” 2 The court said that jurisprudence sanc-
tions the doctrine that natural products, or even manufactures
in the same place, may all lawfully be designated by the name
of the locality where produced, unless encroaching on the name
of a manufacturer, or his trade-mark. The name of “La Val-
entine Cement” is actually known to commerce as the proper
designation of an article produced within certain boundaries,
embracing the works of both parties; for they both use the
same quarry. The name “La Valentine Cement’’ corre-
sponds to the designations of Vassy, Roquefort, La Nerthe,
&c. cement; therefore the plaintiffs cannot pretend that the
name is restricted to themselves. The designation of a local-
ity cannot serve as the foundation of an exclusive right.
1 9 Annales, 328.
202 LAW OF TRADE-MARKS. [š 191.
//
§ 191. As to the use of a geographical name as a trade-
mark, Earl, Commissioner, in the “Akron” case,” expressed a
settled rule. He said: “I can perceive no reason why it may
not be the name of a place. Suppose one owns the only coal
mine situated in a town, or near a city, and he names his coal
after the town or city, and it becomes known as such in the
market, why may not such name become his trade-mark?
The same name could not be truly applied to coal obtained
from any other place.”—This is the principle of the “Con-
gress Spring” case.” In that it was shown that the plaintiff
had the sole title of the source of the medical waters, to the
receptacles of which the name as a trade-mark was affixed. —
So also of the “Bethesda, " case.” The court held that a
natural product, such as mineral water, which has become
private property, and is vended to the public, may be the
subject of a trade-mark consisting of the name. And so,
in the “Hunyadi-Janos” case, in the Court of Cassation of
France, in 1883.” Held, that, inasmuch as F. sold, under the
name of a natural mineral-water of Hunyadi-Janos, an artifi-
cial water contained in bottles, he was guilty of infringement
of a trade-mark. — The same principle is applicable to a place
of manufacture, the exclusive right to which belongs to one
who uses it as his trade-mark; as, “The Oscar Pepper Dis-
tillery”; 5 and the “Taper Pulley Sleeve Works.” Plain-
tiffs being, by agreement with the owners of the Apollinaris
Spring, in Germany, the exclusive importers into England of
“Apollinaris Water,” the name was repeatedly sustained as
a trade-mark.7 — In Radde v. Norman,” the doctrine that the
name of a place of origin may become a technical trade-
mark was fully recognized. The plaintiff had the exclusive
1 Supra, §§ 182, 188. * Supra, §§ 146, 147.
8 Dunbar v. Glenn, 42 Wis. 118.
4 Bulletin Officiel, No. 2, p. 26. The name of the spring was borrowed from
that of a Hungarian hero, born at Hunyad in Transylvania in 1887.
5 Pepper v. Labrot et al., 8 Fed. R. 29.
6 Gray et al. v. Taper-Sleeve Pulley Works, 16 Fed. R. 436.
7 The Apollinaris Co. (Limited) v. Norrish, 33 L. T. (N. s.) 242; also Same
v. Edwards, Seton, 4th ed. 237; also Same v. Moore, Cox's Man, case 675.
8 L. R. 14 Eq. Cas. 348.
§ 191.] INDICATION OF ORIGIN OR OWNERSHIP. 203
right to import over seas the article found at Leopoldshall, in \\
the Duchy of Anhalt.—Cases of the same class as those of
Anatolia and Mount Carmel” may be cited. In Hirst v. Den-
ham,” the plaintiff being a manufacturer of woollen cloths,
who had invented and adopted certain new fancy patterns
and named them respectively “Turin,” “Sefton,” “Leopold,”
“Liverpool,” was protected in the geographical names. – The
name “Dublin’ was admitted to registration as a trade-mark
for soap, on the ground that, the place of manufacture not
being in Ireland, but in this country, the word was not used
in its ordinary descriptive geographical sense, but as an arbi-
trary fancy designation.”—So the word “German” was regis-
tered as a trade-mark for syrup, on the ground that, not being
descriptive of a German product, it was a purely arbitrary
term.*—That was also the ground of decision in regard to the
word “Vienna.”" The plaintiff was the first who applied
the word to baked bread and other articles. His business
was in the city of New York. — An almanac had for many \\
years been published at Hagerstown, in the State of Mary-
land; yet the Court of Appeals sustained the name “Hagers-
town Almanac" as a valid mark.”—Soap was manufactured
at Paris; and that was held to be no reason why the name
“Savon de Paris” should not be protected."—There are other
names that are, in one sense, geographical, but which have
been sustained as denominations of fancy. “Hoosier” is such
a one. Webster's Unabridged Dictionary defines the word to
mean “a citizen of the State of Indiana.” Yet the Supreme
Court of that State held it to be a valid trade-mark for an
article manufactured therein.” “Yankee” is a word applied
to citizens of several States, in a rather indefinite way; and
in a foreign country it is sometimes used to designate all the
1 Ante, § 184.
* L. R. 14 Eq. 542; 41 L. J. Ch. 752; 27 L. T. (N. s.) 56.
8 Re Cornwall & Co. 12 Off. Gaz. 312. 4 Re Green, 8 Id. 729.
* Fleischmann v. Schuckmann, 62 How. 92; 3 L. Bull. 91; 20 Daily Reg
No. 55.
* Robertson v. Berry, 50 Md. 591; 33 Am. R. 328.
* Michaud et al. v. Lemenu et al., 23 Annales, 59.
8 Julian v. The Hoosier Drill Co. et al., 78 Ind. 408.
204 LAW OF TRADE-MARKS. - [$192.
/ people of this country.” It was properly decided to be a
technical trade-mark. — All the cases in this section proceeded
on the ground, that, when such names are used in a sense that
is not necessarily geographical, they may, by adoption, pub-
licity, and recognition, become arbitrary symbols. - •
§ 192. When is a name merely Geographical ?—This ques-
tion is sometimes of very considerable importance, and it is
one that demands nice discrimination. A perusal of the case
of Armistead v. Blackwell” (in the chapter on Interferences)
will show how judicial officers disagreed as to the signification
of the word “Durham.” A name may be deemed merely
geographical, or a denomination of fancy, according to cir-
cumstances. When used as a common or necessary name
of a country, region, or place, not in the exclusive posses-
sion of the claimant of the name as an arbitrary symbol,
there is no difficulty, and it must be decided to be used
in a merely geographical sense. Such an instance is the
“Lackawanna’’ case.” This is the name of a region of
country from which others besides the plaintiffs drew their
supplies of coal. “Worcestershire,” as applied to sauce, is
governed by the same principle; * and so is the “Moline"
case;” for that word is only indicative of the place of manu-
facture, and all the inhabitants of the town there manufactur-
ing ploughs had a right to use the name. A serious aspect
of the subject is when a name that was originally valid and
exclusive has, without the owner's fault, been perverted and
destroyed as a technical trade-mark. It is a grave question
whether one can be so despoiled of property. — The case of
the Glendon Iron Co. v. Uhler et al., in the Supreme Court of
Pennsylvania, in 1874,” was as follows. The plaintiff had
1 Williams v. Adams, 8 Biss. 452. 2 Infra, §§ 653–660.
8 Delaware and Hudson Canal Co. v. Clark, 13 Wall. 811; 5 Am. L. T. 185;
1 Off. Gaz. 279.
4 Lea v. Wolff, 13 Abb. Pr. (N. s.) 389; 15 Id. 1; 46 How. Pr. 157; 1 Am.
L. T. (N. s.) 400. Lea et al. v. Deakin, 11 Biss., and Lea v. Millar, Seton on
Decrees, 4th ed. 242, held the term to be merely generic.
5 Candee, Swan, & Co. v. Deere & Co., 54 Ill. 439; 5 Am. R. 125; 4 Am. L.
T. 266; 10 Am. L. Reg. (N. s.) 694.
6 75 Pa. St. 467; 15 Am. R. 599; 13 Am. L. Reg. (N. s.) 543; 6 Off. Gaz. 154;
1 Am. L. T. 147. c
§ 192.] INDICATION OF ORIGIN OR OWNERSHIP. 205
long stamped the word “Glendon’’ on iron, manufactured
before the incorporation of the borough of that name. The
defendants set up in business at the same place, and began to
stamp the name “Glendon’’ on their iron. Held, that the
name of a town or borough cannot be used as a trade-mark
by one of its residents to the exclusion of other residents of
such town or borough, even if the name were adopted prior to
the act of incorporation. The adoption of the name as a
geographical designation gives it a public character, which
makes it the common property of the public for all legiti-
mate purposes. Mercur, J., in delivering the opinion of the
court, said, inter alia: “The appellees put upon their pigs
the initials of their firm and the name of the town. That
name was Glendon to the whole world. It cannot be that
the previous appropriation by the appellants of the word,
which now is the name of the town, prevents any other
manufacturer of pig-iron within its limits from using the
same word. If it be so now, it may continue through all
coming time. The boundaries of the town may be en-
larged; the borough may grow into a city; the manufac-
tories of pig-iron may be multiplied; yet the word most
expressive to indicate their locations must be denied to all
but one.” — Let us pause to consider and analyze. Of the
correctness of the general proposition of law, there can be
no cavil or doubt. Is it not, however, more than possible,
that, by indefinite generalization, the learned judge has let
error creep in unawares? Are his words chosen with so
exquisite a precision as to leave no loophole for a sophist
to creep through, to wrest and pervert the meaning? The
judge said, that, by the act of incorporation, “The rights
thereby given to the public become common to all citizens
dwelling therein.” Granted. All have a legitimate right
to sell manufactures bearing their names and places of busi-
ness. But that is not the point. The fallacy lies in stop-
ping short of a full enunciation of the doctrine of equity.
The first adopters of the name acquired the exclusive right
l
to stamp it on their iron in a peculiar manner. Rivals have |\
not a right to impress the mark in a manner so nearly like
206 LAW OF TRADE-MARKS. [$192.
//
it as to deceive purchasers. In the “Anatolia’’ case, any
importer of licorice had a perfect right to label his goods
“Anatolia Licorice"; but he had not a right to stamp the
word “Anatolia’’ on a stick of licorice in imitation of the
stamp that gained currency for McAndrew's article. Prob-
ably Judge Mercur meant to say as much. We may rea-
sonably infer that, from the fact found by the court. The
defendants showed that they used the mark thus: “ U. F.
Glendon,” to indicate the names of the partners. Probably
the court regarded the differentiation as sufficient to avoid
confusion. The latter part of the opinion runs thus: “We
are unable to discover satisfactory proof that the appellees
adopted their trade-mark with the design of imitating the one
used by the appellants.” This is the key to the true sense of
the opinion.—It is obvious that the name “Raleigh" cannot
be a trade-mark for tobacco, when tobacco is one of the staple
products of the region of country in which the city of Raleigh
is situated.” But the same name probably might be a valid
mark for petroleum, or writing-paper, or some other article,
the production or manufacture of which is no more associated
with the place than with Sir Walter Raleigh. “French "
cannot be a technical emblem for bronze paints, because de-
ceptive.” In the Tribunal of Commerce of the Seine, in
1883,4 the plaintiff claimed, as a trade-mark for biscuits, the
words “Véritables Biscuits de Montbozon, Haute Saône.”
Held, that the name of a locality cannot be a valid mark. —
The French Court of Cassation, in 1840,” held that every
manufacturer of lime, who drew his material from one of
the cantons of Doué had a right to sell it under the name
of “ Doué " hydraulic lime. The first adopter of the desig-
nation had no exclusive right.—In 1875, there were cross
suits by two rival firms of distillers at Glasgow. One firm
called their establishment “The Loch Katrine Distillery,”
and the other named their product “Loch Katrine Whis-
1 Supra, § 184. 2 Re Oliver, 18 Off. Gaz. 923.
* Re J. Marsching & Co., 15 Id. 294.
* Longchamp v. Veuve Potin et al., 29 Annales, 157.
* Delaleu v. Grignon, Blanc, 732.
§ 193.] INDICATION OF ORIGIN OR OWNERSHIP. 207
key.” Held, that any one who used Loch Katrine water
in the manufacture of his whiskey was at liberty to use the
name." Probably the foregoing cases answer the question at
the head of this section. ſº
§ 193. This question frequently comes up in the Patent);
Office; and the rule for answering it is well settled. If the
word is not intended to be geographical, and is not taken to
be such by the public, it is not such. It will have become, as )
an arbitrary symbol, as good an index as any other symbol
could be. Thus the word “Marieland,” although intended ).)
for a mark for merchandise manufactured in Maryland, is free
from objection.” The change in the spelling, and slight differ- )
ence of sound, are sufficient to distinguish it from the usual
and proper designation of the original Terra Mariae, named
for Henriette Marie, the queen of Charles I. of England. And
no reasonable person would think that the use of the name
“Monticello,” for whiskey, was intended to intimate that the
article was distilled or sold at the home of the venerated
“Sage of Monticello”; * or that the term “Kentucky Pio-
neer’‘ necessarily meant that it was made in Kentucky
by the pioneer Daniel Boone; or that “Bay State’ meant
to imply Massachusetts.” At first it was thought that the
words “Vieille Montagne” were open to the objection of
being a mere geographical designation, just as “Old Moun-
tain" might be if the French were translated ; but, upon
reflection, it was concluded that the words could not, without
straining their meaning, be taken to import that the green
paint to which it was intended they should be affixed, was
manufactured at a place of that name.” So “Wisconsin
Wood-Chopper” could not mislead any reflecting mind into
supposing that the axe bearing that mark was peculiar to, or
made in, any particular State.7 The word “Scioto’’ is the
name of the county, as Sciotoville is the name of the town,
where the applicants make fire-brick, tiles, &c.; wherefore
1 Bulloch, Lade, & Co. v. Gray, 19 Journal of Jurisprudence, 218.
* Malcolm Crichton, No. 925. 8 Malcolm Crichton, No. 877.
4 Adams & Taylor, No. 692. 5 Bay State Iron Co., No. 875.
6 Walter & Fielding, No. 494. 7 Biddle Hardware Co., No. 923.
208 LAW OF TRADE-MARKS. [$194,
|| ||
| ſ
the Examiner rejected the application, as a geographical
term, which any one in the county had a right to use. The
Commissioner took another view of the matter, regarding it
as an arbitrary symbol which no one else would be likely to
impress on brick. Passed." It is not understood upon what
principle this decision in the Scioto case could possibly be
sustained. It may be that it never will be brought in con-
troversy in a judicial proceeding. If others have an equal
right to use the name upon the same kind of wares, then it
cannot be a trade-mark, for the essential element of exclusive
right is lacking. We can understand how, if one not in a
place of that name should fraudulently usurp the word as
a mark, a court of equity would be called on to enjoin the
wrong-doer, as in the Akron case, as an ordinary case of
fraud, – not for violation of a trade-mark.”
$ 194. As an illustrative case; we will take the application
for the word “Angostura,” to be used in combination with
bitters. The Examiner answered the claim thus: The arti-
cle called “Angostura Bitters” is well known as such, to the
commercial public at least. A tincture of Angostura Bitters
is officinal in the Pharmacopoeia of some European countries.
Ure's Dictionary of Arts, &c. mentions the article among
other bitter substances used in art and medicine, as quassia,
wormwood, orange, gentian, tansy, coffee, &c. He also stated
that he was credibly informed by experts, that a favorite
drink called a “cocktail” is composed in part of said bitters.
The principal point was whether the word “Angostura”
was not a geographical name; and it was held not to be, for
the reason that the word “Angostura” had first been used
by Dr. Siegert, under whom the applicant claimed. It had
become a fancy name; and as the claimant proved his claim
to the exclusive use of it, as the denomination of an article of
which he was sole vendor, it was admitted to registration.”—
1 McConnell, Porter, & Co., No. 510. Wide Newman v. Alvord, ubi supra.
* The following recent authorities recognize the Akron principle : Wheeler
v. Johnston, 3 L. R. (Ireland) Ch. D. 284; Lochgelly Iron & Coal Co. v. Lum-
phinnans Iron Co., 6 Sess. Cas., 4th Ser. 482; Dunnachie v. Young & Sons, 10
Id. 874.
8 Re W. H. Knoepfel, Cert. No. 580.
§ 194.] INDICATION OF ORIGIN OR OWNERSHIP. 209
. Thus stood the matter on ea parte testimony two years, until
1874, when it became involved in a controversy in the Su-
preme Court of Trinidad. That case, however, turned on the
general appearance of the wrapper bearing the name." — In
1878 the same matter came up in the Chancery Division in
England.” Held, by Fry, J., that no one was entitled to the ex-
clusive use of the words “Angostura Bitters,” since they had
become the name of an unpatented article, which any one who
could discover the secret receipt might make and call by its
name, although it had hitherto been made by one firm only,
because they alone knew the secret. That plainly decided
the name “Angostura” to be merely descriptive, and not
arbitrary. Any manufacturer of bitters at Angostura could
lawfully so inform the public, -provided he should do it in
a lawful manner: just as in the Glendon case any manufac-
turer of iron could truthfully stamp his merchandise in a way
and form that could not mislead. The manner is the indica-
tion of fair dealing. Notwithstanding Judge Fry decided the
name not to be exclusive property, he granted an injunction
against the use of the word “Angostura,” or the words
“Angostura Bitters,” in such a way as to be calculated to
deceive. * \
1 Siegert v. Ehlers, cited 7 Ch. D. 803; 38 L. T. (N. s.) 357.
* Siegert v. Findlater, 7 Ch. D. 801; 47 L. J. Ch. 233; 38 L. T. (N. s.) 349;
26 W. R. 459.
14
\\
210 LAW OF TRADE-MARKS. [$195.
CHAPTER V.
IXAMPLES OF TRADE-MARKS.
§ 195. One's own name, — to what extent protected.
§ 196. What is merely a name 3
§ 197. One's own name not an essential element.
§ 198. Allusive devices standing for names.
§ 199. Own name combined with words.
§ 200. Own name used fraudulently.
§ 201, 202. Name borrowed for purpose of fraud.
§ 203. Derivative from one's name, — when not protected.
§ 204. One's autograph a good trade-mark.
§ 205. One's name, – when common.
§ 206. One's mere name not a trade-mark.
§ 207-211. Fac-similes of autograph. *
§ 212. Designation composed of simple initials.
§ 213–215. Pseudonyms.
§ 216–218. Fancy names of men.
§ 219. New words.
§ 220. Necessary name of product.
§ 220 a. “Singer,” as designation for sewing-machine.
§ 220 b. Name tending to mislead, - “Trommer” case.
§ 221. Name of machine or product, — patent expired.
§ 222, 223. Word of warranty in foreign language.
§ 224. Fancy name protected.
§ 225–231. Numerals as marks.
§ 232. Numerals disguised.
§ 233. Conclusion, — mere numerals not a mark.
§ 234. Letters as marks.
§ 235. “A C A * case.
§ 236. Fancy names.
§ 237–239. “Cocoaine” case.
§ 240. Discrimination as to fancy names.
§ 241–244. “Balm of Thousand Flowers” case.
§ 245. “The Excelsior White Soft Soap” case.
§ 246—248. Mere descriptive names not valid marks.
§ 249. Descriptive names, – distinguished.
§ 250. Suggestive marks may be valid.
§ 251. “Chemical Paint” case discussed.
§ 252. Fancy name may become generic.
§ 253. Name of object of merchandise.
§ 254. Accompanying mark insufficient.
§ 196.] EXAMPLES OF TRADE-MARKS. 211
§ 255–259 A picture as a trade-mark,
§ 260. Trade-marks frequently borrowed from heraldry.
§ 261. National arms may sometimes be element in mark.
§ 262. Monograms and ciphers, as authenticating marks.
§ 263. Is color ever essential element?
§ 264. Disadvantage of reliance on color.
§ 265, 266. Color may be essential.
§ 267. Color, — a circumstance in infringement.
§ 268. Colored threads as trade-marks.
§ 269, 270. Form is implied by the term Mark.
§ 271, 272. “Payson's Indelible Ink” case.
§ 273–275. Examples, – words as trade-marks.
§ 276, 277. Rejected,—as indicative of quality.
§ 195. One's own Name. — To what extent will a person's
name be protected as a trade-mark for himself? This ques-
tion has its difficulty. The act of Congress of July 8, 1870,
sect. 79, prohibited the registration of a proposed trade-mark
“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.” That meant only
the name of the person, &c., applying for registration. The
act of Congress of March 3, 1881, sect. 3% uses the words
“merely the name of the applicant.” But the former act
provided that that should “not prevent the registry of any
lawful trade-mark rightfully used" at the time of the passage
thereof. The act of August 5, 1882, contains substantially
the same provision. The proviso opens the door to evidence
that such name had previously become a “lawful trade-mark.”
It all depends on the full import of the words “merely” and
“rightfully.” We must be guided by judicial decisions. One
case might be sustained and another not. Circumstances con-
trol the result.
§ 196. What is merely a name 2 An investigation that
can enable this question to be intelligently answered should
not be thought pedantic or far-fetched. It has been well
settled that a middle name or an initial letter is not part of a
person's name. The law knows of but one Christian name.”
The addition of “senior,” or “junior,” is a mere matter of
1 Rev. Stat., sects. 4937–4947.
2 Supplement to Rev. Stat., vol. i. chap. 138.
8 Co. Littleton, 3 a ; 1 Lord Raymond, 562; 5 Johns. 84; 2 Cow. 463.
212 LAW OF TRADE-MARKS. [š 196.
description, — descriptio personae, — and forms no part of one's
name, it being a casual and temporary designation." If J.
Smith is no name, then a deed or other instrument to one so
designated conveys no title or right to protection. One bap-
tismal or given name out of half a score would satisfy the
demand of the law in this respect; but that one name must
be given in full, not in an initial letter, which means nothing,
or many things, and therefore, on account of its uncertainty,
is worthless for the purpose of identification. Probably the
surname might legally be dispensed with, or changed at pleas-
ure.” A man's name is an emblem or symbol of himself, -
a mark by which he may be known and identified. Here is a
curious case. About the year 1825, at the Hereford assizes,
in England, a Welsh witness, John Jones, was examined.
He said that he had always gone by that name, while admit-
ting, on cross-examination, that in Wales he had gone by
the name of Evan Evans. The discrepancy was explained
by showing that Evan is the Welsh synonym of John, and
Evans that of Jones. So he was John Jones in England,
but at home he was Evan Evans, just by the rule which
turns François Blanc, the Gaul, into Francis White, the
American citizen ; or Wilhelm Schwarz, the Teuton, into
William Black, American; or the name of a grandee of the
Flowery Kingdom into a sonorous English cognomen. The
surname, as distinguished from the Christian name, is the
name over and above, – not the sire-name, or name received
from the father, but sur'name (super-nomen). There never
was a time when every baptized man had not a Christian
name, inasmuch as his personality before God was recognized.”
1 7 Johns. 549; 11 Wend. 522; 1 Hill, 102.
2 See Matter of Snook, 2 Hilton, 566. —In 1878, in England v. The New
York Publishing Co., 8 Daly, 375, the court reaffirmed the principle of the
Snook case, “nothing in the law prohibiting a man to take another name if
he desire to do so, . . . . no consequence growing out of it, except so far as it
might lead to the confounding of his own identity.” So held also in Doe v.
Yates, 4 Barn. & Ald. 544, where one changed his name by his voluntary act,
in order to take an estate devised to him on that condition. —“There is no law
to prevent a man assuming any name he likes.” James, L. J., in Thorley’s
Cattle-Food Co. v. Massam, 42 L. T. R. (N. s.) 851; 14 Ch. D. 748.
8 Trench, Study of Words.
§ 197.] EXAMPLES OF TRADE-MARKS. 213
Upon good authority, it is stated that but few of the miners of
Staffordshire, in England, choose to retain the names of their
fathers; and we look in vain for a law to restrain them from
the confusion that must frequently arise from severing this
clew to their identity. A single name, generally, sufficed for
the early Hebrews, for each name bore significance; as, for
example, Adam, i. e. “man in the image of God”; Seth,
“substituted by ”; Enos, “frail man.” Our ancestors were
as easily satisfied with personal names, until, amid the increas-
ing multitudes, it became necessary to more clearly designate
persons. The year 1000 is the proximate date for the assump-
tion of family names. The practice commenced in Normandy,
and gradually obtained in England, Ireland, and Scotland, al-
though at an earlier period surnames were occasionally heredi-
tary in Great Britain. After the Conquest, the down-trodden
nations began to copy the customs of their oppressors, and
soon, from the haughty noble down through the various grades
of society, all asserted the right to a distinctive nom de famille.
A patronymic, in its true and original sense, is a modification
of the father's name borne by the child, as Tydides, the son
of Tydeus. The ancients formed their patronymics by an
addition to the father's name, and modern nations have some-
times done the same, as, for example, John-son, Paulo-witz,
Peter-kins; or by a prefix, as O'Brien, MacIntosh, Fitz-Her-
bert, Ap-John. In discussing this subject, Camden says,
“Neither have they seene (I fear) any deed or donation before
the Conquest, but sub-signed with crosses, and single names,
without surnames, in this manner, in England: ‘–H Ego
Eadredus confirmawi'; and ‘–H Ego Edmundus corroboraui,'
in Scotland.” *
§ 197. It is the opinion of the ablest jurists that a person's
name cannot be an essential element of his trade-mark; and
such is the settled doctrine of the Patent Office. That means
his proper appellation, — the name by which he passes in
every-day life, the baptismal name joined to that of his
father; and he may have a fancy surname, or no surname at
all, as in the case of an Indian, or one who was born in slav-
ery with paternity unknown. Or, as has been mentioned in
214 LAW OF TRADE-MARKS. [$200.
another place, the name may have been translated. The use
of the Latin language in the Middle Ages led to the frequent
translation of names; and in the seventeenth century the Eng-
lish poet, Payne Fisher, turned his into Paganus Piscator.
The French was also changed into English equivalents, hav-
ing at times similar sounds, with the slightest reference to the
original signification. Who, for instance, now associates the
well-known Mortimer with the forgotten exploit of an ancestor
in the Crusades, – a “De Mortuo Mari” with the Dead Sea?
§ 198. Allusive Devices standing for Names may be, and
sometimes are, used for marks. In the time of Henry III.,
G. de Lucy had for his arms three lucies, –fish now known
as pike; Robert Quincy had a quintefeuil, - a flower of five
leaves; Thomas Corbett had two corbeaua, - ravens; Sir O.
Heron had three herons; Falconer, a falcon ; Butler, cups ;
Forester, bugle-horns; Shelley, shells. If sufficient for arms,
the same fanciful designations may well serve as trade-marks;
and although suggestive of real names, they are not on that
account objectionable.
§ 199. Vice-Chancellor Wood, in Ainsworth v. Walmesley,
in 1865, held that a man's own name is his trade-mark, when
united with other words which in themselves might not be
such. He therefore upheld the designation of “Ainsworth's
Thread,” the plaintiff being an extensive manufacturer of
thread, and his goods being well known in market by that
name. But inasmuch as the defendant was not shown to
have misrepresented the goods sold as being those of the
plaintiff, the bill was dismissed.
§ 200. Here is a case which shows how a man may, by the
use of his true name, attempt to conceal a fraudulent concep-
tion. In the Tribunal Civil of the Seine, in 1863,” Eugène
Bernard sued the Emonds, father and son. The plaintiff, a
French armorer established at Liége, in Belgium, had regis-
tered his trade-mark in France, under a treaty made in 1861.
The mark was, “E. Bernard, Canonnier de Paris,” with his
initials, “ E. B.,” which he stamped upon the arms. The
defendants had imitated that mark on the same class of mer-
1 44 L. J. R. 252. 2 10 Annales, 375.
§ 201.] EXAMPLES OF TRADE-MARKS. 215
chandise. Held, that a trade-mark has no object but that of
distinguishing the products of manufacture of him who has
adopted it; that the object of the law of 1857 is to guarantee
against unfair competition, by one vending his products as
emanating from another; that E. Bernard is not a cannonier
of Paris, where he has no establishment, but is only a manufac-
turer in Belgium ; that the mark taken by him has evidently
for an object, not to guarantee the identity of his products,
but to deceive the public in France, by causing them to con-
found the cannon coming from Belgium with the important
house of Bernard in Paris, who make similar products; and
that the law was not made to protect such marks and such
frauds. * -
§ 201. In Curtis v. Bryan,” before the general term of the
Court of Common Pleas of the City of New York, in 1868, the
following facts appeared. Previous to the year 1844, Mrs.
Charlotte N. Winslow prepared a composition for children
teething, which she used with success. In 1844, she gave the
recipe to her son-in-law, Jeremiah Curtis, one of the plaintiffs,
who continued to manufacture and sell it under the name of
“Mrs. Winslow's Soothing Syrup”; and, with the approval of
Mrs. Winslow, he made that his trade-mark. The defendant,
in 1867, began the manufacture of a preparation, in color and
appearance resembling that of the plaintiffs, under the name
of “Mrs. H. M. Winslow's Soothing Syrup,” and with a label
of the same size, color, and style as that of the plaintiffs. The
imitation was close in other respects, and was evidently in-
tended to mislead the public. To justify the use by him of
the name of “Winslow,” the defendant claimed that a variety
of soothing syrups had been made and sold by John M. Wins-
low, a certain druggist ; that he had purchased the formula of
his remedy from said Winslow, who had invented it as early
as 1842. The court held the claim of the defendant to be
fraudulent, and the injunction granted was sustained, with
costs. We must remember that this was a case of fraud, in a
court of equity. The right of the plaintiffs to this remedy
did not depend upon the fact that the words mentioned con.
* 2 Daly, 212, and 36 How. Pr. 33; R. Cox, 434.
216 LAW OF TRADE-MARKS. [$ 201.
stituted a valid trade-mark. Anybody named Winslow had a
right to make and vend soothing syrup, and to combine his
name with the generic term, if the sale thereof were not
attended by circumstances of fraud or deceit. In accordance
with rules elsewhere laid down, we must conclude that the
words “Mrs. Winslow's Soothing Syrup’’ are not per se a
“lawful trade-mark.” — In Howe v. The Howe Machine Com-
pany," before a general term of the Supreme Court of New
York, in 1867, Sutherland, J., said that it was clear that the
plaintiff could adopt and appropriate the word “Howe” as a
trade-mark as against Elias Howe, Jr. “The plaintiff had a
right to adopt and appropriate his surname as a trade-mark,
and it cannot be said that Elias Howe, Jr., though his surname
was the same, had a right to use his own surname in such a
way as to deceive the public, and deprive the plaintiff of the
benefit of the notoriety and market which his machines had
gained.” Elias Howe, Jr., in 1846, obtained a patent for a
certain combination of mechanism called a sewing-machine.
His brother, the plaintiff, commenced manufacturing sewing-
machines as early as 1854, using the said combination, as the
licensee of the patentee. These are undisputed facts. The
uncontradicted history of the claimed trade-mark is, that, before
1857, the plaintiff placed on the machines the letters and word
“A. B. Howe”; that, in 1857, the plaintiff adopted “Howe”
as the substitute therefor, and subsequently every machine
manufactured by the plaintiff had the word “Howe” on it,
in a conspicuous place. The judge said that “the conclusion
from the pleadings and affidavits is irresistible, that the word
* Howe’ was thus used to denote the plaintiff, as the manu-
facturer, and not to denote Elias Howe, Jr., as the inventor.
. . . Elias Howe, Jr., granted to the plaintiff, to Singer & Co.,
to Grover & Baker, to Wheeler & Wilson, &c., the right to
use his patented right or combination, in the manufacture of
sewing-machines. It is obvious that the circumstance that
these licensees did use, and had to use, his patented right or
combination, as his licensees, in manufacturing their machines,
cannot have the remotest bearing on the question of the right
1 50 Barb. 236; R. Cox, 421.
§ 202.] EXAMPLES OF TRADE-MARKS. 217
of either of these licensees to adopt and appropriate a trade-
mark, even as against Elias Howe, Jr., as a manufacturer of
sewing-machines.” The judge cited Sykes v. Sykes," where
the manufacture simulated was shot-belts and powder-flasks,
stamped “Sykes' Patent”; and also Croft v. Day,” which is
as follows. A blacking manufactory had long been carried on
under the firm of Day & Martin, at 97 High Holborn. The
executors of the survivor continued the business under the
same name. A person of the name of Day, having obtained
the authority of one Martin to use his name, set up the same
trade at 904 Holborn Hill, and sold the blacking as of the
manufacture of Day & Martin, 90%. Holborn Hill, in bottles
and with labels having a general resemblance to those of the
original firm. He was restrained.
§ 202. Can we regard these two English cases as furnishing
apt illustrations of the doctrine of Judge Sutherland? The
cases differ in this: in the Sykes and the Day suits, the fact
of fraudulent intent was too manifest to admit of doubt ; but
in the Howe case the defendant had in good faith used the
name of the inventor, the president of the company. Leonard,
P. J., said: “There is no fraud upon the plaintiff in the use
by the defendants of the name of ‘Howe,” as designating a
machine manufactured by them, which Elias Howe, Jr., had
invented, and from which the defendants derive their right
to use the name.” The injunction was accordingly refused.
Therefore, notwithstanding the language of Judge Sutherland,
as stated, it was virtually decided that the name “Howe” was
not a trade-mark. How could it be under the admitted facts?
Several firms, wholly independent of one another, had, by
license from the inventor, acquired the right to make and
vend his machine. A lawful trade-mark is exclusive property.
All had the right to use the name “Howe.” Therefore that
name was not a trade-mark. Yet, although not technically
such, under circumstances of fraudulent usurpation, the in-
fringement of it would be restrained, as would any other act
of unlawful competition.
1 3 Barn. & Cres. 541; 5 D. & R. 292; 3 L. J. K. B. 46.
2 7 Beav. 84.
218 - LAW OF TRADE-MARKS. [$205.
§ 203. In Thomson v. Winchester, before the Supreme Ju-
dicial Court of Massachusetts, in 1837, it was alleged that
the plaintiff had discovered valuable medicinal properties in
various vegetable substances, and the best manner of com-
pounding the same for medical purposes, to which substances
so compounded he had given the name of “Thomsonian Medi-
cines”; and that the defendant made an inferior article, to
which he improperly applied the same name. Held, that the
plaintiff had no exclusive right or privilege to compound or
vend the medicines called “Thomsonian,” although he was
the original inventor; and that he had no more right than
the defendant to make and vend these medicines, or call them
“Thomsonian,” if his term had acquired a generic meaning,
descriptive of a general kind, quality, and class of medicines;
as, for instance, James's Powders, or Turlington's Balsam.
§ 204. One's Autograph is good for this purpose. It is the
emblem or symbol of himself. It is not merely his name. If
another of the same name have the same signature for the
same purpose, the coincidence may be embarrassing, and raise
a question of fact for a jury to weigh and settle. The simi-
larity may be fortuitous, and without fraudulent intent.
Unless a man can invent a peculiar flourish, or other character-
istic sign-manual, he had better adopt something else with it.”
The same may be said of the name of a firm, or of a corpora-
tion. “Doe & Roe,” or “The Smith Manufacturing Com-
pany, ” might possibly lead to a confusion of persons; for the
public cannot be assumed to know which firm or corporation
shall have affixed its name to merchandise. This is a general
rule; but it has its exceptions in all countries, and even the
act of Congress before cited” provides for exceptional cases.
$205. In Ainsworth v. Walmesley,4 in 1865, Vice-Chancellor
Wood ably discussed this question. He said that if Mr. Jones,
1 19 Pick. 214.
* By the use of a paraphe, such as is in vogue in France, Spain, and many
other countries, a signature might easily be made so peculiar and distinctive as
to arrest attention.
8 Ante, § 195.
4 44L. J. R. 252; L. R. 1 Eq. 518; 85 L. J. Ch. 352; 12 Jur. (N. s.) 205; 14
L. T. (N. s.) 220; 14 W. R. 363.
§ 207.] EXAMPLES OF TRADE-MARKS. 219
or Mr. Brown, relies on his name, he may find his name a
very inadequate security, because there are several persons of
the same name, it may be, bona fide carrying on the same
trade. But he had not in evidence before him that any other
person than the plaintiff has ever been heard of as manufac-
turing Ainsworth's thread; and therefore “Ainsworth's
Thread” is as good a mark as “Anchor Thread" or “Lion
Thread,” or any other thread which may be described by a
particular name. The fraud of the defendant, in palming off
his thread as that of the plaintiff, had been clearly established,
and justified the decision in favor of the plaintiff. It was
contended on behalf of the defendant that the case was not
one of trade-mark at all; that no trade-mark was used, or
was alleged to have been used, there being nothing but a
simple representation that the thread was sold by the de-
fendant as Ainsworth's; that it was not a case in which,
if the representation had been innocently made, complaint
could properly be urged in this court, because a trade-mark
depends upon property; that, a trade-mark being property,
the use of a man's name was a simple fraud of another de-
scription, requiring the scienter in order to constitute a wrong
in respect to which the court will relieve. But the Vice-
Chancellor replied, that a man's name is still stronger than
any which can well be devised, subject only to this inconve-
nience, which a name has and a trade-mark has not, that two z
people may be of the same name.
§ 206. The rule is, that a man cannot turn his mere name
into a trade-mark. Any other rule would lead to most absurd
consequences. There are several dieta the other way; but
they must be attributed to a loose habit of speech, or a want
of acquaintance with the indispensable requisites of the tech-
nical mark. No wise man in these days would for an instant
rely upon such an insecure tenure of title. If one man's name
may be a trade-mark, so may any other man's name be also.
John Smith is a man's name: therefore John Smith is a valid
trade-mark. That would be absurd." - -
§ 207. Fac-simile of Autograph. — This is just as valid for
1 Cited and approved in Meneely v. Meneely, 1 Hun (N. Y. Sup. Ct.), 663.
220 LAW OF TRADE-MARKS. [$208.
the purposes of a trade-mark as is the original signature. A
person may place his handwriting to each article he makes or
sells, or he may make any other kind of a sign to identify it;
and a copy of his autograph is therefore admirably adapted to
the purpose. The national currency, Gillott's pen-boxes, and
many other familiar objects, may be brought forward as evi-
dence of the practice. The Patent Office has in a number of
instances accepted copies of signatures as legitimate marks.
Thus, as a mark for a certain medicine, the secret of com-
pounding of which the applicant derived from another, with
the right to the use of the imitation of the signature upon an
elaborate label;" as a mark for Jamaica Ginger, which for
many years had enjoyed a reputation, the applicant's right
to the fac-simile of his father, and predecessor in business,
was recognized;” and the well-known firm signature of John
Anderson & Co., upon chewing-tobacco, was registered for the
claimants, as successors in business of the original members of
the partnership.”
§ 208. In these cases, there could be no question as to the
apparent right of the several claimants to make those copies
essential elements of trade-marks; for they clearly deduced
their titles from their ancestors or predecessors in business,
and have such distinct labels and notices as cannot fail to
enlighten the public as to their true position. But there
have been instances of applications for copies of autographs
which seemed to have been adopted for the sole design of de-
ceiving the public into the belief that the original manufacturer
still continued in business, and that the article to which the
fac-simile was to be attached was made by him. Superior
excellence must have been attributed to such original manufac-
turer; and the purchaser must base a preference upon the
fact of the thing being the fabric of the inventor, the com-
pounder, or why would his name be used ? It is done to gain
credit. The article would not command a market without
that peculiar mark. Fraud may lurk in such a case. There-
fore, when a fac-simile of an autograph is offered for regis-
1 Cochran Fleming, No. 756. 2 Fred. Brown, No. 715.
8 Arthur Gillender & Co., No. 767.
§ 209.] EXAMPLES OF TRADE-MARKS. 221
tration, unless accompanied by indubitable evidence of good
faith, or under circumstances which create the presumption of
a rightful use, the claim will be rejected, lest a false credit be
thereby tolerated.
§ 209. The case of Compère v. Bajou et al., decided in
the Tribunal of Commerce of Paris, in 1854, and affirmed on
appeal, is one that is apt to stagger the judgment of a stu-
dent. It appeared that the defendant, Bajou, had assigned his
business as a glove-maker, and the good-will thereto attached.
The assignee was authorized by Bajou to adopt, exclusively of
every other person, the description of successor to Bajou, and
to use, as the mark for his gloves, the stamp employed by him
as the manufacturer's mark, being the fac-simile of his signa-
ture. It was also agreed that Bajou should not have the right
to establish, to purchase, or to be a partner in any manu-
facture of this nature, either at Paris, or any other town in
France with the exception of Grenoble'; and, moreover, that
he might in Grenoble deal only in gloves called “Grenoble
manufacture,” and marked with the stamp of that town.
Bajou disregarded his agreement, and stamped a certain
quantity of gloves with his manufacturer's mark, the fac-simile
of his signature. He sent the gloves thus marked to New
York. The tribunal said that the manufacturer's mark for
this species of industry — the mark being advantageously
known — is an indispensable auxiliary for insuring a sale,
more especially in America; and that, besides, it is not the
custom at Grenoble to mark with one's name the gloves
manufactured there. It was also held, that, in assigning for
a certain sum his good-will, Bajou really assigned all his right
to the manufacturer's mark, in which the true value of the
business consisted, since it was upon the mark that the custom
depended. Further, that it was in vain for Bajou to pretend
that he had the right to apply to his new manufacture the
manufacturer's mark which he had assigned; for that would
be not only to seek to resume that which he had assigned,
and of which he had received the price, but also to endeavor
to apply for his own benefit the increased custom of the
1 Copied in full in Upton, p. 73.
222 , LAW OF TRADE-MARKS. [$ 211.
assignee. He was, therefore, prohibited from employing in
the future his name as a manufacturer's mark upon his gloves,
and heavily fined. - -
§ 210. To the casual observer, this might seem like an
authority to commit a fraud upon the public, and upon pur-
chasers in foreign countries, by the means of a misrepresenta-
tion, to wit, that Bajou himself had made the gloves. That
was not the meaning of the judgment of the tribunal of first
instance, nor of the Imperial Court of Appeals of Paris,
which affirmed the decision. The latter held that the exclu-
sive title to the mark had passed to the assignee, the right to
the use of the stamp till then employed by Bajou being one
of the essential ingredients of the contract; that the stamp,
being the only means of establishing the source of the goods,
and of retaining the custom depending on it, had become, by
force of circumstances, an accessory of the good-will trans-
ferred ; and that the arrangements adopted by Bajou, to make
known abroad that he had recommenced trade, had no other
object than to take from the actual owners of the business a
part of the benefits insured to them. This was as much as
to say that the case is essentially one of good-will, and that
the mark is an incident to it. It is a matter of unlawful
competition in trade. It did not mean that the mere fac-simile
of Bajou's signature could be used by the assignee; for that
were to encourage fraud. The law of France is opposed to
any such idea. The rule of commercial morality is far more
stringent there than in many other countries. The twenty-
first article of the Code of Commerce is, that “the name of
the associates can alone constitute the firm name " (la raison
sociale). This is intended to forbid persons who succeed to the
business of another from continuing it under his name. Credit
is altogether personal.” What, then, did the court mean?
§ 211. If we look back, we shall see that Bajou authorized
his assignee to adopt, exclusively of every other person, the
description of successor. The law of France requires the
words “successor of " to appear in such case. The public
1 See remarks of Hoffman, J., in Howe v. Searing, 10 Abb. Pr. 264; 6 Bos.
354; and 19 How. Pr. 14. -
$218.] EXAMPLES OF TRADE-MARKS. 223
could not be misled, and the assignee of the mark would
thereby be enabled to secure custom, as the successor of a
reputable manufacturer; as the one who had availed himself
of all the appliances and means of attaining excellence that
the other had possessed.
$ 212. A designation may become a lawful trade-mark,
although originally composed of simple initials. It may be
accepted in commerce as indicating a name other than that
of the manufacturer who claims it. It thus virtually becomes
a pseudonym, or, more properly speaking, a fancy symbol.
In the Tribunal of Commerce of the Seine, in 1857, came up
the following case. Jean Bardou, the plaintiff, a manufacturer
of cigarette-paper, had been in the habit of marking his pro-
ducts with his initials, “J. B.,” separated by a lozenge, so
that the mark seemed to be composed of the word “JOB.”
The public soon became accustomed to the mark, but, mis-
taking its component parts, asked for “Job’ paper. Lassau-
sée, the defendant, who was engaged in the same kind of
business, took an associate named Job, and without hesitation
took also the mark “JOB.” His defence to the suit was, that
he had a perfect right to use the genuine name of his partner.
The court scouted so shallow a pretence, and punished him
severely."
§ 213. Pseudonyms. – During the Middle Ages it was
rather the rule for an author not to publish under his real
name, either from prudential motives or because of excessive
modesty. When all serious works were written in Latin, Teu-
tonic, and even Gallic, names had an awkward appearance
among Ciceronian adjectives. They were therefore softened
by Latinizing or Hellenizing them. When the name was sig-
nificant, it might be literally translated. The great reformer
of Germany, Philip Schwartzerd, not admiring an uncouth
cognomen, signifying black earth, changed it into the melliflu-
ous Greek; and it has come floating down to us through three
centuries as Melanchthon. England has furnished another
conspicuous example in her “Nominis Umbra,” as Byron calls
him.” We need be at no loss for instances of feigned names
1 3 Annales, 125. * Junius.
224 LAW OF TRADE-MARKS. [$ 213.
among authors of our own century. Mr. Herbert takes as his
nom de plume “Frank Forrester,” Mrs. Judson took “Fanny
Forrester,” Dr. Holland figures as “Timothy Titcomb,” Miss
Dodge as “Gail Hamilton’’; and many similar cases are
as familiar as household words. In England, a writer whose
initials are H. N. B. recently put forth a novel purporting to
have been written by “Mr. Aitchenbee.”* All such names
would be protected as lawful proprietary marks. In 1838,
Felix Tournachon took the pseudonym of “Nadar,” which
he affixed to all his productions, as an artistic and literary
mark of the fruit of his toils. It was held by the Court of
Paris, in Tournachon v. Tournachon,” that this feigned name
was a valid trade-mark; and that decision was affirmed by
the highest court. So, in the Tribunal of Commerce of the
Seine, in 1867, in the case of Gravelet (dit Blondin) v. Ar-
nault,” it was decided that a pseudonym can become property
in him who has given celebrity to it, and as well in the arts
as in mechanical industries. Per Curiam : Gravelet took,
many years ago, the pseudonym of Blondin, under which he
is generally known, and in various countries as an acrobat had
gained a notoriety for his name. With the object of competi-
1 Pen-names may be divided into three classes: First, pseudonyms, as “George
Eliot” (Mrs. Cross), “Georges Sand” (Madame Dudevant), “Christopher
Crowfield” (Harriet Beecher Stowe), “Ferman Caballero” (Doña Felicia Ar-
rom, the Spanish novelist), “Arthur Dudley’’ (Countess of Bury), “Howard
Glyndon” (Laura C. R. Searing), “Peter Parley” (Samuel G. Goodrich), “Peter
Plymley” (Sydney Smith), “Mark Twain” (Samuel L. Clemens), “Acton Bell,”
“Currer Bell,” and “Ellis Bell” (three Bronté sisters), “Hosea Biglow” (James
R. Lowell, for his political satires), “Boz” (Charles Dickens), “Sam Slick”
(Judge Haliburton), “Jack Downing” (Seba Smith), “U. Donough Outis” (Rich-
ard Grant White). There are anagrammatic pseudonyms, as “Alcofribus Nasier”
(François Rabelais, the French satirist), “Barry Cornwall, poet’’ (good though
imperfect anagrammatic pseudonym of Bryan Waller Procter), “Benauly ’’
(the trio, Benjamin, Austin, and Lyman Abbott, who once wrote in a sort of
literary partnership). Second, anonyms, as “By a Layman,” “L. E. L.” (Letitia
Elizabeth Landon), “A L O E” (a lady of England, Miss Charlotte Tucker).
Third, acrostics, as “Talvi" (Therese Albertina Louise von Jakob), “E. D. E. N.”
(Emma D. E. Nevitte, Mrs. Southworth). - -
It was in the days of Cosmo de' Medici that a goldsmith of Florence, named
Tomaso Bigordo, accepted as his definite title the nickname of “Ghirlandajo,”
— maker of garlands, – to which nickname he owed his subsequent success,
2 4 Annales, 83. * 13 Annales, 303.
§ 216.] EXAMPLES OF TRADE-MARKS. 225
tion, Arnault, director of the Hippodrome, announced a spec-
tacle in which should appear an acrobat to whom he gave
the name of Blondin, and announced him as the veritable
Blondin. Held, to be an infringement. Enjoined. Dam-
ages, 500 francs. Publication in the newspapers at defend-
ant's expense. * -
§ 214. There have been instances in the Patent Office of
persons using sobriquets of themselves for trade-marks. One
person, a manufacturer of clothing, uses the term “Little
Jake,” and has had it registered." It is not very doubtful
that the political editor known as “ Brick Pomeroy’ could
claim the exclusive right to that classical title; for there is
but one person in creation who could be meant thereby. 's
$ 215. In the reign of Chin-tsong in China, in the six-
teenth century, lived a celebrated artist of the name of Ou,
who withdrew from the world. He produced, in secret, porce-
lain remarkable alike for its quality and the beauty of its
colors. Under the foot of his vases he engraved in the paste
his peculiar mark, that by which his workmanship was iden-
tified. The translation of it is, “The old man Ou, who
lives in solitude.” Whether regarded as a mere denomina-
tion of fancy, as a pseudonym, or as his genuine signature,
this mark denoted origin and ownership, and carried with it
a guaranty of excellence. -
§ 216. Fancy Names of Men. — We have many instances of
such names becoming valid trade-marks. In the case of Bar-
rows v. Knight,” in the Supreme Court of Rhode Island, before
all the justices, it was held, that “Roger Williams,” though
the name of a famous person, long since dead, is, as applied to
cotton cloth, a fancy name, as would be, so applied, the name
of Washington, Greene, Perry, or any other hero, living or
dead. Said Ames, C. J., in delivering the opinion of the
court: “It is quite as peculiar and significant, in such an
application, as Persian Thread, Mexican Balm for Hair, Vege-
table Pain-Killer, Houqua’s Mixture, for tea, or Ethiopian, for
1 Jacob Seligman, No. 828. See Grow v. Seligman, 47 Mich. 607.
* Marryat's Pottery and Porcelain. London, 1857.
8 6 R. I.434; R. Cox, 238.
Af 15
226 LAW OF TRADE-MARKS. [$ 218.
stockings, or the numerous other fanciful names which have
been treated as appropriate trade-marks.” In Messerole v.
Tynberg," the plaintiffs claimed an exclusive right to use the
word “Bismarck,” in its application to paper collars. The
court held, that the plaintiffs had the right to appropriate said
name, in common with others, for a new purpose; and, having
done so, are entitled to avail themselves of all the advantages
of their superior diligence and industry. In the Court of
Paris (Dalbanne & Petit v. Coleuille & Co."), where both par-
ties used the name “Lamartine” for a certain elixir, the
court said, on appeal: There is no doubt that proper names,
other than those of the manufacturer, can be employed like
any other sign, as a distinct mark of industrial products, and
thus become veritable property, not as a title or mode of
appellation, but as a commercial mark. In the case of Wedg-
wood et al. v. Smith et al., before the Vice-Chancellor of
England, in the year 1848, the defendants were restrained
from using the name of “Wedgwood,” or “Wedgewood,” on
their wares, it having been shown that the name “Wedg-
wood” had been used as a trade-mark by the family of the
Wedgwoods for centuries.” The Court of Paris, in 1867 (case
of Sargent v. Romeu"), sustained the right of the plaintiff to
the words “Royal Victoria.”
§ 217. The applicant, at times, by an addition to his patro-
nymic, or a variation thereof, makes a convenient and pecu-
liar mark. Thus the terms “Mayoline,” ” “Edgerline,” and
“Rosebaume,” have come into existence. Although perhaps
suggestive of the names of their appropriators, they are suffi-
ciently distinctive to serve their true purpose.
§ 218. Again, the name of some defunct person, or of some
one whose creation sprang from the brain of the poet or
novelist, is found to be serviceable. If understood by the
public to be nothing more than a mere fancy designation, —
one which has lost its original character and become an un-
1 4 Abb. Pr. (N. s.) 410; 36 How. Pr. 14. 2 7 Annales, 414.
* Jewitt's Life of Josiah Wedgwood, p. 385. * 13 Annales, 21.
5 U. K. Mayo, No. 904. - -
* H. B. Edgerley, No. 610. - 7 J. Rose, No. 807.
§ 219.] EXAMPLES OF TRADE-MARKS. 227
meaning symbol, - then it may be entitled to recognition as
the veritable mark of commerce. When we see “Dolly
Warden "" upon fancy paper, we do not think of the charm-
ing daughter of the London locksmith, Gabriel Warden by
name, as portrayed by Charles Dickens, but we associate the
name Dolly Warden with a certain manufacture of goods.
Thus, in or about the year 1871, the public recognized what
were then known as “Cretonnes'' as the make of a certain
inspired modiste, who had the name transformed into a mark.
Chintzes, and other dry goods, now bear the title; and for
each class of merchandise it is a mark that the law will pro-
tect, and secure the exclusive use of it to the first adopter
thereof. “Paul Jones,” the name of a somewhat famous
naval hero in the early history of our nation, has been im-
pressed into the service as a brand for whiskey.” So has the
traditional “Young America”* been placed upon writing-
ink for the use of the scions symbolized by that appellation.
“Apollo” 4 indicates a certain species of gin ; “Rip Van
Winkle,” a brand of whiskey; “Falstaff,” & “Gulliver,” 7
“ Uncle Bob Lee,” 8 “Our Fritz,” 9 “ Brown Dick,” 10
“Lone Jack,” iſ and “Phil Sheridan "* authenticate par-
ticular manufactures of cigars, or of chewing or smoking
tobacco.
§ 219. New Words. – The coiner of a new word, employed
by him to designate an article made or on sale by him, may
obtain such a right to that name as to entitle him to the sole
use of it, as against any others who attempt to use it for the
sale of a similar article. The Court of Appeals of New York
said:” “Our conclusion is, that where a man has invented a
new name, consisting either of a new word or a word in com-
mon use, which he has applied for the first time to his own
1 Bergen & Bainbridge, No. 833.
* Walsh, Brooks, & Kellogg, No. 702.
8 Adams & Fay, No. 912. 4 Gill & Lootz, No. 531.
5 A. W. Balch & Co., No. 601. 6 David Hirsch, No. 23.
7 David Hirsch, No. 24. 8 Winfree & Lyon, No. 402.
9 J. W. Carroll, No. 156. 10 J. W. Carroll, No. 157.
11 J. W. Carroll, No. 158. 12 Smith, Crosby, & Co., No. 244.
18 Selchow et al. v. Baker et al., 93 N. Y. 59.
228 LAW OF TRADE-MARKS, [$ 219.
manufacture, or to an article manufactured for him, to distin-
guish it from those manufactured and sold by others, and the
name thus adopted is not generic or descriptive of the article,
its quality, ingredients, or characteristics, but is arbitrary, or
fanciful, and is not used merely to denote grade or quality, he
is entitled to be protected in the use of the name, notwith-
standing that it has become so generally known that it has
been adopted by the public as the ordinary appellation of the
article.” Of course the court did not mean to limit the use
to an article of manufacture. The introducer of a word, or
words, into the language may, by a parity of reasoning,
acquire the same right on the same terms. He is virtually
a coiner of a word who first applies it, as an arbitrary symbol,
to express the origin of the article of merchandise to which
it is affixed. Thus, the Greek word “Eureka” has been
judicially recognized as possessing all the essential character-
istics of a trade-mark." — “Tod,” in Arabic characters, was
held to be a valid mark in England.” — The Latin “Ne Plus
Ultra” was held not to be a trade-mark, solely because proved
to be common to the trade; and the Latin word “Excelsior ’’
was held to be arbitrary, and therefore valid.” — The highest
court in France (Cassation), in 1873,” held that even the
translation into a foreign language of a term already publici
juris in France should be upheld as a valid trade-mark. It
was contended for the infringer, that the Spanish words “Agua
divina” could not be regarded as constituting an arbitrary
symbol, for the reason that they were only a translation of the
French words “Eau divine,” long before fallen into the public
domain, and commonly used in trade. The court said that
it was an exception to the general rule, as the foreign words
had not before been usually employed, and had not, in any
respect, fallen into the public domain. — In the Court of
Paris, in 1874,” the foreign word “Paragon” was sustained
1 Ford v. Foster, L. R. 17 Ch. App. 611; English Reports (Moak's notes),
vol. iii. p. 538; also The Alleghany Fertilizer Co. v. Woodside, 1 Hughes, 115.
2 Re Rotherham's trade-mark, 14 Ch. D. 585. -
8 Beard v. Turner, 13 L. T. (N. s.) 746. * Infra, § 245.
5 Coudray v. Mompelas, 19 Annales, 31.
6 Fox v. Meurgey et al., Ibid. 327.
§ 220.] ExAMPLES OF TRADE-MARKs. 229
as a trade-mark. — The Tribunal of Commerce of the Seine,
in 1878,” in the analogous case of a shop sign, sustained a
foreign name, “Bodega,” which is only the Spanish for
boutique, shop. We need not strain a point to inquire as to
the possible coincidence of a supposed neologism with a word
or term used in some language other than our own. Is it
new in its present application ?
§ 220. The Necessary Name of a Product. —Such a name
is not the subject of exclusive appropriation. This may be
regarded as the settled law of commerce, everywhere. It is
necessarily so. While it is true that one may coin and adopt
a word intending it to serve as a trade-mark, and a means of
attesting the genuineness of manufacture, he must beware of
making it the indispensable designation of the same. Among
the many illustrative examples, a few may here be cited,
viz.: “Chlordine”; * “Charbon de Paris”; 8 “Linoleum”; 4
“Charter Oak”; ” “Lucilene.”" All these were made neces-
sary descriptive names. But in opposition to the necessary
designation, the arbitrary designation is that which springs
from neither the nature nor kind of object designated, so that,
a product or establishment might be as well recognized under
another name." One of the oldest examples in France is that
of “l'Encre de la petite vertu,” in the Royal Court of Paris, in
1835.” The word enere is a necessary description; for it must
be used readily to express the object, ink, and all may freely
use that name. But the accompanying words are an accessory
of fancy, which none but the first appropriator may employ.
— A leading American case is that of Caswell v. Davis, in the
Court of Appeals of New York.” The alleged trade-mark
consisted of the name affixed by the plaintiffs to the medi-
1 Lavery & Co. v. Fajardo, 24 Annales, 71.
2 Browne v. Freeman, W. N. 1873, p. 178.
8 Brousse, Perdonnet, & Co., 20 Annales, 91.
4 Linoleum Manufacturing Co. v. Nairn, 7 Ch. D. 834; 47 L. J. Ch. 430; 38
L. T. (N. s.) 448; 26 W. R. 463; 1 Trade Marks, 291.
5 Ubi supra. 6 See § 252.
7 Blanc sur Contrefaçon, 70.
* Larénaudière v. Perine-Guyot, Ibid.
9 58 N. Y. 223; 17 Am. R. 233.
230 - LAW OF TRADE-MARKS. [Š 220.
cine, which was first compounded by them in 1861, - “Ferro-
phosphorated Elixir of Calisaya Bark.” They based their
claim on priority of adoption. The plaintiffs did not seek to
enjoin the defendant from manufacturing and selling his com-
pound, or any other mixture composed of any elements; but
insisted that he should not sell it with a label bearing upon
it the name above given. There was some evidence tending
to show that similar preparations, in some of the essential
elements, had been made and were in use before the plaintiffs
experimented on or produced their article; but it was not
established that any mixture composed of all the ingredients
used by the plaintiffs, or having a name in all respects similar
to that adopted and applied by them, was in use or known to
the public before the plaintiffs introduced their medicine.
The Elixir of Calisaya, or Peruvian Bark, was in use, and
perhaps in solution with iron in some form. But this case
shows that this composition, with its peculiar and specific
substances, was first introduced by the plaintiffs under its
peculiar name, “Ferro-phosphorated Elixir of Calisaya Bark,”
and that they first applied the specific word “ferro-phospho-
rated" to any medicine. The article compounded by the
plaintiffs, as a whole, was original with them. In the con-
dition in which it was presented to the public it was new.
As it was a recent composition, it would, of necessity, require
a characteristic name, if its elements were to be indicated in
its appellation. Compounded of substances known principally
in chemistry, which science has a nomenclature peculiar to
itself, the words to distinguish it would be in a language
familiar to chemists, and that limited class of persons who
deal in drugs and chemicals. It is true that the meaning of
the words, singly, which mark the compound in question, is
known to a large class of persons other than those designated;
but, so far as the word “ferro-phosphorated '' is concerned, it
cannot be said that it is in common or general use, or that it
is even understood by the great number of persons who take
the remedy, on the advice of physicians, as indicating the true
nature and character of the mixture. They may, and doubt-
less do, in most cases, understand that the medicine prescribed
§ 220.] EXAMPLES OF TRADE-MARKS. 231
contains Peruvian bark and iron; but as they read the label
on the bottle they do not learn from it what the article really
is, although its elements generally are indicated by the words
used. They are not like words in common use, in any true
sense, – words which carry to the mind of all classes of per-
sons, the instant the eye lights on them, the true character of
the contents of the package upon which they are placed. All
understand what mean the words “tobacco,” “gin,” “brandy,”
“cotton yarn.”; but the words “Ferro-phosphorated Elixir
of Calisaya Bark” would be unintelligible to most persons.
Such is nearly the precise language of Van Vorst, J., in the
court below." In discussing the novelty of the term employed
by the plaintiffs, he further said: “Ferrum, of which “ferro”
is a form, is a common word in the Latin ; and ‘phospho-
rated” is recognized by Webster as an English word. But
I am of the opinion that no such word as “ferro” and ‘phos-
phorated' in combination is to be found in any language,
except the forming of it by the plaintiffs has had the effect
to introduce it; and if so, plaintiffs are entitled to the credit
and use of it. The combined word, I am satisfied, is philo-
logically incorrect. I do not suggest that the word is mean-
ingless, or that its elements do not indicate in a general way
some of the ingredients of the preparation; but it does not
do so chemically, or in an exact sense, and was doubtless
arbitrarily arranged and invented by plaintiffs.” There was
a fact, also, which had some influence on the mind of the
court. Several physicians testified that they had used this
remedy for years; and that when they prescribed “Ferro-
phosphorated Elixir of Calisaya Bark” they intended the
medicine of that name manufactured and sold by the plaintiffs.
Another fact appeared. The defendant was in the employ-
ment of the plaintiffs when the experiments were made which
resulted in the production of the article. He availed himself
of the information gained while in a confidential relationship.
The court decided that the plaintiffs were entitled to the
exclusive use of the word “Ferro-phosphorated,” whether
alone or in combination with other words. But the Court of
1 4 Abb. Pr. (N. s.) 6; 35 How. Pr. 76; R. Cox, 429.
232 Law of TRADE-MARKs. [$220.
Appeals held that the word was descriptive of the composition
of the medicine, and reversed the decision appealed from. —
In a United States Circuit Court, Wallace, J., correctly said:
“When a new article is made, a name must be given to it,
and that name becomes by common acceptation the appro-
priate descriptive term by which it is known, and therefore
becomes public property. If this were not so, any person
could acquire the exclusive right to a formula by giving a
name to the compound produced, not only when the com-
pound has not been patented, but when it might not be the
subject of a patent. All who have the right to manufacture
and sell the preparation have the right to designate and sell it
by the name by which alone it is known, provided care is ob-
served to sell the preparation as the manufacture of the seller,
and not as the preparation made by another. The same rule
applies in the case of a natural product to which one has
given a name, which name becomes designatory of the natural
product, and may be generally used ; and even so during the
continuance of a patent, if a new means of getting at the nat-
ural product is discovered, which does not infringe the patent.”
— It will readily be understood that by the term necessary is
meant that which is the true and descriptive name. In a
case where a preparation made from infusorial earth for com-
mercial purposes was called “Electro-Silicon,” those words
were held to have been coined for the purpose of creating
and establishing a trade-mark; that they were not descrip-
tive of the article, although it contains some silicon ; that
silicon is not, and from its nature cannot be, a commercial
article, because it exists in such minute quantities, and is an
elementary body closely allied to carbon and existing as a
dark brown powder or steel-gray mass, according to circum-
stances, and is never found in nature in an uncombined state,
but only exists as a component part of compounds resembling
it in no respect, from which it has been separated so as to
exist by itself only in a small quantity, and to furnish only
specimens to cabinets.” -
1 Hostetter et al. v. Fries et al., 17 Fed. R. 626.
2 Electro-Silicon Co. v. Hazard, 29 Hun, 369.
§ 220 a.] EXAMPLES OF TRADE-MARKS. 233
§ 220 a. “Singer,” as a Designation for Sewing-Machines.
—Is this name merely generic, as applied to a class of ma-
chines, the patents on which have expired? To enable one
to give a satisfactory answer to this question, it is necessary
to examine the course of litigation as to the use of this name
as a mere adjective. This has ably been done in a recent
case in the Supreme Court of Ohio." Although this is not
strictly a trade-mark case, but rather belongs to the domain of
good-will, it illustrates a principle applicable to trade-marks.
The Singer Manufacturing Company, a corporation organized
under the laws of the State of New Jersey, in 1880, brought
an action, in the Superior Court of Cincinnati, under the code
of the State of Ohio, for an injunction and an account. Plain-
tiff alleged that it was engaged in the manufacture and sale of
sewing-machines, which machines were known by the name
or designation “Singer,” and that the defendant had violated
its rights by selling machines of similar appearance under
the name of “English Singer Sewing-Machines.” From the
pleadings and proofs, it appears that in 1850 letters patent
were granted to one Howe, the inventor, (who transferred
his rights to Isaac M. Singer, to whose rights the cor-
poration plaintiff had succeeded,) for an improvement in
sewing-machines. The name “Singer” was then given to
the machine, and the machine introduced to the public,
and afterwards, and through all subsequent changes, it was
termed, and known to the public as, the “Singer Sewing-
Machine.” It was in this way that the machine was dis-
tinguished from other patented sewing-machines, identified
and known by the name of the respective inventors and
makers, as “Wheeler & Wilson,” “Grover & Baker,” “Flor-
ence,” “Wilson,” “Davis,” etc. The public thereby became
informed that any such designations meant machines for
which patents had been granted, machines constructed upon
the principles, and in the mechanical modes, and operating in
the ways, described in the respective patents. The plain-
tiff contended that the word “Singer’’ was and had been
* The Singer Manufacturing Co. v. Brill, 41 Ohio St. See decision of the
Superior Court of Cincinnati in this case, Cox's Manual, No. 672.
234 Law of TRADE-MARKs. [$ 220 a.
understood in the trade to signify machines of the manufac-
ture of the plaintiff, and no others. The plaintiff was the
proprietor of, or was interested in, several patents for im-
provements upon the machines manufactured and sold by it,
each improvement being distinguished from all others, and a
distinctive name given to it. The “Singer Family Machine”
was the one sold by the defendant. The patents thereon had
expired a long time before the acts complained of were done.
It appeared that the name “Singer” had, by means of a brass
plate or label, been affixed to all machines sold by the plain-
tiff, and its predecessors, said I. M. Singer and a New York
corporation; but the word “Singer” had not been affixed to
any machines sold by the defendant, but in all his cards,
circulars, and newspaper advertisements he represents them
to be “English Singer Sewing-Machines, manufactured by
the Williams Manufacturing Company, Montreal, Canada.”
The Superior Court — Foraker, J. — properly treated the
matter as one of trade-name and not as a trade-mark case.
The judge regarded the advertisements, etc. of the defend-
ant as likely to mislead the public, and gave judgment for
the corporation plaintiff. The case was taken to the District
Court, in 1881, but was not heard there, but reserved to the
Supreme Court of the State, where, on June 3, 1884, the
decision below was reversed, for the reason that, where a
patented machine became known to the public by a distinct-
ive name during the existence of the patent, any one, at the
expiration of the patent, may make and vend the machine,
and use such name; and no one, by incorporating such name
into his trade-mark, can take away from the public the right
of so using it. — The foregoing is one of several suits brought
by the same corporation for alleged wrongful use of the name
“Singer,” claimed as its exclusive property. The Court of
Session, in Scotland, in 1873, regarded the use of the name
(although the defendants placed their own names on their
machines) as an unfair assumption, and granted an interdict.
—In 1877, in England, Jessel, Master of the Rolls, and the
1 The Singer Manufacturing Co. v. Kimball and Morton, 11 Ct. of Sess. Cas.,
3d series, 267; 10 Scot, L. R. 173.
§ 220 a.] EXAMPLES OF TRADE-MARKS. 235
Court of Appeal, upon the plaintiff's evidence alone, held,
that although where a trade-mark proper is imitated on goods,
it is not necessary, to constitute an infringement, for actual
fraud to be proved ; yet where a trade-name (Singer) is used
in respect of an article, but is not placed upon it, actual
fraud must be proved to establish infringement. No actual
fraud having been shown, an injunction was refused." The
plaintiff's evidence only was before the courts. It showed
that the defendant, who manufactured sewing-machines on
the principles of a variety of expired patents, used among
others the patents formerly owned by the plaintiff and its
predecessors in business, and described such machines as
“Our Singer Machines,” and placed on them his trade-mark,
consisting of a brass plate representing St. George and the
Dragon within the words “Newton, Wilson, & Co., Manu-
facturers, 144 High Holborn,” arranged in a circle; and he
alleged that the name “Singer” was indicative of machines
made on the principles of construction which he asserted to
run through all the plaintiff's patents, though they varied in
minor particulars, and not of an article made by the plaintiff.
Held, by the House of Lords,” that, the plaintiff's evidence
only being before their lordships, they were not in a position
to decide finally whether the name “Singer” or “Singer’s ”
was really indicative of the plaintiff's manufacture, or of a
principle of construction, or whether the defendant had acted
in a way to deceive, and that therefore the case should be
remitted to the court below for decision upon the whole of
the evidence. But that action was fated to be fruitless, for
Wilson, the defendant, ceased to be in a condition to further
contest the matter. The plaintiff company then brought
suit against the London agent of a Berlin firm.” Vice-Ch.
Bacon decided in favor of the plaintiff; but the Court of
Appeal reversed his decision.* The House of Lords finally
1 2 Ch. D. 434; 45 L. J. Ch. 491; 34 L. T. (N. s.) 858; 24 W. R. 1023. — Ct. of
Appeal: 2 Ch. D. 448; 4.5 L. J. Ch. 490; 34 L. T. (N. s.) 863; 24 W. R. 1026.
* 3 App. Cas. 376; 47 L. J. Ch. 481; 38 L. T. (N. s.) 303; 26 W. R. 664.
* The Singer Manufacturing Co. v. Loog, 11 Ch. D. 656; 48 L. T. (N. s.) 3;
Boston L. Rep. 1883, p. 538.
4 18 Ch. D. 365.
236 LAW OF TRADE-MARKS. [$220 a.
settled the question, on the fifth anniversary of its former
decision, in the language of the Lord Chancellor holding that
the phrase “Singer system ’’ of sewing-machines, whether
scientific or not, whether exact or loose, is used commonly
by the sewing-machine trade to describe a fact, and that,
while other manufacturers have no right to invade the repu-
tation of the company as manufacturers, so neither has the
company, now that its patents have expired, any right to
claim a monopoly of a particular pattern of machinery, or
the reputation acquired by it. The result is, that one who
chooses to adopt the manufacture of machines having the
same principle of working, and the same internal arrange-
ment of parts, as those described in the Singer patents, is
at perfect liberty to say that he manufactures them on the
Singer system.*—Several suits on the same subject matter
have been brought in Circuit Courts of the United States,
with substantially the same result. In the Northern Dis-
trict of Illinois, in 1878,” Drummond, J., said, inter alia:
“On a machine called ‘The Singer Sewing-Machine’ there
were various patents. These patents have all expired, and
nothing can therefore be claimed under them. Other persons
cannot be prevented from manufacturing a machine like the
Singer sewing-machine, and which may be called, to distin-
guish it from other machines, ‘Singer's Sewing-Machine.' If
a sewing-machine has acquired a name which designates a
mechanism or a peculiar construction, parts of which are pro-
tected by patents, other persons, after the expiration of the
patents, have the right to construct the machine and call it
by that name, because that only expresses the kind and qual-
ity of the machine. . . . I do not think, under the circum-
stances of this case, there can be a trade-mark for the name
‘Singer Sewing-Machine.’”— In the Eastern District of Mis-
souri, in 1881,” Treat, J., said: “If the patentees, or their
1 48 L. T. (N. s.) 3. -
* Singer Manufacturing Co. v. Larsen, Chicago Leg. News, Nov. 6, 1880;
8 Biss. 151. -
8 Singer Manufacturing Co. v. Stanage, 6 Fed. R. 279. The same judge
in 1884, in Goodyear Rubber Co. v. Day et al., 22 Fed. R. 44, reasserted this
doctrine.
§ 220 a.] EXAMPLES OF TRADE-MARKS. 237
assignees, could assert successfully an exclusive right to the
name “Singer,’ as a trade-mark, they would practically extend
the patents indefinitely. The peculiar machine which had
become known to the public under that name during the life
of the patents, was so known as a specified article of manu-
facture, and at the expiration of the patents would still be
known on the market by that designation, irrespective of
the name of the special manufacturer. No one has an ex-
elusive right to the generic name. If one wished to acquire
a trade-mark in connection therewith, he could do so, distinct-
ively. The plaintiff accordingly adopted specific devices,
including its own name, whereby its products could be dis-
tinguished. The defendant adopted a different device, with
the name of his manufacturer “Stewart,” and advertised the
sale sometimes of the “Stewart’ machines, and sometimes of
the “Stewart-Singer' machines, attaching his name as ‘late
General Manager of the Singer Manufacturing Co.' . . . A
review of the many cases cited leads to the following conclu-
sions: — First. That when a patented article is known in the
market by any specific designation, whether of the name of
the patentee or otherwise, every person, at the expiration of
the patent, has a right to manufacture and vend the same
under the designation thereof by which it was known to
the public. Second. That the original patentee, or his as-
signees, have no right to the exclusive use of said designation
as a trade-mark. Their rights were under the patent, and ex-
pired with it. Third. If a corporation or person wished to
establish a trade-mark or name, indicative of its own special
manufacture of such a machine or product, the right must
grow up, just as all other rights of the kind are established,
by use and acquiescence. Thus, as every one, at the expira-
tion of the patent, had a clear right to manufacture and vend
what was known as the “Singer’ sewing-machine, the plain-
tiff could acquire no exclusive right to the name “Singer, but
could, by proper trade-mark, appropriate to itself names or
devices indicating its own manufacture of such machines.”—
The judge went on to say that the parties to the suit had
each adopted a distinctive trade-mark, with different devices
238 Law of TRADE-MARKs. [$ 220 b.
and names, so that there was no probability that the machine
made by one would be mistaken for the manufacture of the
other; and that, inasmuch as the word “Singer” indicates a
machine of peculiar mechanism, and every one has a right to
make such a machine, the word “Singer” attached to such a
machine is common property. He continued, that it is im-
portant to remark that the plaintiff is seeking, after the expi-
ration of patents, to perpetuate a monopoly, under the guise
of a trade-mark. He further remarked, that the propositions
involved have undergone much judicial investigation in Trans-
atlantic and Cisatlantic courts, and all the cases would show,
if properly analyzed, that the general rule is the same as
above laid down. — In 1882, in the Circuit Court of the
United States for the Western District of Tennessee,” the
same matter was considered, and a preliminary injunction
denied. Hammond, J., fully concurred in the conclusions of
the Stanage case, and said: “It is a part of the history of our
inventions, known to the courts as well as others, that the
names of inventors are used to distinguish their inventions,
and there have been ‘ Howe,’ “Singer,” “Grover & Baker,’
* Wheeler & Wilson,’ &c., to indicate the different kinds of .
patented sewing-machines.”
§ 220 b. The propriety of using a man's name as a trade-
mark, when it might tend to mislead, was considered in the
Supreme Court Commission of the State of Ohio, in 1884.”
The defendants in error had claimed the name “Trommer’’
as one of the essential elements of a trade-mark upon bottles
of malt-extract. The facts, as they appeared in the bill of
exceptions, were as follows. The article sold by the defend-
ants in error was made by one Gessner, and in accordance
with a formula prepared by him. Many years before that
time, Dr. Felix von Niemeyer, a German physician of some
note, published a “Text-Book of Practical Medicine,” the
third American edition of which was printed in 1870. The
book was a standard work, and became authority with phy-
sicians and students of medicine. In that book Dr. Niemeyer
1 Singer Manufacturing Co. v. Riley et al., 11 Fed. R. 706.
2 Buckland et al. v. Rice et al., 40 Ohio St. 526.
§ 220 b.] Examples of TRADE Marks. 239
stated that in late years he had obtained very good effects
from an extract of malt prepared by Trommer. He also in
general terms described Trommer's malt-extract. Ziemssen,
in his “Cyclopædia of the Practice of Medicine,” a standard
medical authority, also speaks of a malt-extract prepared from
Trommer's receipt. Gessner did not know Trommer's receipt,
and it is not claimed that the defendants in error prepared
this malt-extract sold by them in accordance with Trommer's
method, or that their malt-extract was like that of Trommer.
When they put their extract upon the market, they adopted
the word “Trommer’ to be used as a trade-mark. The
court said, inter alia: “What was their object in doing this?
Why was the name of Gessner, the real author of the extract,
concealed, and ‘Trommer' put forward as the catchword?
There could have been but one motive, and that was that
the public should be led to believe that the defendants in
error were making an extract of malt like that made by
Trommer and mentioned by Niemeyer and Ziemssen. This
was a deception, and to the extent that the District Court, by
its order, protected them in the use of the word Trommer,
it erred. There are, however, other distinctive features of the
trade-marks, labels, and circulars of the defendants in error,
which are not subject to the objection urged herein to the use
of the word Trommer, which the courts below were asked to
and did protect by their decrees in this case. Some of these
devices the plaintiffs in error wrongfully made use of, and
in rendering the judgment which the District Court should
have rendered, we make our decree the same as that of the
court below, except wherein it protects the defendants in the
use of the word Trommer.” 1 º
1 The author, as one of the counsel for the defendants in error, contended
that it was an infringement, on the part of the plaintiffs in error, to use the
word-symbol “Trommer,” either directly or by colorable variations, in the
nominative case or in the possessive; that the disguise assumed by them was
based on the coincidence of “Trommer” with the surname of a man who then,
or once, lived in Germany; and that the evidence of their unlawful intention
was found in the similarity of the labels, circulars, wrappers, advertisements,
bottles, and packages, the priority of adoption by the defendants in error hav-
ing been beyond dispute. In a circular, the plaintiffs in error had said: “We
were among the pioneer manufacturers of this inestimable remedy, having
240 LAW OF rºadenaars. [$221.
§ 221. The Name of a Machine, or Product, the Patent for
which has expired. —Such a name, indicating peculiar mech-
anism, cannot be protected as a trade-mark. James, W. C.,
in 1869, held that no injunction could be granted to restrain
the use of the name “Wheeler & Wilson,” that being merely
indicative of a machine manufactured on certain principles,
whether by the plaintiffs or others. He said that a man can-
not prolong his monopoly by saying, “I have got a trade-
mark in the name of a thing which was the subject of the
patent.” 1 — In the Patent Office, in 1873, an application was
made for the registration as a trade-mark of the words
“A. Richardson's Patent Union Leather-Splitting Machine.””
It was refused on the ground that, the patent having expired,
the continued use of the word “patent” was deceptive; and
as to the remainder, on the ground that the name, having
been applied to a patented article during the existence of
the patent, had become descriptive of the article, and open
to the use of the public on the expiration of the patent. —In
1875, in a case in a United States Circuit Court, the com-
plainant, manufacturing the “Tucker Spring-Bed” under an
expired patent, had registered as a trade-mark a picture of
the bed, the monogram “T. M. Co.,” and the name “Tucker
Spring-Bed.”? The defendant manufactured a similar bed,
and used a label containing a picture of it, and the identical
name. Blodgett, J., refused an injunction, on the ground
that the right to use the name and represent the bed had be-
come common property on the expiration of the patent.—In
the Court of Appeal in England, in 1877, it appeared that the
been connected with the Trommer Extract of Malt Co. of this city from its
infancy.” Under oath they had said that the only “Trommer's method”
known to them was that which was originated and operated by the defendants
in error. While all the plaintiffs and defendants in error were copartners, they
had under oath registered the name “Trommer” as one of the essential fea-
tures of their trade-mark; therefore, they were by their own act estopped. In
short, it was argued that, whether a technical trade-mark or not, the fancy
name “Trommer’’ as an affix to malt-extract was entitled to protection. The
courts below concurred in this opinion.
1 The Wheeler & Wilson Manufacturing Co. v. Shakespear, 39 L. J. Ch. 36.
* Re Richardson, 3 Off. Gaz. 120.
* The Tucker Manufacturing Co. v. Boyington, 9 Off. Gaz. 455.
§ 221.] ExAMPLES OF TRADE-MARKS. 241
plaintiff, G. Cheavin, manufactured filters on a principle pa-
tented by his father, S. Cheavin, in 1862, (but the patent for
which lapsed in 1865,) and placed on his filters a tablet with
the words, “ G. Cheavin's Improved Patent Gold Medal Self-
Cleaning Rapid Water Filter, Boston, England,” beneath a
medallion with the royal arms and the words “By Her Ma-
jesty's Royal Letters Patent.” The defendants manufactured
filters on the principle of the same patent, and placed on
them a tablet with the words “ S. Cheavin's Patent Prize
Medal Self-Cleaning Rapid Water Filter, Improved and
Manufactured by Walker, Brightman, & Co., Boston, Eng-
land.” Held by the Court of Appeal, (1.) that the alleged
trade-mark was a mere inscription, and not a trade-mark;
and (2.) that the defendants had merely stated the principle
on which the filter was manufactured by them. Per Curiam,
James, L. J. : “It is impossible to allow a man to prolong his
monopoly by trying to turn a description of the article into
a trade-mark. Whatever is mere description is open to all
the world.” In 1877, the assignees of certain patents for
screw-neck bottles and jars, granted to J. L. Mason, applied
for registration in the United States Patent Office, of the
name “Mason " as an alleged trade-mark in use by them for
many years. The application was refused, inasmuch as it was
the name of the inventor, and although the applicants had
the sole right to make the articles, and therefore to designate
them by that name, on expiration of the patents all makers
would be entitled to describe them by the appropriate descrip-
tive name.”— In 1879, in Filley v. Child, the evidence satis-
factorily showed that the complainant, Giles F. Filley, during
the entire duration of his patent, — twenty-one years, includ-
ing the term of extension, — knew of and acquiesced in the
manufacture and sale by M. L. Filley, and those under whom
he claimed, of cooking-stoves containing the patented improve-
ments, with the name “Charter Oak” upon them. M. L. Fil-
ley made the stoves complained of in the suit. He had built
up a business through the acquiescence of the complainant,
* Cheavin v. Walker, 5 Ch. D. 850; 46 L. J. Ch. 686; 36 L. T. (N. s.) 938.
* Re Consolidated Fruit Jar Co., 14 Off. Gaz. 269.
16
242 LAW OF TRADE-MARKS. - [$221.
and, as the court said, had the right to make stoves contain-
ing such improvements, and therefore could not be prevented
from calling them by their proper name, “Charter Oak,” so
long as he did not represent them as being made by G. F.
Filley, or induce others to believe that they were made by
him." — In 1883, in England, the question was as to the vital-
ity of the term “Home-washer ” as a trade-mark on a machine,
the patent for which had expired. Pearson, J., said, inter
alia, that the “Home-washer” no doubt during the existence
of the patent described the machine which was made under the
patent. He cited with approbation the decision in the “Li-
noleum ” case,” and concurred with Lord Justice Fry that it
was impossible for the court so to construe the Trade-Mark
Act as to do away with what has been the law of the land,
from the time of King James downward, as to the expiration
of the monopoly with the ending of the patent.”— In Re J. B.
Palmer's Trade-Mark, in 1882, Chitty, J., said that he consid-
ered it plain that a man can have a patent for a new manu-
facture, and at the same time have a trade-mark in the name
used to designate the goods, though they are made under the
patent. Therefore he argued that the words “Braided Fixed
Stars,” for matches, were not merely descriptive, as in the
“Linoleum ” case, but might have been valid as a trade-mark
before the Trade Marks Act of 1876 (which excludes mere
words, subsequently adopted, from the category of technical
trade-marks); but the plaintiff had not so used them, and
therefore had lost his claim to them. It was held, on appeal,
that the words were only properly descriptive of the patented
article. Bagallay, L. J., said that he understood the words
“Fixed Stars” to mean cigar-lights, and the word “Braided”
to indicate their having been prepared in a particular way.
They were manufactured under a patent which was for the
purpose of braiding the stems of cigar-lights, i. e. passing
round them by means of an ordinary braiding-machine a net-
1 16 Blatch. 376.
2 Linoleum Manufacturing Co. v. Nairn, 7 Ch. D. 834; 47 L. J. Ch. 430; 38
L. T. (N. s.) 448; 26 W. R. 463.
* Re Ralph's Trade-Mark, and Ralph v. Taylor, 25 Ch. D. 194.
§ 221.] EXAMPLES OF TRADE-MARKS. - 243
work of fine wire. It was therefore to be seen at once that
the words were used to describe articles manufactured under
the patent. Cotton, L. J., concurred with him. The words
had been used during the existence of a patent, and fairly
described the article patented. He said that they did not
point to claimants, independently of its being a patented
article. If used by others during the existence of the patent,
it would have been a false representation. “In one sense,
therefore, the name of the article might be called a trade-
mark.” Lindley, L. J., said that it was plain to demonstra-
tion, on the evidence, that the expression meant a patented
article which was indeed made by the plaintiffs, but that it
was not intended to denote them as distinct from other manu-
facturers; and the case was therefore brought within the
authority of the “Linoleum ” case. He said, further, that he
did not mean that the manufacturer of a patented article can-
not have a trade-mark not descriptive of the patented article,
so as to be entitled to the exclusive use of the mark after
the patent has expired; for instance, if he impressed a griffin,
or some other device; but if his only mark be a word or set
of words descriptive of the patented article, it appears to be
impossible to make out that that mark denotes him as the
maker, as distinguished from other makers." — European Con-
tinental courts have made several interesting decisions. In
the Tribunal of Commerce of the Seine, in 1872, the manu-
facturer of a sort of charcoal (called by him “Charbon Ag-
glomerée") had patented the product, and the patent had
expired; but it was held that, nevertheless, he retained as his
trade-mark the exclusive right to the special denomination
under which he had delivered it to commerce, for the reason
that that name was not a necessary appellation, and had
become in fact a veritable mark for his product.” Plaintiff's
article from the beginning of the trade therein had been sold
under the name of “Charbon de Paris.” For that very rea-
son, the Court of Cassation, in 1875, reversed the decision as
follows: The fabricant who has given to the product of his
ingenuity a new and fanciful denomination, as “Charbon de
1 24 Ch. D. 504. * Brousse v. Pernolet & Co., 18 Annales, 248.
244 LAW OF TRADE-MARKS. [$221.
Paris,” cannot claim exclusive right to it when he has thus
let it fall into the public domain; and especially so when, by
long usage, and without opposition on his part, it has become
the general designation of that kind of product. But the
Court of Paris, in 1874, held that, even if the product to
which the name of fancy had been applied should have origi-
nally been the object of a patent, if, independent of the pa-
tent, it was not the necessary designation of the product, it
was a valid trade-mark.”—In the Court of Brussels, in 1876,
it appeared in evidence that, in 1809, Claude Bully had pa-
tented preliminarily a vinegar that he called aromatique et
antiméphitique, and in 1814 he obtained for his invention a
complete patent. After his decease, his son and successor
very largely extended the manufacture and sale of the pro-
duct, to which he gave his proper name of Jean Vincent Bully.
It obtained a great reputation, which was enjoyed by the
plaintiffs, who acquired the establishment in 1833. On ap-
peal, it was held that, when a patented product is known in
commerce under the name of the inventor, the expiration of
the patent which causes the article to become public property
causes the name of the inventor also to fall into the public
domain. It is as much so when, instead of indicating the prae-
nomens of the original inventor, those of his son and successor
may have been employed, if it be established that under the
surname and first name of the latter the product is known to
the public. This decision of the Belgian court seems to be
quite correct in principle, and its philosophy does not conflict
with a decision of the Court of Agen, of the previous year,
in A. and M. Landon v. Pons.” The French court said that
Claude Bully never manifested an intention to bind his name
by an indissoluble tie to the product of his invention; that
he did not cede to any person the right to attach it thereto;
that, besides, it could not become the essential element of all
aromatic and antimephitic vinegar, even if manufactured after
the name had become common by expiration of the patent;
and that the name had not been alienated by Claude, but
1 22 Annales, 91. * Fox v. Meurgey et al., 19 Annales, 327.
* 23 Annales, 234.
§ 222.] EXAMPLES OF TRADE-MARKS. 245
remained the exclusive property of his son and heir. The
Court of Cassation affirmed this decision, but rested it on the
terms of the law of July 28, 1824, wherein it is forbidden to
affix on manufactured articles the name of a manufacturer
other than that of him who was the first inventor; and that
although the thing patented with the expiration of the pa-
tent fell into the public domain, it was not so with his
patronymic. The learned reporters say, what is unquestion-
ably so, that this is the settled law of France." — But observe
the following decision in the same court of last resort on the
very next day. The Tribunal of the Seine, having decided
in favor of the plaintiff, and the Court of Paris having re-
versed the decision, the case was appealed to the Court of
Cassation, which spake thus: “Although in principle the pa-
tronymic name of an inventor remains his exclusive property
until the expiration of his patent, and all other manufactur-
ers are prohibited from using it until then, yet it is always
quite otherwise in a case where, by long usage or in conse-
quence of consent, whether express or tacit, of the inventor,
his name has become the only designation usually applied to
the product. . . . It is especially so of medicines fallen into
the public domain of pharmacy, and every pharmacist has the
right to announce and sell under its designation which has
become usual, at the charge of taking necessary precautions
not to lead the public into error as to the origin of the pro-
duct.”* The Court of Cassation reasserted the same doctrine,
in 1881, in almost the same language, viz.: “The name with
the patent only falls into the public domain when the name
has become, either by long notoriety, or by consent of the
inventor, the necessary designation of the product.””
§ 222. Many authors, judges, and lawyers have cited Gout
v. Aleploglu,” to show that an ordinary word in a foreign lan-
guage, meaning warranted or approved, may be a trade-mark.
They err in so doing. This case, heard in 1833 in England,
seems to have been as follows. The plaintiff, Gout, had long
manufactured watches for the Turkish market. These watches
1 23 Annales, 235. 2 Torchon v. Pauliac, Id. 243.
* Landon v. Leroux, 27 Annales, 183. 4 6 Beav. 69.
246 LAW OF TRADE-MARKS. [$ 223.
had acquired great repute in Turkey, and were known by cer.
tain marks engraved thereon. These marks consisted of words
in Turkish characters, viz. the name of the maker and the
word “Pessendede,” which in the Turkish signifies warranted
or approved. There were also other marks: “R. G.” and a
crescent put in relief, and a sprig and crescent. Now it would
be folly to say that the word “Pessendede,” which had no use
except in the market to which the watches were sent, and
which was of no use elsewhere, could be exclusively appro-
priated. The word might with truth be used by many fair
dealers for its legitimate purpose; and, being a common word
expressing quality, no one could claim it to the exclusion of all
others. We must look closer, and ascertain the facts.
§ 223. In 1831, the defendant applied to the plaintiff to
manufacture watches to be consigned to Constantinople; but
conceiving that he might thereby injure his agent there, the
plaintiff refused to execute the order. Subsequently, the de-
fendant got the Messrs. Parkinson to manufacture watches for
him. On these were engraved, in Turkish characters, the
words “Ralph Gout” and “Pessendede,” on the same parts
of the watches as the plaintiff used for that purpose. The de-
fendant then sent them to Constantinople, and sold them, to
the injury of the plaintiff's trade. We see that he simulated
the name of the plaintiff, in addition to copying a word that
had doubtless become associated with the article. It was a
part imitation of the plaintiff's lawful commercial sign. The
initials R. G., the crescent in relief, and the sprig and crescent,
were omitted by the pirate, but he took enough of the plain-
tiff’s mark to enable him to accomplish his object, which was
to divert another man's trade into his own channel. The
Vice-Chancellor granted an injunction, restraining the defend.
ant from sending or permitting to go to Turkey, or to any
other place, and from selling and disposing of, any watches
with the name of the plaintiff thereon in Turkish characters,
or the word “Pessendede” in Turkish characters, or any
watches in imitation of the plaintiff's watches; and also re-
straining Aleploglu and the Messrs. Parkinson from manufac-
turing or vending such watches. In non-legal language this
§ 225.] EXAMPLES OF TRADE-MARKS. 247
means just this, and no more. The defendant must discon-
tinue his piratical tricks. He has imposed upon the public,
and by his fraudulent acts has damaged the plaintiff by a part
imitation of his commercial marks. He cannot escape by
mere evasion. But the court did not decide that the Turkish
word “Pessendede.” was a trade-mark. -
§ 224. In the Tribunal of Commerce of the Seine, in 1861
(Abadie & Co. v. Proudhon & Co."), the plaintiffs showed that
they made in a particular manner cigarette-paper, called by
them “Papier de Riz.” This paper they put into the mar-
ket enclosed in an envelope of salmon-colored paper. They
claimed the name as their trade-mark, the same having been
duly deposited or registered as such, and brought suit for an
infringement of the same. Per Curiam : Even if the plaintiffs
have not an exclusive property in the paper, they have at least
the right to sell it by the title which they have duly deposited
and employed to indicate to commerce the cigarette-paper of
their manufacture. The defendants have sold a similar paper
in a roll covered with the same colored paper, and bearing
the name of “Papier Crème de Riz.” Even if the use of sal-
mon-colored paper is common as a wrapper for all kinds of
products, its employment, joined to the indication “Crème
de Riz,” reveals an intentional imitation, susceptible of creat-
ing confusion with the products of the plaintiffs. Judgment
accordingly for the plaintiffs. .
§ 225. Numerals as Marks. – Among all the dubious signs
suggested for recognition as trade-marks, the most untrust-
worthy are mere numerals. If a man adopt 1, 2, 3, or 123, or
any other combination of these common figures, how can he
reasonably look for protection in the exclusive use of them?
Let us apply a test. A. has adopted “123° as his arbitrary
mark. To him it is meaningless, except as a symbol to affix
to his goods. B. is charmed to see the success that A. has
achieved in selling his merchandise bearing this mystic sym-
bol. He begins the manufacture and sale of the same class of
goods, but of an inferior quality. The figures have a reputa-
tion, because all the articles bearing them have up to this time
* 7 Annales, 95.
248 LAW of TRADE-MARKs, [$ 225.
been found to be superior in quality. Now the mind of the
public has become confused, for a worthless article is discov-
ered to be stamped with the same numerals. If the inmost
recesses of B.'s heart were explored, lurking roguery would
there be found; but his outward semblance, like that of his
trashy merchandise, bears no evidence of fraud. He keeps his
own counsel; and in a suit for infringement of A.’s mark,
“123,” he does not assist his adversary by any admissions.
He feigns astonishment that his right should be disputed. He
asserts a perfect right to stamp his candy or other articles
with the figures “123,” for that is the number of his shop;
or he means thereby to warrant 128 lozenges to the pound;
or each bale contains 123 pounds; or a thousand other varia-
tions, plausible and non-combatable. These numerals may
truthfully import a myriad things. Any one has the right to
speak the truth: ergo, the numerals aforesaid cannot be exclu-
sively appropriated. A. replies that, although ordinarily a
mere numeral cannot become a valid mark of origin or owner-
ship, and at common law would be disregarded, in this partic-
ular instance it would be perfectly valid for the reason that he
had duly registered it, and thus had given constructive notice
to the world of his exclusive appropriation. But the registry
act did not create trade-marks, nor did it pretend to. It pro-
tects only valid marks. If it has no legal force at common
law, the alleged mark has not attained legality by the fact of
registration. Even long user and notoriety cannot cure the
inherent lack of stamina. “Quod ab initio non valet in tractu
temporis non convalescit.” Any person may lawfully stamp
on his goods any numerals that shall express the truth. But
he could not so use them if another person, in the same line
of business, had such numerals as his mark for merchandise.
Mere numerals cannot be turned into arbitrary symbols.
There must be collateral matters to invest them with such
characteristics. There may be some such striking peculiarity
of form, ornamentation, coloring, or combination, as to make
them distinctive, and so take them out of the category of
mere numerals. Why was it thought by many, that numerals
1 Broom's Legal Maxims, [*132].
§ 227.] EXAMPLES OF TRADE-MARKS. 249
alone might become technical trade-marks? By reason of a
judicial decision not fully understood. Here it is.
§ 226. Gillott v. Esterbrook, before a general term of the
Supreme Court of New York, in 1867, has been relied on to
support the doctrine that mere numerals constitute a lawful
trade-mark. The facts in that case were substantially as fol-
lows. The plaintiff had been a manufacturer of steel pens in
Birmingham, England, ever since 1825, and for more than
twenty years had an agency in the city of New York. He
manufactured, and sent to the United States, steel pens of va-
rious descriptions; and among them, as early as the year 1889,
was a flexible bronzed double-grooved, extra-fine-pointed slip
pen on which was impressed the arbitrarily-selected numeral
“303,” and the words “Joseph Gillott, Extra Fine.” Said
pen became deservedly popular, was in great demand, and the
most prominent pen in the market, producing large sales at
high prices. This pen became known to stationers and other
dealers by its number, 303, which distinguished it from other
pens of the plaintiff's make. These figures did not express
quality or size ; and no other pen was then known to have
numerals upon it. The defendant manufactured and sold a
pen, which in size, shape, color, pattern, flexibility, and fine-
ness of point, so closely resembled the plaintiff's pen as to
require an expert or adept to distinguish them in these re-
spects. The defendant also impressed upon his pen, in the
same place as the plaintiff did, the number 303, and the
name of defendant's firm, “Esterbrook & Co.,” and the same
words, “Extra Fine.” The pen was put up in boxes of the
same size as the plaintiff’s, with a similar fancy. paper label;
and in other respects was cunningly adapted to mislead as to
the origin of the pen.
§ 227. What should a court do under such a state of facts?
Would it not have been a mockery of justice to dismiss the
complaint? This is what was said by Leonard, J., in deliver-
ing the opinion of the court: “The design to defraud by
manufacturing and packing pens in all respects similar to
the plaintiff’s, excepting only in the use of the name, appears
1 47 Barb. 455; R. Cox, 340.
250 LAW OF TRADE-MARKS. [$ 228.
very plainly. I cannot reason, so artificially as to disguise
this conclusion from myself.” The judgment obtained by the
plaintiff was affirmed by two judges. Ingraham, J., dissented.
He doubted the validity of the numbers as a trade-mark. He
said that it was in evidence that in all the boxes of plaintiff's
pens, sold during more than twenty years, had been placed
a notice stating that “other makers had adopted the above
number (303) by which the original Gillott's Victoria pen is
known.” He considered this long user by others as having
deprived the plaintiff of exclusive right to said figures, his
silence being an acquiescence, even if he could be considered
as having a right to it. He further said, that “there was
error in holding that the plaintiff, by the use of this number,
became entitled to the exclusive use thereof and to the profits
thereof, and that he is entitled to an injunction restraining
the defendants from the use thereof.”
§ 228. What did this judgment decide? That the numer-
als 303, as used, constituted a trade-mark? Not at all. An
examination of the whole case will help us to a clear solution.
Judge Potter, at special term, regarded them as being merely
a part of a mark. He said: “These symbols or figures do
not, of themselves, indicate any appropriate name of the pen,
nor any mode or process by which it is manufactured. They
do not indicate the quality of the pen; but, connected as
they are with the plaintiff's name, they indicate the origin
or ownership of the pen, and were intended by him, with the
addition of the words “Extra Fine' impressed thereon, to
designate the pattern of this pen as distinguished from other
pens of his manufacture represented by other numerals, and
also to distinguish it as the pen of his manufacture by those
peculiar marks or devices. The marks last named, except,
perhaps, the words “Extra Fine,’ seem to be within the rule
that allows a device to become a trade-mark. . . . It is true
that the imitation is but partial. . . . . It is not necessary for
the plaintiff, in order to receive the protection of the court,
that he show that his whole trade-mark has been pirated or
simulated. A false impression can as well be conveyed to the
mind of the public, and especially to the memory, by a partial
§ 229.] EXAMPLES OF TRADE-MARKS. 251
as by a total counterfeit. The design to defraud may be as
apparent, and is generally more injurious, in the partial than
in the entire imitation.” The learned judge evidently re-
garded the figures as but an ingredient of the compound trade-
mark. It was upon that theory that the case was discussed
throughout. The question before the court was practically
this: Did the defendants by unlawful means usurp any por-
tion of the plaintiff's trade 2 This question was answered
in the affirmative. How was the unlawful act accomplished ?
By the imitation of the pen itself, the box containing it, the
label that enclosed it, and other means, one of which was
the simulation of a part of his mark. That was the act
that decided the matter. That made manifest the intention.
Why copy this number 303 unless it had already obtained
a good report? The conclusion was irresistible: the defend-
ants sold their merchandise as that of the plaintiff's manu-
facture. In 1872 this case was heard by the Commission of
Appeal." The judgment was affirmed, and justly so. The
point is, whether it was decided that the said numerals con-
stituted, by themselves, a technical trade-mark. It was not
necessary to decide that exact point. There had been unfair
competition in business. In rendering the decision, Chief
Commissioner Lott said that the facts showed that the nu-
merals “303” had been selected and used by the plaintiff as
his trade-mark, to indicate, in connection with his name, the
origin and ownership of the pens manufactured by him, and
not to designate their quality merely. The case did not de-
mand a precise definition.
§ 229. Since the time of Gillott v. Esterbrook, several
decisions have been made that have a tendency to limit the
use of such a perplexing symbol, while sustaining numerals
according to circumstances. The difficulty in regard to the
recognition of numerals is that they generally indicate size or
quality. For this reason, nations of Continental Europe have
generally excluded numerals from the list of technical trade-
marks. It will be found that, when sustained, it is because
they are combined with other symbols that are essential, or
1 48 N. Y. 374; 8 Am. R. 553.
252 L.W OF TRADE-MARKS. [$229.
cases have been determined on principles appertaining to the
protection of good-will. Unfair competition is suppressed by
the courts, irrespective of questions of technical trade-marks.
— Kinney v. Basch, in 1877, is an instance," the numerals being
but a portion of a compound mark. —So, also, in Carver v.
Bowker, in England, in the same year, in which numerals
were combined with certain specially-colored stripes, and the
defendant, who carried on a similar business, used similar
combinations.”— In India-Rubber Co. v. Rubber Comb, &c.
Co., in 1879,” the numerals 2, 101, and 32 were said to
be trade-marks. – In Lawrence Manufacturing Co. v. Lowell
Hosiery Mills, in the Supreme Court of Massachusetts, in
1880,4 the plaintiffs used on a certain grade of hosiery a cer-
tain device with the figures 523 under it. These goods were
known and called for as “523's.” The defendants afterwards
used as a trade-mark a device somewhat resembling that of
the plaintiffs, and the figures 523 printed in the same kind of
type, and placed on the other parts of the device in the same
relative position as the plaintiffs'. The case came under the
statute of the Commonwealth,” which protects peculiar names,
letters, marks, devices, and figures, used to distinguish articles
of manufacture. The court said of the plaintiffs: “ Their
claim is, that the purpose of using those figures in connection
with the other parts of their trade-mark was to aid the buyer
in distinguishing their goods from similar goods made and
sold by others.” It was not pretended that the numerals
alone were a technical trade-mark. The court cited Board-
man v. The Meriden Britannia Co. (commented on in the
next section) as authority,” and said: “The numbers in that
case, however, were held, by virtue of their connection, to
form an important part of the trade-mark itself.” – In Shaw
Stocking Co. v. Mack et al., in 1882, Coxe, J., said that, when
1 N. Y. Supreme Ct., 16 Am. L. Reg. (N. s.) 596.
2 Lancaster, Chanc., Little, W.—C., 1. Trade Marks, 252; Cox's Manual, case
581. -
8 13 N. Y. Superior, 258.
4 129 Mass. 325; Cox's Manual, case 673; 37 Am. R. 362.
5 Gen. Stat., c. 56, § 1. 6 35 Conn. 402; R. Cox, 490.
7 16 West. Jur. 560; 12 Fed. R. 707; 21 Blatch. 1. -
§ 230.] EXAMPLES OF TRADE-MARKS. 253
courts have refused protection to alleged trade-marks so com-
posed, it has been because, on the facts of each case, it was de-
termined that they were intended solely to indicate quality.—
In that same year, in Humphrey's Specific Homoeopathic Medi-
cine Co. v. Wenz, Nixon, J., held that the numbers constitute
a lawful trade-mark when they indicate origin or proprietor-
ship, and are used in combination with words and other nu-
merals. – In the Supreme Court of Kentucky, in 1888,” the
defendant had imitated certain non-essentials, but in doing so
had been guilty of unfair competition, and that was distinctly
avowed to be the ground of the decision against the imitators.
The learned Chief Justice Hargis said, on behalf of the court,
that “Arabic numerals are to man, in conveying his thoughts,
feelings, and the truth, what air, light, and water are to
him in the enjoyment of his physical being. Neither can be
taken from him. They are the common property of man-
Kind. . . . And the appellants, having drawn from the com-
mon fountain, . . . cannot claim an exclusive right to them
or their use.” -
§ 230. In Boardman v. The Meriden Britannia Company,”
before the Supreme Court of Connecticut, in 1868, both
parties seem to have regarded the use of numbers as giving
rise to the most important and most material question in the
cause. The petitioner relied upón them as the most promi-
ment, valuable, and distinctive feature in their trade-mark.
The respondent claimed that, if in any case numbers can be
legally appropriated as trade-marks, they were not so appro-
priated in this case; and that, so far as they tend to indicate
ownership, it is only so by an association of ideas, and by
giving to them a meaning which they were not originally
designed to have. The court said: “If this be so, or if the
numbers were used solely to indicate the different patterns,
styles, or sizes, it is clear, from the view we have taken of the
law, that the respondent ought not to be restrained from
their use. Whether in any case numbers alone may be legiti-
1 14 Fed. R. 250.
2 Avery & Sons v. Meikle & Co., Kent. L. R. & Jour., April, 1883.
8 35 Conn. 402; R. Cox, 490.
254 . LAW OF TRADE-MARKS. [$ 231.
mately appropriated as trade-marks, is a question not neces-
sarily involved in the case. 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, it may not be easy to assign a
reason why they should not receive the same protection, as
trade-marks, as any other symbol or device. But in this
case the numbers were associated with the name of the peti-
tioner, and the form, color, and general arrangement of the
labels; and, by virtue of that connection, form an important
part of the trade-mark itself.” It appeared that the goods
of the petitioner contained labels with his name and the num-
bers thereon; that under these labels and numbers the goods
had become known in market, and had obtained a good
reputation; that they were known by their respective num-
bers, and were generally ordered, bought, and sold by the
numbers on the labels. The most prominent feature of the
label, and the one most likely to attract attention, would be
the number. So said the court.
§ 231. We see that this case does not solve the question
whether a bare numeral can bé turned into a trade-mark.
The counsel for the respondent took the proper view, which
is that a trade-mark conveys the idea of the maker. It is
designed to represent the maker in such a way that the mo-
ment a man looks at it he shall know who made the article.
It is intended to designate the origin of the article on which
it is placed. All the authorities agree upon this. But there
is nothing either in the common paper box or in the labels
used by the petitioner, except the name, “L. Boardman,”
to indicate the origin of the goods. Take the name from the
label, and there is nothing left to indicate to any one who
was the maker. There is much plausibility in the counsel's
argument that the numbers were used to indicate the different
patterns; that they had reference to the patterns, not to the
manufacturer; and that the petitioner adopted the numbers
12, 20, &c. for the same purpose that any other maker does,
—to indicate different classes of goods.
§ 234.] EXAMPLES OF TRADE-MARKS. 255
§ 232. As matter of history, we find that numerals have
been used for this purpose; but they were not the plain fig-
ures that have but one function, — that is, as mere numbers.
Thus, in Worcester, in England, the early specimens of china-
ware, which generally had the Chinese and Japanese marks,
in imitation of the genuine, bore a series of numerals from
1 to 9. These were disguised by flourishes, doubtless well
understood by the wholesale dealers, but which were meant
to deceive the general purchaser into the belief that they were
Chinese and Japanese characters." Anybody may so use the
same numerals, provided he turn them into arbitrary symbols.
They then cease to be mere numerals. If in any manner the
numbers indicate the origin or ownership of the goods, it is
by an association of ideas. Certain figures suggest a meaning
to the mind which the figures do not in reality bear, and were
not designed to convey. A man has no right to appropriate
words or figures in common use for the purpose of indicating
ownership, and if he do, or if by the association of figures with
his name they serve that purpose, that circumstance cannot
prevent another person from using the same figures to indicate
the pattern or size of goods made by him.
§ 233. Conclusion. It is believed that no court, in any
country, has ever solemnly decided that a naked numeral can
constitute a trade-mark; and it is confidently believed that
no court upon calm deliberation would so decide. -
§ 234. Letters as Marks. – In one case, the applicant
sought to have registered, as a trade-mark, the “letter D,
encompassed by the figure of a lozenge.” The Examiner
rejected the application, on the ground that the proposed
mark had no feature that indicates “origin or ownership.”
This action was based upon the decision of Allison, P. J., in
Ferguson v. Davol Mills,” in which the mark consisted of the
letter K within two concentric circles, &c. The object of
rejecting the application was that the question might be con-
sidered by the chief officer of the Patent Office, and, so far
as it is concerned, be definitively settled. The Commissioner
1 Marryat's Pottery and Porcelain. London, 1857.
* 2 Brewster, 314, and Leg. Int., Jan. 1, 1869.
256 - Law of TRADE-MARKs. [$236.
held, inter alia, that the very fact of the mark bearing evi-
dence of being the manufacturer's or dealer's private mark,
by means of which his goods are distinguished in the market,
is sufficient indication of origin to warn against copying by
competing dealers, and this answers the public demand. He
further said, that the applicant's device is not a generic one:
it is not indicative of quality. It does not consist of words
or devices that others in the same trade would be likely to
select for a similar purpose, and no valid reason could be seen
against admitting it to registry." On the authority of this
decision, the soundness of which is indisputable, the letter S,
within a circle, was held to be a valid trade-mark, although
being the initial of the surname of the principal member of
the firm applying for registration.”
§ 235. The application for the registration of the letters
“A C A ’’ seemed to come within the principle of the fore-
going cases; and yet there was cause for hesitation, as the
simple letters were claimed without any enclosing line. The
letters were used upon an elaborate label, substantially that
described in the case of the Amoskeag Manufacturing Co. v.
Spear.” The ruling of the eminent jurist, Mr. Justice Duer,
in that controversy, did not assist the determination of the
question whether those letters, without adjuncts, constituted
a good trade-mark at common law. He had taken cognizance
of the matter as a chancellor, under circumstances of fraudu-
lent misrepresentations. He was not called upon to say, in
so many words, that “A CA.” could be a valid mark of trade.
Those letters had been employed by the applicant for the
same purpose—i.e. as a mark for tickings and cotton fabrics
— ever since the year 1836, a period of thirty-six years. The
mark is well known to the trade, and is generally respected.
A prima facie right to its exclusive use having been made out,
it was registered.”
§ 236. Fancy Names.—The Court of Cassation, in 1864,
in Clertan et al. v. Charpentier,” held that the denomination
1 Dutcher Temple Co., Com. Dec., 1871, p 248.
2 H. D. Smith & Co., No. 521. 8 2 Sand. (S. C.) 599.
* Amoskeag Manuf. Co., No. 713. 5 10 Annales, 340.
§ 237.] EXAMPLES OF TRADE-MARKS. 257
given by a manufacturer to a product of his industry, unless
such denomination became an element usual and necessary
for the designation of the product, becomes a legitimate mode
of signifying to the public his industrial product. This mode
should be protected, and as much in pharmacy as in other
kinds of industries. Therefore the fancy name of “Perles
d’Ether,” applied to a certain pharmaceutical product, not be-
ing a generic term, is a legal trade-mark. It was apparent that
this name could not be the true designation, for no sane person
could think that pearls entered into the composition. It was
purely fanciful. The Tribunal Correctionnel of the Seine, in
1865, in Nestor Michel v. Stremier,' held that a designation of
fancy as “Trappestine,” as applied to liquor, was valid. The
community of religious Trappists of the Abbey de la Grace-
Diew made and sold a liqueur with the new name “Trappes-
time.” The Tribunal of Commerce of Rouen, in 1867, in
Levy v. Bizet,” held the words “Crème d’Argent” (Cream of
Silver), applied to a chemical product, to be valid. The Court
of Paris, in 1859, in Gourbeyre v. Bodevin,” held the same
of “Poudre Brésilienne” (Brazilian Powder). The Tribunal
Correctionnel of the Seine, in 1858, in Guerineaw v. Mignon,”
held that the words “Café des Gourmets” was a good mark
for packages of roasted coffee.
§ 237. Burnett v. Phalon,” in the Court of Appeals of New
York, in 1867, is a leading case upon the subject of fancy
names. In 1857, the plaintiffs began the manufacture and
sale of an article of hair-oil, compounded of various ingre-
dients, of which the essential element was cocoa-nut oil. It
was supposed by them to be a new article; and they alleged
that they invented for it a new name, which was “Coco-
aine”; and that as soon as they began the sale of the article
they gave notice through the newspapers, and by their cir-
culars, that they had adopted that word as their trade-mark.
Phalon, one of the defendants, had, ever since 1840, sold
1 11 Annales, 284. 2 14 Id. 105.
8 5 Id. 250. 4 4 Id. 157.
* 3 Keyes, 594. Same case below in 9 Bos. 192, and 5 Abb. Pr. (N. S.)
212.
17
258 LAW OF TRADE-MARKS. [$238.
a similar preparation of cocoa-nut oil. In 1858, the defend-
ants began the manufacture and sale of such preparation,
under the name of “Cocoine.” The plaintiffs brought this
action to restrain the defendants from using the word “Co-
coine” in the sale of their article, claiming that the use of
that word was an infringement of the exclusive right of the
plaintiffs to the use of the word “Cocoaine.” They also
claimed damages for the injuries which they alleged they
had sustained. The action was tried at a special term of the
Superior Court of the City of New York, in 1859, before Mr.
Justice Pierrepont; and the plaintiffs had a judgment per-
petually restraining the defendants from using the word “Co-
coine.” The defendants thereupon appealed to the court in
bane. The judgment was there affirmed.
§ 238. Bosworth, C. J., in delivering the opinion of the
court, said, inter alia : “The defendants, according to their
own testimony, had been selling, since 1840, substantially the
same article as they, in 1858, denominated ‘Cocoine,’ and
had been selling it as ‘a preparation of cocoa-nut oil.’ Why,
after transacting this item of their business for some eighteen
years, do they resort to the means employed in 1858 to bring
it before the public under the designation of ‘Cocoine’? The
answer is found in the reputation and extensive and largely
increasing sales of Cocoaine. . . . It was a simple matter to
get up a label, and impress on it, and on the bottles contain-
ing their compound, the word ‘Cocoine,” omitting one letter
only. But no plausible or rational explanation, except an
intent to defraud, could be given of a transaction so bold as
that would be . . . . Burnett, by great outlay and effort, had
succeeded in creating an extensive demand for his own manu-
facture, known as ‘Cocoaine.” The defendants, in 1858, with
the intent and for the purpose stated in the fifth finding of
facts, impressed on the bottles and labels containing and .
covering their compound, the close imitation, ‘Cocoine.' . . .
I think the judgment should be affirmed.” Robertson, J.,
dissented, and entered upon a philological disquisition as to
the meaning of the word ‘Cocoine.’ He deduced it from the
French adjective cocoiné. The accent upon the final letter
§ 240.] EXAMPLES OF TRADE-MARKS. 259
renders the word different from that of the defendants, to say
nothing of the diaeresis; but still he held that the word is a
proper term in chemistry, and would mean the finest part of
the cocoa-nut oil; and that after such name had become pub-
lic property as the true designation of the article, the plain-
tiffs could not rely upon a word so near it as “Cocoaine" to
protect themselves against the danger of confusion of two
articles. His argument is not convincing. The case then
travelled to the court of last resort. .
§ 239. In the Court of Appeals, Davies, C. J., in deliver-
ing the opinion of the court, in which all the judges con-
curred, said: “Upon the facts found by the court, the right
of the plaintiffs to the relief granted is clear and indisputable.
The plaintiffs have adopted, appropriated, and used a certain
trade-mark. This has become their property, and, for its
protection from invasion or use by others, the plaintiffs are
entitled to invoke the aid of courts of justice. We have the
ascertained facts before us, that the defendants are using a
spurious and unlawful imitation of the plaintiffs’ trade-mark.”
The judgment was affirmed with costs.
§ 240. It requires nice discrimination to determine what
falls within the category of fancy names. When a new prep-
aration or compound is offered for sale, a distinctive and spe-
cific name must necessarily be given to it; and that name,
no matter when or by whom imposed, becomes by use its
proper appellation, and passes as such into our common
language. Hence, all who have an equal right to make and
sell the article have an equal right to designate and sell it by
its proper name, the name by which alone it is distinguished
and known, provided each person is careful to sell the article
as prepared or made by himself, and not by another. When
this caution is used, there is no deception of which a rival
manufacturer, not even he by whom the distinctive name was
first invented or adopted, can justly complain. So far from
there being any imposition upon, the public thereby, it is the
use of the distinctive name that gives to purchasers the very
information which they are entitled to have. In short, an
exclusive right to use on a label the appropriate name of a
260 LAW OF TRADE-MARKS. [$ 242.
manufactured article exists only in him who has an exclusive
property in the article itself.
§ 241. In Fetridge v. Wells,” Duer, J., admitted that the
name “Balm of Thousand Flowers” is in one sense a fancy
name, but not in the sense for which the plaintiffs' counsel
contended. It was not pretended that the plaintiffs or their
firm had any exclusive property in the compound bearing the
well-sounding name, which was used to convey to the minds
of purchasers the assurance that the highly-scented liquid was
in truth an extract or distillation from flowers, which was not
true. He said that it was only the seductive name that they
claim as their exclusive property, and doubtless from their
experience of its value in the extension of their sales.
§ 242. What decided that it was not a fancy name 2 The
judge's reasoning upon this point is convincing and indispu-
table. It was not a mere denomination of fancy, because it
involved the idea of fraud. Around every bottle sold by the
plaintiffs was a printed paper, ascribing manifold and almost
miraculous virtues to the “Balm of Thousand Flowers.” It
said: “It is an innocent, safe, and efficacious compound, of
purely vegetable, medicinal, and powerful substances, and the
very balm and extract of healing blossoms.” These words, said
the judge, “put an end to the refuge of a fancy name as an
escape from the charge of an intention to deceive. . . . It ap-
pears, then, that this pretended balm is produced by a mixture,
in certain fixed proportions, of palm-oil, ley or potashes, alco-
hol, and sugar; and that when this mixture has, by the opera-
tion of fire, been fully compounded and prepared, it is rendered
fragrant, doubtless to favor the deceit of its name, by the
addition of some strong perfume, such as lemon or bergamot,
lavender or musk. The result is, that this ‘Balm of Thou-
sand Flowers,” extracted from blossoms, redolent of health, is
a soap, — a liquid soap, — highly scented it is true, and, it
may be, as a soap, useful and valuable, but still a soap, pos-
sessing the usual and known qualities of soap, and nothing
more. . . . The proof is therefore complete that the name
was given, and is used, to deceive the public; to attract and
1 4 Abb. Pr. 144, and 13 How. Pr. 385.
§ 244.] EXAMPLES OF TRADE-MARKS. 261
impose upon purchasers; that, in the sense that the plaintiffs
mean it shall convey, it is a representation to the public
that they find to be useful, and know to be false.” Another
action had grown out of the same state of facts which gave
rise to the case of Fetridge v. Wells. The two cases should
be read together. The other case, which was also in the
Superior Court of the City of New York, was, like the pre-
ceding, on a motion to dissolve a preliminary injunction
granted by Mr. Justice Hoffman." The latter differed ma-
terially with his associate judge. He said: “It is constantly
insisted, and the position is sanctioned by some judges, that
when the article in question is innocuous, or in some degree
useful, no absurd panegyric or extravagant price is a reason
for denying the interference. In short, as counsel once said
before me, if a man should compound tallow with some high
scent and beautiful coloring matter, and term it “The Oint-
ment of Immortality,” he has a right to appropriate so much
of public credulity as he can in this designation. On the
other side, it is well settled that when the deception consists
in palming upon the public articles of the party's own manu-
facture or composition for those of another who has obtained
celebrity or notoriety, the court will not remain inactive.”
$ 243. He very truthfully remarked, as a general principle,
that the farther removed an appellation is from actually repre-
senting the article in question, the more exclusive and decided
becomes the right to it; and he cited the case of the “Medi-
cated Mexican Balm,” which had nothing in its composition
peculiar to the land of Montezuma ; and the case of “Chinese
Liniment,” which was in all its ingredients a stranger to the
Celestial Empire. It seemed to him, that the term “Balm of
Thousand Flowers” was of the same character. The article
is a soap, or perfumed liquid soap. That name would be the
name of the article, because it would indicate its nature. The
term was, in his opinion, extrinsic and not indicative.
§ 244. The foregoing cases of Fetridge v. Wells and Fetridge
v. Merchant have shown how, under a similar state of facts,
1 Fetridge v. Merchant, 4 Abb. Pr. 156.
2 6 Beav. 66. * 4 McLean, 516.
262 Law or rºadenaars. [$ 246.
two judges of the same court, and both men of high integrity
and of acknowledged ability as jurists, may differ in legal
conclusions.
§ 245. When A. introduces into the market an article
which, although previously known to exist, is new as an arti-
cle of commerce, and has acquired a reputation therefrom in
the market by a name not merely descriptive of the article,
B. will not be permitted to sell a similar article under the
same name; and this, although the peculiarity of the name
has long been in common use as applied to goods of a differ-
ent kind." Plaintiffs, soap manufacturers in London, intro-
duced into the market a superior kind of white soft soap,
which they sold under the name of “The Excelsior White
Soft Soap.” Vice-Chancellor Wood said, inter alia : “But
though it is true that the court will not, if it can avoid it, be
made the medium of a mere puffing advertisement; still, if,
as here, the plaintiffs have a right of sufficient value to induce
others to attempt a fraudulent violation of it, the court will
intervene to prevent them from being cheated. . . . The de-
fendants urge that “Excelsior' is merely a mark of quality,
like ‘Superfine,” or ‘Superior'; but there seems to me to be
a double answer for this. In the first place, the plaintiffs do
not sell two or three qualities of soap, calling one of them
“Excelsior,’ and the others by some other name; but they
have only one quality, which they denominate “The Excelsior
White Soft Soap, and there is nothing except itself with
which to compare it. But, in the second place, the manner
in which, as has been proved, this name is generally used in
the market, shows that it is more like such names as “Vic-
toria,’ ‘Albert,” “Eureka,’ &c., which are not names of quality,
but simply designations for sake of distinction.” Injunction
granted. º
§ 246. The combination of words, “Mrs. Marple's Salve,”
is not in itself sufficient to warrant recognition, being merely
descriptive of an article that any one might make and vend,
unless it be protected by a patent. It was claimed by the
daughter and successor of the inventor, but even in her hands
1 Braham v. Bustard, 1 Hem. & M. 447; 11 W. R. 1061; 9 L. T. (N. s.) 199.
§ 250.] EXAMPLES OF TRADE-MARKS. 263
the Office declined to admit it to registration. When, by an
amendment, it was enclosed in a cruciform figure, in each
external re-entering angle of which appears the representa-
tion of a hand, with the index-finger pointing to the name,
all objection was instantly removed."
§ 247. “Willow Spring Ice” could not be deemed a valid
trade-mark, unless there were but one Willow Spring, and
the applicant had the sole title thereto;” for there may be
several places bearing the same name, and many persons en-
titled to take ice from them for the purpose of sale. Yet the
applicants made a point of having the words placed upon a
trade-mark. This was readily done by making a representa-
tion of a pair of ice-tongs grasping a cake of ice, upon which
appear the name of the firm, and the words “Willow Spring
Ice.” It was suggested that another firm in the same place
had gone into earnest competition with the claimants for the
exclusive use of the name and a consequent monopoly. The
mark as amended was registered.”
§ 248. The simple designation, “Thompson Pure Rye
Whiskey,” would be just as objectionable; but when the
mark is an exact representation of the handwriting of a pro-
prietor, it becomes distinctive, and could not be imitated by
another in the same trade without the clearest proof of a
fraudulent intent. It is then an arbitrary symbol.”
§ 249. We know that the word Damascus, as applied to
steel, implies a fine quality of steel originally made at Da-
mascus, the ancient capital of Coelesyria, and formerly much
valued for sword-blades, from its great flexibility and tena-
city; but the application of the words “Damascus Blade” to
seythes made in the United States could not possibly convey
any false idea of origin, nor could they be considered to be
descriptive.”
§ 250. As a peculiar mark, one indicating origin and at
the same time suggesting the character of the goods, the fol-
1 Mary A. Paullin, No. 857.
* See Congress & Empire Spring Co. case, 57 Barb. 526.
8 Swett & Crouch, No. 798.
* Charles S. Ross & Co., No. 339. * Dunn Edge Tool Co., No. 563.
264 LAW OF TRADE-MARKS. [$ 251.
lowing was proposed as a mark for fish: the representation
of two fishes crossed in the form of the letter X. Any one
seeing this sign could not fail to understand that the tin case
hermetically sealed contained fish; for the label would tell
the story without words. The Examiner rejected the pro-
posed mark as purely descriptive. On appeal, it was allowed,
the Commissioner regarding the emblem as being virtually
the letter X made more complex by being constituted of two
fishes." An analogous case is that of the words “Hughes
and Kimber Lithomachine.” The applicant showed that he
was the sole agent in this country of certain machines made
in England for lithographic printing. The objection was,
that the firm name could not be an essential element of a
trade-mark, and Lithomachine is generic. The application
was amended, an arrow being placed back of the words,
running the entire length of the line of letters, and connect-
ing them into a single symbol. It was then registered.”
§ 251. Probably the most troublesome question that has
arisen in connection with the right të registration was that
of the words “ Chemical Paint.” These words form the
main, special, and prominent feature of the mark claimed,
the object of which is to produce a distinctive name by
which to designate a specific kind of painſ, known as the
“Averill Chemical Paints,” as distinguished from paints pre-
pared in the ordinary mode. The paints manufactured and
introduced under this name are produced, in the process of
manufacture, by bringing together a part of all the materials
in the form of solutions, which act upon each other chemi-
cally by interchange of bases and acids, in the manner well
understood by chemists. Are not these words purely descrip-
tive? Is not chemical paint a generic term 2 Can such words
indicate origin and ownership, or either? The applicant based
the claim to a right to an exclusive use of those words upon
the fact of being owner of certain patents for making the
compound designated. It was asserted that chemical paints
had never been known to the arts or to trade, until invented
by the person from whom the applicant deduced title. The
1 J. H. Doxsee, No. 853. 2 W. E. Mauger, No. 886.
§ 252.] EXAMPLES OF TRADE-MARKS. 265
sole right of making chemical paint, as distinguished from
all mechanically mixed oleaginous paints, was shown to be
vested in the applicant. If the applicant had the sole right
to manufacture the article, why not accord to it (an in-
corporated company) the sole right to use that name as a
trade-mark 2 Could any one else truthfully employ that des-
ignation? The right of the applicant to recognition seemed
manifest, unless one point upset all claim. The patents
must expire at the end of a certain number of years. The
invention would then become public property; and all per-
sons might then manufacture and sell the article called chem-
ical paint. The term would then be generic; and a generic
term cannot be a valid trade-mark. But in the use of the
word generie we must take one thing into consideration. As
employed in the discussion of trade-mark law, it means some-
thing more than very comprehensive. When we speak of a
genus, we employ the term as distinct from species; and the
idea is conveyed that the articles of the genus are indefinite,
and the claim to exclusive right in them quite as indefinite.
At the expiration of the life of the patents, all persons may
make and sell chemical paints, and the term chemical paint
may come to mean all paints made by the patentee's process,
or by any other mode. The term “chemical paint" is now
specific, meaning no paint except that manufactured by the
applicant. The application was therefore allowed, and the
words registered as a trade-mark.”
§ 252. A Fancy Name may become Generic. — The Court
of Paris, on appeal, in Cohen & Co. v. Maris à la Veuve Ro-
bert, in 1863,” considered this proposition. It appeared, in
the court below, that petroleum is daily sold in England and
in France under the name “Lucilene.” The court held that
the said denomination had fallen into the public domain,
and that the defendants could sell petroleum without commit-
ting an unlawful act; and that said name could not be con-
sidered a trade-mark applied to a new fabric, being merely
the true denomination of a natural product, which any one
has the right to sell. The plaintiff had established the fact
1 Averill Chemical Paint Co., No. 130. . * 10 Annales, 105.
266 LAW OF TRADE-MARKS. [$ 253.
that he was the first who had employed the name, which
was to designate mineral oil purified by him. The appellate
court affirmed the judgment against the plaintiffs, adopting
the views of the lower tribunal, but based its decision some-
what on the ground that the term had become attached to
the article before the plaintiffs had taken steps to secure their
exclusive title thereto. It was said that the sale of petroleum
belongs to commerce in general, under the various names it
has conventionally received. This case seems to teach that,
as the originators of the name, so applied, had in effect aban-
doned it to the public, they could not subsequently by any
formal acts recover the right to its exclusive use. — Wood,
W. C., in 1864, held : Although the word “Chlorodine’’
might originally have been protected as a fancy name, the
complainant abandoned all claim to an exclusive right in it
by dismissing the suit begun by him to restrain the use of
it ; and, in 1873, the Lords Justices” refused to restrain the
defendant from using the words “True and Original Chloro-
dine,” on the ground that they had become the name of the
article.8
§ 253. Name of Object of Merchandise. — In Denis & Mow-
nier v. Vignier Dodart & Co.," which came before the Court
of Bordeaux in 1865, on appeal, we find an interesting de-
cision. The plaintiffs had duly registered, as a distinctive
mark for the brandies which they sold in bottles, the de-
vice of a grape-leaf, in the middle of which was printed
or stamped these words: “ G. Denis. H. Mounier et Ce.
Cognac, Eau-de-vie vieille,” or “Eau-de-vie très-vieille,” or
else “Old Brandy.” The label containing the mark was
lithographed in divers colors, but particularly with a ground
of gold or silver, with the inscription in white letters. The
1 Browne v. Freeman, 12 W. R. 305; 4 N. R. 476.
2 Same parties, W. N. 1873, 178.
3 In 1871, Lord Romilly, M. R., granted an injunction against the use of the
words “The Original Reading Sauce,” saying that the word “original” meant
that the article was made by the first inventor, the complainant. Cocks v.
Chandler, L. R. 11 Eq. 446; 40 L. J. Ch. 575; 24 L. T. (N. s.) 379, 19 W. R.
593.
4 12 Annales, 430.
§ 254.] EXAMPLES OF TRADE-MARKS. 267
defendants marked their bottled brandies with a grape-leaf
in gold or silver, on which their names were inscribed in
white letters, “Very Old Brandy,” and certain ornamenta-
tion. The case was well argued before a highly intelligent
tribunal, versed in the consideration of questions of a commer-
cial character, and this undoubtedly sound judgment was the
result. Per Curiam : Property in marks and labels of com-
merce, guaranteed by law and jurisprudence, upon the fulfil-
ment of determined conditions, should always be restricted
to the speciality of the deposited mark; thus, if it consist in
a generic object of which the common type is furnished by
nature, or by the work of man, that cannot interdict other
merchants from employing the same for things of the same
genus, provided there exist differences in form, details, or
ornamentation." All that is necessary for the preservation of
all legitimate rights is, that the differences shall be sufficiently
striking to the least attentive eye, that confusion, and conse-
quent prejudice, be rendered impossible. An interdiction
more ample, especially when acting upon marks signifying
the nature of the product, would transcend the object of the
law, and trammel all the interests of commerce. The mark
of the plaintiffs consists of a simple leaf of a grape-vine,
either in gold, silver, or color, and in which is inscribed the
nature of the product, and the name of the commercial house.
The mark used by the defendants consists also of a leaf of a
grape-vine, which, if not a complete copy of the plaintiffs',
at least has a strong resemblance to it; yet it has differences,
with different names inscribed thereon, and additional orna-
mentation; and by its size, details, color, signification, forci-
bly attracts the eye, and affords no possibility of mistake.
Therefore, the use of the grape-leaf by Vignier & Co., under
such conditions, cannot work a prejudice to the plaintiffs;
and thus their action is unfounded.
§ 254. The foundation of this decision is in the fact that the
grape-leaf is in its nature too indefinite and uncertain. One
leaf may easily be mistaken for another, for the outlines of
leaves of plants of a quite different species, or even genus,
* As to general type of objects, see ante, § 89 d.
268 LAW OF TRADE-MARKS. [$ 255.
bear some resemblance to one another. In addition, the leaf,
if recognized as a grape-leaf, is descriptive of the product, or
at least suggestive. If in this instance it had been enclosed
in a geometrical figure, it would not have been an ordinary
imitation of a common object in nature. When representa-
tions of plants and flowers were employed in heraldry, they
were placed on shields, seals, or flags. We could not well
misunderstand the purpose of the rose, the lily, the thistle, or
the shamrock, when displayed on armorial bearings, or ban-
ners and flags. Such objects, so placed, speak an unmistak-
able language. They mark, distinguish, identify. We know
the knight in armor by the mark upon his shield, although
his face is concealed. Is not this the very purpose of a mark
of commerce? We observe a clearly defined object stamped,
printed, painted, or impressed upon an article of merchandise.
We have before this time purchased an article with that exact
symbol upon it, and found it suited to our taste, at least, if
not of unequalled excellence. But unless the symbol be
recognized as, or mistaken for, that which we obtained be-
fore, we are in doubt. When there is reasonable ground for
doubt, the mark has failed to accomplish its purpose, and is
void for uncertainty. Suppose that on the day of a battle
or a joust a mediaeval knight had met an exact counterpart
of himself. Each must have had distinct insignia, so that
when he closed his visor he could be distinguished in the
fray. The marks on goods, in the strife for preseminence,
must be as recognizable as the device upon the knightly
shield. Broom-corn is not a peculiarly striking object, and
the representation of a sprig of it would not attract much
attention unless found upon heraldic equipments; but then
we should recognize in it the Planta genista, which gave to
the Plantagenets their name. It had been adopted for a spe-
cific, well-understood purpose. So was the fleur-de-lis, and so
were an' infinite number of other natural objects, which by
their figurative imagery concentrated a wide range of thought
within the narrow compass of an escutcheon.
§ 255. A Picture as a Trade-Mark. — Can such be? Some
judges have said to the contrary. We are left in doubt, until
§ 255.] EXAMPLES OF TRADE-MARKS. 269
a full examination shall have elucidated the matter. A pass-
ing remark, or a careless syllabus, may mislead. We will be
cautious. An elaborate picture, made up of many different
objects in nature and art, is, to say the least, a very uncertain
indication of exclusive proprietorship. Another picture may
be composed of objects of quite a different nature, dissimilar in
all the minutiae, yet having the same general groupings, lights
and shades, and general effect. There is a possibility of such
a representation becoming so well known as to be a veritable
mark for merchandise; but that possibility is remote. In
the case of Falkinburg v. Lucy," in the Supreme Court of
California, in 1868, it was doubted whether a picture could
be made such mark. The plaintiffs' label has “a highly
colored picture, representing a washing-room, with tubs, bas-
kets, clothes-lines, &c. There are two tubs painted yellow,
at each of which stands a female of remarkably muscular
development, with arms uncovered, and clad in a red dress
which is tucked up at the sides, exposing to view a red pet-
ticoat with three black stripes running around it near the
lower extremity. Each is apparently actively engaged in
washing; and clouds of steam are gracefully rolling up from
the tubs, and dispersing along the ceiling. In the background
is extended across the room a clothes-line, upon which are sus-
pended stockings and other under-garments, which have evi-
dently just been put to use in testing the cleansing properties
of the plaintiffs' washing-powder. To the left of the washer-
woman stands a lady in a yellow bonnet, red dress, green
congress gaiters, and hoops of ample circumference: upon her
left arm is suspended a yellow basket, and in her left hand
is held a red parasol ; while the other hand, which is encased
in a green glove, is gracefully extended toward the nearest
washerwoman in an attitude of earnest entreaty. In the
immediate foreground is a yellow and green clothes-basket
full of dirty linen, and a yellow and green soap packing-box
upon which are printed, in small capitals, the words ‘Stan-
dard Co.'s Soap.” Each wash-tub is supported by a four-
legged stool, -some of the legs being yellow, some red, some
1 35 Cal. 52.
270 LAW OF TRADE-MARKS. [$ 256.
green, and some all three. The floor of the room, as to color,
is in part of a yellowish green, and in part of a greenish red,
while the walls are of a grayish blue. This is but an imper-
fect description of the picture with which the plaintiffs' label
is adorned. The design is good, for it is eminently suggestive
of the character of the plaintiffs' goods.”
§ 256. So said Sanderson, J., in delivering the opinion of
the court. Yet it was only for the sake of argument that he
conceded that it could be a trade-mark at common law. In
support of his doubt, the judge cited Partridge v. Menck, in
which case both labels were embellished with wood-cuts of a
bee hive, yet the preliminary injunction was dissolved. When
we examine for ourselves, we find that the plaintiff in that
instance failed because his label contained upon its face a
misrepresentation of fact. He claimed the exclusive right to
impose upon the public friction matches made by himself, as
if made by A. Golsh. He had not come into court with clean
hands. The judge also cited The Merrimack Manufacturing
Co. v. Garner:* Attached to the complaint in this case were
specimens of the tickets of both parties. They were of nearly
the same size, each being about six inches long by four wide,
and in the shape of a parallelogram scalloped at the corners.
Both were printed on straw-colored paper, of almost precisely
the same shade. Each had a border line with corner orna-
ments, an oval wreath of flowers within the border, and an
inscription within the oval wreath. The border lines were
almost precisely the same. The corner ornaments differed
considerably. In the plaintiff's label there were light lines
whose tendrils extended beyond each side of the parallelo-
gram toward the opposite corner, with considerable space
between. The defendant's corner ornaments were different,
being much heavier, and the arms of each extended and met
those of its neighbor in the opposite corner, so that the four
together formed a continuous border around the label. The
design of the oval wreath of flowers — which was the most
conspicuous ornament in the plaintiff's label — was almost
1 2 Sand. Ch. R. 622; 2 Barb. Ch. R. 101; and 1 How. App. Cases, 558.
2 2 Abb. Pr. 318, and 4 E. D. Smith, 387. e
§ 258.] EXAMPLES OF TRADE-MARKS. 271
precisely the same in both tickets, but it was much more
nicely executed in the plaintiff's label than in the defendant's.
At the foot of each wreath was a blank space, left for the
insertion of the number of yards in the piece. This number,
in the plaintiff's label, was printed: in the defendant's it was
written with a pen. The inscription in the plaintiff's label
consisted of two lines curving with the sides of the wreath,
and a sort of ornamental scroll between them. The upper
lines contained the words “Merrimack Prints,” the lower line
the words “Fast Colors, * Lowell, Mass.” The inscription in
the defendant's label consisted of three lines, the upper and
lower of which were curved like the lines in the plaintiff's
inscription, and the middle one occupied the place of the
scroll used by the plaintiff. The words were: “English Free
Trade. Merrimack Style. Warranted Fast Colors.” All
the judges regarded the pictorial part of the label as of lit-
tle consequence, basing their decision upon the use of the
words.
§ 257. In Spottiswoode v. Clarke, an English case, the
Lord Chancellor dissolved an injunction which the Vice-
Chancellor had granted, with liberty to the plaintiff to bring
an action at law, where the plaintiff was the owner of a pub-
lication called “The Pictorial Almanac,” and the defendant
of one called “Old Moore Family Pictorial Almanac,” al-
though the corners of each book were somewhat similar; both
being decorated with a pictorial representation of the Obser-
vatory at Greenwich, and in the title, as printed on the cover,
making use of nearly the same expressions. But that case
does not throw much light upon this point.
§ 258. Here comes a French case that may help us. In
the Court of Riom, in 1852 (Bru v. Larband”), it appeared
that the plaintiff, a pharmacist of Vichy, had adopted as his
mark for his pharmaceutical product (a mineral salt of Vichy)
a printed representation of the thermal establishment there
situated. The defendant having imitated the said mark, the
plaintiff sued. The court said that it mattered not that the
vignette used by the plaintiff represented a public establish-
1 10 Jur. 1043. * Journal du Palais, 1855, p. 244.
272 LAW OF TRADE-MARKS. [$260.
ment belonging to the state, and one that before then had
been used on scientific publications; and that it is allow-
able for any person to use such picture as his designation
of commerce, provided he is the first to appropriate it to a
particular class of goods.-This decision, it must be con-
fessed, goes to an extreme length. But it is sufficient to
show that a mere picture may be a trade-mark.
§ 259. A picture made up of many objects in various
colors may be a trade-mark. The Patent Office has, almost
daily, passed upon the question. It is not, of course, every
picture that will be registered ; for many that have been pre-
sented have been refused, because either merely descriptive
of the class of goods to which they were intended to be
affixed, or not adapted to the purpose. The first trade-mark
registered under the act of 1870 was one of the Averill
Chemical Paint Company. This consists of an elaborate
pictorial representation. In the foreground is a rock with
the word “Chemistry” upon it; on the rock is an eagle,
holding in his beak a paint-pot or canister and brush, and a
ribbon or streamer on which are the words, “Economical,
Beautiful, Durable.” There is water, and upon it are a
steamer and other vessels. In the background is a bridge,
and a train of railway cars, and buildings of various kinds.
Who could mistake such a picture for a mere specimen of
artistical taste? It speaks plainly. It says, “I am a trade-
mark.” This very picture was soon, afterwards imitated in
its general effect, and the imitation presented for registration
by one in the same line of business. Accident could not
possibly have made the two marks so much alike. Both, at
the distance of a few feet, would make the same impression
upon the eye; and any but the most cautious purchaser might
take one for the other; but, upon close inspection, it appeared
quite a different thing. The simulation was too evident.
The second case was accordingly rejected.
§ 260. Trade-marks not unfrequently are borrowed from
the mediaeval heraldry of Europe, rich in a symbolical lan-
guage, in which figures, devices, and colors were employed
instead of letters. Caution must be observed in appropriat-
§ 262.] EXAMPLES OF TRADE-MARKS. 273
ing time-honored heraldic compositions, for each of these has
its own definite and complete signification, conveyed through
its direct connection with some particular individual, family,
dignity, or office, and held by express right and title. As a .
mark of commerce should be good for the purpose all over
the world, it would be well for him who purposes to adopt
the crest of some ancient family to designate his wares, to
inquire whether a foreign court might not set it aside."
§ 261. In the Tribunal Civil of the Seine, in 1870, in the
case of Christy v. Dande,” the following was held: Although
the national arms are not susceptible of private appropriation,
they can concur with other distinctive signs (for example,
the name of the merchant) to constitute an industrial mark.
The trade-mark claimed by the plaintiff consisted of the arms
of England, with a circular inscription on the ribbon of the
garter, and the words “Christy's London.” The defendant,
for the same class of merchandise as that sold by the plaintiff,
took the same design of the arms, but on the ribbon substi-
tuted for “Christy's London’” the words “Quality Superfine
London.” This was held to be an infringement. — In 1875,
Monell, C. J., held that a copy of the arms of the city of
Paris might be an essential element of a trade-mark.” But
nearly all nations now refuse to include public arms as trade-
marks. One of the latest instances is the regulation of the
Empire of Japan, of June 7, 1884, which expressly forbids
the use of national arms, either foreign or domestic, for such
purpose. e
§ 262. Monograms and ciphers have been used as proprie-
tary or trade-marks for many centuries, especially by painters
and engravers. Many great masters seldom or never signed
* One's family crest may be an essential element of his trade-mark (Beard
v. Turner, 18 L. T. (N. s.) 746; Hargreaves v. Smith, Cox's Man., case 338;
Steinthal v. Samson, Id, case 546; Re Brook, 26 W. R. 791); except when it
conflicts with another symbol previously adopted for the same purpose (Stan-
dish v. Whitwell, 14 W. R. 512; Hargreaves v. Smith, supra); and so may
family arms, on the same condition (Re Farina, 26 W. R. 261; Re Rosing, Ct.
of App., 1 Trade Marks, 371).
* Le Technologiste, No. 365, p. 286.
* Godillot v. Hazard, 49 How. Pr. 5.
18
274 *** * * * * LAW OF TRADE-MARKS. [$263.
their works in any other way. Michael Angelo and Raffaelle
were examples. Although in a painting such a designation
is no certain sign of authenticity, -for every master has his
imitators, –in an engraving of old times it is generally trust.
worthy. Some of them employed singular or fanciful marks,
as birds, animals, houses, usually having some reference or al-
lusion to the name of the artist. Thus Jerome Cock marked
his plates with two cocks fighting; H. C. Bles, with an owl
on a branch, or in a cage; Hans Adam, with a naked figure
under a tree, with his initials; Hans Schaufflin, with a small
shovel, or two shovels crossed, with his initials, — his name
signifying, in German, small shovel; Martin, with a little bird
of that name; Leech, with a bottle containing a leech."
§ 263. Is Color ever an Essential Element of a Trade-
Mark 3–Yes. It may serve as the groundwork of a mark,
or the mark may at the pleasure of its owner be made in any
color, or in all colors. Nearly always in practice the mark
is in black, which is not a color, except in heraldry. One
trader may adopt a red cross as his symbol, and another may
choose a black cross to designate the same class of goods. A
large proportion of the marks of manufactures and commerce
are borrowed from heraldry. Among the earliest shields and
banners, most of them remarkable for simplicity, many are
found to be without any device whatever, their distinction
consisting in some peculiarity of coloring. The renowned
banner of the Knights Templars, by them called Beauseant,
is black above and white below, to denote that, while fierce to
their foes, they were gracious to their friends. In English
heraldry five colors were used, – blue, red, black, green, and
purple.” When so used, one could not well be mistaken for
the other; but this cannot always be said of small labels
bearing the symbols of trade. The emblem of the Blue Bear
might easily be confounded with that of the Black Bear.
The impression left upon the retina of the eye is of an animal
of a certain kind and physical conformation. If, by simply
changing the hue, one man could take the same sign that
1 Spooner's Dictionary of the Fine Arts.
* Boutell's English Heraldry, p. 13.
§ 266.] EXAMPLES OF TRADE-MARKS. 275
a rival in trade has taken, there would not be much safety.
The sign which was originally black might, by exposure to
the atmosphere, become blue or gray; and a blue might
darken into a black.
§ 264. The disadvantages of a reliance upon color alone
are so apparent, that preference is usually given to the device
that is its vehicle. Black and white, which are accidental to
each other, are not confounded. Red and blue in juxtaposi-
tion borrow from each other, and assume a purple hue when
seen at some distance. Colors may be arranged so as to neu-
tralize each other. The death of a color takes place when
the primary colors come together in equal proportions. Two
persons may not see the same colors alike. To give an eye
for color is no more possible than to give an ear for sound.
The defective vision called “color-blindness” confounds a
color with its accidental one. It is said that, in England,
one man in every seven hundred and fifty is unable to distin-
guish a certain color from another, as red from green. To
some the soldier's red coat and the grass of a field are alike."
This is probably as true of our own country as of any other.
We have doubtless all known of such cases.
§ 265. Yet color may be of the essence of a mark of manu-
facture or commerce, known as a trade-mark. National flags.
are sometimes blended with other objects to catch the eye.
They are admirably adapted to all purposes of heraldic dis-
play; and their rich glowing colors appeal to feelings of patri-
otism, and win purchasers of the merchandise to which they
are affixed, albeit the while the wily vendor may laugh in his
sleeve. One flag printed in green may catch the eye of the
son of the Emerald Isle, who would turn with indifference
from a flag of the same size and shape printed in red; another
flag, with stars on a blue field and stripes of alternate red and
white, may secure a preference for the commodity upon which
it is stamped. . . .
§ 266. A particular color may be made an essential feature
of a mark, at the option of its adopter; but it is taken subject
to some risks. If one select a red cross as his symbol, he is
1 Wilkinson on Color and Taste. London, 1858.
276 LAW OF TRADE-MARKS. [$268.
concluded by his choice, and cannot complain if another in the
same line of business adopt the blue cross. It must be defi-
mite and certain. Caution should be observed in selecting an
arbitrary color, which would conclude by its own limitation.
For this reason, the delineation of the emblem is relied upon
rather than the chromatic effect. A rose is a rose; for on a
label stamped with fugitive colors the red rose of Lancaster
might soon turn into the white rose of York.1
§ 267. Color is frequently an important circumstance in
determining the question of infringement. The fact that one
trader has exactly imitated the tints of another's label may be
conclusive, when there would otherwise be doubt. In prac-
tice, we find that such is ofttimes the case. The technical
mark may be but partly simulated, and seem to be but an
accidental coincidence. Then the use of the same colors in
the same manner will advance and tell a tale of guilt. Look
at a United States bank-note, printed mainly in one color, –
that which has given it the name of “greenback.” We may
regard the red seal printed on the face of the note as one of
the trade-marks of our government. Suppose that an action
were brought for an infringement. The general features of
the print may be identical, so far as mere design is concerned.
But the seal is printed in green, the back in red, and that
which is black in the genuine in blue. Who could pronounce
the copy of the figured lines a counterfeit? If not calculated
to deceive, it would not be such.
§ 268. In the Court of Paris, in 1861,” the question of
color came up. To distinguish their manufacture from that
of others, the plaintiffs had adopted, for the drillings made by
them, a bordering composed of four rose-colored threads at the
end of each piece. The defendants adopted as their mark for
the same class of goods a bordering composed of two red
threads. For this supposed infringement suit was brought.
The court said that the red mark had an almost complete
1 Sect. 67 of the British Trade Marks Act of 1883 contains a new and impor-
tant provision in respect to color, no notice of which as an essential had been
taken in the act of 1875–76. The defect therein was much discussed in Re
Worthington & Co.'s Trade-Mark, 14 Ch. D. 8.
* Ricque et al. v. Forges, 8 Annales, 25.
§ 268.] EXAMPLES OF TRADE-MARKS. 277
similarity with the rose-colored mark, - a similarity which
was augmented or diminished according to the color of the
texture; but the similarity was sufficient, when the textures
of the two parties were not brought close together, to deceive
consumers, and lead them into error as to the origin of the
products; and that the choice of a mark which, according
to the disposition of the threads and the color of the tissue,
can approach or remove in aspect from that of the plaintiffs,
constitutes on the part of the defendants a precaution which
reveals a fraudulent intention, especially as they did not
make choice of a red thread until the success of the plain-
tiffs' drillings had become well established. — In the Court
of Nîmes, in 1877, the plaintiffs had deposited as a trade-
mark a thread dyed blue, in the centre of a miner's match
manufactured by them." The court said: “Color by itself
may sometimes be insufficient to constitute a trade-mark,
that is when the color, being isolated from all combination,
may with difficulty serve as a distinctive sign. Thus it has
been adjudged, that, as a natural tint given by the fabrica-
tion of a product cannot constitute a color-mark, and as an
artificial color, extending throughout a product, constitutes
less a distinctive color than a commercial quality of the mer-
chandise, therefore under these conditions color cannot lead
(except in case of a patent) to a right of user to the exclu-
sion of other manufacturers. But the moment that a color,
whether by adoption of special dispositions, or by the ap-
plication of the color itself to certain parts of the product,
whatever otherwise might be the simplicity of said combina-
tions, succeeds in constituting a distinctive sign, susceptible
of striking the purchaser's eye, it enters into the category of
signs not enumerated by Article 1 of the law of June 23,
1857, that may serve as marks of manufacture.” – In the
Court of Douai, in 1881,” the facts were as follows. Certain
thread manufacturers had adopted various colors combined
in certain ways, to indicate different kinds of thread. The
1 Davey, Bickford, Watson, & Co. v. Nier, 26 Annales, 81.
* See French law, in Appendix.
8 Ph. Vrau & Co. v. Pouillier-Loughaye et al., 26 Annales, 92.
278 LAW OF TRADE-MARKS. [$268.
plaintiff's marks consisted of four endings (lisérés), to wit,
Solferino-red, blue, black, and écru (a sort of straw-color).
Held, on appeal, that every one of the borderings, by its
disposition and apposition of colors, by the places that they
occupy, by the aspect that they give to the complete combi-
nation, embraces all the elements of the mark protected by
said Article 1 of the law of 1857. That if a color by itself,
independent of all form, of all substance, and of all particular
disposition, cannot suffice to constitute a mark, it is otherwise
when this color, localized according to certain dispositions by
intentional combination, and apposition to other colors en-
vironing, gives a design of color or a determinate form. It
is vain to object, that thereby, colors being limited, is created
a monopoly contrary to the liberty of commerce. Besides,
nothing obliges manufacturers to use a bordering of color as
a distinctive mark, nor, above all, of a bordering combined so
as to lead to confusion between their products and those of
rivals. – The same kind of a case came up in England, in
1880, in Mitchell v. Henry. The trade-mark for worsted
goods, upon which the argument turned, was described in the
Trade Marks Journal of January 13, 1877, as follows: “A
white Selvage on each side of the piece having a red and
white mottled thread interwoven the full length of the selvage
between the edge of the piece and the edge of the selvage.”
Jessel, M. R., said that he had registered the trade-marks
(seven in all) very unwillingly, and that, if the registration
were good for anything, it was because the colors make the
distinctive device. All the seven registered marks were alike
with this distinction, that the interwoven thread varied in color.
The first was a blue and white mottled thread, the second a
red and white mottled thread (which is the one under con-
sideration), the third a yellow and white mottled thread, the
fourth a violet and white mottled thread, the fifth a brown
and white mottled thread, the sixth a green and white
mottled thread, and the seventh a black and white mottled
thread. The defendant put in another device with three
colors, to use the language of the court, “white, if it is
1 15 Ch. D. 181.
§ 269.] - EXAMPLES OF TRADE-MARKS. 279
white, and red and yellow. The only difference between
the seven is that you put yellow instead of red. If you add
yellow to the red, there is a double variation. Instead of
having two colors, you have three, and one of them is a dif-
ferent color, and so different that the applicants consider
it makes a new mark, and they change yellow for red, or
violet for blue, or whatever the color is.” He confessed
himself to be quite nonplussed in regard to distinguishing
the colors; for the dye had affected the yellow and red
very much in the case of both plaintiff and defendant, and
said that he was asked to disbelieve the evidence of his own
eyes. On appeal, Thesiger, L. J., said: “I cannot say by
the evidence of my own eyes whether the threefold thread
used by the defendant might not, even to the eyes of an ex-
pert, be a colorable imitation of the twofold thread used by
the plaintiff. It appears to me that that must be a matter
of evidence, and evidence of experts.” It was, accordingly,
directed to stand over until the conflict of evidence could
be decided.
§ 269. Form is necessary to make color an essential feature
of a trade-mark. In other words, color alone cannot legally
be deemed to be an arbitrary symbol. That form may be a
geometrical figure, or the representation of an object having
a fixed, definite shape, and being susceptible of description:
thus, a circle, a square, a triangle ; or an arrow, or an anchor,
or a monogram; or any of an infinite variety of objects in
nature or art, which may be easily described, and readily ap-
prehended. But nothing short of this requirement could be
sufficient. Who could impart or receive a precise idea of
a tree, a cloud, or even a human being 2 A trade-mark must
be something that can impress its peculiarity of configuration
upon the memory, as plainly as it is impressed on goods. We
can describe and recognize a Maltese cross, a diamond within
a circle, a five-pointed star, a flag of fixed proportions having
a certain number of stripes and stars, or national emblems.
Then color may well be a valid essential constituent; but it
is hardly within the range of possibility to convey an adequate
idea of a thing that has no fixed invariable limits. In the
280 LAW OF TRADE-MARKS. [$271.
Court of Douai, in 1881, it appeared that the plaintiff had
duly registered, as a trade-mark for sewing-thread, an en-
velope of a blue color (fancifully called by him a capsule,
although not such in reality), combined with other matters.
One of the points of defence was that the blue color could not
be an essential element. Held: As to the blue color of the
capsule, although it is true that a color in itself cannot,
independently of all form, of all substance, and of all peculiar
dispositions, suffice to constitute a trade-mark, it is otherwise
when such color is, as in the envelope of Crespel & Descamps,
applied to an object of a determinate form, put in apposition
with other colors, placed in special lines and particular de-
signs, and by the agency of different elements constituting
a clearly characterized whole.
§ 270. This matter may seem like the veriest enunciation
of truisms. Why waste ink and paper in such incontro-
vertible statements? Let censure be deferred. All sorts of
visionary conceptions are uttered in this world of fancies.
In 1884, notwithstanding the light that published opinions
of courts had shed upon this very subject, it was insisted on
that a bag for seeds, a bag of no particular shape, having no
peculiarity or striking feature, might be a trade-mark, pro-
vided its color were red.” The following is an instance of a
false conception as to the function of mere colors.”
§ 271. The applicant for registration of a supposed trade-
mark for indelible ink thus described his mark: “My trade-
mark consists of a bright yellow-covered wrapper enveloping
the metallic case holding the bottle of indelible ink, and form-
ing the ground upon which is pasted or glued a bright red
label, upon which is inscribed the words, “Payson's Indelible
Ink, for marking Linen, Silk, and Cotton with a Common
Pen without a Preparation. Price 37} cts.” Below this
label, and upon the wrapper paper, is a caution against spu-
rious and worthless imitations, with the fac-simile of the
1 Crespel & Descamps v. Dayez fils ainé & Co., 29 Annales, 885.
2 See Case of Oliver Landreth, ante, § 89 d.
8 In Harrington v. Libby, in 1877, in the U. S. Circuit Court, the court
approvingly cited the two sections following this. 12 Off. Gaz. 188.
§ 273.] EXAMPLES OF TRADE-MARKS. 281
signature, J. Payson Williston, the original inventor and
only manufacturer of the ink. The applicant set forth that
the foregoing had been used to distinguish the said article for
thirty-five years. The specification further recited, that “the
indelible ink in a bottle is held within the metallic case cov-
ered by the wrapper, which, with the label, presents a com-
bination of the two bright colors, yellow and red, so that the
package or roll would look nearly the same were the label and
the ground upon which it was pasted red; or were the red
label left off entirely, the color of the roll, together with its
size, would still be enough to indicate its character to any
who would recognize it by this general characteristic, at a
distance too great to read the printed matter.”
§ 272. The Office answered, that there was but a single ele-
ment of a trade-mark in the case, and that that was the fac-
simile of the signature. The applicant insisted upon a right
to the colors of the two labels or wrappers, or a single color,
as mentioned. Such a case probably never before came up.
It was a matter such as is usually noted in books of reports
as Curia advisare vult. The case was taken before the Com-
missioner of Patents in person, and consultation had. The
applicant, by counsel, strenuously insisted upon the colors,
regardless of form. Result: Examiner's decision fully con-
curred in. A contrary opinion would virtually have conceded
the right of any man to select a certain color by which his
merchandise should be designated, a peculiarly colored paper
in which his goods should be wrapped, and his exclusive right
to that color. The effect would have been, if such a wild
theory were maintained, gradually to throttle trade. No one
would dare to send out his wares in red or in yellow papers,
lest the vengeance of a prior adopter should light upon him.
This case has its lesson.
§ 273. As Eremplars of Words as Trade-Marks of Fancy,
we will consider some that have passed the Patent Office.
“La Flor del Tropico,” for cigars, really manufactured from
the flower of the tropics, was held not to be objectionable."
“Cashmere Bouquet,” for toilet-soap, does not convey any false
1 Gaullieur & André, No. 927.
282 LAW OF TRADE-MARKS. [$273.
suggestion of origin or quality." Nor does “Diamond,” cou-
pled with soap.” “Samson Brace,” for suspenders, cannot
imply anything more than strength of material and make.”
“Deer Tongue,” for tobacco, is clear enough.” So is “Royal
Bats-wing,” for ladies' corsets.” “Melaroma,” for a beverage,
might possibly intimate to a scholar that the article was com-
pounded of honey and some other ingredient, fragrant and
delicious; but whether true or not in a literal sense, it would
not be likely to do the public much harm." The words
“Wild Black Berry Bitters” should not for an instant be
thought of as a lawful trade-mark for the article they desig-
nate; but when, instead of the initial letters, B, we see three
golden bees, the ingenious device commands our admiration.”
We are not deceived into thinking that there is any “Gold
Dust.” in the whiskey that bears that name; * or that an illu-
minating-oil is verily “Mineral Sperm Oil”;° or that pills are
really “Everlasting.” 19 Nothing but a sheer lack of charity
would literally construe “Annihilator,” as applied to a medi-
cine;” and when considering the case of Davis v. Kendall,”
we would deem the question as to its right of existence to be
judicially settled, and pass as good the words “Pain Killer.””
In this case, it appears by the specification that Perry Davis,
the founder of the firm, and father of Edmund Davis and
Sarah D. Dennis, copartners under the firm name of Perry
Davis and Son, in or about the year 1839 originated and intro-
duced the article of medicine to which he at that time applied
the distinctive and suggestive name of “Pain Killer.” There
is also a recital of the fact that the said name has at vari-
ous times been pirated by different persons, who have been
promptly sued for their piracies; and that in all cases, the
said name as a trade-mark has been fully maintained by the
decisions of the courts. – For a while there was doubt as to
1 Colgate & Co., No. 914. 2 J. Buchan & Co., No. 924.
8 Fisk, Clark, & Flagg, No. 744. * L. L. Armistead, No. 512.
5 Thomson, Langdon, & Co., No. 540. 6 E. J. Williamson, No. 401.
7 Landsberger & Co., No. 814.
8 Barkhouse Brothers & Co., No. 626. 9 R. S. Merrill & Co., No. 557.
10 Dunn & Co., No. 448. 11 N. Jenkins, No. 746.
12 2 R. I. 566. 18 Perry Davis & Son, No. 416.
§ 276.] EXAMPLES OF TRADE-MARKS. 283
the propriety of admitting to registration the word “Zero,”
as a mark for a water-cooler. The term seems to imply a low
degree of temperature, and to be in the nature of a guaranty
of great frigidity; but upon consideration it was allowed to
pass. “The Arctic,” for soda apparatus, was also held to be
valid.” “Walley Gem,” for piano-fortes, was held not to be
necessarily descriptive, while well adapted to its purpose.”
“Sunny South’’ is not a term so common as to prevent its
use as a mark for stoves.”
§ 274. When we see “Daylight”" upon a vessel containing
illuminating-oil, or “Sunlight” or “Gaslight”7 upon a simi-
lar article, we instantly perceive that the word is used as a
fanciful denomination; and so of “Water White,”8 as ap-
plied to refined petroleum, for those words could not in such
a case be descriptive, any more than could “Crystal”* be of
castor-oil, or “Star of the West” 19 of a pump.
$ 275. Mowing, reaping, and harvesting tools bear the
designations of “Red Racer,” it “Tip Top,” ” “Queen of the
Meadow,” 18 “Star of the West,” 14 “King of the Field,” is
“Western Dutchman,” 18 and “Harvest Victor”; 17 and many
other names, which are understood to be purely arbitrary, iden-
tify certain articles as the manufacture of certain persons.
§ 276. Rejected, as indicative of Quality. — The following
are instances of applications rejected, because the proposed
trade-marks consisted of words denoting the quality or nature
of the articles to which it was intended to apply them. The
words “Parchment Deed,” to be affixed to a peculiar kind
of writing-paper.” Held, to be either purely descriptive, or
else calculated to deceive. Affirmed on appeal. “Geyser
Spring,” for Saratoga mineral water.” The Examiner said in
1 A. M. Lesley, No. 664. 2 James W. Tufts, No. 678.
8 Ohio Valley Piano Co., No. 795. 4 Abendroth Brothers, No. 307.
5 Bostwick & Tilford, No. 876. 6 W. H. Reed, No. 708.
7 Bostwick & Tilford, No. 377. 8 F. M. Backus, No. 640.
9 H. J. Baker & Brother, No. 373. 10 H. Smith, No. 432.
11 Greenwoods Scythe Co., No. 749. 12 Id., No. 750.
18 Id., No. 751. 14 Id., No. 752.
15 Id., No. 753. 16 Id., No. 754.
17 Samuel B. Forbes, No. 843. 18 Ex parte Crane & Co.
1° Ex parte George S. Batcheller et al.
284 LAW OF TRADE-MARKS. [$276.
his decision that the term “geyser’” has a signification well
known to the public in connection with certain springs. It is
therefore generic and descriptive. The applicant asked for
some evidence of the correctness of the decision. The reply
was that the word “geyser’ is a familiar geological term, as
is shown by the standard dictionaries, books on geology, and
many other printed authorities; that it is an English word,
from the Icelandic verb géysa, to rage, boil, spout; meaning,
in its restricted sense, a fountain common in Iceland which
spouts forth boiling waters; and that by the natural growth
of our language it has become common property to indicate
any spring like the geyser springs of Iceland. The geysers of
the Yellowstone Valley and of California, in our own country,
might also have been mentioned. “Beeswax Oil” was in
effect held by the Commissioner to be simply descriptive of
quality." The word “Razor’ being purely descriptive, and
“steel” a generic term, the compound word “Razor-steel”
was refused registration.” The word “ Invisible,” applied
to pearl-powder for beautifying the complexion, when used
to indicate the character of the thing to which it is attached,
becomes descriptive. The intention of the applicant was to
intimate that the powder, when applied to the skin, is imper-
ceptible or invisible.” The words “Calendar Watch,” 4 for .
watches having calendars, were rejected, and the rejection
sustained on appeal. The applicant asked for a rehearing
upon the case as amended by the addition of “Hall’s.” The
petition was denied, for the reason that such addition could
not strengthen a deficient symbol. “Cundurango Ointment,
C. O.,” is not a legitimate trade-mark. “Ointment” is a
generic term, and “Cundurango” the name of a plant exten-
sively known, and the initials “C. O.” are immaterial, and
not likely to be noticed.” “Lunch Milk Biscuit,” to be ap-
plied to milk biscuit, for lunch or not, cannot be regarded
as a trade-mark.”
1 C. L. Hauthaway & Sons, Com. Dec., 1871, p. 97.
2 R. J. Roberts, Ibid. 113. 8 Solon Palmer, Ibid. 289.
4 Ex parte Daniel G. Hall.
5 Blakeslee & Co., Com. Dec., 1871, p. 284.
* Ex parte C. D. Ross & Son.
§ 277.] EXAMPLES OF TRADE-MARKS. 285
§ 277. The words “The Woven Wire Mattress,” to be
affixed to the very article designated, were claimed to be
worthy of favorable consideration. The counsel for the appli-
cant—a corporation formed under the laws of the State of
Connecticut 1–argued on its behalf: 1. That the said words,
at the time of their adoption by the applicant as its trade-
mark, had not been used in our language, that is, connected
together to represent any known article or thing; and by
themselves conveyed no meaning. 2. That they could not
be considered to be descriptive, for the reason that the wires
of the said mattress are coiled and interlacing together, rather
than united in the manner ordinarily and technically known
as “weaving.” 3. That the applicant had the sole right to
manufacture goods with the above-mentioned name, and had
that right at the time of the adoption of the words as a trade-
mark, under a patent owned by it, — in which patent first
occurred the word “weaving” in connection with the peculiar
form and manner of interlacing coils of wire therein described,
the same having been before then unknown in our language.
The ingenuity of the argument did not save the case; for it
could not be conceived what words more clearly descriptive
could have been selected. The words were not newly coined,
and are common property, notwithstanding the applicant first
used them in that exact form.”
1 Ex parte The Woven Wire Mattress Co.
* As to the necessary name of a product, see §§ 220 et seq.
286 LAW OF TRADE-MARKS. [$278.
CHAPTER VI.
FEDERAL TRADE-MAIRE LEGISLATION.
§ 278. Misconception as to power of Congress.
§ 279. Carelessness in examination of question.
§ 280. Act of 1870 discussed.
§ 281. Congress has authority to legislate on marks.
§ 282. Act of March 3, 1881, constitutional.
§ 283. By whom and how registration is obtained.
§ 284. “Owner,”—meaning of term, as used in act.
§ 285. Why act limited to foreign and Indian commerce.
§ 286. “Treaty, convention, or law” defined.
§ 287, 288. Liberal spirit of our law.
§ 289. Status of member of Indian tribe.
§ 290. Name of applicant, — particularity required.
§ 291. Domicile, – when to be set forth.
§ 292–295. Domicile, – discussed.
§ 296. Location of business of applicant.
§ 297–299. Citizenship, —not essential to registration.
§ 300. Class of merchandise.
§ 301, 302. Trade-mark applicable to merchandise only.
§ 303. Description of trade-mark must be clear.
§ 304. “Fac-similes,”— meaning of term in this law.
§ 305. Mode of applying and affixing mark.
§ 306. Statement of time of use.
§ 307. Government fee, – prepayment necessary.
§ 308. Regulations to be made by Commissioner.
§ 309. Application must be verified.
§ 310. Meaning of words “create any right.”
§ 311. How verification is to be made.
§ 312. Manner of administering oath.
§ 313. Strictness of verification.
§ 314. Certificate of officer administering oath.
§ 315. Proof of oath, or equivalent, must be filed.
§ 316. “Firm,”—meaning of term.
§ 317–320. Trading corporation alone can register.
§ 321, 322. Name of corporation not a trade-mark.
§ 323. Term “corporation” sometimes misunderstood.
§ 324. Exclusive right to use.
§ 325. Time of receipt, —lawful use.
§ 326. “Merely the name,”—not a trade-mark.
§ 327. “Registered or known trade-mark.”
§ 328. Calculated to deceive.
§ 329. Statutory requirements must be fulfilled.
§ 279.] FEDERAL TRADE-MARK LEGISLATION. 287
§ 278. The Danger of Superficial Reading has seldom been
more strikingly exemplified than in connection with the
subject matter of this chapter. A decision of the Supreme
Court of the United States had commonly been misunder-
stood, and its meaning perverted." The trumpet had not
given an uncertain sound, but ears were dull of hearing.
That decision had virtually annulled certain mal-legislation of
Congress. The serious blunder was made of supposing that,
because the legislature had carelessly exercised a power, no
inherent power existed. A misconception of the true import
of an oracular decree created a panic among owners of trade-
marks. More than eight thousand merchants and manufac-
turers, whose special symbols of the genuineness of their
merchandise had been recorded and registered under a sup-
posed law, were told by steam-printed reports of lightning-
tongued intelligence, that the nation was utterly without
power to protect honest marks of commerce, — commerce, the
integrity of faith in which concerns every man, woman, and
child, for all are consumers. The registrants were even
refused a return of moneys paid by them into the treasury,
as a consideration for the promise that they might “obtain
protection for such lawful trade-mark by complying with ”
certain requirements.” Imagination ran riot. Confidence in
national honor was shaken. Infringers and counterfeiters
thought that, so long as they eluded the grasp of the authori-
ties of the individual States, they had full immunity. Con-
fidence in the power and desire of Congress to protect honest
commerce and manufacture was at length restored, but only
after wearisome efforts by a few to extract and diffuse the
essence of the judicial decision that had been the innocent
cause of confusion. -
§ 279. The necessity for examining the state of the law
for ourselves is apparent, in view of the uncertainty in the
mind of the multitude. Why was the scope of that decision
beyond the comprehension of men who should understand it?
Because comparatively few, of lawyers even, had had the
1 In the Trade-Mark Cases, 100 U. S. 82.
* See Sect. 77, Registration Act of July 8, 1870.
288 LAW OF TRADE-MARKS. [$280.
patience to analyze the elaborate and somewhat involved
opinion of the court, as delivered through the lips of one of
its most able members. Misled by a superficial glance at
some careless syllabus, or detached scraps of the opinion itself,
or newspaper report, they jumped to a wrong conclusion, and
contentedly rested there. A lack of judicious scrutiny has
been especially observable in members of Congress, the very
persons whose particular charge it was to con and sift the
language of the court." -
§ 280. Lest we be misled by the same cause, let us review
the antecedent state of the law, and thus obtain that under-
standing which, as says Lord Coke, is “the very lock and key
to set open the windows of the statute.” — The first attempt
by Congress to regulate the right in trade-marks is to be
found in the act of July 8, 1870, entitled, “An Act to revise,
consolidate, and amend the statutes relating to Patents and
Copyrights.” These terms long since became technical, one
referring exclusively to inventions, and the other to the
writings of authors, the protection of the exclusive right to
which comes within the powers given to Congress in the
eighth clause of the eighth section of the first article of the
Constitution. It is a reasonable inference that protection to
trade-marks was in the opinion of Congress at that time an
exercise of the power mentioned. It may be safely assumed
that it was mainly, if not wholly, to that clause that the
1 See Report No. 3, from the Committee on Manufactures, H. of Reps., Dec.
11, 1879; and also Report No. 561, from the Committee of the Judiciary, of
same house, March 12, 1880. Said reports show that they who were responsi-
ble for them were utterly destitute of a knowledge of the essential nature of a
symbol of commerce and manufactures, or were recklessly disregardful of the
law, as decided by the very opinion of the Supreme Court that was copied in
full in each of said reports. Report No. 561 recommended that the Constitu-
tion be amended, so as to provide as follows: “Congress, for promotion of
trade and manufactures, and to carry into effect international treaties, shall
have power to grant, protect, and regulate the exclusive right to adopt and use
trade-marks.” This almost incredible suggestion was of course consigned to
the sleep of death. It would not now be referred to but for the fact that it
has been revived in subsequent sessions, and may, by some freak of legislative
forbearance, be permitted to live. Perpetual-motion enthusiasts have not yet
learned that the laws of gravitation cannot be overturned, and in the domain
of legal science things that by nature are impossible are attempted.
§ 280.] FEDERAL TRADE-MARK LEGISLATION. 289
advocates of the law looked for its support.” United States
Circuit Courts had so understood it. In the Sixth Circuit,
Judge Swing had pronounced the act to be constitutional
under that clause.” In the Seventh, a contrary decision was
made.” In two United States Circuit Courts the judges had
made certificates of division of opinion in cases of indictment
under the penal act of August 14, 1876.4 By this means the
question came into the Supreme Court of the United States.
The confusion was owing to the fact that but few stopped to
consider the irreconcilable incongruity between invention and
literary authorship, and a thing that is essentially neither,
but merely “one's commercial signature.” Even the Attor-
ney-General in his brief said: “Undoubtedly in the legis-
lative mind they were kindred subjects, and it was thought
that the power of Congress over them might be derived from
the same source”; although it is true that he relied more
on the third clause of the eighth section of the first article of
the Constitution, the authority “to regulate commerce with
foreign nations, and among the several States, and with the
Indian tribes.” The Supreme Court soon settled the point
upon which the whole discussion hinged, in the words, “The
ordinary trade-mark has no necessary relation to invention
or discovery.” That being the ease, the act of July 8, 1870,
had no legal existence, as will presently be explained. As
the court said, the exclusive right to a trade-mark does not
depend upon novelty, invention, discovery, or any work of
the brain. It requires no fancy or imagination, no genius,
no laborious thought. It is simply founded on priority of
appropriation. That being so, we can look alone to the
power to regulate commerce. But under that power the act
signally fails; for says the court: “When, therefore, Con-
gress undertakes to enact a law which can only be valid as
a regulation of commerce, it is reasonable to expect to find
1 See opinion of court, 100 U. S. 93.
* Duwel v. Bohmer, 14 Off. Gaz. 270; Cox's Manual, case 613.
* Leidersdorf v. Flint, 13 Am. L. Rev. 390; 8 Biss. 327; Cox’s Manual, case
629. g
4 19 Stat. 141; 1 Supp. R. S. 241.
* “One’s commercial signature,”—a phrase used by the writer in § 130.
19
290 LAW OF TRADE-MARKS. [$281.
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. If its main pur-
pose be to establish a regulation applicable to all trade, to
commerce at all points, especially if it be apparent that it is
designed to govern the commerce wholly between citizens
of the same State, it is obviously the exercise of a power
not confided to Congress.” That is the fatal point. The
act of 1870 did not require that the person desiring to ob-
tain protection, by means of registration, should be engaged
in the kind of commerce which Congress is authorized to
regulate. The court said that it is manifest that its broad
purpose was to establish a system of registration for the ben-
efit of all who had already used a trade-mark, without regard
to the character of trade. It also attempted to create a right
to a trade-mark, and in advance of adoption required all who
intended to adopt to swear that they had an exclusive right,
which could only be obtained by adoption, i.e. by actual use
on goods. -
§ 281. Has Congress Authority to legislate on Trade-Marks?
—It undoubtedly has. This naked question has not yet
been presented to the court of last resort; but that court has
given intimations which have thrice since been acted on by the
law-making power. Said the court: “The question, there-
fore, whether the trade-mark bears such a relation to com-
merce in general terms as to bring it within Congressional
control, is one which, in the present case, we propose to leave
undecided. We adopt this course because, when this court
is called on in the course of the administration of the law to
consider whether an act of Congress, or of any other depart-
ment of the government, is within the constitutional author-
ity of that department, a due respect for a co-ordinate branch
of the government requires that we shall decide that it has
transcended its powers only when it is so plain that we can-
not avoid that duty.” The court in many cases has given a
liberal construction of the term commerce, within the meaning
of the Constitution. There is no difficulty in arriving at the
§ 281.] FEDERAL TRADE-MARK LEGISLATION, 291
conclusion, that Congress has plenary power in the matter of
trade-marks, as incidents of commerce. The act of 1870,
although declared to be unconstitutional for one purpose, i. e.
as a basis for the operation of the penal act of 1876 to pun-
ish the counterfeiting of trade-marks, &c., has a continuing
vitality for other purposes. To what extent, has not been
judicially or otherwise determined. By closely following the
course of legislation subsequent to the decision of the Supreme
Court, it will be seen that the act of 1870 was not in terms
repealed by the law-making power, nor was it intended to
be repealed. Congress, by its committees, took the ground
that it needed only apt words of limitation. The executive
branch of the government takes the same position. Regis-
tration, for what it was worth as evidence of a claim to pri-
ority, continued, notwithstanding the decision, until the act
of 1881 reinvigorated previous legislative acts. – Case: The
Minister of the German Empire, November 28, 1883, officially
submitted to the Secretary of State of the United States cer-
tain interrogatories, one of which was this: “If persons have
secured protection for their trade-marks, according to the law
of July 8, 1870, only, have they lost such protection by the
subsequent decision of the Supreme Court, declaring such law
unconstitutional?” The Secretary of State communicated
the matter to the Secretary of the Interior, who in turn re-
ferred it to the Commissioner of Patents, to whose province
it especially belongs. His opinion—lucid and satisfactory—
was concurred in by all concerned, and received the sanction
of the German government, and was practically applied by
the foreign tribunal from which the interrogatories had ema-
nated. The facts are as follows. A manufacturing firm of
citizens of the United States, doing business at Poughkeepsie,
N. Y., applied to the Handelsgericht (Tribunal of Commerce)
at Leipsic, Germany, for registration of a trade-mark for reap-
ing and mowing machines. Section 20, subsect. 2, of the
trade-mark law of the German Empire of November 30, 1874,
requires proof that foreign applicants have fulfilled, in their
native country, all conditions precedent to registration. As
evidence thereof, the applicants presented their certificate of
292 LAW OF TRADE-MARKS. [$282.
registration in our Patent Office. It was objected to, and
the question thus raised. The official response of our gov-
ernment, on the point above mentioned, in a condensed form,
was this: The effect of the decision of the Supreme Court
was to deprive Federal courts of jurisdiction in a criminal
case. The trade-mark convention of June 1, 1872, between
this country and the German Empire, guaranteed reciprocity
of protection. The German law above referred to requires
certain formalities. The act of 1870 afforded the means
whereby American citizens might furnish evidence required
in other countries, and foreigners might also avail them-
selves of protection guaranteed by treaties, conventions, &c.
To this extent at least, it was an act to carry out the treaty
stipulations; and while Congress may have exceeded its juris-
diction in attempting to protect trade-marks in commerce
within individual States, it certainly had power to legislate
for the purpose of affording evidence of rights. There was
no inhibition on the Patent Office from continuing to regis-
ter and furnish certificates. On the contrary, Congress con-
tinued its annual appropriations to pay the salary of the only
officer created to carry out the provisions of the act. — On
this precise point, the language of Mr. Justice Miller, in pro-
nouncing the opinion of the Supreme Court, was quoted,” to
show that, for purposes other than those before the court, and
pre-eminently for securing protection abroad, the operation
of the machinery created by the statute of 1870 had lost none
of its validity.
§ 282. The grounds of the unconstitutionality of the act of
1870 have been made clear. As was said by the Supreme
Court in another case, “Congress cannot be supposed to
have intended a vain thing.”* It had asserted an inherent
power, without sufficiently limiting the sphere of its opera-
tion. The error was in the omission of apt words, to guard
1 Re Adriance, Platt, & Co., certificate No. 5480, dated January 8, 1878.
* “In what we have here said, we wish to be understood as leaving un-
touched the whole question of the treaty-making power over trade-marks, and
of the duty of Congress to pass any laws necessary to carry any such treaties
into effect.” — Trade-Mark Cases, 100 U. S. 99.
* Heydenfeldt v. Davey, &c. Mining Co., 93 U. S. 634.
§ 283.] FEDERAL TRADE-MARK LEGISLATION. 293
against trenching on reserved rights of the States. Since
the imartificially drawn instrument has been expunged, Con-
gress has thrice asserted the power, and has guarded against
the former generality in phraseology. Now can intelligibly
be discussed the corrected act, — Chapter 138 of the Supple-
ment to the Revised Statutes of the United States, entitled,
“An Act to authorize the Registration of Trade-Marks and
protect the same,” approved March 3, 1881."
§ 283. By whom and how Registration may be obtained. —
“Be it enacted by the Senate and House of Representatives
of the United States in Congress assembled, That owners of
trade-marks used in commerce with foreign nations or with
the Indian tribes, provided such owners shall be domiciled
in the United States or located in any foreign country or
tribes,” which, by treaty, convention,” or law,” affords similar
1 In reporting the bill to the House of Representatives, the Judiciary Com-
mittee used these words: “It re-enacts the Sections 4937–4974 of the Revised
Statutes almost verbatim, except that its operations are confined to trade-marks
used in commerce with the Indian tribes and foreign nations.”
* These two absurd words, “or tribes,” were not in the original bill. It is
not a brilliant conception that Sioux, Diggers, Nez Percés, or even the less sav-
age tribes, can by trade-mark treaties afford reciprocal protection.
* The following is a list of the countries with which we have treaties, con-
ventions, or agreements on this subject, with references to the books in which
the full texts may be found.
COUNTRY. DATE. REFERENCE.
Austro-Hungarian Empire . June 1, 1872 17 Stat. 917
Belgium * July 30, 1869 16 Stat. 765
Do. . . . July 9, 1884 29 O. G. 452
Brazil . . . Sept. 24, 1878 21 Stat. 659
France . . . . . April 16, 1869 16 Stat. 771
German Empire June 1, 1872 17 Stat. 921
Great Britain July 17, 1878 14 O. G. 233
Italy tº º March 19, 1884 27 O. G. 304
Russian Empire. June 27, 1868 16 Stat. 725
Servia . o Dec. 27, 1882 22 Stat. 966
Spain tº 9 . April 19, 1883 25 O.G. 98
Switzerland . º . May 16, 1883 23 O. G.2237
The Netherlands . Feb. 16, 1883 23 O.G. 1334
* In several countries, e. g. Switzerland, the Netherlands, and Japan, the laws
are so formed as to afford reciprocal privileges by means of the mere exchange
of diplomatic notes.
294 LAW OF TRADE-MARKS. [$ 285.
privileges to citizens of the United States, may obtain regis-
tration' of such trade-marks by complying with the following
requirements : — First. By causing to be recorded in the Pa-
tent Office a statement specifying name, domicile,” location, and
citizenship of the party applying; the class of merchandise,
and the particular description of goods comprised in such class
to which the particular trade-mark has been appropriated; a
description of the trade-mark 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 trade-mark has been used. Second. 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 Commissioner of Patents.”
§ 284. Owners. — This word is definite and certain. In
the act of 1870 are found the mischievous words, “ or who
intends to adopt and use.” The right to a trade-mark rests
exclusively on actual adoption, i.e. the affixing of the em-
blem or symbol to merchandise; for an abstract symbol can-
not in the nature of things be a trade-mark. One cannot
be such owner until his goods bear the mark of which he
claims the exclusive use. The word “owner” comprehends
any person, firm, voluntary association, or corporation, engaged
in the commerce mentioned; and includes not only the original
adopter, but also an inheritor, or a successor in business, or an
assignee.
$ 285. Why limited to Commerce with Foreign Nations or
with the Indian Tribes. – The bill, when introduced into the
House of Representatives, used the exact words of the third
paragraph of the eighth section of the first article of the
Constitution. The sub-committee having it in charge, partly
through a misconception of the ruling of the Supreme Court,
as is manifested by their report, and partly through a fear,
which at that time had seized possession of some minds, as to
national legislation having a tendency to interfere with the
reserved rights of individual States, struck out the words
1 “Protection” is the misleading word in the act of 1870.
* See §§ 291 et seq.
§ 287.] FEDERAL TRADE-MARK LEGISLATION. 295
“and among the several States.”* To insist upon a restora-
tion of these words at that time must have jeoparded the
passage of the bill. The Senate would have corrected the
error; but the slightest amendment must inevitably have
defeated final action, as the term of Congress was near its
expiration.
§ 286. Treaty, Convention, or Law. — The generic term
“treaty” might not be deemed sufficiently clear. The stipu-
lations on the subject bear various names. For examples, see
the contract of 1868 with Russia, which is styled a treaty, as
is also that of 1869 with Belgium ; that of 1869 with France
is styled a convention; that of 1878 with Great Britain, a dec-
daration ; and that of 1879 with Brazil, an agreement. Law is,
therefore, the broadest term that can be used to express the
matter, for within the spirit and reason of this act it may be
said to include all kinds of governmental provisions on the
subject. Reciprocity of protection is the object in view. Some
nations have laws on the subject, written or unwritten, where
no discrimination is made against those who are commercially
our fellow citizens. The doctrine of commercial citizenship,
as contradistinguished from that directly involving allegiance
or political fidelity, is recognized by several nations besides
our own.”
§ 287. This phraseology was conceived in a liberal spirit,
looking to the encouragement of reciprocity. The Office has
given to these words a very liberal construction; and, in all
cases when the full scope and intent of a treaty of commerce
is somewhat dubious, it presumes in favor of the applicant.
Thus, where a British subject, resident in his own country,
applied for registration, it was held that the English act of
1 Of course, all persons will understand that this limitation does not affect
common-law rights, although it excludes mere inter-state trade-marks from
registration.
* As an illustrative instance, Art. 6 of the Belgian law of April 1, 1879, is in
point: “Foreigners, who conduct in Belgium establishments of industry or of
commerce, enjoy for the products of such establishments the benefit of the pres-
ent law, by complying with the formalities that it prescribes. . . . It is the
same with foreigners or Belgians who conduct beyond Belgium their industry
or commerce, if, in the countries where their establishments are located, inter-
national conventions have stipulated reciprocity for Belgian trade-marks.”
296 LAW OF TRADE-MARKS. [$ 287.
Parliament entitled, “The Merchandise Marks Act of 1862,”
was equivalent to a convention. Indeed, the right of an alien
friend to protection in the English courts did not depend upon
the passage of that statute, for in many instances previous
thereto, the said courts had recognized and enforced the doc-
trine." In Pisano v. Lawson,” it was shown that at law, as
well as in equity, an alien friend, not at any time a resident
in England, might maintain a personal action for an injury
done within the realm. It was held by Woodbury, J., in the
United States Circuit Court for the District of Massachusetts,
in 1846,” that British subjects had the same privileges in our
judicial tribunals as our own citizens. The third article of our
treaty of 1794, with England, gives the people of both powers
the authority “freely to carry on trade and commerce with
each other.” “So,” said that learned judge, “we are under
treaty obligations to Great Britain, and most other European
powers, to admit their merchandise on favorable terms, and to
allow their merchants to trade here as those of favored nations.
But it would be a mockery of such provisions and engagements,
if we prevented them from selling their goods after arriving
here (Ch. J. Marshall, in Brown v. State of Maryland, 12
Wheat. 447), unless noxious to health or morals; or if we
made onerous discriminations against them, or prevented their
receiving the proceeds of their goods, or abstained from yield-
ing protection against injuries to them, or to their marks.”
This doctrine had previously been asserted by Story, J., in the
same court.4 Mr. Justice Woodbury, in the case above cited,
said that an alien is not now regarded as “the outside barba-
rian” he is considered in China, and the struggle in all com-
mercial countries for some centuries has been to enlarge his
privileges and powers as to all matters of property and trade.
So, too, heavy taxation of alien merchants was guarded against
in Magna Charta, allowing them “to go.and come, and buy
and sell, without any evil tolls.” It is hence, undoubtedly,
1 Collins Company v. Brown, 3 K. & J. 423; Collins Company v. Cohen, id.
A28; 5 W. R. 676.
26 Bing. N. C. 90.
8 Taylor v. Carpenter, 2 Wood. & M. 1.
4 Taylor v. Carpenter, 3 Story, 458.
§ 288.] FEDERAL TRADE-MARK LEGISLATION. 297
that Montesquieu observed, that “the English have made the
protection of foreign merchants an article of their national
liberty”; and Thompson on Charters, p. 232, says, that once
they enjoyed it even in war, “in common with the clergy and
husbandmen, in order that those who prayed, ploughed, and
trafficked might be at peace.” Lord Ch. J. Hale said, so long
ago as his time, that “the law of England rather contracts
than extends the disability of aliens, because the shutting out
of aliens tends to the loss of people, who, when laboriously
employed, are the true riches of any country.” Therefore,
when we consider the spirit and reason of this law, which are
the promotion of reciprocity, it would be manifestly illiberal,
if not positively unjust, to refuse registration of the mark of a
resident of England. We need not hesitate because the sub-
jects of marks of commerce are not mentioned eo nomine in
any treaty with England, nor in any convention; but, upon
the principle of international comity, the presumption should
be in favor of the residents of that country. It should be
observed that the word “citizen” or “subject’ of a foreign
country is not used in the act of 1870; the language is, “any
person, firm, or corporation resident of or located in.” A citi-
zen of the United States resident in such foreign country was,
therefore, for the purposes of this act, deemed a foreigner.
“Owner” is the term used in the act of 1881.
§ 288. Among commercial nations, there is a growing ten-
dency to a general recognition of the emblems of commerce
known as trade-marks; for such recognition operates as a
safeguard against fraud on their own communities. Hence
the many treaties and conventions upon this subject, and the
liberal views entertained by the judicial courts of nearly all
the enlightened countries. By the term “convention” we
mean all kinds of contracts less formal than a treaty, and all
pacts, understandings, or agreements," the leading idea being
the interchange of amicable relations and dealings. All na-
tions are not alike liberal in respect to this matter, and require
something more than a tacit understanding. Although a
Frenchman in England had his rights as carefully protected
1 Bouvier's Law Dict, ; Webster's Dict, title Convention.
298 LAW OF TRADE-MARKS. , [$ 289.
in the courts of that country as if he were a British subject,
independently of any treaty or compact, the French nation did
not display a similar spirit of justice to Englishmen. Row-
land & Son, of England, sued in France for an infringement
of their trade-mark. The court refused them redress because
they were undomiciled foreigners. The cases of Stubs and of
Spencer were decided against Englishmen on the same ground.
The same ruling seems to have been uniformly made in the
cases of all other foreigners under the same circumstances.
In March, 1856, the Tribunal of Commerce of the Seine, in
an infringement case, held, that, inasmuch as the complainant,
Jean Marie Farina, of Cologne-water fame, was a foreigner,
not admitted to establish his domicile in France, conformably
to Art. 13 of the Code Napoléon, and as he had not proved
that the civil rights he demanded were accorded by his nation
to Frenchmen, his case must be dismissed. This course was
taken, although the court admitted that his proprietary mark
for his flasks of eau de Cologne had been recognized by numer-
ous judgments and injunctions, and the defendant intended to
continue the piratical use of it and the name of the complain-
ant. Our countrymen met with a reception quite as unfavor-
able. In the Court of Paris, in 1867,” the complainant, Kemp,
an American, proprietor of “Florida Water” (Eau de la Flo-
'ride), sold as “Agua Florida,” had obtained in the court below
a judgment for infringement of his trade-mark. It was held
by the appellate court that, by Arts. 11 and 13 of the Code
Napoléon, the foreigner, not permitted by authorization of the
Emperor to establish his domicile in France, could enjoy only
those rights accorded to Frenchmen by treaty with the nation
to which such foreigner belongs.
§ 289. Whether a member of an Indian tribe resident within
the territory of his nation, and subject to its laws, would be
regarded as included within the provisions of this statute of
1881, is a question that may arise, but has not been officially
passed upon. The language of Article I., sect. 8, subdiv. 3,
of the Constitution, seems to imply that a treaty would be
1 Farina et al. v. Camus, 2 Annales, 159.
* Kemp v. Herman, 13 Annales, 298.
§ 291.] FEDERAL TRADE-MARK LEGISLATION. 299
necessary for the regulation of commerce with such tribes;
and this law relates to commerce."
§ 290. Name. — The rule of strict legal practice obtains
in cases under the law. It is contemplated that the full
name of every applicant shall appear in the statement, and
with as much particularity as in a case of conveyance of
lands.” Of course, one's autograph signature may be con-
densed, but even then mere initials are always more or less
objectionable. J. Styles may mean James, Jedediah, Joseph,
or John Styles, and thus raise a question of identity. If the
applicant be a corporation, its full and exact title should be
specified, with a reference to the State or nation under the
laws of which it is incorporated.
§ 291. Domicile. — In certain cases, domicile is an essential
prerequisite to registration; and, being essential, it should be
set out in the application papers. When not averred dis-
tinctly, it will be inferred from circumstances. It is because
the term “domicile ” has not been understood, and has so
often been confounded with a mere abiding-place, that the
Office was led to demand an oath, showing of what country
the applicant is a citizen, the same as in applications for
patents.” The Office will then assume that a certain place
or country is the party's domicile. What is the meaning of
the word “domicile ”? The definition of the term is not
without difficulty; for although so many powerful minds
have been applied to this question, there is no generally
agreed definition of the word, nor any agreed enumeration of
the ingredients which constitute domicile. Two things must
concur to constitute it: first, residence; and, secondly, the
intention of making a place the home of a person. There
must be the fact and the intent. However, in many cases,
actual residence is not indispensable to retain a domicile; but
it is retained animo solo by the mere intention not to change
1 See Elk v. Wilkins, 112 U. S. 94, as to the status of an Indian who has
voluntarily separated himself from his tribe, but who is not naturalized.
* General Rule 43 of the Patent Office prescribes that full names of appli-
cants and witnesses, in patent cases, must be given; and Trade-Mark Rule 4
also requires full names.
* Patent Office Regulation, Feb. 29, 1872.
300 LAW OF TRADE-MARKS. [$292.
it, or adopt another. Thus, if a person should go on a voy-
age, or to a foreign country, for health, or for pleasure,
or for business of a temporary nature, with an intention to
return, such a transitory residence would not constitute a
new domicile, nor amount to an abandonment of the old one ;
for it is not the mere fact of inhabitancy in a place which
makes it the domicile, but it is the fact, coupled with the
intention of remaining there, animo manendi.”
§ 292. There is sometimes no small difficulty in deciding
upon the place of domicile, in a strict and legal sense. Resi-
dence is oftentimes of a very equivocal nature, and an inten-
tion to return to a former residence is still more obscure.
Both are sometimes to be gathered from slight circumstances
of mere presumption, and from equivocal and conflicting acts.”
Thus, at the Federal seat of government there are many office-
holders in the civil service who claim domicile in States from
which they have been absent many years, and in which they
hold but the shadow of a nominal residence; and yet they
assert and frequently exercise the right to vote in their re-
spective States, just as our ministers to foreign courts and
soldiers and sailors may do, when they return to homes from
which they have long been absent. To complicate the ques-
tion as to their fixed, true, and permanent residence, these
office-holders sometimes voted at the municipal elections in
the District of Columbia; and their right to do so has been
maintained by high legal authority. Yet an inhabitant of
one State does not acquire a domicile in another by merely
coming to the latter to seek employment, with the intention
of residing there only if he should find it.” In Abington
v. North Bridgewater,” the learned Chief Justice Shaw said
truly, that “Every one has a domicile of origin, which he
retains until he acquires another, and the one thus acquired
is in like manner retained. The supposition that a man can
have two domiciles would lead to the absurdest consequences.
If he had two domiciles within the limits of distant sovereign
states, in case of war, what would be an act of imperative
1 Story, Conflict of Laws, $44, 2 Ibid., § 45.
* * Ross v. Ross, 103 Mass. 575. * 28 Pick. 170, 177.
§ 293.] FEDERAL TRADE-MARK LEGISLATION. 301
duty to one would make him a traitor to the other.” He
might thus, during a period of hostilities, become an enemy
to himself, or be bound to do personal service in two military
districts of the same State at the same time; or in two coun-
tries be compellable to serve on juries at the same moment;
or, as in our late civil war, be held to duty as a conscript in
one district when the quota of troops had actually been filled
by him in another.
§ 293. Every person must have a domicile somewhere.
First, the place of birth of a person is considered to be his
domicile, if at the time of his birth it was the domicile of his
parents. If his parents are then on a visit, or on a journey
(in itinere), the home of his parents (at least if it be in the
same country) will be deemed the domicile of birth or nativ-
ity. Persons born out of the limits and jurisdiction of the
United States, whose fathers were at the time of their birth
citizens of the United States, are citizens of the United States;
but the rights of citizenship shall not descend to persons whose
fathers never resided in the United States," for their domicile
would be abroad. An illegitimate child follows the condition
of his mother. A child born on the high seas has his domi-
cile in the country of his parents. The domicile of birth of
minors continues until a new one is obtained. Minors are
generally deemed incapable, proprio marte, of changing domi-
cile, and retain the domicile of their parents; and if the
father die, his last domicile is that of the minor children.
A married woman follows the domicile of her husband; but
sometimes she may obtain one different from his, and institute
proceedings for divorce.” A widow retains the domicile of her
deceased husband until she obtains another domicile. Prima
facie, the place where a person lives is taken to be his domi-
cile until other facts establish the contrary. When one re-
moves to another place, with an intention to make it his
permanent residence, it instantaneously becomes his place of
1 Act of Congress, Feb. 10, 1855.
* Cheever v. Wilson, 9 Wallace, 109. See authorities cited in Story, Con-
flict of Laws, note to § 46. See also Dr. Lieber's article “Domicile,” in the
Encyclopaedia Americana.
302 Law of TRADE MARKs. [$ 294.
domicile; and that although he may entertain a floating in-
tention to return at some future period to his old home. It
has so been considered in relation to the Chinese immigrants
in the States of the Pacific, who nearly all hope to return to
China during life, or to have their remains removed thither
after death. The place of residence of a man's family is gen-
erally to be deemed his domicile, unless it be only a place of
temporary establishment for his family. Residence, to pro-
duce a change of domicile, must be voluntary. If, therefore,
it be by constraint, banishment, arrest, or imprisonment, the
antecedent domicile remains; as in the case of the many thou-
sand French soldiers who retreated into Switzerland, during
the late war between their nation and Germany, and also
that of Don Carlos, who more recently retreated with some
of his soldiers into France from Spain. The removal was
not a matter of choice. Still, probably, any of those per-
sons could obtain a domicile by declaring an intention always
to remain in the land of exile.1
§ 294. There is a forensic domicile (forum domicilii), or
place where one can sue and be sued. It may happen, and it
often does, that the political, the civil, and the forensic domi-
cile are the same; but this is a matter not so much of gen-
eral principle as of positive legislation in different countries.
A person who resides in a foreign country for purposes of
trade, is deemed an inhabitant of that country by foreign
nations; and his character changes with that of his country.
In peace he is deemed a neutral, in war an enemy; and his
property is dealt with accordingly in prize courts.” The
main point is this: Does the claimant, by engaging in manu-
facturing and commercial pursuits in our country, add to
its prosperity and wealth? If so, this statute will give him
additional protection and privileges. The policy of the law is
to enhance our national prosperity. He whose actions have
not that tendency cannot reasonably claim an advantage over
any one else. As an example of the practical working of this
theory, we will take a case recently submitted for advice.
1 See title “National Domicile,” Story, Conflict of Laws.
* The Venus, 8 Cranch, 278,
§ 296.] FEDERAL TRADE-MARK LEGISLATION. 303
A native of the State of Rhode Island, a natural-born citizen
of the United States, and still such citizen, continued to reside
in this country for many years after attaining his majority.
For about eighteen years he had been established in China,
as a tea-merchant, and exported largely to this country. He
desired to register his trade-mark for teas, but entertained
doubts of the feasibility of his wish, on the ground of want of
domicile. He was informed by the Patent Office, that, so far
as the statute is concerned, he must be regarded as a Chinese
subject; and as China does not by treaty afford similar privi-
leges to citizens of the United States, he could not avail him-
self of the provisions of this act. His able counsel acquiesced
in this view, and so the matter ended.
§ 295. One effect of the law of national domicile may be
this: it may affect the validity of the transfer of a trade-
mark by assignment, as provided for in Section 12. If by the .
law of the place where a person has his domicile he is of legal
age at the age of twenty, and has the faculty of disposing of
his property there situate, the same faculty will extend to his
property situate in another country, where he would not be
capable of alienating until he had reached the age of twenty-
five years." For example: the modern Civil Code of France
expressly declares that the laws concerning the condition and
capacity of persons govern Frenchmen, even if residing in a
foreign country. Thus French minors, incapable of binding
themselves by engagements of commerce unless they are
emancipated or authorized, cannot bind themselves in com-
mercial transactions in a foreign country, even when the law
of that country does not require the like conditions. So does
the personal incapacity of French married women follow them
everywhere, so far as the French tribunals are concerned.”
Any man obtaining an assignment of a trade-mark would
prefer to be assured that he might assert his title the world
OWOI’. ..
§ 296. Location. — This refers to the place where the busi-
ness is carried on, which may be other than that of the place
1 Story, Conflict of Laws, $ 54.
* Pardessus, De Droit Commercial, vol. v. art. 1482, p. 248.
304 - LAW OF TRADE-MARKS. [$ 298.
of domicile. Again, domicile may not be a fact involved, as
in the case of a corporation. At all events, it must appear
of record where the manufactory or mercantile house is situ-
ated; that is, in what country, or state, city, village, or even
county. The office has never understood it to be necessary
to state the street, or other exact locality.
§ 297. Citizenship is not an element to entitle or debar
from registration under this statute. The question of fealty
or allegiance does not arise. The citizen of the United States,
resident and in commerce in a foreign country, - and if not
in commerce why have a trade-mark?—is adding to the
wealth and prosperity of that foreign country. He has there
thrown in his lot. Commercially, he is a citizen of that coun-
try." To be sure, he can resume his prior status. If he do
not choose so to do, let him use his influence to secure to all
of his fellow-citizens of the United States the privileges he
now seeks here. One may for half a century have been a
trader in the city of New York, and not be included within
the meaning of this act; or he may not yet have been in the
United States for more than an hour, and be included. What
was his intention as to permanency?
§ 298. Let us consider a hypothetical case, to illustrate the
idea of the necessity of a strict compliance with the statute
and the rules of practice. The late Mr. Nicholas Bodisco,
who died in 1872, while connected with the Russian Lega-
tion at the Brazilian Court, was born in Georgetown, D. C.,
in 1844, his mother being a natural-born citizen of the United
States. Suppose that that gentleman had embarked in mer-
cantile business in the city of Washington, and had applied
for the registration of a trade-mark. Would it have been
sufficient for him to merely allege his residence in George-
town, and his place of business in Washington? No. He
should also have averred his place of domicile, for such is a
material fact, and therefore should always be alleged. Why?
Because our government, and the public at large, have a right
to know the exact status of every one to whom protection is
1 Field v. Adreon, 7 Md. 209; Risewick v. Davis, 19 Id, 82; Drake on At-
tachments, $ 59 a.
§ 299.] FEDERAL TRADE-MARK LEGISLATION. 305
conditionally promised by this legislative enactment. If he
had then alleged his domicile, the fact would have transpired
that his domicile was in Russia. Why so? Because, at the
time of his birth, his father was Envoy Extraordinary, &c. of
the Emperor of Russia, and in legal contemplation his domi-
cile was that of his father; and not having renounced his al-
legiance to his own country, but actually continued in the
diplomatic service, he had not acquired a domicile here. The
object of registration is protection in our courts; and the
right to that protection might at any time be suspended by
the supervention of a state of war between the countries.
He would take the certificate, if at all, under an existing
treaty, and subject to all legal conditions and contingencies.
§ 299. The national character which a man gains by resi-
dence may be thrown off at pleasure by a return to his native
country, or even by turning his back on the country in which
he has resided, on his way to another. It is an adventitious
character gained by residence, and which ceases by mere resi-
dence." It is manifest that the fact of mere citizenship is not
conclusive on the question of domicile. An Englishman came
to this country, and became naturalized, and two years after-
ward returned to England, where he continued to reside for
sixteen years, with the exception of a few months spent in
visiting this country. Held, that he must be regarded as
having again become a British subject.” The same doctrine
was held in the Supreme Court of the United States in 1814,”
where a naturalized citizen, in time of peace, returned to his
native country for the purpose of trade, but with the intention
of returning to his adopted country. He remained in his
native country for a year after the beginning of the war
between the two countries; but only for the purpose of wind-
ing up his business. Held, that he had gained a domicile in
his native country. In still another case, a residence of thir-
teen years in an enemy's country was held sufficient to invest
the party with the character of an enemy.” In the civil war
1 The Venus, 8 Cranch, 253 (1814). 2 2 Paine, 601.
* The Frances, 8 Cranch, 335. -
* Rogers v. The Amado, 1 Newb. 400.
20
306 LAW OF TRADE-MARKS. [$300.
in the United States, property was condemned on the ground
of domicile only. It was decided, first, that if a place was in
the firm possession and under the control of the rebel enemies,
it was, for the time, and in the technical sense of the prize
law, enemy's territory; secondly, that the property of a person
domiciled in that place at the time of capture was liable to
condemnation as enemy’s property, in the sense of the prize
courts; and lastly, that although the owner was a citizen of
the United States, and had always resided in that place, which
was held to be of right a part of the United States, and of
right a proper place of residence to constitute citizenship of
the United States, yet the property of such a person was to
be condemned without inquiring whether he was or was not,
in his intentions or acts, loyal or disloyal. The same rule
was applied to the property of foreigners domiciled in such
places.”
§ 300. Class of Merchandise. — Much carelessness is mani-
fested in the use of generic for specific terms. A general
description of one's whole stock in trade is too loose and
indefinite; for example, “groceries,” “hardware,” “perfum-
eries,” “medicines,” “oils,” &c. The statute requires the par-
ticular description of goods; and if that be not given, a valid
foundation will not have been laid for an action at law or suit
in equity; and a court would probably reject the certificate of
registration, just as it would a patent with a vague, indefinite
specification of an invention or discovery. A man may affix
the same symbol to many different articles; but in all cases
he must be prepared to show the actual application of the
mark or symbol to the article on which a rival shall have used
it. It is true that applicants sometimes prefer such sweeping,
comprehensive descriptions. The risk is their own. In one
case in court,” the plaintiff — a corporation—conceded that
it had never manufactured prints; but because it had placed
its trade-mark on everything in the way of cotton goods ea:-
cept prints, it insisted that it also had the right to place it
1 The Prize Cases, 2 Black's Rep. 635; Amy Warwick, 2 Sprague's Decis-
ions, 2, and 24 Law Reporter, 335, 494.
* Amoskeag Manufacturing Co. v. Garner, 55 Barb. 151.
§ 301.] FEDERAL TRADE-MARK LEGISLATION. 307
there, and that if any other person, however honestly, placed
the same mark upon prints, it would be an infringement.
The idea of the corporation was, that the class of cotton goods
was broad enough to cover everything that might possibly
be made out of cotton, however unlike their products. The
judge who had the cause before him said: “I deny emphati-
cally that the doctrine of trade-marks is capable of indefinite
expansion; that where a word of meaning, a geographical
word, is used as a trade-mark, and first applied to one branch
of manufacturing cotton goods, when there are subsequently
invented several distinct branches to it, like Aaron's rod, it
swallows up all the subsequent branches. The doctrine of
trade-marks must not be extended beyond its just limits; or,
in a country like ours, filled as it is with enterprise, capital,
skill, inventive genius, and with men possessed with progress-
ive ideas, it will, in the end, be productive of greater injury
than good.” e - -
§ 301. It seems scarcely necessary to remark that this
statute is applicable to merchandise alone, – something to be
sold, and not to be given away. The plaintiff claiming pro-
tection must prove that he has an exclusive right to use a
particular mark or symbol in connection with some manu-
facture or vendible commodity; and, secondly, that this mark
or symbol has been adopted or is used by the defendant so as
to prejudice the plaintiff's custom, and injure him in his trade
or business. There is not any exclusive ownership of the
symbols which constitute a trade-mark, apart from the use or
application of them to a vendible commodity." This is the
settled doctrine of all the courts. Any other view of the
matter would be wildly absurd. A symbol does not become
a trade-mark until actually stamped upon or otherwise affixed
to goods to be sold. It would not therefore be correct for one
to say that his trade-mark is stamped upon his business cards,
or other mere advertisements; for the impression of the
symbol would be nothing more than a fac-simile or copy of
his trade-mark. The public do not purchase signs, or circu-
lars, or cards of business; but they buy the article of mer-
1 The Lord Chancellor in the Leather Cloth Co. case, 11 Jur. (N. s.) 513.
308 LAW OF TRADE-MARKS. [$ 302.
chandise bearing upon it a certain known mark of genuineness.
Yet, for all this, the dictates of common sense are set at defi-
ance by solicitors, who will not think, How can a thing be
a trade-mark if not used in trade? How can one's property
be protected if he have no property?
$ 802. Lest the proposition enunciated above should not
be considered authoritatively given, let us consult the Bench.
Ludlow, J., in 1860," said as follows: “It may be remarked,
in general, that while an imitation or fac-simile, or a mere
colorable artifice, will bring the offending party clearly within
the rule, no decision has ever yet declared the right of a
manufacturer to be absolute in a name as a name merely; it
is only when that name is printed in a particular manner upon
a particular label, and thus becomes identified with a partic-
ular style of goods, or when a name is used by a defendant
in connection with his place of business (and not his manu-
factured goods), under such circumstances as to deceive the
public and rob another of his individuality, and thus destroy
his fame and injure his profits, . . . that it becomes a trade-
mark, or in the nature of a trade-mark, and as such entitles its
possessor or proprietor to the protection of courts of justice.”
Vice-Chancellor Wood, of England, in 1865.” said substantially
that the law on this point, as laid down in the cases before
Lord Westbury,” is as follows, and that he did not think that
any one would be disposed to dissent from it. This court has
taken on itself to protect a man in the use of a trade-mark as
applied to a particular description of article. He has no prop-
erty in that mark per se, any more than a person has in any
fanciful denomination which he may assume for his own partic-
ular use without reference to his trade. If he does not carry
on a trade in iron, but carries on a trade in linen, and stamps
a lion on his linen, another person may stamp a lion on iron;
but when he has appropriated a mark to a particular species
of goods, and when he has caused his goods to circulate with
that mark, when that mark has become the known indicium
Colladay v. Baird, 4 Phil. 139.
* Ainsworth v. Walmesley, 44 I. J. 252.
* Millington v. Fox, 3 Myl. & Cr. 338; Hall v. Barrows, 10 Jur. (N. s.) 55.
§ 303.] FEDERAL : TRADE-MARK LEGISLATION. 309
of their being his, the court has said that nobody shall de-
fraud him by using that mark, and passing off the goods of
another's manufacture as being the goods of the owner of
the mark. And the Lord Chancellor in the same year
said: “It is correct to say that there is no exclusive owner-
ship of the symbols which constitute a trade-mark apart from
the use or application of them; but the word ‘trade-mark
is the designation of marks or symbols when applied to a
vendible commodity, and the exclusive right to make such
use or application is rightly called “property.’”* This rule
is as rigid and unalterable as the laws of the Medes and
the Persians. -
§ 303. The Description of the trade-mark itself should be so
lucid and comprehensive, that the language of the statement
or specification should require no extraneous aid in its inter-
pretation, to identify the appropriate device, emblem, or sym-
bol. The words “as shown in the drawing and fac-similes
hereto annexed,” or equivalent forms of expression, do not
suffice; as in point of fact a fac-simile seldom appears in the
body of the specification, unless it consists of words only, but
with a copy of the specification is attached to the certificate
of registration. In practice, sometimes a block or electrotype
is furnished by the applicant for the purpose of being printed
in the specification. An allegation that “the trade-mark
consists of the representation of a schooner-yacht under full
sail, in connection with the words Middlesea: Yacht-cloth, as is
more fully shown in the fac-simile hereto annexed,” has been
held to be unobjectionable.” Sometimes the so-called fac-
simile consists principally of fanciful groupings of human or
other figures, of pictures of ships and railway trains, and a
number of words, while the essential feature lies in a single
fancy word. The verbal description, that is, the phraseology
of the statement, is therefore the only true guide; for a full,
clear, and accurate description, distinguishing essentials from
non-essentials, is a pre-requisite to registration.” .
* Leather Cloth Co. case, 11 Jur. (s. s.) 513.
* Re Middlesex Co., Registration No. 655.
8 Re Volta Belt Co., 8 Off. Gaz. 144.
310 LAW OF TRADE-MARKS. [$ 304.
$ 804. Fac-similes. – Rule 9 for trade-mark applications
prescribes that, where a trade-mark can be represented by a
fac-simile which conforms to the rules for drawings of mechan-
ical patents, such a drawing may be furnished by applicant,
and the additional copies will be produced by the photolitho-
graphic process at the expense of the Office. Or the applicant
may furnish one fac-simile, mounted on a card ten by fifteen
inches in size, and ten additional copies upon flexible paper,
not mounted; but in all cases the sheet containing the
mounted fac-simile or the drawing must be signed by the
applicant or his authorized attorney, and authenticated by two
witnesses.—All this is very plain, but cases sometimes occur
that puzzle the Office greatly. What is a fac-simile? Skeat's
Etymological Dictionary defines it as follows: “An exact
copy. Short for factum simile. “Copied per factum simile’;
see quotation in Todd's Johnson. — Lat. factum, neut. of fac-
tus, made; and simile, neut. of similis, like.” Webster's Dic-
tionary gives substantially the same derivation, and adds:
“An exact copy or likeness, as of handwriting.” Worcester's
Dictionary further gives: “That which is made exactly like;
an exact copy of any writing, engraving, or other work of .
art.” It is not so easy to define the term as used in the
statute. Where an applicant claims any device, such as may
be, and generally is, printed on labels, there is no difficulty;
for the thing presented is necessarily exactly like other im-
pressions from the same type, plate, or block. But where the
symbol is moulded in the glass of bottles, or stamped by a
die in heavy metal, then the rule of common sense requires
that as exact a copy as possible under the circumstances
should be made on paper, so as to be attached to the state-
ment, just as in a design-patent application a drawing is made
of ornamental configurations for bulky articles of manufac-
ture, as stoves, furniture, or terra-cotta work. The object of
the statute is sufficiently to describe and identify the mark,
the right to the exclusive use of which is asserted. Instances
come up where it is very inconvenient to attach a fac-simile
to the certificate of registration. Take as an example the
peculiarly formed stick of wood, made in two pieces, with the
§ 305.] FEDERAL TRADE-MARK LEGISLATION. 311
ends shaped into octagonal rings, upon which certain carpet
manufacturers were in the habit of rolling their carpets. The
length of the said stick equalled the width of the carpeting.
Yet that stick was registered as a trade-mark, and was sub-
sequently recognized as valid in a suit in a Circuit Court of
the United States.” The defendants in the suit began to
roll their carpets on similar sticks, and an injunction was
granted to restrain them from thus infringing the complain-
ants’ rights. – Or take another case, where the applicant set
forth that to the neck of each bottle of his champagne wine
he attached, by a ribbon, a miniature metallic bell.” That
bell, intended exactly to represent the famous great bell of
Moscow, constituted his trade-mark. If the bell were a por-
tion of the merchandise, then it was not a technical trade-
mark. But the merchandise consisted of wine. The Office
suggested that a picture of the bell might be regarded as a
fac-simile in the eye of the law. The applicant insisted that
the certificate of registration to be issued to him should bear
one of the eleven bells furnished as fac-similes. In the pro-
cess of issuance of the document the bell was somewhat
crushed, but it was attached to it as an aid to the verbal
description. Other extraordinary cases may occur in prac-
tice, until it shall be judicially settled as to what is a compli-
ance with the statute. •
§ 305. Mode of Application or Use of Mark. — This may
be set forth thus: “ by marking each article with blue ink by
means of a stencil-plate”; “by printing the mark upon tags
to be fixed to the cloth’”; “by branding the top of each box
containing the goods with a hot iron"; “by painting or sten-
cilling the mark upon each article’”; or in any other language
which will clearly show the mode of affixing the same. Some-
times, the articles intended to be protected are too minute to
bear the mark, as needles, when the box will perform that
office; or pins, when the paper in which they are fastened
will serve the purpose; and so of a myriad of those articles
* Lowell Manufacturing Co. v. Larned, Cox's Manual, case 428; Codd.
Dig. 341.
* Re Charles Narcisse Farre, Certificate No. 8,939.
312 - LAW OF TRADE-MARKS. [$ 307.
to which the emblem cannot be affixed, except by means of
envelopes, wrappers, boxes, and other enclosures.
$ 806. Length of Time of Use. — This means the period
during which the symbol has been applied and affixed to mer-
chandise sold, or offered for sale, the only possible way in
which a trade-mark can be used. If it has not so been used
at all by the applicant, or by the person or persons under
whom he claims by succession or assignment, then the applica-
tion for registration must fail. Preciseness on the point of
fixing date of adoption in that way may be an important item,
especially in a contest for ownership. Priority may be but
of a single day. A neglect accurately to state the length of
time may operate as an estoppel in the event of conflicting
claims of title. One who does not date back as far as he
truthfully might, with extremely rare exceptions, finds it to
be impossible afterwards to correct the error of the record
that he has made. On the other hand, if he state that he has
used the mark for ten years, and the proof be that he has used
it but five, would not that be evincive of bad faith? Here
is a matter that should carefully be looked into by an appli-
cant before registry, and by his antagonist at a trial of title:
Has the application, as originally filed, alleged a certain
time of use which is afterwards sought to be varied?" The
statute requires an oath, or its equivalent, that the applicant
has at the time of application a right to the use of the trade-
mark. What trade-mark? Clearly, that which was used for
the time alleged. But suppose that, after filing the case, by
reason of an afterthought, the description is amended so as
to materially change the description of the symbol itself, and
no new verification has been made. An irregularity in this
respect may be fatal to a plaintiff who relies on his registry
to establish title. The requirement of a verification is man-
datory. . - - -
§ 307. Government Fee.—The payment of the sum of twenty-
five dollars is an essential pre-requisite. An application is not
1 In a suit in North Carolina, involving the title of a very valuable trade.
mark, this very point has been raised. McElwee v. Blackwell, Iredell Superior
Court, still pending in 1885.
§ 808.] FEDERAL TRADE-MARK LEGISLATION. 313
deemed to be filed until that is done. The fee may be paid
to the Commissioner direct, in current funds, or by a postal
money-order, or to the treasurer or any of the assistant treas-
urers of the United States, or to any of the designated deposi-
tories, national banks, or receivers of public moneys designated
by the Secretary of the Treasury for that purpose, who will
give the depositor a receipt or certificate of deposit therefor,
to be transmitted to the Patent Office. The payment of this
fee is not by instalments, as in applications for patents. When
once paid, it is not a pledge or deposit of the money, but an
absolute and unconditional payment into the treasury;" and
it cannot be reclaimed unless paid through actual mistake,
such as a payment in excess, or when not required by law,
or by neglect or misinformation on the part of the Office.
A mere change of purpose on the part of the applicant will
not be sufficient to entitle him to a return.”
§ 308. Regulations prescribed by the Commissioner. — Al-
though the Patent Office is a bureau of the Department of
the Interior, it seems that it was intended that the officer
charged with the registry of trade-marks should be alone
responsible for regulations. That was so in the Registration
Act of 1870. It may be that the Revised Statutes, making
the establishment of regulations in general subject to the
approval of the Secretary of the Interior, operated as an
amendment thereof. Be that as it may, the present law
places the matter in charge of the Commissioner alone. This
may become an important point, as regulations have all the
force of statutory enactments, and, until repealed, are as
binding on the Office as on private parties.” As a matter
of practice, regulations in trade-mark matters are submitted
to the Secretary for approval, but probably they would not
be void if not approved by him. The regulations are pub-
lished in a pamphlet separate from the general rules of patent
practice.
* 9 Opinions of Attorneys-General, 64.
2 Patent Office, Rule 215; Rev. Stat., sect. 4936.
* Arnold v. Bishop, MSS. Appeal cases, Cranch, Ch. J., D. C. 1841; also
O'Hara v. Hawes, MSS. Appeal cases, Morsell, J., D.C. 1859.
314 LAW OF TRADE-MARKS. [$ 312.
§ 309. Application must be verified, and what the Declara-
tion must contain. —“Sect. 2. That the application prescribed
in the foregoing 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 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 trade-mark 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 trade-mark is
used in commerce with foreign nations or Indian tribes, as
above indicated; and that the description and fac-similes pre-
sented for registry truly represent the trade-mark sought to
be registered.” . - j
§ 310. “Create any right.”—That is, a right of using it
in evidence, or as the foundation of an action or suit. The
verification may be by oath, or affirmation, or any equivalent,
in accordance with the laws or religious observances of any
nation in which it may be made. -
§ 311. How verified. — The mode of making the verifica-
tion has necessarily been left to the discretion of the appli-
cant. It is an asseveration made under the solemnity of an
oath, or affirmation, or some act equivalent thereto, for it
may be that in some countries general oaths are by law
abolished, and a declaration substituted. The provision of
Trade-Mark Rule 7 of the Patent Office, that “the declara-
tion should be in the form of an oath,” is therefore applicable
only to those who have no scruple against taking an oath.
§ 312. The Manner of administering the Oath, affirmation,
or its substitute by whatever name it may be called, must, of
course, be left to circumstances, and national, local, or religious
peculiarities and customs. Peoples of all nations, tongues,
and creeds come within the contemplation of this law. No
distinction can be made in a commercial matter between
Christians and Buddhists, Confucians, or semi-savage idol-
worshippers. The affirmation or the equivalent of an oath
may be made in the United States before any officer author-
§ 313.] FEDERAL TRADE-MARK LEGISLATION. 315
ized to administer oaths for general purposes, as justices of
the peace, notaries public, commissioners of deeds of cities,
or of judicial courts, and clerks and judges of the same ; or,
in a foreign country, before any minister, chargé d'affaires,
consul, or commercial agent holding a commission under the
government of the United States, or before a notary public of
the foreign country in which the applicant may be. The sig-
nature of a notary public must, in all cases, be attested by his
proper official seal. Sometimes the official seal is dispensed
with by State laws; but under Federal laws it cannot be." Of
course the oath prescribed in this act cannot be taken by any
one who has been convicted of perjury, or who for any other
reason is not a competent witness in a court of justice in the
State or Territory where the party proposes to take it; and
if, upon interference or other trial it appeared that a person
legally incompetent had sworn to the declaration, the case
would stand exactly as if no oath had been made. Lapse of
time could not cure a defect so radical. -
§ 313. Strictness of Verification.— It is not sufficient to
swear or affirm that no other person, firm, or corporation has
a right to the use of the trade-mark sought to be registered;
but the whole remaining part of Section 2 of the act must be
complied with, so as to make out a prima facie case beyond
doubt. It is true that the party has, in one sense, to swear to
a conclusion of law, to wit, that he has at the time a right to
the use; but that is a matter that he must determine in his
own mind, from facts and circumstances within his knowl-
edge. He is presumed to know how and when he affixed the
symbol to merchandise, and that his claim is prior in time
to that of rivals in trade. As is said elsewhere, no absolute
right of property in the mark is created by this law, and his
claim to the exclusive right may be overturned by the Office,
or by a court. In an analogous case of a patent, it was held
that an oath of an applicant for a re-issue, that an original
patent “is not fully valid and available" to the patentee, is
* Act of Congress, Sept. 16, 1850; Rev. Stat., sect. 1778. See also Blake
Crusher Co. v. Ward, U. S. Cir. Ct., E. D. Mich., 1 Am. L. T. 423, citing and
approving Goodyear v. Hullihen, 3 Fisher, 251,254. -
316 LAW OF TRADE-MARKS. [$ 315.
not such an oath as is required by law; and that it was an
excess of authority on the part of the Commissioner to grant
a reissued patent upon such an oath; but the act is properly
complied with by a declaration under oath that no other per-
son has a right to the use of said trade-mark, or of one substan-
tially the same.”
§ 314. Certificate of Officer. — The authentication must be
clear. Thus, in a case where that officer has not a seal of
office, as an ordinary justice of the peace, it is usual for a
clerk of a court of record to attach his certificate of official
character under the seal of his court. It has been questioned
whether a notary public has complied with the act of Con-
gress of September 16, 1850, which allows oaths for general
purposes to be taken before a notary public, and, when certi-
fied under the hand and official seal of such notary, gives
them the same force and effect as if taken or made before
such justice or justices of the peace. He had not stated
in his certificate that he was a notary public, and that such
certificate was given under his official seal, but signed the
same, and affixed his seal. It was held to be sufficient.” It
has even been held that a jurat to an application is not a
nullity because not dated.* If the facts intelligently appear,
mere form is not insisted on.
§ 315. Where there is no Evidence of an Oath or its Equiva-
lent on File. — Under the present strictness of practice, it is
not probable that such could be the case; yet it is possible
that the declaration may lack the formalities that constitute
a legal verification. In an analogous case of a patent, it was
held that the fact that a blank form of oath was found among
the papers on file cannot overcome the direct recital of the
letters patent that the oath was taken, or the presumption
that the requirements of the law were complied with in issu-
ing the patent.” And suppose the oath had not been taken
at all, would the patent be void on that account’ Story, J.,
1 Whitely v. Swayne, 4 Fish. 117.
| ? Re Vidoard et al., 8 Off. Gaz. 143.
* Goodyear v. Hullihen, 3 Fish. 251; 2 Hughes, 492.
4 French v. Rogers, 1 Fish. 133.
* Crompton v. Belknap Mills, 3 Fish. 536; Preble's Patent Case Index, 522.
§ 317.] FEDERAL TRADE-MARK LEGISLATION. 31'ſ
in one case held otherwise." The taking of the oath, it seems,
though to be done prior to the granting of the patent, is not a
condition precedent, failing which the patent must fail.” Not-
withstanding the tenor of the foregoing decisions, no prudent
applicant would neglect any of the formalities required, nor
lay the flattering unction to his soul that he can eventually
succeed if he do so. We have an opinion in the Crompton
case, above cited, that even the requirement for the pay-
ment of fees is directory, and that the non-payment thereof
would not invalidate a patent inadvertently granted. (Obiter
dictum.) *
§ 316. Firm. — By the word firm is meant the name, title,
or style under which a company transacts business; hence, a
partnership or house, as the firm of Hope & Co.” A firm
may still legally exist although none of the original members
of the house remains, or even not one of his name is a part-
ner; and one person may conduct the business under the old
name, or many may act under the name of an individual.
When but one person constitutes the firm, he should describe
himself by his own name, trading under the title or style of
the firm; as Adolph C. Meyer, trading as A. C. Meyer & Co.
§ 317. Corporation. — By this term the statute now under
consideration undoubtedly means a corporation aggregate,
duly organized under the laws of some State or Territory of
this Union, or of some foreign nation. It must necessarily
be confined to a trading corporation. This assertion is not
entirely superfluous in this place, for the contrary has been as-
serted in claiming a right to registration. Can the term, as
herein used, embrace literally any and every corporation, sole
and aggregate, ecclesiastical, municipal, manufacturing, and
commercial, - corporations formed for scientific, educational,
and a score of other purposes? Counsel have asserted that
all kinds of corporations, however unconnected with com-
merce, are included. If not in trade, why have a trade-mark?
1 Whittemore v. Cutter, 1 Gall. 429; 1 Robb. 48; Preble's Patent Case
Index, 523.
* Clifford and Clark, JJ., Crompton v. Belknap Mills, supra.
* Webster's Dictionary, Firm; Worcester's Do.
318 - LAW OF TRADE-MARKS. [$318.
If a non-trading corporation cannot have a trade-mark at
common law, how can it possibly have one by virtue of this
act of Congress? This statute does not create trade-marks,
for no power to do so exists under the Constitution; and it
would be an absurdity to attempt to create a symbol of com-
merce, which, being the emblem of its owner, each man must
adopt for himself. The right to use a certain mark for goods
does not depend upon statutory enactments, but has its foun-
dation in the immutable law of nature. Congress had only
authority to regulate commerce, and it did not attempt to
transcend its powers. It could not change the natures of
things. We are referred to the common law for the rules
which govern those natures; and it has repeatedly been de-
clared that statutes which alter common-law remedies, or
affect common-law rights, must be strictly complied with.
Witness the maxim, Nihil quod est contra rationem est lici-
twm, for reason is the life of the law. And such statutes are
to be construed sensibly, and with a view to the object aimed
at by the legislature. An ancient and settled system ought
not to be overturned, except by clear, unambiguous, and per-
emptory language."
§ 318. This statute does not make valid any act on the
part of a corporation which would not be valid without it,
and does not in the slightest degree add breadth to the pro-
visions of its charter; therefore, it is a corollary that an eccle-
siastical, educational, eleemosynary, or other non-mercantile
corporation, is not contemplated by this act. In one case,
the applicant set forth that it was engaged in the “manu-
facture and distribution of pamphlets, circulars, and other
publications,” and that the proposed trade-mark was to be
printed thereon, “and upon the notices which advertise the
same and the business of the company to the public.” It
did not appear, nor could it be inferred, that the articles
upon which the mark was intended to be applied were to
be sold. Therefore they were not merchandise within the
meaning of the statute. The application was rejected.” In
1 Sedgwick, Stat. and Const. Law, 318.
* The Mercantile Loan and Warehouse Co., case 683.
§ 319.] FEDERAL TRADE-MARK LEGISLATION, 819
another case, where a picture of a safe and a watch-dog was
filed for registration by an insurance company, it met a simi-
lar fate. This picture was not intended to be sold as a work
of art, — for then it might have come under the copyright
law, and been entered in the office of the Librarian of Con-
gress; nor was it to be affixed to merchandise to be sold, –
for an insurance company does not traffic ; but it was to be
printed upon policies, renewals, bill-heads, &c., by way of
ornament. The purpose of registering a mark under such
circumstances is, inconceivable. What beneficial end could
it possibly serve? It could not be turned into a technical
trade-mark until it should actually be affixed to merchan-
dise; and this artificial person, a company formed to insure
against loss by fire, had no power in law to affix it to mer-
chandise. The sole object of registering a trade-mark is to
obtain protection against infringement by a rival trader;
and that protection could only be obtained through judicial
process. How could such a corporation come into court as a
trader? In this case, the Special Examiner having charge of
the subject declined to receive it, for want of jurisdiction,
and the fee was returned to the applicant."
§ 319. If the Office had permitted registration in such
cases, what absurd consequences might have flowed there-
from 1 Other corporations of a similar or analogous nature
would perhaps have demanded the certificate, which to them
might have seemed like the wand of an enchanter. A cor-
poration sole is recognized as existing in the United States.
Such is a minister of a parish seized of a freehold, as persona
ecclesiae, the same as in England; and the right once estab-
lished cannot be devested even by an act of the State legisla-
ture.” In Massachusetts, a minister seized of parsonage lands,
is a sole corporation for that purpose. Such a corporation
sole cannot alienate, but has survivorship.” Now, if any and
every corporation is intended to be embraced by this statute,
why not let in such a minister of a parish, not in his individ-
* The Safeguard Fire Ins. Co. of the City of New York.
* Angell & Ames on Corporations, $27, citing decisions of Story, J.
* Brunswick v. Dunning, 7 Mass. 447; Weston v. Hunt, 2 Mass. 501; Jansen
v. Ostrander, 1 Cow. 670.
320 - Law of TRADE-MARKs, [$ 320.
ual capacity as John Styles, but as rector? The proposition
is too devoid of sense to warrant another word, and would be
dropped but for one fact, — an appeal was taken in just such
a case, and was decided against the applicant.
$ 820. Common sense and good faith are the leading stars
of all genuine interpretation. We do not take language
literally, but look at the reason which underlies it. The
command, “Thou shalt not kill,” does not prohibit killing
in a just war, or in defence of one's person. When the min-
ister in the pulpit tells us to sing three verses of a certain
hymn, we do not take him literally, for his words do not
mean exactly what they say. A hymn is in poetical form,
and in poetry each line is a verse. Therefore we at once
perceive that the careless speaker means that we shall sing
three stanzas, as otherwise the sense would be incomplete
and be turned into sheer nonsense. Dr. Lieber has given an
illustration of the necessity of consulting the rules of reason
in applying language. He takes the word horse, which means
many different things." In Webster's Dictionary we find
that it may mean: 1. A hoofed quadruped of the genus
Equus; 2. The male of the genus; 3. Mounted soldiery;
4. A frame with legs for supporting something; 5. A mass
of earthy matter in mining; 6. In nautical affairs, a foot-rope
extending from the middle of a yard to its extremity; also a
rope for hoisting a yard, or extending a sail on it. We always
should take a word with its peculiar signification in the art,
science, sect, &c., according to what is termed usus loquendi.
When Congress used the word “corporation,” in the same
paragraph it was also said “who are entitled to the exclusive
use of any lawful trade-mark,” &c. The corporation must
show that the law of its creation gave it authority to make
such contracts as it seeks to enforce; * and the act of registra-
tion under this statute is a contract between the United States
on the one side, and the proprietor of the trade-mark on the
other, whereby protection is promised upon certain conditions
precedent and subsequent.
1 Legal and Political Hermeneutics, p. 100.
* Angell & Ames on Corporations, $161.
§ 321.] FEDERAL TRADE-MARK LEGISLATION. 321
§ 321. There are two published opinions, which, on a su-
perficial reading, seem to affirm that the mere name of a cor-
poration may constitute a lawful trade-mark, when used by
the corporation itself, as a mark or sign upon merchandise.
These opinions are worthy of examination at this moment,
and especially so is the earlier one, as that has been cited in
the Patent Office as an authority. It is the case of Newby v.
The Oregon Central Railway Co. et al., in the Circuit Court
of the United States for the District of Oregon, in 1869.1
The facts are briefly as follows. The corporation defendant
was organized in 1867, under a general law of the State of
Oregon (Code, 658, 659), for the purpose of constructing and
operating a railway. Prior thereto, however, another com-
pany had been incorporated by the same name, and by au-
thority of the law of the same State. It was alleged by the
bill that the bonds and obligations of the senior corporation
(of which the complainant was a stockholder) had become
valuable and marketable as commercial paper, so that it was
enabled by the sale of them to meet its liabilities; and it was
charged that the individual members of the second corpora-
tion had confederated and conspired together to defraud and
injure the senior corporation, by assuming the same corpo-
rate title; whereby they succeeded in putting their paper into
market, to the injury of the credit of the original corporation.
In short, the true and legal designation of an incorporated
company had been fraudulently usurped. An injunction was
asked for. The language of the judge in granting the prayer
is in part this: “The corporate name of a corporation is a
trade-mark, and from the necessity of the thing, and every
consideration of private justice and public policy, deserves
the same consideration and protection from a court of equity.
Under the law, the corporate name is a necessary element of
the corporation's existence. Without it, a corporation can-
not exist. Any act which produces confusion or uncertainty
concerning the name is calculated to injuriously affect the
identity and business of a corporation.” He found that the
defendants were in the wrong, and administered the remedy
1 Deady's Rep. (1859–69) p. 609.
21
322 LAW OF TRADE-MARKS. [$ 321.
applied for. What did the judgment decide? That the mere
naked name of a corporation is a trade-mark at common law?
If it did so decide, then the name of a corporation used for
itself, and by itself, is not included within the prohibition of
this section, provided the same was so used prior to the time
of the passage of this act. Did the court decide that the
name of a corporation is a technical trade-mark? Yes! ex-
claims the tyro. No! as emphatically says the lawyer. Let
us carefully examine the language of Judge Deady, and theo-
rize, if necessary. “The corporate name of a corporation is
a trade-mark,” said he, and “deserves the same consideration
and protection.” The same as what? The same as if it were
really a technical trade-mark. That is undoubtedly what he
meant to say, and by his decision virtually did say. Was
the case before the court an alleged infringement of a trade-
mark? No. How can that be demonstrated? By a very
simple process. There was no charge that the mark of the
original and genuine company had been violated. If the bill
had so averred, and claimed relief on that ground, the defend-
ants would have demurred thereto, and a dismissal of the bill
would necessarily have followed. There would have been a
defect in the party complainant. In case of infringement,
the party injured by the wrongful conduct of the defendants
would have been the corporation itself, and not an individual
stockholder. There was no pretence that the defendants, or
any one of their number, had imposed a false mark upon
Newby. His ostensible reason for bringing the suit was to
prevent a further depreciation of his stock by any wrongful
act of the defendants. How came he to sue, instead of the
corporation? The motive may readily be inferred. He was
a citizen of the State of California; and the defendants were
all citizens of Oregon. He could bring a suit in the Circuit
Court of the United States, and the corporation could not;
because in the latter case both parties would have belonged
to the same State, and the court could not have had juris-
diction under the act of 1789. The senior corporation found
that it was necessary to its own salvation that the pseudo cor-
poration should be destroyed; and the expunging of its name
§ 322.] FEDERAL TRADE-MARK LEGISLATION. 323
was annihilation. We have no right to quarrel with Judge
Deady, except on one point, and that point is the careless
misuse of a technical term, - “trade-mark”; and when we
look back at the frequent instances of the same slip of the
tongue or the pen, as shown in Chapter III. (on the defini-
tion and nature of the trade-mark), we find him to be in
illustrious company. The case of Newby v. The Oregon Cen-
tral Railway Co. et al. does not judicially decide that the mere.
name of a corporation is a trade-mark. N.
§ 322. The other corporation case which invites our atten-
tion is that of Holmes et al. v. Holmes et al., in the Supreme
Court of Connecticut, in 1870, before all the justices but one.
In delivering judgment, it was said by Carpenter, J.: “That
any name, symbol, or device, adopted by an individual, cor-
poration, or business firm, for the purpose of designating the
origin and ownership of goods manufactured by them, will be
protected as a trade-mark, is well-settled law. The name of
a corporation or partnership accomplishing the same purpose
will be protected upon the same principle.” When we study
this case, the meaning of the language of the learned judge
becomes perfectly clear. As in the foregoing Oregon case,
both parties before the court were corporations created under
laws of the same State, bearing the same title, and engaged
in the same line of business. The coincidence was promotive
of confusion. It became necessary to the welfare of one con-
cern that the name of the other should be blotted out. It
was not essential to the attainment of the object sought that
the infringement of a trade-mark should be averred; but it
was deemed necessary that the name of one of the parties
should be suppressed, or modified. The only question before
the court was, Which party has the best right to the name
used ? Did the court say, or mean to say, that the name of
a corporation is a trade-mark? No. But it did virtually say
that when the name of a corporation, &c. accomplishes the
same purpose as a trade-mark (and in this instance it was
shown that it did), it will be protected. How 2 “ Upon the
8ame principle,” not as being a trade-mark.
1 37 Conn. 278; 9 Am. R. 324.
324 LAW OF TRADE-MARKS. [$ 324.
§ 323. The term “corporation” has been taken by some
applicants for registration to mean any voluntary association
or aggregation of individuals, although they do not possess
the general characteristics of a corporation. Thus, in one
case, the claimants set forth that they were engaged in busi-
ness under the name of the “Sorrento Wood-carving Com-
pany,” and asked that a certificate should be issued to and in
the name of such company." Held, that the company has no
legal existence by that name, not being incorporated, and is
in reality a “firm.” The grant should properly be made in
the individual names of the applicants, as trading, manufac-
turing, or doing business under such or such a firm, title, or
style. — But when a corporation is an applicant, its proper
title or name must be given, and the papers must be signed
by an officer thereof, viz. the president, vice-president, secre-
tary, treasurer, or superintendent. It has been held by the
Office that a mere director could not make the verification,
he not being strictly an officer.” . It should be one who has
charge of the seal, and right to affix it.
§ 324. Eacclusive Right to Use. — In his statement or speci-
fication, the applicant must set forth his title, whether by
original adoption, by assignment, inheritance, survivorship,
or by operation of law, as when one has acquired a right to
carry on the business of a bankrupt. From the facts therein
alleged will be deduced a conclusion as to the legality of the
title claimed. The right to the use of the mark must be ex-
clusive of all other persons.” A trade-mark is an emblem of
a man just as much as his written signature, and is used to
denote that an article of merchandise has been made by a cer-
tain person, or that it has been sold or offered for sale by him.
If the same mark were to be used by different persons, for the
same species of goods, it would lead to inextricable confusion;
and its true and only legitimate purpose would be overturned,
for then it would lack the essential element of an indication
of origin or ownership. •
1 Hill & Hall’s case, Certificate No. 639.
2 Re Gullet Gin Manufacturing Co., 1873, case 1478. -
* The Supreme Court of Wisconsin, in Marshall et al. v. Pinkham, 52 Wis.
572, cited the remainder of this section with approbation.
§ 326.] FEDERAL TRADE-MARK LEGISLATION. 325
§ 325. Time of Receipt of Application to be noted. Registra-
tion depends on lawful Use. — “Sect. 3. That the time of the
receipt of any such application shall be noted and recorded.
But no alleged trade-mark shall be registered unless the same
appear to be lawfully used as such by the applicant in foreign
commerce or commerce with Indian tribes, as above men-
tioned, or is within the provision of a treaty, convention, or
declaration with a foreign power; nor which is merely the
name of the applicant; nor which is identical with a regis-
tered or known trade-mark owned by another, and appropri-
ate 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 application for regis-
tration the Commissioner of Patents shall decide the pre-
sumptive lawfulness of claim to the alleged trade-mark; and
in any dispute between an applicant and a previous regis-
trant," 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.”
§ 326. “Merely the Name.” — The Court of Appeals of
New York in one case” used this language: “A person can-
not make a trade-mark of his own name, and thus obtain a
monopoly of it which will debar all other persons of the same
name from using their own names in their own business.”
This is the enunciation of a well-settled common-sense doc-
trine. But the language is, “merely the name of the appli-
cant.” This means his own proper name. In Milner v. Reed,
decided by W. C. Wickens in Lancaster, England, in 1870,”
it was held that a designation by which a person has in
fact become known may be a trade-name entitled to protec-
tion, even though the person claiming it is not the person to
1 “Registrant.” The author of this book devised this term because there
was a need for some word of the kind. Registrar is an officer who makes an .
entry in a register. When an applicant's claim has been allowed, he becomes
a registrant. The word is formed just as celebrant is from celebrate. The Patent
Office first, and then Congress, confirmed its use.
* Meneely v. Meneely, 62 N. Y. 427. See ante, §§ 195–202.
* Bryce on Trade-Marks, 90; Cox's Man, case 328.
326 Law or rºadenaars. [$ 326.
whom it was originally applied, and though the facts which
caused it to be applied to him no longer exist. A surgeon T.,
who resided in Oldfield Lane, and who had acquired great
fame under the name of the “Oldfield Lane Doctor,” took
an assistant as partner. The latter continued the business
after T.’s death, and passed by the name of “Oldfield Lane
Doctor.” He was subsequently turned out by T.’s repre-
sentatives, who leased the surgery to another surgeon, who
practised there. The latter was restrained from using the
name. — In a case where an applicant had used for the period
of twenty-one years, as a trade-mark for bridle-bits and stir-
rups, the word “Daniel,” as a fanciful name, it was admitted
to registry.” If this word “Daniel’’ were the name of the
applicant, it would not be valid for the purpose; but being a
pure designation of fancy, — meaning, mayhap, him who was
thrown into the den of lions, – there is no objection to it.
Even if another person, whose real name is Daniel, were to
set up in a similar business, he would not be permitted to
stamp his goods with the simple name adopted as above
stated; but would be compelled by a court of equity, if he
used it at all, to use with it some distinguishing mark, or
his initials, to avoid the possibility of confusion. —What is
merely the name? Answer: the name used in the ordinary
manner, having nothing in its arrangement to attract atten-
tion, and lead the public to inquiry, and having no feature
indicative of an intention to make it a distinguishing em-
blem. But if one form his name into an anagram, or form a
cross or crescent, or any other fancy figure of his name, then
by the singularity of formation it acquires an individuality,
and ceases to be merely his name, and becomes a lawful mark.
The imitation of such a device would hardly be deemed the
result of accident. One's autograph may be his commercial
mark, if it possess striking peculiarities, so that it can be, and
really is, recognized as his, and his only; but it is not every
scrawl that would be deemed such. That involves a question
of fact, whether such mark is sufficient to distinguish it from
the same name when used by other persons.
1 Re Kelita Broadhurst, Certificate No. 946.
§ 328.] FEDERAL TRADE-MARK LEGISLATION. 327
$ 327. Registered or known Trade-Mark-This undoubtedly
refers to all marks registered under the act of 1870, as well as
those under that of 1881. The Office will take notice of its
own records. The word “known '' embraces all trade-marks
of any country, a knowledge of the existence of which shall
have come to attention. In making an examination, for-
eign and domestic publications are consulted, and in addition
thereto knowledge on the subject is gleaned from any avail-
able source.
§ 328. Calculated to deceive. — However strong may be the
asseveration of the applicant upon this point, the declaration
will not be conclusive where the statement is obviously false.
Motives will be keenly scrutinized. The Office will for itself
determine when a proposed mark is calculated to deceive.
Nor will motives be the sole test; for it is not essential to
reprobation that a use shall have been with fraudulent intent.
In Fetridge v. Wells,” the “Balm of Thousand Flowers” case,
Duer, J., said: “Without rejecting the evidence of my senses,
I cannot doubt that the label or trade-mark which the defend-
ants admit that they propose to use, from its general resem-
blance to that of the plaintiff and his firm, is well calculated
to mislead the public, by inducing the belief that the articles
to which it is affixed are in reality prepared or manufactured
by the plaintiff's firm. Nor can, I doubt that the label was
framed with this design, since the imitation is so close, minute,
and exact, as, in my opinion, to exclude the supposition of any
other motive. It is true that the name of R. H. Rice, as pro-
prietor, is printed on the label, but it is so printed as not to
attract, but almost certainly to elude, observation. A variation
must be regarded as immaterial which requires a close inspec-
tion to detect, and which can scarcely be said to diminish the
effect of the fac-simile which the simulated label in all other
respects is found to exhibit.” The question of general resem-
blance, with variations in nearly all the minutiae, was fully
considered by the Office in an application for registration of a
proposed trade-mark for paint, rejected upon registered case
1 See ante, § 281.
2 4 Abb. Pr. 144; 13 How. Pr. 385; R. Cox, 188.
328. Law or rºadenaars. [$ 329.
No. 1 of the “Averill Chemical Paint Company.” The ver-
bal description has been given in § 259. The applicant's
specification presented the same general effect. “Omit the
word ‘Chemistry,” said the Examiner, “add the Figure & '
to the ribbon, and substitute a globe for the rough rock, and
the written description of Bradley is the same as that of the
Averill Company. At a casual glance, one design might easily
be mistaken for the other, an indistinct impression of which
may have been left upon the memory; for each contains all
the essential features of the other. Both devices are circular
in form, are intended to be applied in the same mode, in the
same color, and to the same class of goods. It is not to be
supposed that opportunities for critical examination would
commonly offer, nor even be sought; for the resemblance of
the infringing to the genuine mark would lull suspicion; so
that not only the general public, but even acute observers in
the business of dealing in paints, might easily be misled.”"
If the affidavit filed in this case had been conclusive, the case
could not have been rejected; for that affidavit states posi-
tively “that no other person, firm, or corporation has the
right to such use, either in the identical form, or having
such near resemblance thereto as might be calculated to de-
ceive.” This is by no means an uncommon kind of case.
The moral of it is, that the Patent Office will examine, weigh,
scrutinize, and decide in accordance with the rules of com-
IſlC)11 SellSee . . . . . .
§ 329. The statute, by defining the conditions under which
the power it confers shall be exercised, necessarily excludes it
in all others, except, perhaps, the correction of clerical errors.
When a statute defines the extent of power to one who acts
ministerially (as the Commissioner does under this section),
the courts cannot extend it, nor validate acts done without or
beyond its authority. The Commissioner cannot pardon a
false suggestion, or excuse on the ground of innocent igno-
rance. If, for example, an alien, either through ignorance or
intention, falsely represents himself to be a citizen, in order
to obtain a patent, the patent so obtained is inoperative and
1 Case of Henry W. Bradley, assignor to Young & Co., 355.
§ 329.] FEDERAL TRADE-MARK LEGISLATION. 329
#
invalid to vest title. Where the taking of the oath is a condi-
tion precedent, the want of it may be pleaded in defence." In
another case, it was held that the Commissioner has clearly no
power to dispense with what the statute declares to be the
necessary prerequisites to a grant. And if it appears from the
records and papers of the Office in evidence that the statutory
requirements have not been complied with, it is within the
power of a court, and its plain duty, to hold a patent to be
void. It would be straining the doctrine of presumption
in favor of the legality of the acts of a public officer to
an unreasonable extent, to hold that a patent is legal and
valid where the records and papers of the Office show con-
clusively that essential statutory provisions have been dis-
regarded.” - -
1 Child v. Adams, 1 Fish. 189; 3 Wall. Jr. 20.
* Whitely v. Swayne, 4 Fish. 117. See also Smith v. Reynolds, 10 Blatch.
85 and 100, ruling out trade-mark certificates on this ground.
330
LAW OF TRADE-MARKS. [$ 330.
§ 330.
§ 331.
§ 332.
§ 333.
§ 334.
§ 335.
§ 336.
§ 337.
CHAPTER VII.
FEDERAL LEGISLATION (continued).
Certificates of registry, —issue and effect.
Term “Certificates” explained.
Seal,- why of the Interior Department.
Duration of certificate as evidence.
Credit for fees paid under act of 1870.
Who shall be credited for former fees.
“Same Trade-Mark,”— meaning of phrase.
Effect of registration, — remedies.
§ 338, 339. Registration prima facie evidence.
§ 340.
§ 341.
§ 342.
“Trade-Mark Patent” a false term.
“Reproduce” explained.
“Colorably,”— definition of.
§ 343, 344. What remedies created by this act.
§ 345.
§ 346.
§ 347.
§ 348.
§ 349.
§ 350.
§ 351.
§ 352.
§ 353.
§ 354.
§ 355.
§ 356.
§ 357.
§ 358.
§ 359.
§ 360.
§ 361.
§ 362.
§ 363.
§ 364.
§ 365.
§ 366.
“Remedy” a figurative expression.
Action on the case.
Cautions to be observed before litigation.
When trade-mark is debarred from protection.
“ Unlawful business,”—term defined.
Article injurious in itself.
Deceiving public by false indications
Examples of imposition.
Fraudulently obtained certificates.
Reaffirmance of common-law doctrines.
Damages for false representations.
New right of action.
No rights lost by registration.
Claim to mark continues. – Suits between citizens of same State.
Common-law right survives registration.
“Goods to be transported,”— phrase discussed.
Transfers of trade-marks, – rules for.
What trade-marks the rule applied to.
Why abstract symbol not transferable.
Trade-mark, on formation of partnership.
A section that has no meaning.
Seemingly unnecessary act of 1882.
§ 367, 368. Meaning of word “lawful.”
§ 369.
Simulated marks on watches, etc.
§ 370, 371. Act of 1876, to punish counterfeiting.
§ 332.] FEDERAL LEGISLATION. 331
ºr
§ 372. Penal act and civil, -in effect one.
§ 373. Advantages of Federal registration.
§ 374. Effect of registration.
§ 375. “The Blanchard Churn” case.
§ 376. “The Hall Calendar Watch” case.
§ 377. Registry is notice to the world.
§ 378. Only valid common-law marks registrable.
§ 879. Congress did not think of creating marks.
§ 380. Meaning of registration.
§ 381. Registry of prints or labels. – Act of 1874.
§ 382. Meaning of “Prints,” “Labels,” etc.
§ 383. Accidental use by others of same emblem.
§ 384. Bad faith in anticipating adoption.
§ 330. Certificates of Registry, how issued, and their Effect.
—“Sect. 4. That certificates of registry of trade-marks 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, tor.
gether with printed copies of the specifications, shall be kept
in books for that purpose. Copies of trade-marks and of
statements and declarations filed therewith, and certificates of
registry so signed and sealed, shall be evidence in any suit in
which such trade-marks shall be brought in controversy.”
§ 331. Term “Certificates.”— There is a reason for this
expression. In the act of 1870 the term “certificate” was not
used in this sense. There it applied only to the statement
made by the applicant. It is here used to clearly distin-
guish the document issued on registry from letters patent,
for which it was frequently mistaken. The true theory is
that a trade-mark cannot be the subject of a grant, while a
patent must always be.
§ 332. Seal. — One of the principal desires of the framer
of the bill was to divorce emblems of commerce from a mis-
leading companionship with patents for inventions. Noscitur
ea sociis. Not only had sciolists frequently been misled
thereby as to the essential nature of a trade-mark, but judges
and legislators were sometimes led astray by the connection,
just as a man is judged by the company that he keeps. The
Supreme Court traces much evil to an improper classifica-
tion in the act of 1870, where trade-marks were sandwiched
332 LAW OF TRADE-MARKS. [$ 333.
between patents and copyrights. While emblems of trade
continue to be registered in the Patent Office, non-reflecting
persons will liken them to inventions for which patents may
be created."
§ 333. Duration of Certificate of Registry, as Matter of Evi-
dence.—“Sect. 5. That a certificate of registry shall remain
in force for thirty years from this date, except in cases where
the trade-mark is claimed for and applied to articles not man-
ufactured 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 trade-mark ceases to
be exclusive property elsewhere. At any time during the
six months prior to the expiration of the term of thirty years,
such registration may be renewed on the same terms and for
a like period.”
It must be understood that this section does not mean to
affect the vitality of the trade-mark, for it is beyond the
power of the national legislature to create or to destroy an
arbitrary symbol of manufacture or commerce, termed a trade-
1 The committee on reporting the bill said: “They perceive no good reason
for taking that matter from the Patent Office. One of the main reasons urged
for any law on the subject is to comply with existing treaties. In each of these
treaties owners of foreign trade-marks are required to deposit them in the Pa-
tent Office.” Why to be so deposited 3 Because the building designated had
not only space, but fire-proof rooms. At various times, by authority of law,
relics of the earlier days of the nation and of its leaders, swords, curiosities of
the Wilkes Exploring Expedition, and other historical articles, have also been
stored for convenience of display in that spacious building. It is well known to
our citizens generally that, before the creation of the Agricultural Department,
the Commissioner of Patents was charged with the distribution of agricultural
seeds. He was also custodian of copyright books. In Canada, the Minister
of Agriculture has charge of trade-marks and copyrights. No treaty ever re-
quired trade-marks to be registered or recorded in the Patent Office. The
building so named is also occupied by the Department of the Interior, of which
the office is a bureau. The bill intended to continue the business of registra-
tion in the same locality and department, while giving another officer charge
of the peculiar arbitrary emblems, and the administration of subtle metaphysi-
cal distinctions that can but suffer when constantly confused with matters of
quite another nature. In changing the bill, the members of the committee
who did it overlooked the fact that the Patent Office has its own seal. Hence
the anomaly as to the seal.
$ 336.] FEDERAL LEGISLATION. * 333
mark. It affects only what this act creates, a mere certifi-
cate as matter of evidence. The act of 1870 read that the
trade-mark shall remain in force. That phraseology encour-
aged the supposition that such a representation of personality
could be created or destroyed at legislative will. Now, it is
merely the evidence of registry that can cease to have effect.
§ 334. Credit given to Applicants for Fees heretofore paid.
—“Sect. 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 trade-mark.”
§ 335. “Credited for any Fee.” — This applies to the case
of any applicant whatever, whether the one who has regis-
tered, or attempted to register, or to his assignee, or his
successor in business, and to an individual, a partnership, a
company, or a corporation, holding legal title to the trade-
mark sought to be registered. The Patent Office has decided,
however, that an assignee claiming the benefit of this section
must file a waiver by the party who paid the fee, or produce
equivalent evidence of his right. A mere affidavit of the
present applicant is not in itself sufficient to establish a right
to the credit. Pursuant to a rule, under the old act, the sum
of ten dollars was all that was required to be paid in filing
a case. The Commissioner has construed the present act
to require the whole fee to be paid in advance. Credit is
given for the ten dollars formerly paid. If the case under
this law should be rejected, the whole fee would be lost.
There were many cases previously to the act of 1870 wherein
design-patents were granted for trade-marks, under a miscon-
ception of law. As these so-called design-patents had no
legal inception, fees paid therefor should, perhaps, be applied
by virtue of this section. The same principle applies to so-
called copyrights; but the fees in such latter-mentioned mat-
ters are too trivial to warrant the trouble of reclaiming them.
All such fees go into the treasury, whatever be the channel.
$ 336. “Same Trade-Mark.” – This means an arbitrary
symbol, essentially that which was originally filed, and affixed
to the same class of merchandise. This section clearly con-
334 e LAW OF TRADE-MARKS, [$ 338.
templates the use of the symbol on the same kind of goods, al-
though the claim may be enlarged by inserting all the species
of the same class that might have been embraced in the first
instance; so, when one had in his original case described it
as affixed to smoking-tobacco, he may now enlarge the class,
by adding other species of manufactured tobacco, as chewing-
tobacco, cigars, cigarettes, or snuff. So the Patent Office has
decided in a large number of cases.
$ 337. Effect of Registration.— Remedies.—“Sect. 7. That
registration of a trade-mark shall be prima facie evidence of
ownership. Any person who shall reproduce, counterfeit,
copy, or colorably imitate any trade-mark registered under
this act, and affix the same to merchandise of substantially
the same descriptive properties as those described in the regis-
tration, shall be liable to an action on the case for damages
for the wrongful use of said trade-mark 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 trade-mark used in foreign commerce
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.”
§ 338. Evidence. — The record operates as prima facie evi-
dence of title, as in the case of letters patent. Before the
passage of this act, it was sometimes next to impossible to
establish the date of adoption, and the exact description of
a trade-mark, depending as those matters did upon the recol-
lection of witnesses, who, when produced at perhaps a great
expense, would disagree upon both points. It cannot, how-
ever, be contended that the evidence furnished by virtue of
this section would be conclusive. Take an analogous case.
A patent does not conclude anybody. It is, at most, a
statement of what has appeared to the Commissioner to be
1 See Winans v. N. Y. & Erie R. R. Co., 1 Fisher, 213; Ransom v. Mayor,
Ibid. 252; Serrell v. Collins, Ibid. 289; Potter v. Holland, Ibid. 382; and
Cahoon v. Ring, Ibid. 397.
§ 339.] FEDERAL LEGISLATION. 335
a new and useful invention by the patentee. That may,
and often does, prove not to be the truth. The Commis-
sioner makes a certificate of the prima facie right of the
patentee to the exclusive use of what he alleges to be his
own originally, and to which the patent gives exclusiveness
of use in so far only as the property really existed in the first
instance, and before the right was protected. The govern-
ment does not warrant the act of the Commissioner." The
certificate is a convenient species of evidence of the claim, and
the length of time that the right has been asserted. When
employed to show the date of filing claim, and other facts
which do not usually appear in the certificate, as issued in
course, an exemplification of the whole record should be de-
manded. Whenever convenient, the defendant should for the
greater caution examine the original file, with every paper in
it. The papers contained in the file (excepting assignments,
which may be found recorded in their appropriate books)
constitute the sole record. This is a perpetual, intrinsic,
and exclusively admissible testimony of all the transactions in
the case. The slightest error of the transcript may materi-
ally affect important rights.”
§ 339. It was held in the Court of Metz, in France, in
1861, in the case of Somborn v. Menser et al.,” that the deposit
of a trade-mark under the law of 1857 (which our act resem-
bles in many features) creates a presumption in favor of the
depositor, and nothing more than a presumption, which may
be rebutted by proof that other manufacturers previously used
the same mark for the same class of merchandise. Curry-
combs, bearing the mark of a horse, had been seized. The
evidence showed that the said mark had been used in Ger-
many for nearly a century, and had long before the date of
the suit fallen into the public domain, even in France, and
was notoriously employed by the manufacturers of Paris to
designate certain articles of hardware. The proof of foreign
18 Opinions of Attorneys-General, 277.
2 See Smith v. Reynolds, 10 Blatch. 85, 100; 3 Off. Gaz. 218, 214; 18
Blatch. 458.
* 8 Annales, 78.
336 LAW OF TRADE-MARKS. [$ 340.
user, therefore, destroys the presumption created by regis-
tration. -
§ 340. “Trade-Mark Patent" is a false term, frequently
used to indicate the certificate given under the provisions
of this section. The phrase is illogical and mischievous. A
patent is an official document conferring a right or privilege
on some person; especially a writing securing in a person for
a term of years the exclusive right to an invention or dis-
covery. A patent is a grant, — a new creation. It makes a
right that did not previously exist, and one that must expire
with it. A trade-mark is not granted by the government.
Even if the certificate of registry should prove to be informal
and worthless, that fact would not affect the vitality of the
trade-mark at common law, but would simply deprive the per-
son using it of convenient evidence. But if a patent should
be found to lack any material allegation, or to be informal,
the patentee is left without property in his invention. The
patent is a modern contrivance; but the trade-mark is vener-
able for its antiquity, its origin being coeval with that of
property' itself. All the Patent Office does with the latter is
to recognize and record it. The erroneous use of the word
“patent,” when applied to a certificate of registry, is apt to
be the source of injury, for in such use we lose sight of a
principle. We thereby admit what is not true, i. e. that
government has conferred a right of user, and that that right
may expire at the will of the government; whereas the sym-
bol of commerce exists ea proprio vigore, by virtue of an im-
mutable law. Words are the guardians of thought, language
the amber in which are embedded and preserved precise and
subtile ideas. Words, as living powers, have a relationship to
the things they designate, and must not be taken at random.
That would be to pull the bow at a venture. Again, there
may be imposture in the use of the word “patent,” when the
correct term is “certificate of registry”; as when a man who
has registered a trade-mark for some common article of mer-
chandise stamps his goods with the mark, and adds the word
“patented,” with a date. The error may arise from igno-
rance, or, quite as likely, it is the result of a studied effort
§ 343.] FEDERAL LEGISLATION. 337
to cheat the purchaser. If ignorantly done, the legal con-
sequence may be to deprive the proprietor of the mark of
any redress for a violation of what is truly his mark; but if
intentionally done, it makes the person amenable to the pen-
alty prescribed for false marking." The following is an ex-
ample of perfect good faith in the misapplication of the word
“patented,” as is evident by the candid admissions of the
person as a party in an interference.” The dispute being as
to the priority of adoption of the word “Centennial" as a
mark for shirts, &c., the sworn preliminary statement says:
“We first commenced using the word “Centennial’ on the
10th day of March, 1872. Our shirts were then exhibited
in boxes on which were affixed our labels, represented in our
patent dated May 7th, 1872. We did not, however, label the
shirts until we received official notice that our patent was
allowed. From the date of the patent, May 7, 1872, we have
stamped our shirts thus: “Centennial, Pat. May 7th, 1872.’”
—In a case in the Supreme Court of Louisiana, the complain-
ant had inadvertently used the word “patented” instead of
“registered” on his trade-mark label; but the court held that
to be of no importance, as it could not mislead.”
§ 341. “Reproduce,” whether by his own hand or by means
of any agency or instrumentality; or whether criminally, as
is implied by the word “counterfeited,” or “copy,” as he may
innocently or ignorantly do. -
§ 342. “Colorably.”—This word was not in the act of
1870. A specious, plausible imitation is meant, although it.
may not be a close copy. -
§ 343. This statute does not create the right to judicial
remedies generally; for that right has always existed, and
occasionally has been enforced in one form or another during
1 Sect. 39 of the patent law of July 8, 1870, says that if any person “shall
in any manner mark upon or affix to any unpatented article the word ‘patent,’
or any word importing that the same is patented, for the purpose of deceiving
the public, he shall be liable for every such offence to a penalty of not less than
one hundred dollars, with costs.” Rev. Stat., sect. 4901.
* Sternberger v. Thalheimer & Hirsch, 3 Off. Gaz. 120.
* Insurance Oil Tank Co. v. Scott, 33 La. Ann. 946. —See § 72 as to the
misuse of word “patented.” - -
22
338 LAW OF TRADE-MARKS. [$ 344.
past ages. The penal portion of this section must be strictly
construed. The law gives satisfaction for infringement whether
the act of imitation be intentional or not. Under either aspect,
if one be damaged by another in the use of his trade-mark, he
is entitled to indemnification by way of compensation, although
in the absence of evidence of a fraudulent intent, he is en-
titled to no more than nominal damages.” Such a tortious
invasion of this kind of property, although unaccompanied
by special damage, is maintainable.” A strict construction
requires the plaintiff in an action on the case to prove that
the mark was not only reproduced, counterfeited, copied, or
imitated, but also that it was affixed to goods of substantially
the same class and description as those referred to in the
registration. The wrongful act will not have been consum-
mated until the trade-mark has been used, and it cannot be
used until affixed to the articles of merchandise. This is a
common-law rule. -
§ 344. The remedy given by this section is cumulative.
The party wronged has undoubtedly a right to resort to the
common law for damages sustained, independently of this
statute. The common-law remedy is not taken away by this
affirmative statute, without a negative, express or implied.”
The primary right to a satisfaction for injuries is given by the
law of nature, and the suit is only the means of ascertaining
and recovering that satisfaction. The injured party has un-
questionably a vague and indeterminate right to some damages
or other, the instant he receives the injury; and the verdict of
the jurors, and the judgment of the court thereupon, do not, in
this case, so properly vest a new title in him as fix and ascer-
tain the old one. They do not give, but they define the right.”
The wrong implied by this section is deceit. From the very
terms of the definition of deceit, there must be fraud, or the
intention to deceive, for this is the very essence of the injury.
If the party making the representation himself made a mistake,
1 Sedgwick on the Measure of Damages.
* Broom’s Commentaries on the Common Law, 3d ed., p. 88, and authori- .
ties cited.
* See Sedgwick, Stat. and Const. Law, p. 402.
* Bl. Com., book ii. chap. 29.
§ 345.] FEDERAL LEGISLATION. 339
no degree of blame can be attached to him; as, for instance,
in the use of a symbol which he did not know had been appro-
priated by another as his trade-mark; and, in that case, the
principal feature to entitle the plaintiff to anything more than
mere nominal damages would be wanting. In general, the
representation must be malo animo; but whether the party
making it is himself to gain by it is wholly immaterial, nor
is it necessary that the intent should be to defraud him to
whom such false and fraudulent representation is made.” It
is no answer to a suit for the violation of a trade-mark, that
the simulated article is equal in quality to the genuine.” The
injury is committed when one affixes the mark of another to
articles of merchandise, and sells, or attempts to sell, said
articles as the product of that other person.
§ 345. Remedy is a figurative expression, which signifies
the means employed under the provisions of law to enforce a
right, or to redress an injury. It is a maxim of the law that
there is no wrong without a remedy, - Ubi jus ibi remedium;4
and in theory, at least, this is indisputable. If one have a
right, he must have the means to vindicate and maintain it;
for want of a right and want of a remedy are in effect the
same; therefore, Lea semper dabit remedium.” It is said that
it is owing to these maxims that the action of trespass on the
case for the redress of torts, wrongs, and grievances owes its
origin. To avoid mistake in selecting a remedy, and con-
sequent perplexing litigation, or utter failure of a just claim,
this statute has prescribed the form of action. . Although this
form of remedy does not exist in some States, which, while
preserving the essence, have abolished the distinguishing title
and manner of expression, still in the Federal courts it remains
unchanged in form and spirit. Indeed, had not the statute
named the action, a trade-mark is such an incorporeal right,
1 Pasley v. Freeman, 3 T. R. 51.
2 Boyd v. Browne, 6 Penn. St. 310.
3 Coats v. Holbrook, 2 Sand. Ch. 586; Taylor v. Carpenter, 2 Wood. & M.
1; 11 Paige, 292; and 2 Sand. Ch. 603.
4 1 T. R. 512; Co. Litt. 197 (b). See Bac. Abr., Actions in General, B;
1 Chitty, Gen. Prac., part i. c. 1.
5 2 Ld. Raymond, 953; Willes, 597.
340 LAW OF TRADE-MARKS. [$ 347.
that the violation of it by acts indirectly and consequen-
tially injurious could not have looked to any other kind of
legal redress. The equitable remedies of injunction, account,
destruction of counterfeit marks, &c., are equally unaffected
by the language of this statute.
§ 346. The first remedy prescribed is an “action on the
case,” sometimes called “trespass on the case,” which is the
same remedy that the common law affords.” The rules of
pleading in this action are comparatively few and simple. It
is founded upon the mere justice and conscience of the plain-
tiff’s case, and is in the nature of a bill in equity, and in effect
is such. Whatever will, in equity and conscience according
to the circumstances of the case, bar the plaintiff's recovery,
may, in this action, be given in evidence, because the plain-
tiff must recover, upon the justice and conscience of his case.”
To entitle the plaintiff to judgment, he must prove that the
infringement has been consummated, which cannot be true
unless the simulated mark has actually been affixed to goods.
of the same description as those to which he shall have appro-
priated the mark. But nevertheless, at any stage of the com-
mission of the wrong, the owner of a lawful trade-mark has his
remedy in equity by injunction against all persons, principals,
workers, and agents; and the false marks, brands, stamps,
labels, or plates may be decreed to be delivered up and de-
stroyed under the direction of an officer of the court; and
compensation may be decreed, provided the legal title be clear,
for courts of equity will not interfere in doubtful cases.
§ 347. Caution to be observed. — Before rushing into litiga-
tion under the assumed sanction of this act, the aggrieved
proprietor of a trade-mark should be cautious. His rights
must be based upon a strict compliance with all the require-
ments of the law. The particular articles to which he has
affixed his symbol should be described with clearness, lest
under a loose and indefinite description there be loopholes
through which a pirate may creep with impunity, under the
strict construction to which the penal nature of this section
1 Lord Mansfield, in Bird v. Randall, 3 Burr. 1353.
* See title “Remedies,” Chapter IX
§ 348.] FEDERAL LEGISLATION. 341
entitles him. To make the defendant liable, it must be shown,
not only that he used the plaintiff's mark, but also that he
applied it to the same kind of goods, for the purpose of selling
them. If A. should have a mark for ladies’ parasols, and B.
should copy that mark, and affix it to a parasol not for sale,
but merely as a fancy design, then the trade-mark will not
have been pirated, for no pecuniary damage will have been
inflicted; but if B., being in the same trade with A., put that
mark upon a parasol exposed in his shop-window, to invite
custom by means of that mark, that would be presumptive
evidence of fraudulent intent, and the plaintiff should have
nominal damages. Parties must not be misled by a fancied
analogy of a trade-mark to a patent for an invention or dis-
covery. The patentee has a grant of “the exclusive right to
make, use, and vend’” his invention or discovery during a lim-
ited term; and any one who shall make, use, or vend such
invention or discovery without the license of the owner of the
patent, will have committed a wrong on the said owner: for
many inventions are of simple machines, which any one might
make for himself, and thus defeat the patentee’s just monop-
oly; and so might discoveries be easily applied when once
made. To copy a patented invention, except for the purpose
of philosophical experiment, would be an infringement." But
one may with impunity copy the symbol which another has
adopted as his trade-mark, for there is not any right of prop-
erty in the mere representation of that symbol; just as he
might reproduce, copy, or imitate the autograph of another,
as an illustration of the signature of a distinguished man.
For the symbol in the abstract there is no protection: for the
symbol in the concrete, i.e. as applied to the thing that is
for sale as an indication of genuineness of the product, there
is ample protection. -
§ 348. When a Trade-Mark is debarred from Protection. —
“Sect.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 article injurious
in itself, or which mark has been used with the design of
1 Curtis on Patents, “Infringement.”
342 LAW OF TRADE-MARKS. [$349.
deceiving the public in the purchase of merchandise, or under
any certificate of registry fraudulently obtained.”
§ 349. “ Unlawful Business.”— To entitle one to favorable
judicial interposition, in case of infringement, it is not only
essential that the symbol claimed be his mark of manufacture
or commerce; but the business in which it is used by him
must be lawful. It is a broad principle of law that all trans-
actions in violation of morality, and founded upon conditions
contra bonos mores, are void. All duties enjoined by the
divine law are not enforced, indeed, by the common or by
the statute law, not only because the forms or modes of pro-
ceeding do not enable human tribunals to adjust nice ques-
tions of morals, but because strict rules as to ethical questions
would tend to destroy freedom of opinion, and to afford
opportunities for persecution. But no agreements to do acts
forbidden by the law of God, or which are manifestly in
furtherance of immorality and tend to contaminate the public
mind, are tolerated, or can be enforced. Thus, if it be shown
that the plaintiff's trade-mark is used by him to stamp obscene
publications, or articles used only in the commission of acts
of vice, and the defendant has pirated the trade-mark to palm
off similar publications or articles, the plaintiff could not
recover damages. Two general maxims would be enforced
against his demand,-Ea: turpi contractu non oritur actio, and
In pari delicto, potiorest conditio defendentis. Any business
which violates the rules of public policy is unlawful; yet, as
Mr. Justice Story says," public policy is in its nature so un-
certain and fluctuating, varying with the habits and fashions
of the day, that it is difficult to determine its limits with any
degree of exactness. It has never been defined by the courts,
but has been left loose and free of definition, in the same
manner as fraud. This rule may, however, safely be laid
down, that any business which conflicts with the morals of
the time, and contravenes any established interest of society,
is void, as being against public policy. A business originally
lawful in itself may by peculiar circumstances be made un-
lawful. Thus trading with an enemy without a license from
1 See Story on Contracts, “Void on Account of Immorality.”
§ 349.] FEDERAL LEGISLATION. 343
one's own government is unlawful, for it is the policy of
war for each party to injure the other party to its utmost
ability, even though such injury be continually recoiling.
All commercial partnerships existing between citizens of two
countries at war with each other, are dissolved by war, so
that no new contract can arise between them pending such
war. Nor can an ally engage in trade with a common enemy,
without rendering himself liable to the penalty of seizure and
forfeiture of property so engaged. A business carried on in
violation of a statute is unlawful, whether that statute ea:-
pressly prohibit or enjoin an act, or impliedly prohibit or
enjoin it, by affixing a penalty to the performance or omission
thereof. Any business the object of which is the violation
of the laws of another nation should, upon principle, be
treated as unlawful, and as tainted with immorality, for no
nation should connive at the infraction of the just laws of
another. Honesty is the true policy of nations as well as of
individuals, even if the higher obligations of morality were
to be disregarded by the brotherhood of nations, every day the
more closely drawn together by a community of interests.
This being a commercial statute, it is not improbable that
Congress meant to give to the term “unlawful” a compre-
hensive scope. At all events, courts should require the en-
forcement of the strict rules of morality in the application
of this penal provision. In two early cases in the Patent
Office, the applicants set forth that they manufactured boots
for the Southern trade. The places of business were in the
State of Massachusetts, and the merchandise to which the
proposed trade-marks were to be affixed was expressly in-
tended for sale in the States lately in rebellion against the
United States. No doubts would have arisen of the entire
lawfulness of the business of the applicants, but for certain
indicia of bad faith. On the fronts of the legs of the boots of
one party was stamped as a trade-mark the likeness of Rob-
ert E. Lee, with a copy of his signature, accompanied with
six stars. The Office refused registration on two grounds:
1st. That the use of said likeness and the stars, signifying the
States that led off in the rebellion, tended to foster prejudice
344 LAW OF TRADE-MARKS. [$ 351.
and keep alive a sectional feeling; 2d. That the concealment
of the true origin of the manufacture was an attempt at im-
position upon the people of the South. The other case was
rejected upon substantially the same grounds. Under the
peculiar circumstances, the business might well be held to
be unlawful within the meaning of the statute. If Southern
manufacturers had been the applicants, the Office would have
made allowances for the admiration entertained for the mem-
ory of gallant officers, however mistaken the cause in which
they had been engaged, and probably would have granted
the registry.
§ 350. Any Article Injurious in Itself. — This obviously
means any article designed for an evil purpose, as that instru-
ment of the assassin, the slung-shot, the very possession of
which, with intent to use, is made a felony in the State of
New York, and other places. Such a weapon is not recog-
nized as a legitimate means of defence, and is not deemed by
the law to be susceptible of application to any good purpose.
Poison, dynamite and other explosives, deadly weapons such
as are used in honorable warfare, intoxicating liquors, and
many other articles, may be perverted from lawful purposes,
but they are not per 8e unlawful; but adulterated food, as
flour containing gypsum, confectionery containing terra alba
or other noxious ingredients, and a myriad of other unlawful
articles of merchandise destructive of the health of consumers
and the morals of producers, are injurious per se.
$ 851. Deceiving the Public in the purchase of merchandise,
as by acting a lie by means of a false indication of origin,
that the vendor may obtain the benefit of the reputation that
certain goods may have, as when the signs on cigars made in
New York indicated that they were made in Havana; 1 or
when a quack medicine is held forth as a panacea for an in-
congruous group of diseases; * or when a man by the use of
his own name attempts to impose upon the public his goods
as those of another; * or when he falsely represents an article
1 Palmer v. Harris, 60 Penn. 156.
* Fowle v. Spear, 7 Penn. L. J. 176.
* Croft v. Day, 7 Beav. 84.
§ 351.] FEDERAL LEGISLATION. 345
to be protected by a patent; * or in many other cases that
might be cited to illustrate this principle of the common law.
And it will be no answer to the charge of deceiving the
public that the deceit was really for the benefit of the public.”
Truth is the standard required. The court said, in Matsell v.
Flanagan,” that the enforcement of the doctrine that trade-
marks shall not be simulated does not depend entirely upon
the alleged invasion of individual rights, but as well upon the
broad principle that the public are entitled to protection from
the use of previously appropriated names of symbols, in such
a manner as may deceive them, by inducing to the purchase
of one thing for another. In another case it was held that
a mere false or exaggerated statement in a public advertise-
ment, tending to recommend the manufactured article to the
public, will not deprive the owner of a right to be protected
in the exclusive use of his trade-mark; and the court further
held, that the fraudulent imitator of the mark could not be
heard to raise the objection.” It has also been held, that the
fact that a trade-mark bears a fictitious name as the name of
the manufacturer of the article, does not affect the owner's
right to protection, when not used with a fraudulent inten-
tion to deceive the public.” Hoffman, J., said: “It is con-
stantly insisted, and the position is sanctioned by some judges,
that when the article in question is innocuous, or in some
degree useful, no absurd panegyric, or extravagant price, is
a reason for denying the interference. In short, as counsel
once said before me, if a man should compound tallow with
some high scent and beautiful coloring-matter, and term it
‘The Ointment of Immortality, he has a right to appropri-
ate so much of the public credulity as he can to this designa-
tion.”" These remarks do not inculcate as high a standard
of morals as might be expected from so learned and upright
a jurist; and in justice it must be said that they do not rep-
1 The Leather Cloth Co. case, 11 Jur. (N. s.) 513.
* Partridge v. Menck, 1 How. App. Cases, 558.
8 2 Abb. Pr. (N. s.) 459.
4 Curtis v. Bryan, 2 Daly, 212; 36 How. Pr. 33.
5 Dale v. Smithson, 12 Abb. Pr. 237.
* Fetridge v. Merchant, 4 Abb. Pr. 156.
346 LAW OF TRADE-MARKS. [$ 352.
resent the sentiments generally entertained by judges. It
was said by E. Darwin Smith, J., that individuals should not
themselves attempt, or allow, any imposition upon the public
by the false and fraudulent use of their genuine labels, de-
vices, or names, for the sale of spurious or simulated articles.
So when the plaintiffs sold to the defendant about twenty
thousand empty seed-bags with the label of the plaintiffs
upon them, and two thousand papers or bags of seeds bearing
the same label, and so enabled the defendant to impose upon
the public, which he did by violating his promise to fill the
empty bags with seeds of good quality, the plaintiffs in effect
deceived the public and were left without remedy." When
the defendant filled the empty seed-bags with seeds of a poor
quality, the purchasers were defrauded, and through the fault
of the plaintiffs.
§ 352. To guard as much as possible against the danger of
deceiving the public, the Office avails itself of the implied
judicial power granted to it by Section 3, and endeavors to
fathom the motives of applicants for registration. It is im-
material whether the intention of fraud actually exists in the
mind of the applicant, if there is a reasonable probability that
the public may be misled. Therefore, when an application
was made for the registry of the words “American Sardines,”
as a trade-mark to be placed upon boxes ordinarily used for
the sardines of commerce, the case was rejected; and that,
even although it was alleged that the native fish — which is
not a sardine—is equal in nutritious qualities and delicacy of
taste to the imported article.” The appearance of the package
and the name were calculated to induce the public to buy one
thing instead of another. In another case the proposed trade-
mark consisted of the words “American Sterling,” intended
to be stamped on goods made from a peculiar metallic alloy
closely resembling real silver both in color and weight. The
Special Examiner declined to recognize the words as a valid
trade-mark, for the reason that they were calculated to mis-
lead. An appeal, pro forma, was taken to the Commissioner
1 Bloss v. Bloomer, 23 Barb. 604.
* Re The American Sardine Co., 3 Off. Gaz. 495.
§ 353.] FEDERAL LEGISLATION. 347
in person. He held thus: The mark may or may not mis-
lead. That is a matter to be determined in the future,
according to circumstances which may arise. A case of
prima facie right to registry has been made out. — A case in
a Circuit Court of the United States shows how equity re-
gards this matter of “deceiving the public.” A trade-mark
was claimed in the word “Capcine,” purporting to be the
real name of a powerful medical remedy, whereas no such
article existed. An injunction for a fraudulent imitation of
the alleged mark was refused." So, in England, a bill was
dismissed on the ground that the plaintiff could have no right
to the use of a name as a trade-mark on an article which was
not in fact known to the public by that name, but was used
by him to deceive the public.” In another case it was held
that a use by the defendants of a mark that had been aban-
doned was necessarily to mislead and deceive the people
purchasing as to the source of production and quality of the
article bearing it.” Many instances of like decisions might
aptly be cited in this place, but the foregoing sufficiently
illustrate the point for the time.
§ 353. Certificate fraudulently obtained. — The act of 1870
used the words “any trade-mark which has been fraudulently
obtained,” 4 thus carrying out the false theory that a trade-
mark could be obtained from the government, whereas it is
only the certificate of registry that can be obtained. It is
always a proper subject of defence, that the certificate, relied
on as prima facie evidence of title, was obtained by fraudulent
means of any kind. The registration may be regarded as a
contract between the United States and the registrant; and as
fraud vitiates every contract into which it enters, the formal
certificate may turn out to be a mere nullity. Any false en-
try, prejudicial to the rights of another, is actionable under
Section 9 of this act of 1881; as, for example, a pretended or
fraudulent assignment set up to vest title in an applicant. As
1 Seabury v. Johnson, 14 Blatch. 262.
* Cotton v. Gillard, 44 L. J. Ch. 90.
* Blackwell v. Dibrell, 14 Off. Gaz. 633; 3 Hughes, 151.
* Rev. Stat., sect. 4943. .
348 LAW OF TRADE-MARKS. [Š 854.
to the one claiming title under such circumstances, the trade-
mark would not be “lawful,” any more than the title of the
holder of a promissory note with a forged indorsement, or
one given for a consideration void at law. As to the meaning
of this phraseology, fraudulently obtained, take the case of
Fetridge v. Wells, in which Duer, J., said that in the mode
of acquiring his title the plaintiff was guilty of a deliberate
attempt to deceive the public. The written agreement between
him and the person whose recipe he purchased stated that the
consideration of the transfer was the sum of $7,500, to be paid
in cash, and that of $2,500, in promissory notes falling due at
different periods. This statement, though not wholly false,
was a very great exaggeration. Of the $7,500 to be paid in
cash, not one dollar was paid, or meant to be paid. The $2,500
in notes was the whole consideration of the transfer. The
advertisement to the public that the plaintiff had paid $10,000
for the recipe was intended to create a false impression of the
real value of the purchase. The agreement was framed to
silence the doubts of those who might inquire, and to be used
as conclusive proof that the advertisement was true. “I will
not say,” said the judge, “that the title thus acquired is not
valid in law, but I cannot believe that it deserves to be aided
by an injunction from a court of equity.”
§ 354. It may safely be assumed that this Section 8 is but
a reaffirmance of the doctrines of the common law, in that
it is well settled that a claim founded upon a transaction
which is either malum prohibitum or malum in se cannot be
enforced in an action of any kind.” It has been held that an
agreement on which an action was brought was invalid, as
“contrary to public policy, and to open, upright, and fair deal-
ing.” A contract to do an illegal and immoral act is invalid,
and will not be enforced in courts of justice, either of law or
equity.” Fraud avoids a contract ab initio, both at law and
in equity, whether the object be to deceive the public, or third
persons, or one party endeavors thereby to cheat the other;
1 4 Abb. Pr. 144; 13 How. Pr. 385.
2 Eberman v. Reitzell, 1 Watts & Serg. 181. See also 18 Pick. 472.
3 Forsythe v. State, 6 Ham. 21; Chitty on Contracts, 678, and cases there cited.
§ 356.] FEDERAL LEGISLATION. - 349
for the law will not sanction dishonest views and practices, by
enabling one to acquire, through the medium of deception, any
right or interest. It is a question whether the title of the
plaintiff can be inquired into by the defendant upon a plea of
the general issue; or, indeed, whether he can examine a title
not claimed under himself. Of course, if the plaintiff do not
make out a prima facie title to the trade-mark alleged in the
declaration, he must fail in any event. The difficulty of treat-
ing this question may be overcome, in this particular instance,
by the answer that this section contemplates a case where
a trade-mark has been registered by means of fraudulent rep-
resentations. -
§ 355. Damages for False Representations.—“Sect. 9. That
any person who shall procure the registry of a trade-mark, or
of himself as the owner of a trade-mark, or an entry respect-
ing a trade-mark, in the office of the Commissioner of Patents, sº
by a false or fraudulent representation or declaration, orally or
in writing, or by any fraudulent means, shall be liable to pay
any damages sustained in consequence thereof to the injured
party, to be recovered in an action on the case.”
§ 356. New Right of Action. — At common law, the wrong-
doer would not have been liable unless he had actually used
the trade-mark in palming off goods as the manufacture or
merchandise of another; although equity would have enjoined
against the contingency of use. This is an action upon the
case for deceit, fraud being of the essence of the injury. Two
main points must be proved : the fraudulent nature of the
wrong committed by the defendant, and the nature of the
injury suffered by the plaintiff. The nature of the wrong to
be proved in a case of actual piracy is well defined by Wilde,
C. J., in Rodgers v. Nowill. He says: “Has more ever been
necessary to be proved, in actions of this description, than that
the plaintiff, being a manufacturer, has been accustomed to
use a certain mark to denote that the goods so marked were of
his manufacture, that such mark was well known and under-
stood in the particular trade, and that the defendant had
adopted the mark, and sold goods bearing it, as and for the
1 5 C. B. 109; 5 Man., Gr. & Sc. 109.
2.
350 -- LAW OF TRADE-MARKS. [$ 358.
plaintiff’s goods, with intent to deceive?” On these grounds,
the action was held not to be maintainable in Singleton v.
Bolton, for there no sale was proved to have been made by
the defendant of a medicament (yellow ointment) of his own
under the name or mark of the plaintiff, but both the plaintiff
and the defendant used the name of the original inventor
(Dr. Johnson), and no evidence was given of the defendant
having sold his ointment as if it had been prepared by the
plaintiff.” Probably, by virtue of this section, the real owner
of a mark would be entitled to nominal damages, sufficient to
establish his title, the same as in ejectment, without proof of
actual injury, for injury might well be inferred from the fact
of false or fraudulent representations. The true owner's loss
of time in procuring registry, the expense attending the inter-
ference made necessary by the fact of a plurality of claimants,
and many other circumstances, – as, for example, the loss of
reputation in the market, — might be urged as proper grounds
upon which to base a demand for damages.
§ 357. Rights are not lost by Registration. —“Sect. 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 provis-
ions of this act had not been passed.” g
A proprietor of a trade-mark does not impair any common-
law right by registration. He retains all that he had, waives
nothing, and gains additional remedies. In a suit, he may
combine claims for infringements antecedent to registering
with those that occurred subsequently thereto.
§ 358. Claim to a Trade-Mark unaffected by Expiration of
Registry. — Suits in Federal Courts between Citizens of the same
State. — “Sect. 11. That nothing in this act shall be construed
as unfavorably affecting a claim to a trade-mark after the term
of registration shall have expired; nor to give cognizance to
any court of the United States in an action or suit between
citizens of the same State, unless the trade-mark in contro-
versy is used on goods intended to be transported to a foreign
1 3 Doug. 293.
* Lloyd on Trade Marks, “Remedies against Piracy.”
§ 360.] FEDERAL LEGISLATION. 351
country, or in lawful commercial intercourse with an Indian
tribe.”
§ 359. Unfavorably affecting a Claim. — This means that,
after the term, the owner is relegated to his common-law right.
As registration cannot create or grant a trade-mark, the owner
thereof cannot be deprived of his property therein by a mere
expiration of a species of evidence.
§ 360. Trade-Mark “on Goods . . . to be transported,” etc.
— The meaning of this language may not instantly be per-
ceptible. Whose goods? Certainly the goods of the lawful
owner of the trade-mark. The words are, that “the trade-
mark in controversy is used ”; not that the counterfeit or
colorable imitation of it is so used. The words “lawful
commercial intercourse ’’ assist a solution of the apparent
difficulty. The lawful owner and trader is the one who is
to be protected. If such a one find that a citizen of his own
State is infringing, he may call on a federal court for relief.
The instant that the party complained of shall “reproduce,
counterfeit, copy, or colorably imitate any trade-mark regis-
tered under this act and affix the same to goods of substan-
tially the same description,” he is liable to an action for
damages and an injunction, even though he and the injured
party be citizens of the same State. The purpose is not law-
ful where false representations are made. It is a trespass
the moment a false signal is raised, for the false merchandise,
once launched, is in a condition to float off into foreign com-
merce in competition with honest merchandise. All that a
complainant need show is that he uses his registered mark
on goods intended by him to be transported, although yet in
his shop, or warehouse. It would be a mockery of justice to
require that the owner prove that his dishonest rival intended
to send his falsely-marked goods to a foreign country. That
he ever so intended would probably not be manifest until
too late. This statute is in the interest of fair dealing, and
its spirit and reason must control. — Since the foregoing was
written, in the United States Circuit Court for the Southern
Dist. of N. Y., in 1884, Wheeler, J., said: “The goods on
1 Luyties et al. v. Hollender et al., 21 Fed. R. 281.
N
352 LAW OF TRADE-MARKS. [$ 361.
which the trade-mark in question is used are not intended to
be transported to any foreign country, nor for any Indian
tribe; but are mineral waters for consumption in the city of
New York; and the parties are all citizens of the State of
New York.” For that reason, a preliminary injunction was
refused. – In the same court, in 1885, Wallace, J., said:
“ Unless the complainant's trade-mark is used on goods in-
tended to be transported to a foreign country, by the terms
of the act of Congress, the court can take no cognizance of
the wrong in a suit between citizens of the same State. If it
is so used, the court will not be concluded by the result of an
inquiry whether it is used with an intent to mislead pur-
chasers in the country where the goods are to be ultimately
sold ; because the goods may be sold here or in some country
other than the one where they are to be ultimately sold, and
the act of Congress contemplates a complete protection to the
right which it creates.” This decision affirms the construc-
tion contended for.
§ 361. Transfers of Trade-Marks and recording of the
same. — “Sect. 12. That the Commissioner of Patents is
authorized to make rules and regulations and prescribe forms
for the transfer of the right to use trade-marks and for record-
ing such transfers in his office.”
This tautological provision was inserted by the sub-com-
mittee aforementioned. The Commissioner has shown his
appreciation of one part of it by saying, in Rule 15, con-
cerning registration, that “No particular form of assignment
or conveyance is prescribed, but the trade-mark should be
identified by the certificate number.” The rest of that rule
reads thus: “The right to the use of any trade-mark is
assignable by any instrument of writing,” and such assign-
ment of a registered trade-mark must be recorded in the
Patent Office within sixty days after its execution, in de-
fault of which it may be void as against any subsequent
1 Glen Cove Manuf. Co. v. Ludeling, 22 Fed. R. 823.
* As matter of law, a trade-mark, whether registered or not, may be assigned
or transferred by parol. This section is probably meant to apply to cases of
recorded trade-marks only.
§ 362.] . FEDERAL LEGISLATION. 353
purchaser or mortgagee 1 for a valuable consideration, with-
out notice.” ” -
§ 362. What trade-marks are intended to be embraced by
Section 12? This section relates to form rather than sub-
stance. At common law, the transfer of such a right was
usually an incident of the assignment of the good-will of a
business, or the stock in trade of a manufacturer or merchant.
It was sometimes a matter of doubt whether the successor of
a trading firm, by the general transfer of the good-will and
stock (whether the same were made voluntarily or by opera-
tion of law), carried with it also the right to the use of an
established trade-mark. To remove all such doubt, it was de-
sirable that the assignee of the mark might place his evidence
of title upon record, and the most convenient place of record
is the Patent Office. Assignments of common-law marks are
sometimes recorded, it being the practice of the Office to
record any instrument of the kind, without looking into the
chain of title; just as a recorder of deeds will without hesi-
tation record any conveyance, provided the fees be paid. Yet
no one could pretend that the mere fact of transcribing into
official records could breathe life into dry bones. Lea non cogit
ad impossibilia.”—Particular attention is invited to the phra-
seology of this twelfth section, especially the words “forms,”
“right to use,” and “trade-marks.” Forms may be made
for the transmission of legal, tangible rights; but before the
transfer can be made, the right must exist. How does such
right exist? This question can best be answered by citing
1 A patent may be mortgaged; but it is not understood how the intangible,
incorporeal, perhaps personal right of use of an emblem of commerce can be
mortgaged.
2 This provision for the forfeiture of legal rights is, beyond doubt, ultra vires.
It seems to have been inspired by a perusal of sect. 36 of the law of 1870 (Rev.
Stat., sect. 4898), in relation to grants, assignments, and conveyances of patents,
which are void as against any subsequent purchaser or mortgagee for a valu-
able consideration, unless recorded within three months from date, or it may
partly owe its origin to Sect. 89 of the law of 1870 (Rev. Stat., sect. 4955), re-
quiring instruments of assignment of copyrights to be recorded in the office of
the Librarian of Congress within sixty days from date.
* The remainder of this section (by its original numbers) was cited with
approbation by Colt, J., in the U. S. Cir. Ct., Dist. of R.I., in 1884. Morgan
v. Rogers, 30 Alb. L. J. 135. 3
2
354 LAW OF TRADE-MARKS. [$ 362.
the opinions of learned judges and chancellors, who have had
occasion judicially to consider the subject. The Court of Ap-
peals of the State of New York, in the case of The Congress
and Empire Spring Company v. The High Rock Congress
Spring Company," in 1871, passed upon this very point, and
said: “A property in a trade-mark may be obtained by trans-
fer from him who has made the primary acquisition, though
it is essential that the transferee should be possessed of the
right either to manufacture or sell the merchandise to which
the trade-mark has been attached.”—In the same case, in the
court below, it was held that property in trade-marks is not
property in the words, letters, marks, or symbols, as things,
or as signs of thought, or as productions of the mind, like that
of patent or copyright; but simply and solely property as a
means of designating things, – the things thus designated
being the production of human skill or industry, whether of
the mind or the hands, or a combination of both ; and this
property has no existence apart from the thing designated, or
separable from its actual use in accomplishing the present
and immediate purpose of its being. In The Dixon Crucible
Co. v. Guggenheim,” in 1870, the court cited authorities, and
said, that the true rule to be deduced from these cases would
appear to be this: that the property or right to a trade-mark
may pass by an assignment, or by operation of law, to any
one who takes at the same time the right to manufacture or
sell the particular merchandise to which said trade-mark has
been attached. As a mere abstract right, having no reference
to any particular person or property, it is conceded that it
cannot exist, and so cannot pass by an assignment, or descend
to a man's legal representatives. To the same effect is also
the opinion of Daly, Ch. J., in Lockwood v. Bostwick,” in 1869.
In the Supreme Court of California, in Derringer v. Plate,4
in 1865, it was held that a person’s right to a trade-mark
accrues to him from its adoption and use for the purpose of
designating the particular goods he manufactures or sells, and
1 57 Barb. 526, and 4 Am. L. T. R. (St.) 168.
2 3 Am. L. T. R. (St.) 288, and 2 Brewster, 321.
* 2 Daly, 521. 29 Cal. 292.
§ 363.] FEDERAL LEGISLATION. 355
has no value except when so employed, and indeed has no
separate abstract existence, but is appurtenant to the goods
designated. In Walton v. Crowley," in the United States Cir-
cuit Court, S. Dist. of New York, in 1856, the plaintiff was the
assignee of the trade-mark and of the good-will of the trade.
There are other American decisions all tending the same way;
and it is believed that not one can be found which positively
affirms a contrary notion. As to English decisions, in the
Leather Cloth Companies case,” in the House of Lords, in
1865, Lord Cranworth said that the right to a trade-mark
may in general, treating it as property, or as an accessory of
property, be sold and transferred upon a sale and transfer of
the manufactory of the goodst on which the mark has been
used to be affixed, and may be lawfully used by the pur-
chaser; and in that opinion the remainder of the court con-
curred. Vice-Chancellor Wood, in Ainsworth v. Walmesley,”
in 1865, said, substantially: Inasmuch as the court protects
the owner of the mark, he is entitled to authorize another,
when he hands over his business to him, to place that mark
on his goods. Thus the mark is a thing bought and sold,
a right recognized and protected in a court of equity, which
can be disposed of for money. It is, therefore, in that sense
of the word, property. In the Rolls Court, in Hall v. Bar-
rows,” in 1863, it was held that a trade-mark could prop-
erly be sold with certain iron-works; and that it constituted
a part of the partnership assets, and should be so treated.
In all these cases — and they lay down the settled law — the
transfer of the trade-mark was concurrent with the transfer of
the business or goods. If by any possibility they be deemed
not sufficiently conclusive, the reader for himself may examine
other authorities.
§ 363. Reasons why an Abstract Symbol cannot be trans-
jerred as a Trade-Mark. — If the mere representation of a
symbol adopted as a trade-mark could be changed from the
1 3 Blatch. 440. 2 11 Jur. (N. s.) 513.
8 L. R. 1 Eq. 518; 35 L. J. Ch. 352; 12 Jur. (N. s.) 205; 14 L. T. (N. s.) 220;
14 W. R. 363.
4 10 Jur. (N. s.) 55. See also The Collins Co. v. Cohen, 3 K. & J. 428; Woth-
erspoon v. Currie, 23 L. T. R. (N. s.) 443; 18 W. R. 942.
356 LAW OF TRADE-MARKS. [$ 363.
possession of one person to that of another, in the same man-
ner as is a patent for a design, or a copyright in a book or
print, such a transfer would be productive of fraud upon the
public. It is a matter of no consequence to the purchaser of
an article protected by a design-patent as to who made it, nor
to the purchaser of a book as to who published it; for the
value of the thing could be tested by its intrinsic excellence.
But a trade-mark is an index pointing to an article as the
product of a certain person or place. The law would not
permit it to be used as an instrument of falsehood. Take
the case of Samuel v. Berger 1 as an illustration of judicial
treatment of such a use of a mark. The plaintiffs said
that one Brindle, a watchmaker, had acquired a reputation
as such, and that all watches made by him were stamped
with his name; that Sylvester J. Samuel purchased from
Brindle the right to stamp Brindle's name on watches made
by Samuel ; and that Samuel assigned to the plaintiffs the
right to stamp Brindle's name on watches made by them.
The court held that the plaintiffs had no case of which a
court should take cognizance. In the case of the Leather
Companies.” Lord Kingsdown said, that, if an artist or an
artisan has acquired, by his personal skill and ability, a rep-
utation which gives to his works in the market a higher
value than those of other artists or artisans, he cannot give to
any other person the right to affix his name or mark to their
goods; because he cannot give them the right to practise a
fraud upon the public. In the same case, the Lord Chan-
cellor regarded such an act as an imposition on the public.
He put this hypothetical case. Suppose an individual, or a
firm, to have gained credit for a particular manufacture, and
that the goods are marked or stamped in such a way as to
denote that they are made by such person or firm, and that
the stamp has gained currency and credit in the market and
become of great value (there being no secret process or in-
vention), could such person or firm, on ceasing to carry on
business, sell and assign the right to use such name and
1 24 Barb. 163; 13 How. Pr. 342; and 4 Abb. Pr. 88.
* Ubi supra.
§ 365.] FEDERAL LEGISLATION. 357
mark to another firm carrying on the same business in a
different place? Suppose a firm of A. B. & Co. to have been .
clothiers in Wiltshire for fifty years, and that broadcloth
marked “A. B. & Co., Wilts,” has obtained a great reputa-
tion in the market, and that A. B. & Co., on discontinuing
business, sell and transfer the right to use their name and
mark to a firm of C. D. & Co., who are clothiers in Yorkshire,
would the latter be protected by a court of equity in their
claim to the exclusive right to use the name and mark of
A. B. & Co. 2 “I am of opinion that no such protection could-
be given,” said he.
§ 364. On the formation of a partnership with one who
owns a trade-mark, whether it becomes an asset of the part-
nership or not, depends on contract." Where one allows the
use of his mark on goods manufactured by the firm, that fact
alone does not operate as a transfer of it, but it may remain
the sole property of the individual owner.”
§ 365. A Section that has no Meaning. — “Sect. 13. That
citizens and residents of this country wishing the protection
of trade-marks in any foreign country, the laws of which re-
quire registration here as a condition precedent to getting
such protection there, may register their trade-marks for that
purpose as is above allowed to foreigners, and have certificate
thereof from the Patent Office.”
This section, which has the same paternity as that last pre-
ceding, is a curiosity of legislative literature. Why wish the
protection of a trade-mark in a foreign country 2 Because one
has a trade-mark in such country. How 2 By the only possi-
ble means, that is to say, by having his peculiar emblem, his
commercial signature so to speak, affixed to vendible com-
modities. Indeed! then he comes under the first section of
this act, which applies to “owners of trade-marks used in
commerce with foreign nations, . . . provided such owners
shall be domiciled in the United States.” If a citizen and
1 See ante, § 57, “Title to a Trade-Mark by Assignment.” Bury v. Bedford,
10 Jur. (N. s.) 503; 4 De G., J. & S. 352; 33 L. J. Ch. 465; 10 L. T. (N. s.) 470;
12 W. R. 726.
2 Kidd v. Johnson, 100 U. S. 617.
358 LAW OF TRADE-MARKS. [$ 365.
resident here, is he not domiciled here? True, but may not
all that be, and yet he have a commercial establishment in
such foreign country? Undoubtedly. And may he not by
agents or otherwise conduct business exclusively abroad, that
is, have no commerce “with ” a foreign nation ? Certainly,
for the preposition “with ” implies union, conjunction, connec-
tion, transition, a sending of merchandise from this country to
that; but then, if he have a commercial establishment, by the
laws of all civilized nations he is considered to be, commer-
.cially speaking, a citizen of that nation. But suppose an ex-
treme exceptional case to which this section would apply, what
then? Well, take that case, and turn back to the first section.
It says, “ or located in any foreign country,” (let the absurd
words “or tribes” be omitted,) “which, by treaty, convention,
or law, affords similar privileges to citizens of the United
States, may obtain registration.” If registration here be “a
condition precedent to getting such protection there,” the
first section provides the means. Quod erat demonstrandum.
Before quitting the consideration of this section, the per-
plexed student may ask the meaning of the words, “for that
purpose as is above allowed to foreigners.” If anything,
they mean, to satisfy a commercial law of another country
with which the owner of the trade-mark has no commerce;
for, as is shown, if he have commerce with it, he need not
invoke the bald charity of this section. If he have not
commerce with it, then this provision is in direct conflict
with the constitutional authority “to regulate commerce with
foreign nations.” What mean the words “as is above allowed
to foreigners”? Nothing. The foreigner, as such, does not
appear on the scene. This act is in the interest of American
commerce. Commercial domicile, and not political nation-
ality, is the point. A foreigner, eo nomine, is allowed noth-
ing. He and the citizen of the United States stand on the
same footing, if not domiciled in this country. If domiciled.
here, they are equally regarded. If the foreigner's nation has
treaty stipulations with this one, or affords tantamount means
of protection, then he may take advantage of the protec-
tion of this act; and so may any one else “located ” in the
§ 367.] FEDERAL LEGISLATION. 359
reciprocating country. It does not seem possible to conceive
a case in which this section could be operative. Therefore
the certificate provided for would be a costly delusion and
a snare. The books say of a statute, that “it can do no
wrong; but it may do several things that look pretty odd,”
as Lord Holt expresses it.
§ 366. A seemingly unnecessary Act. — An act approved
August 5, 1882, provides “that nothing contained in the law
entitled “An Act to authorize the Registration of Trade-Marks
and protect the same,’ approved March third, eighteen hun-
dred and eighty-one, shall prevent the registry of any lawful
trade-mark rightfully used by the applicant in foreign com-
merce or commerce with Indian tribes at the time of the pas-
sage of said act.” This seems to be sheer surplusage. By
the act, to which this is virtually an amendment, every possi-
ble species of trade-mark embraced by the foregoing is entitled
to registration. The Patent Office has vainly sought means of
giving force to this enactment of 1882. It does not in the
slightest degree add to or take from the efficacy of the estab-
lished practice.
§ 367. Meaning of the Word “lawful” as here used. – Who
shall judge? Clearly the officer whose duty it is to register.
The validity of a so-called arbitrary symbol is a matter to be
judicially determined. He asks: Could the supposed mark be
sustained in an action or suit? Is it the common-law symbol
of commerce, which, as such, is entitled to recognition the
world over, by reason of possessing all the essential character-
istics of a trade-mark?' If either question requires a negative
answer, the application must be rejected. And it must not
only be a lawful trade-mark intrinsically, but it must, under
the present statute, be rightfully used by the applicant, in the
kind of commerce specified. The sworn statement cannot
establish a conclusion of law. Some things are without the
pale of adoption for the purpose. The following cases serve to
illustrate a general principle. An applicant desired to regis-
ter what was shown by the fac-similes and verbally described
1 See Chapter III., on “Definition and Nature of a Trade-Mark,” especially
§§ 87–89, 143.
360 LAW OF TRADE-MARKS. [$ 367.
&
as “the masonic emblem of the square-and-compass.” Ques-
tions: Could such an emblem be exclusively appropriated ?
Could it be applied to the purpose of traffic 2 Is it in the
nature of a technical mark, to be affixed to merchandise to
denote its origin or guarantee its genuineness? No. It is
the symbol of a fraternity known throughout the world, per-
vading all classes, and claiming great antiquity. As an ideo-
gram, it virtually proclaims the one using it to be a member of
a certain order of men, whether such be true or false. It ap-
peals to fraternal feelings. It has been anathematized by one
religious faith, and by many persons is held to be a sacred
thing. It is not a suitable emblem for commerce, which
avoids partisanship in religion, politics, or ethics. If now
seen on the heads of flour-barrels, where the applicant has
placed it, what meaning must it convey?. That it is the arbi-
trary sign of a certain product? No. What then? That it
is to be taken in its legitimate and ordinary sense. Words
may sometimes be valid trade-marks.” Suppose the word
“Christian” were impressed into the service of trade, would
it be tolerated? Assuredly not. Yet certain emblems, which
were primarily suggestive of a faith, or a nationality, have
ceased to be limited. The cross, for example, has been used
by Pagans as well as by Christians.” The crescent, the sym-
bol of Mohammedan faith, was a component part of a valid
mark used in trade with the Turks, as is shown by the case
of Gout v. Aleploglu, and it seems that the most bigoted
found no fault therewith.” But the masonic emblem has
not been so used, and from its nature cannot be. Case re-
jected. On appeal, Thacher, Acting Commissioner, in 1872,
said: “Applicant is a manufacturer and vendor of flour in
the city of St. Louis, Mo. He has two establishments upon
different streets, and he seeks to register, as trade-marks to be
1 Ex parte John F. Tolle, two cases.
* See ante, § 89 a.
* The order of the Red Cross now includes in its membership many nation-
alities, some of whom are Mohammedans, others perhaps fire-worshippers.
The members wear the symbol on their garb on the battle-field, as ministers of
mercy.
* 6 Beav. 69, n. ; 5 Leg. Obs. 495.
§ 367.] FEDERAL LEGISLATION. 361
used upon the barrels containing his flour, the words “Cherry
St. Mills' in one case, and “Market St. Mills’ in the other,
combined respectively with a well-known masonic emblem,
the square-and-compass. These combinations of words and
symbols, it is strenuously maintained, embrace all the requi-
sites, and come within none of the negative exceptions or lim-
itations of the law defining a legal trade-mark. Applying
the comprehensive test laid down by the Commissioner in Ea:
parte Dawes & Fanning," it is said that neither of the combi-
nations claimed is the name of a person, firm, or corporation,
or is calculated to deceive the public as to the true origin
or character of the article to which it is applied, or is generic
or descriptive of quality; and, finally, it is asserted that each,
when applied to the commodities for which it is adopted as a
trade-mark, will distinguish them from others of the same
class. The essence of these alleged trade-marks is the ma-
sonic symbol, the square-and-compass. It has already been
determined that the words alone do not possess the charac-
teristics of a legal trade-mark, and, in order to make it appear
that the addition of the square-and-compass do confer these
characteristics, it is also insisted that this masonic symbol is
not used with its ordinary signification. . . . There was a
time when the cross and crescent, and the red and white roses
of the houses of York and Lancaster, possessed as symbols
such a significance, and occupied such a place in the public
mind, in portions of the old world, as would affect common
affairs, and could not properly be disregarded, under what-
ever circumstances they should appear. If they were now
held in the same estimation in this country, who imagines
that they could be divested of their general significance so
that they could successfully be adopted to constitute trade-
marks, or parts of trade-marks, and be displayed before the
public in that capacity? The case of these masonic symbols
is in some respects different, to be sure, yet it is in impor-
tant particulars similar, and the same objections lie to their
use in the manner proposed. I am clearly of opinion, there-
fore, that the proposed combinations cannot properly subserve
1 1 Off. Gaz. 27.
362 LAW OF TRADE-MARKS. [$ 368.
the ends of a trade-mark. Among masons with whom this
token has a moral significance, its use in that capacity would
undoubtedly be regarded as a base prostitution of it to merce-
nary purposes, while with others its mystic force would often
dissipate its virtues as a trade-mark, and perhaps in some
instances place the article it appeared upon under a ban.
Decision of the Examiner affirmed,” Oct. 3, 1872. A still
fresher matter now opportunely presents itself, to reinforce
our position. It is an appeal from the Examiner. Thacher,
Acting Commissioner: “This appeal covers two applications.
The first is for the registration of the words and letters ‘Par-
son's Purgative Pills, P. P. P.,’ as a trade-mark. The decis-
ion in Blakeslee & Co.1 indicates the action that should be
taken in this case. In that case, the Commissioner held, that
the addition of the initials ‘C. O.” to “Cundurango Ointment’
was not sufficient to entitle applicants to registration. . . .
The second application asks for the registration of the words,
‘Johnson's American Anodyne Liniment, established A. D.
1810. It is claimed that the phrase, “Established A. D.
1810, is an arbitrary distinguishing mark, and that by the
addition thereof the whole is constituted a legal trade-mark.
This view of the case does not seem to be correct. The
additional phrase indicates the date of the discovery of the
liniment, or the commencement of its manufacture, and to
this extent is descriptive in nature. Any other person who
made a similar liniment the same year would have as much
right to use these particular words as the applicants in this
case. . . . The decision of the Examiner is affirmed in both
applications.””
§ 368. The effect of the foregoing and similar judgments
is to correct an error prevalent in the minds of solicitors who
have devoted themselves wholly to the practice of patent law.
That error is the improper application of the theory of combi-
nations. In reasoning from a supposed analogy, they deduce
a wrong conclusion. A technical combination in machinery
may be defined, not as a new machine, but as a new union
1 Com. Dec., 1871, p. 284.
2 Ex parte J. S. Johnson & Co., 2 Off. Gaz. 315.
§ 368.] FEDERAL LEGISLATION. 363.
of elemental parts not before brought together in that kind
of machine. The machine itself may have previously ex-
isted; and so may the separate elements of the new combi-
nation; but if those elements have not before been united
so as to produce a method of operation differing from what
had been done before in that kind of machine, what is
called a new combination is created." Therefore they think
that the combination of verbal elements, inefficacious when
single, may constitute a new, and on that account a valid,
symbol of trade. We can find applications on file, where line
has been piled upon line and precept upon precept, in the
vague idea that, because the combinations are new, they
must perforce be deemed true symbols of commerce. As
has been said in a previous chapter, the idea of invention
does not enter into the contemplation of a trade-mark. An
applicant” claimed as his mark the words “Chestnut Hill
Bourbon,” to be branded upon casks or packages contain-
ing whiskey. The Examiner questioned the right of the
claimant to the exclusive use of the words, and asked, Where
is said “Chestnut Hill”? What is the meaning of “Bour-
bon”? Is not the use of the word “Bourbon ’’ calculated to
create a wrong idea of origin? In reply to the official letter
of inquiry, a written argument of counsel and a number of
affidavits were filed. The affiants came up boldly to the task
of proving a conclusion of law, and swore that the combina-
tion of words constitute a lawful trade-mark. The argument
of the counsel affords a clew to the remarkable statements of
the party and his witnesses. We find that he treats the case
as if it were an application for a patent for an aggregation of
useful elements in a machine, or the bringing together of
various chemicals in a new composition of matter. A single
extract will suffice to show the counsel's position. He says:
“As in case of patenting a new machine, it is sufficient if this
combination of old and well-known words embrace sufficient
novelty and distinctiveness from all others, as to be readily
and easily distinguishable therefrom, so that none is wronged
1 Curtis on Patents, $ 111 (3d ed.).
* Ex parte John E. Cassidy, Sept. 24, 1872.
364 LAW OF TRADE-MARKS. [$369.
or misled. This, I believe, the testimony fully establishes.”
It is manifest that the counsel intended to relieve the Office
of the task of interpreting the plain, ordinary, and popular
language of the claim. This proposition is clearly patentable
as an invention, so far as novelty is concerned, and would be
unobjectionable if it had utility. But we find a well-settled
rule of evidence, that the testimony of eaperts cannot be ad-
duced to aid a court in reading an instrument, unless it be
non-decipherable by ordinary eyes, or has a hidden or tech-
nical meaning explainable only by parol evidence." If the
sworn testimony in this case were conclusive, the difficult
ways would be made smooth. The applicant swears that
“the words “Chestnut Hill Bourbon,” if used alone, would be
an entirely new, distinct, and unmistakable trade-mark,” and
the experts, dealers in spirituous liquors, say that the mark
composed of the words claimed “is unobjectionable in all re-
spects,” that the applicant “is clearly entitled to its exclusive
use,” &c. One witness says that “the word ‘Bourbon is
used to designate all whiskeys made from corn, rye, and malt,
in contradistinction to those whiskeys made entirely of rye
and known as ‘rye whiskey’; ” and the applicant says that
Chestnut Hill Reservoir is an outwork of the Boston city
water-works, and from that place the name is adopted by
him. From all the facts, a conclusion was drawn unfavorable
to the application. Rejected.
§ 369. Simulated Trade-Marks on Watches and other Articles
of Foreign Manufacture. — Section 2496 of the Revised Stat-
utes, as amended March 3, 1883, is as follows: “No watches,
watch-cases, watch-movements, or parts of watch-movements,
or any other articles of foreign manufacture, which shall copy
or simulate the name or trade-mark of any domestic manufac-
ture [manufacturer], shall be admitted to entry at the custom-
house of the United States, unless such domestic manufac-
turer is the importer of the same. And in order to aid the
officers of the customs in enforcing this prohibition, any
domestic manufacturer who has adopted trade-marks may
require his name and residence and a description of his
1 1 Greenl. Ev., Chapter XV.
§ 370.] FEDERAL LEGISLATION. 365
trade-marks to be recorded in books 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.”
This is simply a safeguard against the fraudulent importa-
tion of certain merchandise bearing simulated trade-marks,
and yet it is of sufficient importance to be noticed here. As
matter of fact, not very strict attention has been paid to its
provisions by our manufacturers. The reason of their seem-
ing neglect may be traced to the falling away of this kind of
fraud. The virtue of the statute reached across the Atlantic,
and in a great measure dissuaded Swiss and other skilled
artisans from an unprofitable trade.
§ 370. Criminal Law of the United States in Respect to
Trade-Marks, etc. — Penal restraint in the matter of fraudu-
lent imitations of trade-marks originated in stern necessity.
Legislation on this subject is by no means novel, in most of
the commercial nations of the world, although the first act
of our Congress in this regard dates no farther back than
August 14, 1876. Whenever any nation has provided a
civil protection for authenticating emblems of manufacture
and commerce, almost without exception has the civil enact-
ment been upheld by the strong arm, and crime has shrunk
from the terrors of confiscation of spurious merchandise, be-
sides fines and imprisonment. Our own country, the United
States of America, down to the above-mentioned date, had
been a rich and almost unprotected victim of the trade-mark
pirate. If the matter had been legislated on at all, it was by
individual States. If an audacious pirate were attacked in
one jurisdiction, he could step over the boundary line, and
thence he could with impunity supply retailers with his
spurious wares. Civil prosecutions were generally barren of
results, at least so far as the worst class were concerned.
Something was needed that could act instantaneously on per-
sons, as well as merchandise, – something that could reach our
366 LAW OF TRADE-MARKS. [$371.
dividing lines of States, and exert a physical as well as moral
power. A bill was modelled on a criminal statute of the
State of Ohio, and was enacted by Congress into a law.
§ 371. “An Act to punish the Counterfeiting of Trade-Mark
Goods, and the Sale or Dealing in of counterfeit Trade-Mark
Goods,” is the title of that law. It provides that every per-
son 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 trade-mark, 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 trade-
mark, or any colorable imitation thereof, calculated to deceive
the public, knowing the same to be counterfeit, or not the
genuine goods referred to in said registration, shall, on con-
viction thereof, be punished by fine not exceeding one thou-
sand dollars, or imprisonment not more than two years, or
both such fine and imprisonment. For even affixing such
trade-mark or imitation, the penalty is the same. So, also,
for filling, or causing to be filled, any package bearing such
trade-mark or imitation; or making, or having in possession,
or dealing in, dies, &c.; or forging or counterfeiting things in
the nature of trade-marks; or dealing in empty packages bear-
ing trade-marks. Search-warrants may be issued, and plates,
&c. may be destroyed. Persons aiding and abetting in the
frauds incur a penalty of not exceeding five hundred dollars,
or imprisonment for a year, or both such fine and imprison-
ment. The apparent severity of this sweeping law has some-
times caused committing magistrates to shrink from applying
it. If examined carefully, it will be found sufficiently guarded
and flexible to insure a due administration of justice. It is
intended to operate solely on those who have reason to dread
justice. This penal act is merely ancillary to the civil act or
acts. It does not specify any particular statute, but refers to
all registration laws of the United States. At the date of its
passage, there was in contemplation of law no registration,
for the so-called registration act of 1870 never legally existed.
The lever of the penal statute was therefore inoperative for
$ 372.] FEDERAL LEGISLATION. 367
want of a fulcrum. But an act of Congress may be inop-
erative, and yet not be void. It so remained until the 3d of
March, 1881, the day on which the present registration act
was approved. The Supreme Court has said that the sus-
pension of an act cannot be construed to be a repeal of it.
This is settled law. Even the revival act may be made to
depend on a future event, and that event may be made known
, by proclamation, and when so revived it is in full force and
effect. But 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 im-
plied 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 1881.1
§ 372. The Penal Act and the Civil Act in effect one. —
They are acts in pari materia, and therefore must be construed
together. Chancellor Kent says that “the object of the rule
is to ascertain and carry into effect the intention; and it is
to be inferred that a code of statutes relating to one subject
was governed by one spirit and policy, and was intended to
be consistent and harmonious.” The Supreme Court of the
United States has said: “The correct rule of interpretation
is, that if divers statutes relate to the same thing, they ought
all to be taken into consideration in construing any one of
them, and it is an established rule of law, that all acts in pari
materia are to be taken together, as if they were one law.
If a thing contained within a subsequent statute be within
the reason of the former statute, it shall be taken to be within
the meaning of that statute; and if it can be gathered from
a subsequent statute in pari materia what meaning the legis-
lature attached to the reason of a former statute, they will
amount to a legislative declaration of its meaning, and will
govern the construction of the first statute.” The same court
has said that a law is the best expositor of itself, that every
part of the act is to be taken into view for the purpose of dis-
covering the mind of the legislature. So it has said that the
1 The edition of Rules of Practice issued by the Patent Office in 1885 con-
tains this act of 1876 among the statutes in force.
868 LAW OF TRADE-MARKS. [$ 373.
act itself speaks the will of Congress, and that courts will
properly recur to the history of the times to infer the sense
and meaning. Lord Coke gives this rule for construing a
statute: “Consider what was the common law before the
act, what the mischief or defect to be remedied, and what
remedy Parliament had resolved to adopt to cure the mischief
or defect.” The true reason and remedy being ascertained,
such conclusion should be made as will suppress the mischief
and advance the remedy; avoiding and suppressing subtile in-
ventions and evasions advanced pro privato commodo, and giving
life and vigor to the remedy proposed pro bono publico.
§ 373. Advantages of Federal Registration. — This seems
to be the time for answering questions on this point. — 1. It
creates testimony, as registration is prima facie evidence of
ownership in the trade-mark. Not only the certified state-
ment, or specification, and the declaration, fix the title in the
registrant as against any other claimant, thereby throwing the
burden of proof on an adverse claimant, if such there be;
but the certificate is evidence in any suit or action in which
it is brought in controversy, and establishes the precise
description of the symbol claimed, defines the class of mer-
chandise to which the trade-mark is applied and affixed, fixes
the date of adoption as to all the facts alleged, and obviates
what would otherwise be a necessity, i. e. the production of
oral testimony, and that at perhaps great inconvenience and
expense. —2. Registration is a compliance with the require-
ments of foreign nations, prior registration here being a con-
dition precedent to registration in such countries by a citizen
or resident of this country. Here it must be remembered
that, in most foreign nations, judicial redress for infringe-
ment of trade-marks cannot be had without registration.—
3. Registration is a means of effectuating treaty stipulations
on this subject.—4. It tends to uniformity of practice in suits
in equity, and even in actions at law, notwithstanding that,
when practicable, these are governed by the law of the State
where pending. —5. The fact of registration gives cogni-
zance to courts of the United States in controversies between
citizens of the same State, where a trade-mark used in for-
§ 375.] FEDERAL LEGISLATION. 369
eign commerce is involved. —6. By registration, original and
appellate jurisdiction is given to said courts without regard
to the amount in controversy.—7. It gives a right to damages
sustained in consequence of false representations made by a
rival registrant. —8. A knowledge that a trade-mark has
been registered has a strong moral effect in deterring infringe-
ments.-9. The assertion of title on the national records
gives an air of permanency to a trade-mark; and being on
such records, the title may be traced through all assignments.
—10. Finally, registration is an indisputable prerequisite to
a criminal prosecution for counterfeiting, or the selling of
goods falsely marked, under the penal statute of August 14,
1876.
§ 374. Effect of Registration.— It has been contended by
some able lawyers that the effect of the registration of a sym-
bol, never before used as a trade-mark for the same class of
merchandise, is to create property in that symbol, although it
may not be sufficiently distinctive at common law. They
mean that, while at common law the mark, to become a true
index, must acquire a popularity, must become identified with
the article that bears it, on the other hand the registration is
notice to the whole world, and, ea proprio vigore, makes the
symbol a lawful trade-mark. The maintenance of such a doc-
trine would make almost anything a trade-mark, however
generic, or however likely not to be recognized by any pecu-
liarity, and would inevitably lead to confusion, and result in
the detriment of trade. If the most common or simple words
or figures could be transmuted into exclusive signs by pass-
ing through the crucible of the Patent Office, who would be
safe in using any word or letter until he has first ascertained
whether some one has not appropriated it as his mark of
manufacture? The whole language might thus by degrees
be fettered, so that a merchant would not dare to call his
wares by their right names. The correct doctrine is now
better understood.
§ 375. The decision in “The Blanchard Churn "' case
gave an impetus to this way of thinking. The Examiner
1 Com. Dec., 1871, p. 97.
24
370 LAW OF TRADE-MARKS. [$ 376.
refused the application for registration of these words, to be
stencilled on the side or lid of churns manufactured by per-
sons of the name of Blanchard; and he insisted that the
words should be accompanied by some sign or mark to dis-
tinguish the same from the mere words alone, to the use of
which letters other possible parties of the same name in the
like business might have an equal right. On appeal to the
Commissioner, he said that the question, What constitutes a
lawful trade-mark? is left by the statute just where the
common law leaves it, with a simple limitation, that it shall
not be the mere name of a person, firm, or corporation, un-
accompanied by a mark sufficient to distinguish it from the
same name when used by other persons. The only thing
ambiguous about this limitation, said he, is the meaning of
the word mark. The Examiner seemed to understand by
this word some device, figure, or emblem, something other
than mere words, from which he, the Commissioner, dissented.
He was clearly of the opinion that the expression “The Blan-
chard Churn" is not the mere name of a person, but that the
name is accompanied by the marks “The ” and “Churn,” and
hence is not excluded by the limiting clause of the statute.
Held, that the combination of the three words “The Blan-
chard Churn" seems to possess the necessary characteristics
of a trade-mark, and is not excluded by the limitations. The
decision of the Examiner was therefore reversed.
§ 376. The foregoing decision opened the door to many
proposed trade-marks of an exceedingly doubtful nature.
Finally, after the registration of combinations formed upon
the model thus furnished, the question came up again before
the same Commissioner. In this instance, the proposed mark
consisted of the words “The Hall Calendar Watch,” intended
to be affixed to a watch sold by the applicant, named Hall."
The counsel for the appellant cited the Blanchard case, and
relied upon it to sustain his position. Certainly, if one were
valid, so must the other be. One of the points on appeal was
this: “If a person adopts the words “The Hall Calendar
Watch' as a trade-mark, and is the first to do so, and registers
1 Com. Dec., 1872, MS.
§ 379.] FEDERAL LEGISLATION. 371
such in the Patent Office, thereby notifying the public of such,
he is the first to comply with the requisition of the law, and
consequently should be protected. If another person by the
name of Hall wishes a trade-mark for watches, he must adopt
another symbol.” The decision of the Examiner, rejecting
the application on the ground that those words could not
constitute a valid trade-mark, was affirmed by the Com-
missioner.
§ 377. In other cases, in his oral review of the statements
made by him in the Blanchard matter, the Commissioner
entirely receded from the position there taken by him. Thus
the question may, so far at least as the Patent Office is con-
cerned, be considered to have definitely been set at rest. This
virtually decides, if a decision upon so obvious a point seems
necessary, that the mere fact of placing on record the evidence
of claim cannot operate to create a title to the exclusive use of
a symbol which could not be a trade-mark without registration.
In another appeal case,” the Commissioner said that, at com-
mon law, the trade-mark, to become legal, and to vest an
exclusive right in the person adopting it, must have been so
long in use as to be known and recognized in the market.
That is, a person could not adopt a trade-mark to-day and
successfully sue for infringement of it to-morrow; and he was
of opinion that one object of the registry law was to settle this
very question. Registry, said he, is notice to the world, and
supplies the place of long w8e at common law.
§ 378. If the Commissioner meant to intimate, as he proba-
bly did, that the reason why one could not recover at common
law upon a new mark is because he would lack evidence of its
recognition in trade, and that one object of the statute was to
furnish a convenient mode of proving adoption, then his decis-
ion is unquestionably sound. He is in effect prohibited from
receiving and recording any marks but those which would be
valid at common law.”
§ 379. Having easily become persuaded that Congress did
not think of creating a trade-mark, -as is evident from the
1 Re Dutcher Temple Co., Com. Dec., 1871, p. 248.
* Act of March 3, 1881, sect. 3.
372 LAW OF TRADE-MARKS. [$ 380.
whole of the legislation upon the subject, and especially by
the language which prescribes that the applicant shall show
that he “has at the time a right to the use of the trade-mark.
sought to be registered,”—we are led to the consideration
of another point. It having been made tolerably clear to the
shallowest apprehension that the act of recording is merely
an act of recognition of a symbol affixed to merchandise, with
the intent that the purchaser shall associate it with a certain
product, or a particular vendor, we ask, When is that symbol
to be deemed to be affixed ? Must there be actual taction,
i. e. a union of the symbol and the vendible article, or is the
act of filing in the Patent Office in law an affixing? That
is, does a man who intends to adopt a mark, and who com-
plies with certain conditions and regulations, acquire a right
to the exclusive use thereof as a mark for goods before he
shall have stamped, branded, or painted the same upon his
merchandise? It has been contended by respectable counsel
that he does. It is well worth our while to discuss and settle
this point, as upon it must frequently depend the question of
priority of adoption.
§ 380. What does the claimant register, — his mark, or
what he intends shall be his mark 2 But it is not a mark
until actually marked upon something, and that something an
article of commerce. He does not in any case file his mark,
but he does file “a description of the trade-mark itself, with
fac-similes thereof,” and he makes oath, or its equivalent,
“that the description and fac-similes presented for registry
truly represent the trade-mark sought to be registered.” We
see that he does not file his mark, for that he could not do
unless he could at the same instant sell to the United States
the article bearing the mark; but he does file the representa-
tion of his mark. Does that fact vest title? Is he excused
from actual use ? May he lay his certificate in a bureau
drawer, as he would a patent, and for days, months, or years
neglect to exhibit it to purchasers of the goods that he has
specified, and at any time claim the right to exclusive use?
If he may in one instance thus obtain title, he may adopt a
1 See Sects. 1 and 2 of Act of March 3, 1881.
§
§ 380.] FEDERAL LEGISLATION. 373
thousand emblems, and remain in a quiescent state until one
or more of the number shall have acquired celebrity in con-
nection with the merchandise of others, and then assert his
paper title. Is the issuance of a certificate a symbolical
delivery of property, as in the case of a deed of lands 2 For
the sake of argument, we assume that the giving of a certifi-
cate is obligatory in all cases of registration. It is true that
this is the practice; but as a legal truth, the registry is com-
plete, even if no certificate ever be issued of that fact. The
certificate is only evidence. We are not now indulging a
speculative fancy, but considering a matter that has been
argued again and again. The answer is this. The certifi-
cate has no analogy to a deed, for in a deed there must be a
grantor as well as a grantee, and a thing to be granted. The
government does not pretend to hold title in the symbol
employed as a trade-mark, and therefore it is not a grantor.
It merely makes a compact with the proprietor of the mark,
and guarantees protection, for a consideration paid. If the
certificate given upon registration were an investiture of title,
a livery of seisin, what would be the logical effect 2 If a
grant in one case, so must it be in another. If a man admit
that he obtained a right to exclusive use by registering his
mark, he also concedes that the mark that he has used for
half a century had no legal existence, and he thereby makes
himself the junior of any imitator who has used it for a less
time, and destroys the antiquity of his mark. Being driven
to the wall, the counsel say that the intention to adopt, the
filing, and the recognition by the Patent Office, is an adop-
tion. Rutherford, in his Institutes, (p. 25,) tells us that “a
man's bare intention of acquiring a thing is not enough to
make it his own till that intention is known ; for without
the consent of mankind no property could be gained justly,
and there could be no ground for presuming that they consent
to what they know nothing of. Now the act of occupancy
is the outward mark by which his intention is made public.
And this act is, therefore, understood to give him property.”
The act of occupancy of a symbol is that act which commerce
throughout all ages, and in all countries, has imperatively
374 & LAW OF TRADE-MARKS. [$ 381.
required, – the physical application of the same to merchan-
dise. This view of the law was entertained by the Office in
the well-contested case of Schrauder v. Beresford & Co.," and
was silently acquiesced in by the counsel for the losing party,
one of which counsel had been Commissioner of Patents, and
the other Acting Commissioner; and more recently it has
been reaffirmed in the case of Sternberger v. Thalheimer &
Hirsch.”
§ 381. Registry of Prints or Labels for Articles of Manu-
facture. — It seems to be necessary to consider in this place
an enactment of Congress that has apparently no claim to
constitutionality. It is the third section of the act of June
18, 1874,” which provides that no prints or labels to be used
for any article of manufacture, other than pictorial illustra-
tions or works connected with the fine arts, shall be entered
under the copyright law, but may be registered in the Patent
Office. By that section, the Commissioner was charged with
the supervision and control of the entry or registry of such
prints or labels, in conformity with the registrations provided
by law as to copyright or prints.” As this seeming law still
stands on the statute-book, much error flowing from it can
be counteracted by a consideration of its provisions. As a
fact of history, it is generally known that, prior to the un-
constitutional registration act of 1870, owners of proprietary
emblems of all kinds, including technical trade-marks, were ac-
customed to file them with the clerk of a District Court of the
United States, supposing them to be copyright matter. True
it is, that Federal courts had long spoken to the contrary.”
They became better informed when the Supreme Court, at
the December term, 1879, used the language, “Property in a
trade-mark, or rather in the use of a trade-mark or name, has
very little analogy to that which exists in copyrights or in
patents for inventions.”" This doctrine is not yet understood
1 In chapter on Interferences. * Interference, September, 1872.
* 18 Stat. at Large, 78; 1 Supp. Rev. Stat. 40. tº
* Rev. Stat., sects. 4952, 4962.
5 Scoville v. Toland, 6 West. L. J. 84; Osgood v. Allen, 1 Holmes, 185; 6 Am.
L. T. 20; 3 Off. Gaz. 124.
6 Trade-Mark Cases, 100 U. S. 82.
§ 381.] FEDERAL LEGISLATION. 375
by all lawyers who have to deal with such matters. When
the meaning of the word authors in the Constitution is finally
filtered into their brain, it comes like a revelation. When
the omnium gatherum act of J uly 8, 1870, was manufactured,
and patents, trade-marks, and copyrights were treated as be-
ing all of one family, when not at all related, trade-marks
were required to be lodged in the Patent Office, if anywhere.
As that act did not include labels and prints, the files of the
Library of Congress were constantly becoming more incum-
bered with the influx of all kinds of printed labels, advertise-
ments, notices, etc., that had some relation to commerce, but
not the slightest to literature. To relieve the library from
matter that never in contemplation of law belonged to it,
this third section was tacked on to the copyright bill. The
mischievous consequences of the inconsiderate verbiage of
that section must long be felt. The Commissioner, with the
approval of the Secretary of the Interior, attempted to give
the section some force, although from the first the Office had
seen the difficulty of trying to make it valid. The provis-
ions of that section cannot possibly stand the test that was
applied to the trade-mark sections of the act of 1870." The
subject matters alike relate to commerce, and commerce only.
The generalization of language is as fatal in the one case as
in the other. The only jurisdiction that Congress has over
the subject is derived from the power to “regulate commerce.”
The ratio decidendi of the Supreme Court in the Trade-Mark
Cases is strictly applicable to this. Congress did not attempt
to confine the registration of prints and labels to those used
in the commerce over which it has control; viz. that with
foreign nations, among the several States, and with the Indian
tribes.” No judicial opinions bearing directly on the said
objectionable section of the act of 1874 can be cited. But
incidentally its operation has been noticed. In 1878, in the
Circuit Court of the United States for the Northern District
of Ohio, Baxter and Welker, J.J., the defence in a case of
infringement of a trade-mark set up a registry of certain
1 See Trade-Mark Cases, supra.
* Constitution, Art, I., sect. 8, clause 3.
376 LAW OF TRADE-MARKS. [$ 381.
labels under said section." The writer, as counsel for the
complainants, moved to exclude said labels from evidence.
The ground for exclusion was expressly stated to be the lack
of power in Congress to enact said section. On consideration,
the court excluded them, but no written opinion was filed.”
The Patent Office has frequently sought to obtain an author-
itative ruling on the point of constitutionality. Opportuni-
ties were given to go to the courts. Such a ruling has not
yet formally been made. Courts can only decide on issues
presented. A learned judge (now of the court of last resort),
in 1878, made this ruling : “The use of a label, in the sale of
merchandise that it is intended to designate, prior to the
registry of said label in the Patent Office, amounts to a pub-
lication thereof, and defeats registration.” That was because
said third section applies the provisions of the copyright law
to it. The Commissioner, in 1879, refused registration of a
label because it contained trade-mark matter.” He did so in
another case that contained the arbitrary word “Eddystone.”"
In another instance, he decided that “the presence in a label
of matters registrable as a trade-mark excludes the whole
from registration.” In still another, in 1881, he refused to
register a label, as such, because it contained a monogram."
The applicants thereupon applied for a mandamus to compel
the ministerial act of registration. The writ was allowed.
The Commissioner could do nothing but register. In 1882,
he refused registration for the same reason; i. e. that the label
or print contained trade-mark matter, and was not a mere
label, it being attached to merchandise (cigars). The very
phraseology of the section seemed to justify his decision,
What was the logical result of the refusal? If the thing were
1 August Vogeler et al. v. Max Ernst, equity No. 8320. Decree for complain-
ants, Sept. 27, 1878.
* Ilabel Registrations, Nos. 512 and 539.
8 Marsh et al. v. Warren et al., 14 Off. Gaz. 678.
* Re The Dr. Harter Medicine Co., July 29, 1879, MS.
* Re Simpson & Sons, 10 Off. Gaz. 833.
6 Re Thaddeus Davids & Co., 16 Id. 91.
7 The United States ex rel. The Willcox & Gibbs Sewing-Machine Co. v.
Marble, 22 Off. Gaz. 1366; 1 Mackey, 284. (The Office cited $$ 15 and 262 of
this book.)
§ 381.] FEDERAL LEGISLATION. 377
a trade-mark, it must be rejected as a mere label, and there
was no denial of the fact that the label contained a trade-
mark; and it could not possibly be a lawful trade-mark until
it had been used on goods that had been sold or offered for
sale. But said the court, in a case above referred to, in
answer to a similar question: “The sale of the bottles of the
medicine with the label on it was a publication of the label.”
Take either horn of the dilemma, the registration could not
legally be made. An alternative mandamus was issued by the
Supreme Court of the District of Columbia, in 1882. In that
case the writer, as counsel for the Commissioner, distinctly
raised the question of constitutionality. It was overruled."
1. It may be worth while to quote here the whole opinion of Mr. Chief
Justice Cartter, speaking for the court in this case, The United States ex rel.
Schumacher & Ettlinger v. Marble (to appear in 3 Mackey’s Rep.):-
“It is objected in behalf of the Commissioner of Patents, that the act of
Congress of June 18, 1874, providing for the registration of labels, is unconsti-
tutional, and therefore void. A very elaborate, ingenious, and perhaps, under
appropriate circumstances, successful argument, has been made to sustain this
position. But we think the point raised has no application to this case. We
do not think it lies in the mouth of a government official to call in question the
constitutionality of a law directing him to perform a certain ministerial duty.
If the question were raised between other parties, as, for instance, in a suit for
infringement in the use of a label, and the constitutional rights of the parties
were involved in it, that is to say, whether one man was prohibited from using
it because another man had registered it as a label, the argument might be
pertinent; but we do not think it is a question which can be raised here.
“The next reason assigned by the Commissioner for his refusal to comply
with the petitioners’ demand is, that the design offered for registration is a
mere fanciful sketch, which, while it may be used as a trade-mark, has none of
those descriptive features about it characteristic of a label. A label, it is con-
tended, consists of a pictorial representation or a written description of the
article to which it is affixed, and that a fancy picture, such as this, having no
connection with its proper use or application, cannot be registered as a label.
This question has been settled by this court in the case of The Sewing-Machine
Co. v. Marble. We decided in that case that the duty of the Commissioner of
Patents, on the application to him to register a label, is a purely ministerial
one, as much so as the act of a recorder of deeds in placing upon public record
a muniment of title. The statute has not defined what shall be considered a
label,- whether it shall be descriptive of the article to which it is affixed, or
whether it may be a mere arbitrary design. If the applicant produces it as a
label, and appeals to the commissioner to give it the protection which the law
provides for it as a label, the duty of the commissioner is to register it, and in
doing so he gives it only the protection which the statute provides. It is not
protected as a trade-mark nor as a copyright. The public at large may use
378 LAW OF TRADE-MARKS. [$ 382.
That ended the matter, for that case could not be brought to
the notice of the Supreme Court of the United States. How
does the matter now stand? In statu quo. Before leaving
this subject, it must be obvious that labels, prints, and analo-
gous things affixed to merchandise in the commerce over
which Congress has exclusive control, may be protected by a
future clearly defined legislative act.
§ 382. Meaning of the Words “Prints,” “Labels,” etc. —It
early became necessary for the Commissioner to define the
meaning of these words, as used in the act of Congress of
June 18, 1874, because frequently they were not understood.
To this day, many persons of intelligence forget that they
have no relation to authorship, to be protected by copyright,
but that they are mere instruments of manufacture and com-
merce. This is the definition : “The words ‘prints’ and
* labels,’ as used in this act, so far as it relates to registration
in the Patent Office, are construed as synonymous, and are
defined as any device, picture, word or words, figure or figures,
(not a trade-mark,) impressed or stamped directly upon the
articles of manufacture, or upon a slip or piece of paper, or
other material, to be attached in any manner to manufactured
articles, or to bottles, boxes, and packages containing them,
to indicate the contents of the package, the name of the man-
ufacturer or the place of manufacture, the quality of goods,
directions for use, &c. By the words “articles of manufac-
ture’ (to which such print or label is applicable by this act)
is meant all vendible commodities produced by hand, ma-
chinery, or art. But no such print or label can be registered
unless it properly belongs to an article of commerce, and be
as above defined; nor can the same be registered as such
print or label when it amounts to a lawful trade-mark, or
when its use in connection with the article to which it is
applied is arbitrary or fanciful." To entitle the owner of any
such print or label to register the same in this Office, it is
and enjoy it; but qua label it is restricted to the use of the party who has
registered it for that purpose and no other. With the character of the device
the Commissioner is not at all concerned. His function is as purely ministerial
as it is capable of being. The writ will issue.”
1 Marsh et al. v. Warren, ante, $380.
§ 383.] FEDERAL LEGISLATION. 379
necessary that five copies of the same be filed, one of which
copies shall be certified under the seal of the Commissioner of
Patents, and returned to the registrant. The certificate of such
registration will continue in force for twenty-eight years.” 1
§ 383. Priority will not be defeated because the same em-
blem has accidentally been used by others in the same busi-
ness. This is reasonable, for a trade-mark cannot be adopted
except intentionally. To reason from analogy, a patent for a
machine could not be annulled, or deemed to be anticipated,
merely because some one had previously by chance flung the
elements together without beneficial result or a thought of
invention.— In the Court of Cassation, in 1877,” it appeared
in evidence that the plaintiff, a manufacturer of brushes and
fancy goods had, in 1859, duly deposited a trade-mark, the
representation of a lion, to be affixed to his goods. He re-
newed the deposit in 1876. The defendant alleged, in justi.
fication, that his predecessor had employed the mark of a lion-
in the same kind of business before the deposit by the plain-
tiff; and also that the heraldic lion with which he marked his
products was completely different from that of the plaintiff.
To establish the alleged priority of user, the defendant proved
by witnesses that from the year 1844 his predecessor in busi-
ness had used the mark in controversy; but the further fact
was established, that the particular mark was but one of
twenty marks that he was in the habit of affixing to goods on
the order of his customers. The plaintiff rebutted, by show-
ing that in the year 1845 his house had not ceased to mark
with a lion a certain category of his products. The case had
its inception in the Tribunal Correctionnel of the Seine. It
was there held that, inasmuch as marks of fabrics or of com-
merce are signs or means by which a trader distinguishes his
merchandise from that of his rivals in trade, to guarantee the
origin of his goods, therefore a sign not intended to fulfil
that object is not possessed of the essence of a trade-mark;
that inasmuch as neither before the law of June 23, 1857,
1 This period of time is arbitrarily fixed by the Office, following the statute
in copyright cases. It has not the slightest sanction of law.
* A. Dupont v. Debreye, 28 Annales, 5. #
380 LAW OF TRADE-MARKS. [$ 383.
which actually regulated the matter, nor aferwards, had the .
defendant or his predecessor ever asserted title in the lion as
a trade-mark; and inasmuch as they did not specially mark
the products of their house with the lion, but with different
signs to the number of twenty, in which they did not even
pretend to have property, as every purchaser selected a sign
of his particular commerce, and ordered that it should be af-
fixed to the things purchased by him, the finding must be
for the plaintiff. On appeal by the defendant, the Court of
Paris used substantially the same line of reasoning: that the
defendant had used the lion not uniformly and constantly to
distinguish the products of his fabric, but merely followed the
fancy of his customers, in fact abandoning the whole number
of emblems to the choice of other parties; and that the lion
had not the character of a sign to distinguish the manufac-
ture. On a final appeal, the Court of Cassation adopted the
ratio decidendi of the courts below, and affirmed the judg-
ment.—To the same effect was a decision in the Tribunal
Correctionnel of the Seine, in 1878. The prosecuting party
caused to be seized cards of buttons bearing as a trade-
mark a beehive substantially like his own, but surrounded
by numerous accessories, among which were implements of
agriculture and gardening, a vessel's anchor, a flag, and a
cannon. The plea was that the defendant had borrowed the
vignette from an old volume of poetry, and that besides his
device differed essentially from the prosecutor's; but the judg-
ment was against him for damages and costs. When such a
defence is set up to defeat an honest trade-mark, the defend-
ant who alleges the anteriority of his label should be held to
strict proof. — In the Court of Bordeaux, on appeal, in 1878,”
it appeared that the tribunal below had condemned the de-
fendant to pay 10,000 francs damages, and restrained him
from using the name “Guyot,” or- “Vallet,” or the denomi-
nation “Perles d’Ether,” and all labels tending to confusion.
It was held that the books of a printer, establishing the de-
livery of a certain number of labels, cannot be evidence of
1 Parent v. Chaumont, 23 Annales, 164.
* Torchin v. Cathrin, Ibid. 249.
§ 384.] FEDERAL LEGISLATION. w
381
priority of adoption by the defendant, unless those books
contain a detailed description of the contents of said labels,
so that the court may judge of their exactness. - -
§ 384. But this matter of adoption involves a refinement
that we have not yet touched upon. Suppose A. to make a
device, which he intends at a convenient time to stamp upon
his goods as his distinctive symbol; and suppose that he has
gone to great expense in procuring engravings, dies or brands,
for the purpose of affixing his symbol, but before his labels
shall have been delivered by the printer, or his dies or brands
be put into actual use, B., learning A.'s intention, adopts that
very symbol as his. B. is the first to actually use the mark;
but is not his act of adoption tainted with fraud? A moral
wrong has been committed by B. His conduct has, perhaps,
been a breach of confidence. We agree that a title to property
cannot be obtained by fraud. But the answer to this sugges-
tion of fraud is, that A. must have had property before he
could be despoiled of it. This unscrupulous act of. B. is a
wrong that must be adjudicated in foro conscientiae, for no
human tribunal can give redress. It is a clear instance of
damnum absque injuria. We do not lack analogies to confirm
this conclusion. It is a familiar fact, that, by the fiction of
the settled English patent law, as it was up to January 1,
1884, he was deemed to be the first inventor who first com-
municated an invention to the public, although not so in any
just sense, but who had been guilty of bad faith throughout.
Hills, an American inventor of a machine for making brushes,
embarked for England for the purpose of obtaining a patent.
He had had confidential relations with one Sheldon in this
country, and the latter conceived the idea of obtaining a
patent for himself for the thing that Hills had invented, and
actually reached England and secured a patent before Hills
arrived there. Steps were immediately taken by the true
inventor" to enjoin the swift-footed sharper. Held, by the
Lord Chancellor, to be a case of wrong without a remedy."
* This case seems not to be embraced in any permanent report; but in-
stances of the same nature are not rare. See Jacob's Fisher's Digest, title
“Patents.”
382 LAW OF TRADE-MARKS. [$ 384.
In a hearing before the Attorney-General (Sir R. P. Collier),
in 1870," counsel for the patentee successfully urged this rule
against the real inventor (one Overend, of San Francisco,
California), who not only lost his invention, but was also
compelled to pay costs. –We may suppose a case wherein the
actors are nations. It is ascertained by one nation that an-
other nation is fitting out a fleet at great expense, with the
intent of taking possession of a savage or an uninhabited
country; and the nation first mentioned, without a moment's
delay, pounces upon and holds the prey, and annexes the new
territory. Who becomes the sovereign, – he who intended
to seize, or he who actually occupied the new country?
Spain obtained her title to a large portion of the Western
Hemisphere by the planting of her flag; but what if, while
Columbus, or Vespucius, was drifting over the ocean, a more
swiftly sailing flotilla had darted upon the coveted prize?
Spain would have come to grief. The fact of first starting in
the race, would not avail. First come, first served. When a
thing has no lawful owner, the first actual occupant obtains
the exclusive right to it. This rule is as applicable to trade-
marks as to any other property.” This ends the discussion
of “Federal Legislation,” and the principal rules applicable
thereto. - -
1 Dunn's Application, No. 2427, Int. Pat. Off. Circ., January, 1871.
* As an example of actual appropriation as against a mere intention to
appropriate, see the interference case of Schrauder v. Beresford & Co., infra,
§ 661.
§ 385.] INFRINGEMENTS. - 383
CHAPTER VIII.
INFRINGEMENTS.
§ 385. What constitutes infringement.
§ 386. Fraudulent intention not essential.
§ 387. Small words, as instruments of fraud.
§ 388–891. Imitation of minor details.
§ 392. Case of McLean v. Fleming.
§ 393, 394. In equity, -as auxiliary to law.
§ 895. Object of protection is twofold.
§ 396. “Dixon's Stove Polish” case.
§ 397. “Bovilene,” “Cocoaine,” and “Eau de la Floride” cases.
§ 398, 399. “Job” case.
§ 400. Infringement intended to operate abroad.
§ 401, 402. Infringement by part imitation.
§ 403, 404. The “Double-anchor Whiskey” case.
§ 405, 406. “Crown Seixo Wine” case.
§ 407-410. “Grande Chartreuse” cases.
§ 411. “Anchor-brand Wire” case.
§ 412,413. “St. A * * * * *” case.
§ 414, Colorable infringement, — chocolate case.
§ 415. “Moniteur Universel” newspaper case.
§ 416. “La Presse” newspaper case.
§ 417. “Petit Journal” newspaper case.
§ 418, 419. Blending of trade-mark and other rights.
§ 420. Manufacturer's right to affix his own name.
§ 420 a. French illustrations of the doctrine.
§ 421. “Faber” lead-pencil case.
§ 422,423. “Howe Sewing-Machine” case.
§ 424. “Derringer Pistol” case.
§ 425. “Hall's Vegetable Sicilian Hair Renewer” case,
§ 426. “Mrs. Winslow's Soothing Syrup” case.
§ 427–429. Use of the name of another.
§ 430–436. One's name.
§ 437. One sometimes debarred from using his original mark.
§ 438. Use of one's own name to deceive.
$ 439. “Ervalenta-Warton” case.
§ 440. Counterfeiting, to affix symbol to package merely.
§ 441. Actual counterfeiter is he who directs.
§ 442. Infringement by use of numerals.
§ 443–448. Perversion of mark. —Examples.
§ 449. Theory of infringements.
§ 450. Same emblem for different classes.
384 LAW OF TRADE-MARKs, [$ 385.
$ 885. What constitutes Infringement. —It may broadly be
stated thus: one man has not a right to use a name, or other
mark, for the purpose of attracting to himself the trade or
custom that would have flowed to the person who first used,
or was alone in the habit of using, that particular name or
mark. This ruling by Lord Langdale, M. R., dates back to
1842, in Perry v. Truefitt, and has ever since been followed,
in language variously modified. Lord Langdale, again in 1843,
in Croft v. Day,” said that two things are required for the
accomplishment of a wrong such as is here contemplated,
First, there must be such a general resemblance of the forms,
words, symbols, and accompaniments as to mislead the pub-
lic ; and secondly, a sufficient distinctive individuality must
be preserved, to procure for the person himself the benefit of
the deception which the general resemblance is calculated
to produce. To have a copy of the thing would not do ; for
though it might mislead persons in one respect, it would lead
them back to the place where they were to get the genuine
article, an imitation of which is improperly sought to be sold.
For the accomplishment of such a fraud, it is necessary, in the
first instance, to mislead the public; and in the next place,
to secure a benefit to the party practising the deception, by
preserving his own individuality. It is enough that the rep-
resentations employed bear such a resemblance to the genu-
ine as to be calculated to mislead the public generally who are
purchasers of the article, and make it pass for the genuine.”
The New York Court of Appeals said that the question was
whether there is such a resemblance between the two as to
deceive a purchaser using ordinary caution ; and the court is
not bound to interfere where ordinary attention will enable
purchasers to discriminate between the marks used by dif-
ferent parties.*—But it is not necessary that the symbol,
figure, or device used, or printed and sold for use, should
be a fac-simile or precise copy of the original trade-mark,
or so close an imitation that the two cannot be distinguished
1 6 Beav. 66; 1 L. T. 384. 2 7 Beav. 84.
3 Walton v. Crowley, 3 Blatch. 440; R. Cox, 166.
* Popham v. Cole, 66 N. Y. 69; 28 Am. R. 22.
§ 386.] INFRINGEMENTS. 385
except by an expert, or upon a critical examination by one
familiar with the genuine trademark.”
§ 386. Fraudulent Intention is not an essential element of
infringement, although it may be, and probably is in the
majority of cases, an element in awarding damages and costs.
The defence may positively deny wilful wrong, and there
may not be evidence that a defendant was even aware of the
existence of the claim of a complainant to an exclusive right
of user; but nevertheless the latter is entitled to his rem-
edy, and an injunction will be granted. This ruling of
Lord Cottenham, C., in Millington v. Foz,” in 1838, has been
uniformly followed by courts of equity; for the injury is
neither greater nor less by the knowledge of the defendant.”
Stuart, V. C., said in such a case: “This is an application
in support of the right of property. The absence of fraudu-
lent intention is no defence against an application to the
court for an injunction by the person whose property has
been injured.” + And it is enough, if, without any unfair
intention, a defendant has done that which is calculated to
mislead the public.” The liability to account for the profits
is an incident to the injunction; but Lord Westbury, C., in
1863, held that an account would only be given with the
iujunction in respect of any use by a defendant after he had
become aware of the prior ownership.” Proof of the absence
of fraudulent intention in trespassing on trade-mark rights
may avail a defendant in saving costs;" or prevent a recovery
* Colman v. Crump, 70 N. Y. 578; 16 Alb. L. J. 852. McLean v. Fleming,
96 U. S. 245; 13 Off. Gaz. 913.
* 3 My. & Cr. 338.
* Coffeen v. Brunton, 4 McLean, 516; 5 Id. 256.
* Clement v. Maddick, 1 Giff. 98; 5 Jur. (N. s.) 592; 33 L. T. 117.
* Glenny v. Smith, 2 Drew. & S. 476; 11 Jur. (N. s.) 964; 13 L.T. (N. s.) 11;
13 W. R. 1082; 6 N. R. 363. Filley v. Fassett, 44 Mo. 173; 8 Am. L. Reg. (N. s.)
402. Graham & Co. v. Kerr, Dodson, & Co., 3 Beng. L. R. App. 4. Holmes,
Booth, & Haydens v. The Holmes, Booth, & Atwood Manufacturing Co., 37 Conn.
278; 9 Am. R. 824. Blackwell v. Wright, 78 N. C. 310. The Singer Manu-
facturing Co. v. Wilson, 3 App. Cas. 376. Amoskeag Manufacturing Co. v.
Garner, 4 Am. L. T. (N.S.) 176. Colman v. Crump, supra. McLean v. Flem-
ing, supra. Carroll v. Ertheiler, 1 Fed. R. 688.
* Cartier v. Carlile, 31 Beav. 292; 8 Jur. (N. s.) 183.
7 Barnett v. Leuchars, 13 L. T. (N. s.) 495; 14 W. R. 166.
25
386 LAW OF tworxanks. [$387.
of damages, where his acts have been perfectly bona fide."
A court may infer a bad intention from a comparison of the
two marks, and may say, with Monell, J., that it was not by
accident that the coincidence of two designs was effected; *
but in absence of the proof of the intention to deceive, or that
purchasers have actually been misled by a resemblance, if
the two trade-marks are not to the eye of the court either
altogether identical, or so similar that the court considers the
difference unsubstantial, an injunction will be refused.” So a
trade-mark consisting of the words “Flor Fina Prairie Su-
perior Tabac * and the figure of a hunter was held not to
be prima facie infringed by another mark consisting of the
words “Flor de la Prairie.” and the half-figure of a girl.”
§ 387. Small Words, as Instruments of Fraud. — In the
Court of Cassation, in 1864, the arbitrary designation was
the name “L’Elixir du Docteur Gallié.” ” It was not dis-
puted that the manufacture and sale of the article had fallen
into the public domain ; but the peculiar designation re-
mained private property. The defendant had preceded the
name of “Docteur Gallié " with the words “suivant la for-
mule de,” and added his own name. The almost impercep-
tible notice of following the formula of him who had given
celebrity to the article did not avail as a defence. Per Cu-
Tiam : Although every pharmacist has a right to prepare a
medicine that has fallen into the public domain, and to
announce and sell it under the denomination that serves by
usage to designate it, this right ceases when the use of the
denomination constitutes a means of dishonest competition.
The Court of Paris, in 1875, held it to be an infringement, :
although to the usurped label the defendant had added the
word “system,” and adjoined his proper name.”— In the
Tribunal Correctionnel of the Seine, in 1874, the defendant
had adopted a label of the same dimensions as in the genuine,
1 Weed v. Peterson, 12 Abb. Pr. (N. s.) 178.
* Cook v. Starkweather, 13 Abb. Pr. (N. s.) 892. -
* Coffeen v. Brunton, 5 McLean, 256; R. Cox, 132. &
4 Cope v. Evans, L. R. 18 Eq. 188; 30 L. T. (N. s.) 292; 22 W. R. 453.
* Cited by the late eminent authority, M. Pataille, 19 Annales, 209.
* Howe Machine Co. v. Maquaire et al., 20 Id, 353.
§ 387.] - INFRINGEMENTS. 387
printed in the same manner, in black on a white ground, and
within the bordering had inserted in small type the words
“Product approved by the Academy of Medicine.”" It was
held—possibly with undue severity—that the mention, itself
illicit, far from constituting a distinctive difference, only
aggravated the wrong, in the confusion that he sought to
establish as to the origin of the article.— The Court of Mont-
pellier, in 1875,” held it to be no defence that the defendant
had sold an article bearing a simulated word-symbol as an
“imitation”; and so, also, in the Tribunal Correctionnel of
the Seine, in 1878.* it was similarly held in regard to the
words “imitation ” and “as”; and in the latter-named tri-
bunal, in 1878,4 the use of the words “imitation,” “imitated,”
“called,” “identical,” or analogous expressions, were pro-
hibited, although the labels differed essentially from those of
the “Chartreuse,” the use of which name was asserted to
have been employed only by way of comparison. — In the
same tribunal, and in the same year, an inscription on spuri-
ous sewing-machines was “System” in very small letters,
and “HOWE’’ in prominent large ones. Conviction was
the result.”— In the Tribunal Civil of the Seine, in 1879, it
was held to be infringement to use the specious words “Ne
pas, confondre avec la grande Chartreuse,” the intention to
confound being too manifest;" and so, in the Court of Lyons,
in that year, although there were adjoined to the name of
the manufacturer the words “imitation,” “imitated,” or
“made" by such a one ; 7 and thus, also, in the Tribunal
Civil of Marseilles, in the same year, and under similar cir-
cumstances; * and in the Court of Aix, in that year, it was
held to be a fraudulent usurpation of a mark, although the
name usurped was preceded by the words “called,” “fashion
1 Genevoix v. Pauliac, 19 Annales, 209.
* F. Prot & Co. v. Monganzi, 20 Id. 865.
* Grézier v. Lambert, 23 Id. 145.
* Grézier v. Cusenier et al., Ibid. 154. See “Chartreuse” cases, §§ 407 et seq.
* Compagnie Howe v. Grimm, 23 Annales, 160.
° Grézier v. Poullain, 24 Id. 327.
7 Grézier v. Gallifet, Ibid. 330.
8 Grézier v. Rocca et al., Ibid. 339.
388 LAW OF TRADE-MARKS. [$ 388.
of,” “system of,” etc. In the Tribunal Correctionnel of
Nantes, in 1880,” the very minute lettering “Made as at ”
was decided to be evidence of fraud; and in the Tribunal of
Commerce of Nantes, in 1880, the words “System of ” were
regarded in the same light.”— In the Court of Cassation, in
1881,4 the defendant was not permitted to escape the just
consequences of imitating the plaintiff’s trade-mark, by the
transparent use of words purporting that his manufacture
accorded with the receipt of the inventor of the genuine pro-
duct, thus: “Vinegar composed according to the receipt of
Claude Bully, prepared by Leroux”; and in 1882, in the
Tribunal Correctionnel of Rouen,” where, after all the fore-
going examples in his own country, besides others that might
be cited, the defendant used the shallow device of inserting
the words “system of,” and “fashion of,” he was condemned,
as were his predecessors in roguery. These decisions do not
at the first glance seem to be harmonious with a case in the
Court of Paris, in 1851,” where it was held not to be usurpa-
tion of a name of an inventor, (his invention having become.
public property by reason of the expiration of the patent,)
where one joined his proper name, preceded by the words
“Prepared by.” Probably that was a case of fact in which
fraud was not established; for certainly the current of de-
cisions ever since has tended to the other direction. The
French have not been without imitators in this style of tres-
passing. In the High Court of Hamburg, in 1878," the
usurped name of the plaintiff company was followed by the
word “imitated ”; and in letters so minute as not to be seen
unless attention were especially directed to them. * *
§ 388. We have considered the meaning of the term “col-
orable variation,”8 and had many illustrations thereof; and
1 Fumouze et al. v. Grosse et al., 26 Annales, 179.
2 Pellier et al. v. Trottier frères et al., 27 Id. 357.
8 Veuve Raymoudière v. Plesier et al., 28 Id. 37.
* Landon v. Leroux, Ibid. 183.
5 Hammelle et al. v. Doudiet, Ibid. 30.
6 Landon v. Lamare, Blanc sur Contrefaçon, 732.
7 Singer Manufacturing Co. v. Mestwerdt & Engel, 24 Annales, 116. This
case arose under Art. 14 of the German law of Nov. 30, 1874.
8 Ante, § 33.
§ 388.] INFRINGEMENTS. º 389
also discussed the principle on which infringement is pro-
hibited. Now, although a court will hold any imitation to
be colorable which requires a careful inspection to distinguish
its marks and appearance from the genuine, it will not inter-
fere when ordinary attention might enable a purchaser to
discriminate between the true and the false. It may be well
to give instances more in detail. In Clark v. Clark,” in the
Supreme Court of New York, in 1857, the facts were these.
The plaintiffs were manufacturers, at Mile-End, Glasgow,
of spool cotton. In 1843, they used their trade-mark, con-
sisting of four concentric circles: the inner one in gold,
and the next in silver; the whole bounded by two concen-
tric black lines. In the inner circle is the number of the
cotton; in the next, “J. Clark, Jr., & Co., Mile-End, Glas-
gow.” In the next circle are the words, “Six Cord Cable
Thread, warr'd 200 yards.” In the outer circle are the
words, “Sole Agent, Wm. Whitewright, New York.” J. &
J. Clark & Co. were also manufacturers of the same class
of goods at Seed Hill, Paisley, and the defendant was their
agent. They both sold largely in the United States. The
defendant, some years after the plaintiff’s trade-mark was
well known, adopted one for his cotton to be sold in the
United States, consisting of concentric spaces of precisely the
same dimensions as those of the plaintiffs, of the same colors,
in the same order, with the letters in black or in gold, as
the plaintiffs'. There is the same number for the inner
circle, with the same kind of stamp. In the next circle are
the words, “ Clark & Co., Seed Hill, Paisley,” “Clark & Co.”
being at the top, as in the plaintiffs', and the same words, so
far as they go, as in the plaintiffs', and the other words below
and in the reverse order, as are also the plaintiffs’; though
these last words are entirely different from those of the plain-
tiffs. Then, in the next circle, “Six Cord Cabled Thread,
warr'd 200 yards,” precisely as in the plaintiffs', in black
ground and gold letters; and in the outer circle the words,
“Sole Agent, George Clark, New York,” the words, “Sole
Agent, New York,” being the same as in the plaintiffs', even as
1 Ante, § 34. 2 25 Barb. 76; R. Cox, 206.
390. Law OF TRADE-MARKS. [$ 391.
to their position; the place of their beginning and ending, and
the stamp for the letters, being also exactly alike in both.
$ 889. There was thus an evident design to imitate the
plaintiffs' mark, and it was successfully carried out by actu-
ally transferring the face of the plaintiffs' die to the defend-
ants', in all respects, expect that the plaintiffs have on theirs
“Wm. Whitewright, Mile-End, Glasgow,” “J. Clark, Jr., &
Co.,” where the defendant has “ George Clark, Seed Hill,
Paisley,” “Clark & Co.” The effect of this imitation Was,
that all, except very cautious persons, would be deceived.
Some, who may have known that Wm. Whitewright was the
agent of the plaintiffs, would naturally suppose that George
Clark had been substituted; so that the difference in the
names of the agents would not prevent deception. The name
“Clark & Co.” is so near to “J. Clark, Jr., & Co.” that it
would pass for the same; especially when placed in the same
position, in the same kind of letters, and on the same ground.
The difference in residence, being stamped so as to read in
the reverse of the rest of that circle, might pass unnoticed.
§ 390. The court, in modifying an injunction previously
granted, said of the defendants: “ Their firm name is J. & J.
Clark & Co. They manufacture six-cord cabled thread: they
have George Clark as their agent in New York. All this
they may express, as well as the number of their thread; but
they should express it so as not to appear to imitate the
plaintiffs'. This could be done by inserting their firm name,
instead of only a part of it, by changing the order of the colors
in the concentric circles, and the style of the lettering and
figures, and the position of the letters. There will be still
a similarity between the labels of the two that may mislead
some. But this results from two persons of nearly the same
name being engaged in the same business, and the undoubted
right of each to use his own name, and to describe the article
which he sells by its well-known name; but does not result
from an imitation of the mark of the other.”
§ 391. The foregoing suggestion of Mr. Justice Mitchell,
in delivering the opinion of the court, must be taken cum
grano salis. The court was not called upon to devise a label,
§ 392.] INFRINGEMENTS. 391
or a mark for the defendants. We must separate the judg-
ment from the mere obiter dictum, or we may be sadly mis-
led as to wherein consists the plaintiffs’ trade-mark. The
four concentric circles, the inner one in gold, and the next
in silver, the whole bounded by two concentric black lines,
constitute the essential elements of the technical trade-mark.
That being the case, the defendants would not have any
right to use them for the same class of merchandise, even
by changing the order of the colors, and the style of the
lettering. ſº .
§ 392. In the case of McLean v. Fleming,' the facts were
as follows. As early as 1834, Dr. Charles McLane made and
sold liver pills, putting them up in wooden boxes, labelled
“Dr. McLane's Liver Pills.” In 1844, Jonathan Kidd, hav-
ing purchased the exclusive right from him, began, at Pitts-
burg, Pennsylvania, to make and sell them. In 1845, Kidd
formed a partnership with John Fleming, under the name
of Jonathan Kidd & Co. Kidd died in 1853, and Fleming,
the surviving partner, and one Cochrane Fleming, having
purchased from Kidd's executors all his interest in the busi-
ness, entered into partnership, under the name of Fleming
Brothers. The firm continued until 1865, when Cochrane
retired. John continued in the business under the firm
name until his death, in 1870, whereupon Cochrane suc-
ceeded under his will to all his rights in the business.
From the year 1847 the pills were put up in boxes sealed on
the top with a red seal, bearing the words “McLane's Liver
Pills,” and enclosed in a wrapper containing, among other
things, the words “Dr. C. McLane's Celebrated Liver Pills.”
Other changes, not material here to be considered, were sub-
sequently made. In 1851, James H. McLean began, at St.
Louis, Missouri, to make and sell pills under the name of
“Dr. McLean’s ”or “Dr. J. H. McLean’s Universal Pills,” and
placed them in boxes sealed similarly to the plaintiff's, and
in wrappers of color and appearance similar to his. In 1872,
McLean changed his wrappers, on complaint of Fleming,
and adopted new ones, which did not infringe on the label
1 96 U. S. 245; 13 Off. Gaz. 913.
392 • LAW OF TRADE-MARKS. [$ 393.
of the latter. The court below decreed an injunction against
the use by McLean of his name, etc., as above given, upon
labels or wrappers similar to those of Fleming, and also
decreed an account and costs. The Supreme Court of the
United States affirmed the decree, as to injunction, but re-
versed it as to costs and damages, because of long continued
acquiescence. There is but little instruction in this case on
the point of infringement. McLean, of course, had a right
to use his name as he did, if he had not imitated Fleming's
labels and wrappers.
§ 393. “In Equity, the right to give relief to the trader
whose trade had been injured by the piracy appears to have
been originally assumed by reason of the inadequacy of the
remedy at law, and the necessity of protecting property of
this description by injunction. But although the jurisdiction
is now well settled, there is still current in several recent
cases language which seems to give an inaccurate statement
of the true ground upon which it rests.” Such is the lan-
guage of the Lord Chancellor of England in 1865. He then
takes up Croft v. Day,” and Perry v. Truefitt,” where the late
Lord Langdale is reported to have used words, which place
the jurisdiction of courts of equity to grant relief, in cases of
piracy of a trade-mark, entirely upon the ground of the fraud
that is committed when one man sells his own goods as the
goods of another. He also quotes the language attributed to
Vice-Chancellor Wood : * “All these cases of trade-mark,
therefore, turn not upon a question of property, but upon this,
whether the act of the defendant is such as to hold out his
goods as the goods of the plaintiff.” This statement the
Lord Chancellor pronounces to be inaccurate. For, “First,
the goods of one man may be sold as the goods of another
without giving to that other person a right to complain, un-
less he sustains, or is likely to sustain, from the wrongful
act some pecuniary loss or damage. Thus in the case of
Clark v. Freeman, 11 Beav. 112; 17 Law J. Rep. (N. s.) Ch.
142, the eminent physician, Sir James Clark, applied for an
1 11 Jur. (N. s.) 513. * 7 Beav. 84. 8 6. Id. 56.
* 1 Hem. & M. 287; 32 L. J. R. (N. s.) Ch. 721.
§ 394.] INFRINGEMENTS. 393
injunction to restrain a chemist from publishing and selling a
quack medicine under the name of “Sir James Clark's Con-
sumption Pills’; but the court refused to interfere, because it
did not appear that Sir James Clark had sustained any pecu-
niary injury. Secondly, it is not requisite for the exercise of
the jurisdiction that there should be fraud or imposition prac-
tised by the defendant at all. The court will grant relief,
although the defendant has no intention of selling his own
goods as the goods of the plaintiff, or of practising any fraud
either on the plaintiff or the public. If the defendant adopt
a mark, in ignorance of the plaintiff's exclusive right to it,
and without knowing that the symbols or words so adopted
and used are current as a trade-mark in the market, his act,
though innocently done, will be a sufficient ground for the
interference of the court, as is plain from the decision of
Lord Cottenham in the case of Millington v. Foz, to which I
entirely assent, and from the learned Vice-Chancellor's own
opinion in the case of Welch v. Knott, 4 Kay & J. 747, 751.
Imposition upon the public, occasioned by one man selling
his goods as the goods of another, cannot be the ground of
private action or suit. . . . The true principle, therefore,
seems to be that the jurisdiction of the court in the protection
given to trade-marks rests upon property; and that the court
interferes by injunction because that is the only mode by
which such property can be effectually protected. The same
things are necessary to constitute a title to relief in equity in
the case of the infringement of the right to a trade-mark, as
in the case of the violation of any other right of property.
First, the plaintiff must prove that he has an exclusive right
to use some particular mark or symbol in connection with
some manufacture or vendible commodity; and, secondly,
that this mark or symbol has been adopted or is used by the
defendant so as to prejudice the plaintiff's custom, and injure
him in his trade or business.”
§ 394. Lord Cranworth, in the same case, fully concurred
in the principle just enunciated; and intimated that to hold
otherwise would be to make the Court of Chancery auxiliary
to the protection of fraud; for the principle is founded on
394 LAW OF TRADE-MARKS. [$ 395.
honesty and good sense, and rests on authority. Lord Kings-
down, in the same case, also placed the right of a plaintiff in
a suit for infringement upon the ground of property in the
mark; and said that the fundamental rule is, that one man
has no right to put off his goods for sale as the goods of a
rival trader, by using his name, mark, or other indicia of origin
or manufacture. º .
$ 395. The Supreme Court of Connecticut, in Boardman
v. The Meriden Britannia Co., in 1868, said that the object
or purpose of the law in protecting trade-marks is twofold;
first, to secure to him who has been instrumental in bringing
into market a superior article of merchandise, the fruit of his
industry and skill; secondly, to protect the community from
imposition, and furnish some guaranty that an article pur-
chased as the manufacture of one who has appropriated to
his own use a certain name, symbol, or device as a trade-mark,
is genuine. Consequently, the violation of property in trade-
marks works a twofold injury; the appropriator suffers, in
failing to receive that remuneration for his labors to which he
is justly entitled, and the public in being deceived, and in-
duced to purchase articles manufactured by one man, under
the belief that they are the production of another. Robert-
son, J., in Corwin v. Daly,” said that the origin of the favor
shown to trade-marks was the protection of the public, and
not merely of the individual dealer. The first case reported
containing this doctrine, on which all the others seem to
depend, is found in a note of Doderidge, J., to the case of
Southern v. How,” and referred to by Lord Hardwicke, in
Blanchard v. Hill,” and then the action was brought by a pur-
chaser. In Blanchard v. Hill, Lord Hardwicke makes the
right of action grow out of the fraudulent design both of put-
ting off an inferior article and drawing away customers. He
possibly may have meant that either was sufficient, and that
both were not necessary. The doctrine was recognized as law
ty Lord Mansfield, in Singleton v. Bolton,” and enforced in
1 35 Conn. 402. 2 7 Bos. 222.
8 Popham, 143, and Cro. Jac. 471. * 2 Atk. 484.
5 3 Doug. 393.
§ 396.] INFRINGEMENTS. 395
Sykes v. Sykes, and thoroughly sifted and defined in the elab-
orate and important case of Crawshay v. Thompson.” In this
last case, a bold attempt was made to make the defendant lia-
ble for the use of trade-marks without reference to his in-
tention, but it was thoroughly canvassed and rejected by the
entire bench; so that, at common law, an action will not lie
without proof of an intent to deceive. Courts of equity
operate by their remedial powers to prevent the continuance
of a wrong, and reach the past action of the offender by con-
verting him into a trustee for the injured party; so that
now, even though the article sold with the simulated mark
be equally good with the genuine, the owner of the latter is
entitled to preventive relief, although the public may not have
been the sufferer. It seems impossible now to discover the
first assumption of this jurisdiction, or its reasons.”
§ 396. In the case of The Dixon Crucible Co. v. Guggen-
heim,” the facts were as follows. The stove polish of the plain-
tiff was put up in small cubical blocks, and covered by a blue
printed wrapper, with advertising matter, and directions for
use on the four sides, with a yellow label at the ends. The
defendant's article was put up in cubes of about the same size
as the plaintiff's, with a blue wrapper and yellow ends. There
were slight differences when the two cubes were placed side
by side, but the general appearance was similar, so that per-
sons not thoroughly familiar with both might easily mistake
one for the other. The plaintiff's label read, “Stove Polish.
Dixon's Prepared Carburet of Iron"; and the defendant's,
“J. C. Dixon's Stove Polish, – Carburet of Iron.” The tes-
timony of witnesses was very conflicting as to the liability to
mislead. The court decided on judicial inspection. The de-
fendant's article was put up closely to resemble the plaintiff's
article in shape, wrappers, and labels. The name “Joseph
Dixon & Co.” appears on the plaintiff's label; and “J. C.
Dixon’’ on that of the defendant, who gave no explanation
of the use of that name. If he did not mean to deceive, why
* 3 Barn. & C. 541. 2 4 Man. & Gr. 357.
* Corwin v. Daly, supra.
* 7 Phila. 408; 2 Brewst. 321; 3 Am. L. T. 288; R. Cox, 559.
396 LAW of TRADE-MARKS. [$ 397.
did he use it, and at the same time so closely imitate the
wrappers and stamp of the plaintiff? So reasoned Judge
Paxson, in granting an injunction against the imitation of the
so-called trade-mark.1 . -
$ 897. In Lockwood v. Bostwick,” the court said, inter alia:
An inspection of the two labels shows that the one used by
the defendants, and the use of which the plaintiffs seek to
restrain by injunction, is, in respect to form, color, words,
and symbols, so like the former as to make it manifest that
the design of the defendants in using it was to deceive, the
resemblance being such as would be likely to impose upon
ordinary purchasers. It was alike in the form and size of the
label; in the color of the paper, — a peculiar, delicate, gray
tint; the machine or apparatus represented was one that had
no existence in fact, but resembling the real machine suffi-
ciently for the difference to escape observation unless upon
attentive examination; and the word “Bovina ’’ was substi-
tuted for “Bovilene,” printed in the same type, and in
exactly the same place as the other, at the head of the label.
The design evidently was to depart from the other sufficiently
to constitute a difference when the two were compared, and yet
to do it so skilfully that the difference would not be detected
by an ordinary purchaser unless his attention were particularly
called to it, and he had a very perfect recollection of the other
label. The design was to deceive, and to obtain, in the manu-
facture and sale of the article, any benefit or advantage that
might be gained by its being purchased for another article of
the same description, which was known and distinguished by
* Attention is invited to the fact that the learned judge did not pass upon
this as a pure common-law trade-mark. He used the term in a broad non-
technical sense, referring to the Pennsylvania statute of March 31, 1860, for the
pnnishment of forging or counterfeiting “any representation, likeness, simili-
tude, copy, or imitation of the private stamps, wrappers, or labels usually
affixed by any mechanic or manufacturer, or used by such mechanic or manu-
facturer, on or in the sale of any goods, wares, or merchandise, with intent,” &c.
Paxson, J., said in his opinion, “This act is very broad in its terms, and
comprehends everything which could possibly be included under the term
trade-mark.” Yet, for our present purpose, it serves as an illustration of the
principles applicable to trade-marks proper and quasi trade-marks.
2 2 Daly, 521; R. Cox, 555.
§ 397.] INFRINGEMENTS. 397
a particular trade-mark. There could be no other motive;
and it was done with the shallow expectation that the law
would not see through the motive, but pronounce that the two
labels were not the same, by simply distinguishing the points
of difference between them. So far as the object sought
could be attained, it would operate to the plaintiffs' detriment
by diminishing the sale of their articles in the market, and
they are entitled to be protected by a court of equity from
this attempt on the part of rivals to deprive them of the fruits
of their industry or enterprise in making their own fabric
known and recognizable by its distinctive trade-mark. In
Burnett v. Phalon, it was found as a fact, that the defend-
ants well knew that the plaintiffs used the word “Cocoaine”
as their trade-mark; yet the defendants took the word “Co-
coine” as their mark, to designate the same kind of merchan-
dise, to wit, a preparation of cocoa-nut oil. The court, by
Bosworth, C. J., said, in substance, that the defendants had
been frequently experimenting with cocoa-nut oil, and selling
it since 1840 (and the trial was in 1859), and vending it as a
preparation of hair-oil. It was a simple matter to get up a
label, and impress on it, and on the bottles containing their
compound, the word “Cocoine,” omitting one letter only of
the plaintiffs’ word. But no plausible or rational explanation,
except an intent to defraud, could be given of a transaction so
bold as to take the word “Cocoaine.” It was, undoubtedly,
deemed wiser to instruct the chemist to compose a name
somewhat indicative of the substantial ingredients of the
compound, without informing him of the fact that Burnett
was manufacturing and selling largely a similar article, which
was known as “Cocoaine.” In this case similarity between
the labels of the parties could hardly be said to exist; and
yet the piracy was manifest. A very similar case was de-
cided in the Court of Paris, in 1862, — Guislain & Co. v. La-
brugnère.” The plaintiffs made and sold a hair-dye, to which
they had given the name “Eau de la Floride” (Florida Wa-
ter). The defendant, for a product of the same nature made
or sold by him, took the name of “Eau de la Fluoride" (the
19 Bos. 192; 5 Abb. Pr. (N. s.) 212; 3 Keyes, 594. * 9 Annales, 40.
398 LAW OF TRADE-MARKS. w [$ 398.
last word signifying a compound of fluorine with a metallic
or combustible base). By this ingenious interpolation of a
single letter, the defendant thought to escape the legitimate
consequences of his roguery, while he deceived the public for
his own profit. Having been defeated in the court below, he
appealed. The appellant's counsel argued that there was
really no conflict between the two trade-marks; for the
plaintiffs represented their product as a natural water im-
ported from Florida, whence its name; while the appellant
offered his article only as a chemical composition, — a com-
bination of fluorine with nitrate of lead or of silver, whence
its name of Fluoride; and that this term of chemistry desig-
nates the combination of fluorine with bodies less electro-
magnetic. Moreover, the appellant claimed to have always
maintained a dissimilarity of flasks, labels, bills, advertise-
ments, notices, etc. This pretence did not avail. The ap-
pellate court not only sustained the judgment, but, finding
itself possessed of the elements necessary for making a new
and more just appreciation, increased the damages given by .
the court below.
$ 398. In the Tribunal of Commerce of the Seine, in 1866
(Bardou et al. v. Sabatou et al.."), came up this interesting
case. Bardou senior was the first manufacturer of cigarette-
paper in France, in or about the year 1841. This paper was
sold in little packets covered with glazed paper, having a
brown ground, on which were printed in gold the letters J. B.
separated by a lozenge. In consequence of an error on the
part of the public, this lozenge was taken for the letter O,
for which reason the paper became known only under the
name of “JOB Paper.” The maker, J. Bardou père, accepted
this designation, and adopted the name “JOB" in the regis-
tration of his trade-mark. Many decisions of courts had con-
firmed his title to this word as his commercial emblem or
mark. A lithographer of Toulouse made and sold similar
packets of paper, having the same color, but bearing different
ornaments, and over which he had inscribed in large charac-
ters this notice: “Guerre à Job Papier très supérieur.
1 14 Annales, 140.
§ 398.] INFRINGEMENTS. 399
Paris, 80, Rue de Rivoli, 80. Take notice. — Let no person
be surprised. I am not the same mark of the cover which
bears the title Job. But I guarantee that I enclose a paper
superior to Job by the addition of hygienic substances.” The
sale of this paper was announced in Paris as well as in Tou-
louse, the prospectus affixed reading thus: “I possess the sole
general use of the cigarette-paper Guerre à Job, incontestably
the best paper that exists, the superiority of which is recog-
nized not only by all consumers, but also by the Messrs.
Bardou & Pauilhac, proprietors of the Job paper. The last
observe silence to the defiance given to them to dare say
that the paper Guerre à Job is not superior to theirs,” etc.
The defendants voluntarily withdrew from their notice the
names of the plaintiffs. The design of the defendants in
using the name of the article and the names of the true
owners of the mark was too manifest. The court therefore
enjoined them from using the name Job, saying, among
other things: — “As to the suppression of the name Job:
Whereas, Sabatou, a fabricant of cigarette-paper, sells his
products under the same form as those of the plaintiffs, and
employs a paper wrapper of the same color, bearing the in-
scription ‘Guerre à Job’” (etc., as above stated); “whereas,
the lawful competition which should exist between merchants
cannot be extended to include a right to take the distinctive
denomination of a rival even for advertisements and circulars,
with the design of diverting his custom; whereas, it is mani-
fest that Sabatou, in the use of the name Job, and in indi-
cating the superiority of his paper, had no other object than
to destroy the reputation enjoyed by the paper sold under
the title Job, and to cause confusion by holding forth the
said name; therefore, it is ordered that Sabatou cease for the
future to use the name Job on his covers and prospectuses.
As to damages: Inasmuch as, by the conduct of Sabatou, the
plaintiffs have shown that they are entitled to reparation for
injury received, and this tribunal possesses the elements for
the appreciation of the same, let Sabatou be held to pay them
the sum of five thousand francs, with costs.” On appeal to
the Court of Paris, which heard the matter in 1869, the
400 Law of manºxanks. [$ 401.
judgment was affirmed, although the damages were reduced
to three thousand francs."
§ 399. The foregoing case has a peculiarity worthy of the
observations which the reporting editor makes upon it. He
says that it should be remarked that, for the purpose of duly
estimating the wrongful act, the tribunal took into considera-
tion the fact that the defendant Sabatou had disparaged the
products of the plaintiffs, wherefore it peremptorily ordered
the suppression of the use of their names and the denomina-
tion Job by him. This he deems to be just, as it cannot be
admitted that the liberty of industry and commerce author-
izes such use of the name of a fabricant, or the denomination
of a product, for the purpose of avowing superiority, and at-
tracting the attention of the public. It is a usurpation, says
he, from the instant one uses an acquired reputation to make
known, and cause the acceptance of, his own products.
$ 400. The Court of Cassation, in 1867, − in Lagarde v.
Piper.” — held: It is a fraudulent imitation of a mark, falling
within the provisions of Art. 8 of the law of June 23, 1857,
to servilely copy the label of another merchant, although a
name or pseudonym be interpolated other than that of the
true owner. The offence is committed in France, and not in
a foreign country, even although the label bearing the mark,
which has been in part fraudulently imitated, is not intended
for use in France, but is intended to be sold in foreign coun-
tries, for the purpose of there being affixed by others.” The
piracy consisted in the imitation in part, with the design of
profiting by the reputation belonging to another.
§ 401. In Gillott v. Esterbrook,” the defendants took only
a portion of the plaintiff's mark, viz. the numerals 303 (which
by themselves probably could not be a lawful trade-mark),”
and yet were found guilty of infringement. The defend-
ants manufactured a pen in shape, color, size, and pattern so
closely resembling the pen of the plaintiff that it required
1 15 Annales, 115. * 18 Id. 203.
* See Glen Cove Manuf. Co. v. Ludeling, ante, $ 360.
4 47 Barb. 455; 48 N. Y. 374; 8 Am. R. 553.
* See ante, §§ 225–233; also Glen & Hall Manuf. Co. v. Hall, 5 Alb. L. J. 109;
6 N. Y. Sup. Ct. (6 Lans.) 158; Com. of App., 61 N. Y. 226; 19 Am. R. 278.
§ 401.] INFRINGEMENTS. 401
&
an expert to distinguish them. That much they had a per-
fect right to do; and if they had gone no farther toward
imitation, no legal injury would have resulted. But they
imitated the boxes used by the plaintiff, with a fancy-paper
label similar to his, placed in the same position ; took the
number “ 303 " by which the plaintiff designated his pen;
and on the bottom of the box placed a “caution” somewhat
similar. Potter, J., said, inter alia : “These labels and cau-
tions (except the names of the parties) are composed of words
in common use in our language, which cannot be exclusively
appropriated as trade-marks. True, this selection of boxes,
sizes, colors, labels, cautions, and style of lettering, may all
be designed to aid in the perpetration of a fraud, and may
be the most conclusive evidence of the intent to mislead the
public, and to commit a fraud upon the plaintiff in relation to
some device of his connected with a trade-mark; yet merely
because they are such evidence, or because they have been
used with such intent, it does not follow that their use can
be legally enjoined and restrained. It is where the person
designing to practise a fraud by pirating a trade-mark uses
these evidences so connected with the trade-mark itself as
to effect a fraud, that he can be reached by the powers of
the court. True also it is, that it is the right of the plaintiff
to be protected against frauds, yet the fraud must be one in
relation to a substantial legal right of the party, and protec-
tion will not, in all cases, be extended to the mere evidence
of fraud alone ; and the courts are bound to be especially
cautious that in the exercise of the power to restrain injus-
tice they do not encroach upon the public interest, by giving
an improper check to a worthy and laudable spirit of enter-
prise, emulation, and competition in any department of busi-
ness. It must be admitted that every citizen has the right, if
he will, to manufacture and to sell steel pens of any pattern,
shape, color, size, state of flexibility, or fineness of point; he
may sell them singly or in quantities, on cards or in boxes of
large or small size, and with such ornamentation as fancy or
interest may dictate; he may imitate any pattern or quality
of pen, even if known to be made by any other manufacturer;
26
402 LAW OF TRADE-MARKS. [Š 408.
he may, if he can, make a superior article in material, pattern,
or quality, and, if he can do so, he has the right to select a
device or symbol, as a trade-mark, to designate his manufac-
ture from others; and, if such device or symbol relates to the
origin or ownership of the goods to which it is affixed, his
legal right to protection is undoubted. Such protection is no
restraint upon the freest exercise of talent, enterprise, and
competition in trade, but rather a proper stimulant to en-
courage competition. His superior skill and enterprise give
him the right to its profits and advantages, and this is giving
no encouragement to monopolies so destructive to the free-
dom of trade. It may be that in this case the defendant's
pen is equal in merit, or even superior to the plaintiff’s. This
was not an issue in the case.” }
$ 402. In Walton v. Crowley, Betts, J., said: On ordinary
observation, the labels used by the two parties in this case
would not be apt to be distinguished the one from the other,
— the size, shape, vignette, coloring, and marking being so
nearly identical as to make them easily pass for the same;
and the only difference discernible, on considerable scrutiny,
being in the name of the warrantor, stamped upon them in
letters so small as not readily to attract notice. It is this
apparent similitude or counterfeiting which is the grievance
complained of. A tradesman, to bring his privilege of using
a particular mark under the protection of equity, is not
bound to prove that it has been copied in every particular.
It is enough for him to show that the representations em-
ployed bear such a resemblance to his as to be calculated to
mislead the public generally who are purchasers of the article,
and to make it pass with them for the one sold by him. If
the indicia or signs used tend to that result, the party aggrieved
will be allowed an injunction staying the aggression until the
merits of the case can be ascertained and determined.
§ 403. In one case,” the plaintiffs, rectifiers of whiskey, had
as a brand for their goods the representation of two anchors
placed near together in an upright position, the upper parts
1 3 Blatch. 440; R. Cox, 166.
* McCartney v. Garnhart, 45 Missouri (4 Post's R.), 593.
§ 404.] INFRINGEMENTS. 403
inclining outward, with a rope attached. Over the device, in
a circular form, were the initials “S. Mc.” The device and
letters were stencilled upon the heads of barrels containing
a particular kind of whiskey known in the trade as “Double
Anchor,” or “ Double-Anchor Whiskey.” They brought suit
to enjoin the defendant from using in his whiskey trade an
alleged counterfeit in imitation of their trade-mark. The
supposed imitation consisted in the representation of two
picks placed near together in an upright position, with the
handles inclining inward. Between the handles was sus-
pended a pair of balances or scales. The defendant's name
was placed over the picks, and the words “Old Bourbon"
below; the whole inscription reading, “J. H. Garnhart's
Old Bourbon.” The defendant stencilled this brand upon the
heads of the whiskey-barrels. He used the whiskey thus put
up and branded for his mountain trade, and called it “Pick
Brand.” -
§ 404. The picks were alleged to be an imitation of the
anchors on the plaintiffs' barrels. That was the only point
of resemblance insisted on. In all other particulars the court
said that the marks were wholly dissimilar. Currier, J., in
delivering the opinion of the Supreme Court of Missouri, said
that “the defendant’s “picks’ resembled the plaintiffs’ ‘an-
chors’ substantially, as a real pick resembles a real anchor of
reduced dimensions. One who would mistake a miner's pick
for a diminutive anchor might confound the defendant's brand
with that of the plaintiffs', and hardly otherwise. The pick
in the defendant's brand is quite as good an imitation of the
article intended to be represented, as is the anchor in the
brand of the plaintiffs of the nautical instrument there sought
to be represented. The resemblance between the two brands
is too slight to be likely to mislead; and there is nothing in
the testimony which shows that the defendant sought to dis-
pose of his whiskey as that of the plaintiffs, or of the plain-
tiffs’ rectification.” We see here evolved the sole point:
Was the pick made so nearly like the anchor-mark as to be
likely to deceive the public? No. Therefore, the injunction
was properly refused. -
404 LAW OF TRADE-MARKS. [$ 407.
$ 405. Ever since the year 1848, a plaintiff, Baron Seixo,
had caused his casks to be stamped with his coronet on the
top, and with his coronet and the word “Seixo" at the bung;
and the evidence shows that his wine has thus acquired in
the market the name of “Crown Seixo Wine.” When, there-
fore, the defendants, in the year 1862, adopted as their device
a coronet with the words “Seixo de Cima,” meaning Upper
Seixo, below it, the consequence was almost inevitable, that
persons with only the ordinary knowledge of the uses of the
wine trade from Oporto would suppose that, in purchasing a
cask of wine, they were purchasing what was generally known
in the market as “Crown Seixo '’ wine.
$ 406. A long and elaborate attempt was made to show
that the defendants held a right to the use of the trade-mark
which they had adopted. They held, either as owners or
lessees, a vineyard adjoining that of the plaintiff, and several
small vineyards on the opposite side of the river. “Seixo"
means “pebbly" or “stony.” Vino de Seico, therefore, is
only the same thing as Vin de Grave in French, or Stein
Wein in German. “Even assuming the truth of what is
contended for the defendants, i. e. that parts of their vine-
yards are known by the name of Seixo, that does not justify
them in adopting a device or brand, the probable effect of
which is to mislead the public when purchasing their wine
to suppose that they are purchasing wine produced from the
vineyards, not of the defendants, but of the plaintiff. Cases
may be imagined, though very unlikely to arise, in which a
person bringing into the market for the first time the produce
of a newly established manufacture, to come into competition
with one already established, may really be embarrassed as to
the mode in which he should describe it, so as not to interfere
with the description adopted by a manufacturer who has been
before him. If such a case should arise, it must be dealt with
on its own merits.” Appeal dismissed, with costs.
§ 407. A judgment of the Tribunal of Commerce having,
so long ago as 1852, decided in principle that the father Gar-
1 Seixo v. Provezende, 12 Jur. (N. s.) 215; L. R. 1 Ch. 192; 14 L. T. (N. s.)
314; 14 W. R. 357. - -
§ 408.] INFRINGEMENTS, 405
nier, $n his own name, and in a representative capacity as
Procureur of the Carthusian monks, was the sole possessor of
the title to the Liqueur de Chartreuse, he frequently after-
wards found himself involved in litigation in protecting his
right. In the Tribunal Correctionnel of Grenoble, in 1857,
came up one of the cases, Garnier v. Berthe." The defend-
ant had made liquors which he sold under the title Liqueur
de Grande Chartreuse. His label—which he had duly de-
posited — was on the same colored paper as that of the prose-
cutor; of the same form, dimensions, disposition of characters
and letters, with mottoes and phrases adopted by the monas-
tery; and certain light clouds which disappeared at a little
distance. This could not but cause confusion and error.
Worse still, he had printed on his marks the very arms of
the Chartreux, i. e. a globe surmounted by a cross. To es-
cape the just consequences of his fraudulent imitation, the
defendant set up: 1st. That his liquors were the same as
those of the Chartreux, whose secret he had penetrated by
the aid of magnetism (!), wherefore he called his liquors and
elixirs liqueurs et elixirs de la Chartreuse ; for, said he, to
give them another name would be to deprive them of their
special character. 2d. That he could not write his prospec-
tuses in any way not conforming to those of the Chartreux,
because his elixirs were similarly composed to theirs, and pos-
sessed the same virtues. 8d. That his marks, labels, etc. dif-
fered essentially from those of the monastery, because they did
not bear liqueur de la Chartreuse, or de la Grande Chartreuse,
but liqueur fabriqué à Saint-Pierre-de-Chartreuse, where he
had established his place of business: and that he had on his
labels his Exposition medal of 1855, his name, etc. The court
was not beguiled with his oily blandishments, but ordered the
confiscation of all his liquors and elixirs, and the destruction
of his false labels and marks, with a fine of five hundred
francs, six months' imprisonment, and the publication of his
villany in eight public journals at Paris and other cities.
§ 408. In the Tribunal Correctionnel of the Seine, in 1868
(Louis Garnier v. Paul Garnier”), the same name as a sym-
1 4 Annales, 119. 2 14 Id. 252.
§
406 LAW OF TRADE-MARKS. [$409.
bol of trade was brought into controversy. On certain li-
quors, seized at the defendant's place at the demand of the
plaintiff, was found this title, somewhat changed. The labels
of the bottles bore marks of the same form, dimension, and
color as those of the monastery of the Chartreux, but with a
framing or border a little different, and the inscription, “Li-
queur Hygiènique de la Chartreuse,” followed by the signature
of P. Garnier. Held to be an infringement. The fraudulent
design of the defendant was manifest from the circumstances.
It did not matter that both parties bore the same surname,
and that the signatures placed upon the bottles were distin-
guished by the initials of the baptismal names, and with
entirely different flourishes.
$ 409. Upon reference to the case first referred to, - that
in the Court of Grenoble, in 1852, Garnier et al. Carthusians
v. Rivoire,” — we find that the question from the beginning
was in this, Whether the name of Chartreuse, given by the
Chartreux to the peculiar liquor manufactured by them, had
not become a generic denomination that any one could law-
fully employ to designate liquors of the same kind. The court
decided that the plaintiffs had not the monopoly of the article
of manufacture; wherefore the defendant had a right to make
and vend a similar article, if he possessed the secret of manu-
facture, and in default of a name to give it one, even suggested
by the resemblance, leaving the public to judge ; but that the
name Chartreuse must not be employed on labels, unless as
a simple term of comparison, as, for example, imitation de
Chartreuse, the whole in the same kind of characters; or if
another denomination were used, the sense should not be
equivocal, to draw to the defendant. His custom must de-
pend upon his own merit, without diverting the trade of the
plaintiffs, the Chartreux. The reputation of the delicate flu-
ids seems to have kept the venerable brotherhood in constant
litigation. One decision made in their favor affected all the
manufacturers of similar articles in the department of Isère
and the Rhone; and they combined to prove the name Char-
treuse to be but generic. They signally failed, on appeal.
1 4 Annales, 155.
§ 410.] INFRINGEMENTS. 407
The court said that the term Chartreuse, which is but an
abbreviation of the label of the Chartreux, is not a generic
name, as would be a name derived from the nature of the
liquor, or the substances of which it is composed; and the
liquor would not have been so named, but that it had been
invented at the monastery of the Grande Chartreuse, and
made by the Carthusians; so that the name at once desig-
nated the inventor, the maker, and the place of manufacture,
and constituted, in each of these particulars, a distinctive
mark, a specification which could not with verity be applied by
others to a similar or analogous product of Grenoble. The
same doctrine was affirmed, in 1868, in Garnier v. Lindière et
al., M. Pataille, the counsel for the Chartreux, argued that
the composition of the article made by them is a secret, and,
even if chemistry could detect the presence of vegetable es-
sences in a liquor, it is powerless to specify, in a complete
manner, all the medicinal or aromatic plants entering into the
composition, and still less to determine the proportions and
the process of manufacture. As a consequence, if one had the
right to make liquors more or less approaching in kind those
of the Chartreux, no one could say that he made the identical
liquor. He contended that therefore no one had the right to
copy the idea embraced in the mark. The article not being
the same, what right had any one to mislead by a label which
implied that the liquors were identical? Then, the difference
of price was injurious to the owners of the mark and makers
of the genuine article; for the spurious was sold at one half
or one third the price. The lowness of the price might not
deceive merchants, who could not fail to know the cost of the
genuine article; but, as to the public, that lowness is only
the means of augmenting the sale of the false article. The
depreciation of the reputation of the plaintiffs' article should
be taken into consideration in adjusting damages.
$ 410. The case of Louis Garnier v. Paul Garnier came
up in the Court of Paris, on appeal, in 1870,” and the judg-
ment of the tribunal was affirmed. The court held, that
property in a denomination or a mark is acquired by the first
1 14 Annales, 225. 2 17 Id. 241.
408 LAW OF TRADE-MARKS. [$412.
user thereof, independent of all deposit (equivalent to our
registration), wherefore the special denomination of Char-
treuse employed by the Carthusians to designate the liqueurs
manufactured by them at their monastery is, as a trade-mark,
their exclusive property. Consequently, they have a right to
demand that other manufacturers or dealers be forbidden to
use the word “Chartreux,” or “Chartreuse,” upon the class
of merchandise that they, the plaintiffs, manufacture. Not
to let the matter drop without exhausting all means of de-
fence, the defendant carried his case to the court of last
resort. In April, 1872, it was decided in the Court of
Cassation," where the claim of the Carthusian monks to the
right of exclusive use of the word so much harped on was
fully sustained. Therefore, we may regard the single word
“Chartreuse” as possessing all the essential characteristics of
a trade-mark;” and we may rest assured that any one is an
infringer who varies that word, as did the defendant, in the
futile hope that he might evade the penalty of the law.”
§ 411. In Edelsten v. Edelsten,* Court of Appeals in Chan-
cery, 1863, the facts of the case were that the plaintiff, a wire
manufacturer, with a view of distinguishing his wire from
that of other manufacturers, in the year 1852 adopted as a
trade-mark an anchor on the metal labels, called “tallies,”
which were attached to each bundle of wire sent into the
market by the plaintiff's firm. For this reason the plaintiff's
wire acquired the name of the “Anchor-brand Wire,” by which
it has since generally been known to the trade. The plaintiff
complained of the defendant's use of a crown and an anchor
as being a colorable simulation of his trade-mark. Judg-
ment with costs, and an account of profits. Affirmed on
appeal, with costs.
$412. In Woolam v. Ratcliff,” the plaintiff and the defend-
ant were both large silk throwsters. The plaintiff was in the
1 17 Annales, 257. * Ante, § 143. -
8 So held, virtually, in the U.S. Cir. Ct., S.D. of N. Y., in 1876, in four cases
not reported: Grézier v. Sage, Grézier v. Lieutand, Grézier v. Chalvin, and Gré-
zier v. Girard.
4 1 De G., J. & S. 185; 9 Jur. (N. s.) 479; 7 L. T. (N. s.) 768; 11 W. R. 328;
1 N. R. 800. -
5 1 Hemming & Miller, 259.
§ 414.] INFRINGEMENTS. 409
habit of making up his bundles of silk in a particular form,
with forty-eight heads of silk in each bundle, tied with five
strings in different places, with the silk protected from the
knots of the strings by pieces of foolscap paper of a particu-
lar form, the heads of silk being themselves tied with silken
strings of different colors to mark the quality of silk, and
containing the particular mark, “St. A *****,” which rep-
resented St. Alban's, the place where the plaintiff's manufac-
tory was situated, and which was well known in the trade as
the plaintiff’s trade-mark. . t
$ 413. The defendant made up a quantity of silk in bun-
dles, in exact imitation of the plaintiff's bundles, and affixed
to them a label exactly like that of the plaintiff, except that
the mark “ St. A ****** was omitted. V. C. Wood said,
inter alia: “This is a very singular case. I have had con-
siderable experience in cases of trade-marks, sometimes of
trade-marks simpliciter, and sometimes of trade-marks as one
of numerous indicia that a particular thing is the manufac-
ture of a particular person.” He then referred to the Omni-
bus Company case," where the words “Conveyance Company,”
“the green omnibus,” etc., were held sufficient to entitle the
plaintiffs to an injunction. The defendant, said he, might
have had those words painted on a yellow omnibus without
objection; and so of the other resemblances: the wrong lay
in the accumulation, not in any one of them alone. In con-
clusion, he said that “in this case the plaintiff has a peculiar
mode of making up his goods. This is not precisely a trade-
mark. . . . I think it has been established that in the English
market the “ St. A ****** would have been necessary and
sufficient as indicia of the plaintiff's goods.” Although there
was an express direction to the defendant to imitate the plain-
tiff's bundles, – an element of suspicion in itself, -he could
not treat it as conclusive. Bill dismissed, with costs.
§ 414. In the Court of Caen, in 1872 (Carpentier v. Cani-
vet”), it appeared that the plaintiffs, the brothers Carpentier,
manufacturers of chocolate in Paris, had been in the practice
of enclosing their products in envelopes bearing the fac-simile
* Knott v. Morgan, 2 Keen, 213. * 17 Annales, 233.
410 LAW OF TRADE-MARKS. [$ 414.
of a bill of exchange. The better to imitate a bill of ex-
change, the label, which has a double bordering of arabesques,
represents engine-turned paper of a gray tint, with a band
a little depressed in the middle, on which are printed the
words “Cinq Kilos de Chocolat” (five kilograms of chocolate),
and the engine-turned work is so done as to let appear the
words “Fabrique de Chocolat,” as if imprinted in the pulp
of the paper. Besides the immediate use of the label by
themselves, the plaintiffs had been in the habit of authorizing
the use of it by their agents in the provinces of France, with
the addition thereto of the name of the agent vending the
article, – the device always being claimed as the trade-mark of
the plaintiffs. The defendant, for the chocolate sold by him,
used a label also bearing the fac-simile of a bill of exchange,
but in many respects it was quite dissimilar in appearance.
In the Tribunal Civil of Caen, where the case was first heard,
the defendant successfully relied upon the variations, and the
complaint was dismissed, with costs. In the superior court
that judgment was reversed. Among other matters, we find
this upon the point of part infringement:— Per Curiam.
“If, as matter of law, the act of J une 23, 1857, which pro-
hibits the fraudulent imitation of trade-marks, could be
applied only in a case where the imitation is absolute and
complete between the genuine and the counterfeited mark,
it would constantly be evaded, and be illusory; and, in effect,
fraud — always so ingenious in the choice of means to which
it has recourse — would not fail to introduce in the execution
of its work such modifications of detail as, while insuring the
benefit of the counterfeit, would guarantee impunity. It
suffices to bring it within the intendment of the above-cited
act, that the imitation reproduces the characteristic traits of
the original, so that, at the first view of the purchaser, who
has not under his eye the points of comparison, and who
cannot recollect all the details, he should naturally be led
into error. In fact, the labels of the tablets of chocolate
exposed for sale, and seized in the magasin of Canivet, repro-
duce in the ensemble the trade-mark of Carpentier Brothers;
for the labels of both parties bear the fac-simile of a bill
$ 415.] INFRINGEMENTS. 411
of exchange; and the form, the dimension, and the position
of one and the other on the tablets, are identical; and to
him who has not under his direct gaze the mark of the Car-
pentier Brothers, the deceit is inevitable.” The judgment
below was reversed, with costs, etc.
$ 415. In the Tribunal of Commerce of the Seine, in 1868
(Panckowoke v. Wittersheim"), came up the case of the famous
“Moniteur,” of Paris. The facts are as follows. In 1789,
the predecessors of the plaintiffs founded a political and lit-
erary journal, under the title of “Gazette Nationale,” or
“Moniteur Universel.” In the eighth year of the Republic,
it became the administration organ, and so continued to be
until 1815. In 1816, it resumed its official relation. In
1852, the price of the journal was reduced; and in considera-
tion of the superior advantages to the public occasioned by
the increased publicity, it received the exemption of stamp
and postage duties. In 1864, the “Moniteur" made a con-
tract with the Minister of State for four years, as the official
organ. It was during this period of time that the same
owners commenced the publication of an evening edition of
their paper, under the title of the “Petit Moniteur,” which
became exceedingly profitable to its publishers. In 1866,
the Minister of State, not being inclined longer to submit to
the inconvenience occasioned by the duality of the journal,
authorized the publication of a new official paper by the
defendant, and which paper assumed the name of “Moniteur
Officiel de l'Empire Français.” This act of the defendant
was deemed by the owners of the old-established journal to
be a usurpation of title; so suit was brought. For a de-
fence, it was urged that the plaintiffs carried the inception
of their journal back no farther than 1789; while, in fact,
from the year 1760, other periodical publications had appeared
under the same name; and that therefore the plaintiffs could
not invoke the law applicable to the first occupant. Further,
that the publication had long gone under the principal title
of “Gazette Nationale’’; and that it was not until the year
1811 that it took for principal title the denomination of
1 15 Annales, 5.
412 LAW OF TRADE-MARKS. - [$ 415.
“Moniteur Universel”; but this title was so taken with a
knowledge of the fact that that name, as applied to journals,
had become public property, wherefore care was taken to
adjoin the distinctive qualification of universel; and that
under the general name of “Moniteur’ more than one hun-
dred and fifty journals had been published. Thus, said the
defence, there is the “Moniteur de l'Armée,” the “Moniteur
de la Flotte,” the “Moniteur de l’Industrie,” etc. The defend-
ant claimed that in law, as in fact, he had the greatest degree
of interest in avoiding confusion between the two journals;
and that he had established a difference between them in
taking the title of “Moniteur Officiel.” It was held, inter alia,
by the Tribunal, that the title of a journal is property. It
incontestably appears that the “Moniteur Universel,” whether
as a daily political and literary sheet, or as an historical col-
lection, has always been known under the simple title of
“Moniteur’”; and as in ordinary language, so in parliamen-
tary, and even in official phraseology, this single denomina-
tion serves almost invariably to designate this journal, even for
the periods when it was not the organ of the government, and
was not charged with the publication of official acts; and this
fact, which appears by all the documents, is also attested by
the “Bibliographie Historique et Pratique de la Presse Fran-
çaise,” p. 125, in an article devoted to said sheet, of which
the editor, Charles Joseph Panckoucke, was the founder; and
the plaintiffs, or those through whom they derived title, have
not since 1789 discontinued to publish the journal under the
denomination which was and is their property. If the word
“Moniteur" is within the public domain as a generic expres-
sion, it nevertheless constitutes, for those persons who have
adopted it to denominate their publication, a right of exclu-
sive application. If the word has figured in the titles of
certain journals which have ceased to appear, and figures still
in those of a great number of others which have made them-
selves the organs of special professional or local interests, it
has never been applied to any of the great local political jour-
nals of Paris other than the “Moniteur Universel.” If it were
now to be employed in carrying on a literary and political
§ 416.] $ INFRINGEMENTS. 413
journal other than that of the plaintiffs, an inevitable confusion
between the two papers would result, whatever else might be
the qualification adjoined thereto. This confusion is super-
abundantly demonstrated by the usage adopted, not only by
the public but by the agency also of the defendant, of naming
as the “Moniteur” the journal that the defendant proposes
to publish under the title of “Le Moniteur Officiel de l'Empire
Français.” After some further reasoning upon the subject,
the Tribunal gave judgment as follows. For these reasons,
forbid Wittersheim to take the title of managing printer of
“Le Moniteur Officiel de l'Empire Français,” or to make use
for the publication and carrying on of the journal under his
charge of the title of the “Moniteur,” either singly or with
the qualification “Officiel,” unless he acquire the right. Or-
der the insertion of this judgment in three newspapers, at the
choice of the plaintiffs and expense of the defendant. Con-
demn the defendant to costs. The defendant appealed; but
the Minister of State, Rouher, recognizing the soundness of
the foregoing judgment of the Tribunal of Commerce of the
Seine, and in the name of the Emperor, revoked the author-
ity that had been given to the defendant, and changed the
name of the official paper to “Journal Officiel de l'Empire
Français.”
§ 416. In the Tribunal Civil of the Seine, in 1869, came up
a case similar in principle to the foregoing.” The plaintiff,
manager of the journal “La Presse,” founded in 1836, brought
suit to suppress the title of “La Presse Libre,” which the
defendant had given to a new political paper. The defence
contended that the word “press” is a generic name, which
all persons might lawfully use; and that the qualification of
“free” (libre) adjoined to the word “press” constituted a
different title ; and that therefore confusion between the
two sheets was impossible, especially as the said journals
followed two different political parties, and addressed them-
selves to different classes of readers. Yet judgment was ren-
dered in favor of the plaintiff, with three hundred francs
damages and costs.
1 Halbronn v. Malespine, 15 Annales, 142.
414 LAW OF TRADE-MARKS. [$ 417.
$ 417. In the Tribunal of Commerce of Lyons, in 1871
(Millaud v. Marian et al.), the facts were as follows. Mil-
laud founded at Paris, several years before the time of trial,
a daily sheet bearing the name of “Petit Journal,” which
acquired considerable popularity. By reason of the invest-
ment of Paris by the German armies, the plaintiff brought
out at Lyons a special edition of his journal for circulation in
the provinces, and bearing the same name as that which he
had established at Paris. The great success of the sheet
seems to have excited the rivalry of the defendants, who
formed a partnership to found a journal by the same title as
the plaintiff's, and with the intention of selling it at Lyons,
or in the departments, as if it were the journal of the plain-
tiff. The Tribunal said that that intention was manifest, as
the defendants had not only taken the title of the publication,
but had also servilely imitated, by successive transformations,
either the form of the veritable “Petit Journal” or its typo-
graphical peculiarities. They had made a pretence of differ-
entiating, by inscribing the words “de la France Centrale’’ in
place of “Lyonnais,” borne by the plaintiff's publication un-
der the title of “Petit Journal.” These substituted words
were not in so plain a form as to prevent confusion and mis-
take in the mind of purchasers; and besides that, notices
announcing the publication of a new feuilleton, or of an im-
portant article, copied the typography and form of the gen-
uine paper, and the dimension and color of the sheet used
by the plaintiff in placarding his publication. To make sure
that the public should be deceived, even the strip of paper, or
band, which covered the defendants' journal, bore only the
inscription of “Petit Journal.” Defendants enjoined, 500
francs damages and costs. In the Tribunal of Commerce of
Amiens, in 1871 (Millaud v. Caron”), the plaintiff in the last
suit found himself engaged. In this instance, the defendant
took the title of “Petit Journal” for his paper, but, as a sub-
title in the second line, and printed in smaller characters,
added the words “de la Somme.” The judgment says that
the title of a journal is the exclusive property of its founder,
1 17 Annales, 101. 2 Ibid. 104.
§ 418.] - INFRINGEMENTS. 415
and to give to a new journal the title already belonging to
another sheet is a usurpation of property, and consequently
an act of unlawful competition. Judgment for plaintiff, with
100 francs damages and costs, and an injunction forbidding
the further use by defendant of the words “Petit Journal.”
Again, in 1871, before the Tribunal of Commerce of Douai
(Millaud v. Le Petit Journal du Nord"), we find substantially
the same question of part infringement. The addition of the
sub-title “ du Nord” did not avail the defendants. They
were forbidden to use the name “Petit Journal” with or
without a sub-title, under penalty of 50 francs damages for
each number that should be issued after that day, with 300
francs damages and costs. -
§ 418. Blending of Trade-Mark and Other Rights. – At
times it is difficult properly to classify cases according to their
essential natures; and not unfrequently courts regard with
indifference nice technical distinctions, when severe strictness
of definition might defeat justice. A chancellor will not al-
ways stop to inquire, Is this a case of infringement of a
technical trade-mark? Or, is it not rather a case of wrfair
competition ?” Unless the pleadings have embarrassed the
matter beyond the possibility of correction, substantial justice
will be done, as will appear by a perusal of the cases fol-
lowing. In Ellis v. Zeilin & Co., in the Supreme Court of
Georgia, in 1871,” the matter in dispute was the phraseology
of a label. The plaintiffs below (defendants in error) in
their bill allege that they are entitled to the sole and exclu-
sive manufacture and sale of certain medicinal preparations,
known as “Dr. Simmons' Liver Regulator or Medicine,” hav-
ing acquired the right thereto by purchase from the son of
Dr. A. Q. Simmons, the inventor. They allege that they
have expended large sums of money in extending the reputa-
tion thereof, and that they “have adopted certain trade-marks
in which their packages are put up, which have been entered,
under the copyright law, in the District Court of the United
States at Savannah.” “ They further allege that Ellis, the
1 17 Annales, 104. * See ante, § 43. 8 42 Ga. 91.
* This passage is worthy of attention and re-perusal, if only as a curiosity
416 LAW OF TRADE-MARKS. - [$418.
plaintiff in error, has commenced to sell a preparation which
he calls “Simmons' Genuine Liver Medicine,” and is putting
it up in similar form and size of packages, and that the gene-
ral appearance and pirated indorsements thereon are intended
to convey a wrong impression, and to take advantage of the
reputation which Zeilin & Co.'s preparation has acquired, and
which they allege to be a fraud on their rights; wherefore
they ask for an injunction, and such other relief as they may
be entitled to under the circumstances. To the bill, the
defendant below (Ellis) demurred, but the court overruled
his demurrer. Error was assigned, and the case carried up.
The question which we are discussing is one of alleged in-
fringement. For the sake of argument, we will concede that
the combination of words used by Zeilin & Co. constitutes a
lawful trade-mark. Was that mark infringed by the imita-
tion in part by Ellis? From the report of the case, we find
that he used a large symbol which the others did not use.
That symbol was probably sufficient to be in itself a trade-
mark; and it doubtless created such a difference between the
two labels that one could not well be mistaken for the other.
Lochrane, C. J., said, inter alia : “We do not think there
was equity in this bill, on the mere question of similarity of
trade-marks. But as the demurrer admits that what was done
was done intentionally to take advantage of the reputation of
the ‘Simmons’ Liver Medicine, we cannot hold that the judge
below erred in retaining the bill for a hearing, to let the whole
matter be determined upon the merits.” If, therefore, the
words set forth in the bill as a trade mark were so in reality,
the use of some of those words by Ellis, as shown, did not
amount to infringement; but as Ellis had admitted his guilt
in unlawfully diverting the trade of Zeilin & Co., he was
properly held to accountability therefor, although he did not
trespass upon trade-mark property. — In the Court of Appeal
of literature and of pleading. Admitting the remote possibility of a mere neces-
sary description of an article being transformed into an arbitrary symbol of
trade, by what magical process could packages be put up in, i. e. wrapped in,
trade-marks ; And if that were actually done, by what construction of the
Constitution of the United States, or statutes passed by authority thereof, could
a label for medicine be deemed the work of an author 3
$418.] INFRINGEMENTS. 417.
of England, in 1880, a perplexing difficulty arose as to the
exact description of the plaintiff’s trade-mark for worsted
goods, which had been described in the registration thereof
as “a white selvage on each side of the piece, having a red
and white mottled thread interwoven the full length of the
selvage, between the edge of the piece and the edge of the
selvage.” The Master of the Rolls had held that if, in
dyeing, the colors were so affected that, on inspecting it,
whiteness could not be predicated of the Selvage, and that the
twisted thread was mottled, red and white, as matter of law
the particular trade-mark was not infringed, and that there-
fore the plaintiff had no remedy. But the appellate court,
by James, L. J., said: “The question resolves itself into the
old question which has always been the question to deter-
mine in these cases, – Are the defendants, not in words, but
in acts, and by something on the face of the goods, represent-
ing their goods as being the goods of the plaintiff? that is to
say, Are they using some mark which is calculated to pass off
their goods as the goods of the plaintiff 2** This is undoubt-
edly the correct common-sense modern doctrine, where, strip-
ping a case of all non-essential technicalities, the object of a
court is to suppress fraud in diverting lawful business. Nu-
merous recent examples of the enforcement of this doctrine
may be adduced. Thus, in 1880, in a Circuit Court of the
United States, Bond and Morris, J.J., where the complain-
ant had alleged that, to individualize and identify his bluing,
he had adopted a peculiar and original form or style of pack-
age, consisting of a blue cylinder having a red top, his goods
being known and identified by the peculiar appearance of the
package, the question was raised whether the complainant
had a technical trade-mark, as alleged by him. A necessity
for deciding that question in exact terms did not arise. The
court said that, “whether the complainant has a trade-mark
or not, as he was the first to put up bluing for sale in the
peculiarly shaped and labelled boxes adopted by him, and as
his goods have become known to purchasers, and are bought
1 Trade Marks Journal, Jan. 13, 1877.
* Mitchell v. Henry, 15 Ch. D. 181.
27
418 Law of TRADE-MARKs. [$418.
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 imita-
tion 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 the same year, it was
held in Missouri, that whether the thing infringed were a
trade-mark or not was of no consequence, when rights were
invaded.”—In the Court of Appeal of England, in 1880, Cot-
ton, L. J., said: “We must, in dealing with questions of this
kind, not look for minute differences, or even that which
appears, when one hears the case argued thoroughly, with a
mind directed to the particular differences, in some respects
a substantial difference, but we must see what would be the
effect upon the mind of the general class of buyers. . . .
The defendants have not taken the actual trade-mark of the
plaintiffs, but only used a ticket which is calculated to mis-
lead. Therefore, to sustain the injunction, we must treat the
case as one of fraud, that is, as a case turning on defendants’
intent to use that which is calculated to deceive.” ” In the
same case, in the House of Lords, in 1882, a similar course
of reasoning was pursued. Per Lord Chancellor Selborne:
“But although the mere appearance of the two tickets could
not lead any one to mistake one of these for the other, it
might easily happen that they might both be taken by na-
tives of Aden or of India unable to read and understand
the English language, as equally symbolical of the plaintiffs'
goods. To such persons, or at least to many of them, even
if they took notice of the difference between the two labels,
it might possibly appear that they were only differences of or-
namentation, position, and other accessories, leaving the dis-
tinctive and characteristic symbol substantially unchanged.”
Lord Watson said that no man, however honest his intentions,
has a right to adopt and use so much of his rival's trade-mark
as will enable any dishonest trader, into whose hands his
1 Sawyer v. Horn, 4 Hughes, 239.
2 Conrad v. Joseph Uhrig Brewing Co., 8 Mo. App. 277.
8 Orr, Ewing, & Co. v. Johnston & Co., 13 Ch. D. 468.
§ 418.] INFRINGEMENTS. 419
goods may come, to sell them as the goods of his rival." — In
the Supreme Court of New York, in 1880, the reasoning of
Mr. Justice Barrett, in delivering the opinion of the court on
appeal, is sound, although the facts upon which he reasoned
were not, in the opinion of the court of last resort, borne
out.” He said, inter alia, that, (according to the defendant's
doctrine,) “it is only necessary for the dishonest trader to
avoid the use of some special word or device, to which the
technical name trade-mark has been given, and to gain his
pratical end by imitating what really conveys to the public
a belief in the genuineness of the article sought. It must
have been this shallow, as well as unworthy idea, which was
in Troxell's mind, when he declared his purpose of imitating
‘Sapolio” as closely as possible, without actually making
himself liable. The law of trade-marks has been gradually
expanding so as to meet just such cases. The courts, in a
long and unbroken line of decisions, have endeavored to up-
hold and enforce commercial morality, and have afforded
their protection to honest enterprise and skill. It will not
be necessary to go over these cases. They have in fact been
too numerous for extended analysis. . . . It will be sufficient
to state the general result, . . . so far as may be applicable
to the case at bar. We deem it, then, to be well settled upon
authority, that, to justify the interference by injunction of a
court of equity, it is sufficient that there is a fraudulent in-
tention of palming off the defendant’s goods as those of the
plaintiffs, and that such intention is being carried into execu-
tion. . . . The law does not limit the form of the pretence;
that depends upon the facts of each particular case. The
fraud, for such it was, was long planned, and its execution
proceeded by regular and steadily advancing steps. When
it was found that bars of soap were unsatisfactory, a pressed
and stamped cake was resorted to... Then we have the polished
pan and the face reflected therein, with the variation of a
monkey for a man. Then came the various colored bands,
none of which were found to answer the fraudulent purpose,
1 7 App. Cases, 219.
* Morgan's Sons Company v. Troxell, 23 Hun. 632.
420 LAW OF TRADE-MARKS. [$418.
culminating at last in the plaintiff's ultramarine blue. What
was done was done artfully, with a view to reach thoughtless
and ignorant buyers, and yet to evade the law by an appar-
ent exhibition of mere rivalry. It was also done shrewdly,
by enlisting the retail grocers, through the bait of reduced
prices and increased profits, thus making allies of these men
for the general diffusion of direct misrepresentation. It will
not do to call this enterprise and energy, nor to stigmatize the
demand for protection against such practice as an effort to
limit legitimate competition, and to promote monopoly.” –
It was conceded throughout that the trade-mark of the plain-
tiff had not been violated. It was therefore not a trade-mark
case. What kind of a case was it, then 2 It was clearly one
of unlawful competition, and as applied to such a case the
reasoning is perfectly sound. But the Court of Appeals did
not think that the allegata and the probata agreed, and re-
versed the case, ordering a new trial." Rapallo, J., in deliv-
ering the opinion, said: “We are clearly of opinion that
there is too great dissimilarity . . . to sustain the judgment
in this case. . . . The law of trade-marks has not yet gone so
far as to enable a party to appropriate such a form of pack-
age and fashion of label, and exclude any one else from its
use, or from the use of anything resembling it. . . . When
there is a simulation of a trade-mark, and the intent becomes a
subject of inquiry, the form, color, and general appearance of
the package may be material; but to sustain an action, there
must be an imitation of something that can legally be appro-
priated as a trade-mark. When we come to look at the brands
or contents of the labels, they are entirely different. If, as we
think, there was no imitation of any trade-mark of the plain-
tiff, the judgment cannot be sustained on the ground of
fraudulent representations of devices on the part of the
defendants to palm off their goods upon individuals as the
goods of the plaintiff. What remedy there is for such a
wrong, if proved, it is not necessary now to inquire, but the
189 N. Y. 292; 11 Abbott N. C. 86. It is worthy of note that the new trial
never took place, for the reason that the defendant ceased to assert his
claim to use his labels, and adopted new ones.
§ 419.] INFRINGEMENTS. * 421
remedy clearly is not to restrain the defendants from selling
their own goods in packages, and with labels which they have
a legal right to use, and which do not infringe upon any
trade-mark of the plaintiff.” The judgment was therefore
reversed, and a new trial ordered, with costs to abide the
event. — What does this decision of the highest court estab-
lish? Does it contradict the doctrine contended for by the
court below 2 No. On a question of fact, a new inquiry is
ordered. No trade-mark came in question ; and we have a
right to infer that an action in the nature of an action for
deceit by a purchaser, or one for dishonest rivalry, might have
been more successful. It seems to be a decision as to practice
and pleadings. -
$419. In the Court of Paris, in 1877, a ruling seemingly
more in harmony with the current decisions was made." The
complainants, manufacturers of lace at Paris, had a design
for lace, called by them “Point de Valence,” for which they
had registered a trade-mark consisting of the words “Point
de Valence,” the arms of the city, and “I. D. L.,” intended to
be affixed to pieces of lace of their manufacture. The de-
fendants were lace-manufacturers of Nottingham, England.
The case being considered in the tribunal of first instance,
it had been found that, inasmuch as Birkin Brothers had
affixed to their products (which were the counterfeits intro-
duced into France) a label bearing only the designation of
“Point de Valence,” — and in so doing had not, it is true,
counterfeited the trade-mark of the complainants, but had
made a fraudulent imitation of a nature to deceive the pur-
chaser, — it was manifest that they had designated the pro-
ducts of their counterfeiting under the name of “Point de
Valence” with the evident object to deceive the purchaser in
affixing to their laces the special denomination of which the
inventor had reserved the exclusive use. Damages, etc. were
awarded. On appeal to the Court of Paris, the judgment
was affirmed. Defendants finally appealed to the Court of
Cassation, which also affirmed. The reasoning below was
approved, although the technical trade-mark had not been
* Deneubourg-Ligier et Cliff v. Birkin frères, 23 Annales, 207.
422 LAW OF TRADE-MARKS. [$419.
copied, the court saying that the tort had legally been char-
acterized when, by reason of analogies, of resemblances suf-
ficiently pronounced, whether in their totality or in some of
the constituent elements of the mark, confusion is possible,
and of a nature to mislead the purchaser. — Here is a decis-
ion of a German court, in 1882.1 The house of Menier, of
Paris, brought suit in the Court of Commerce of the Imperial
Tribunal of Mulhouse. It was demanded that the defendant
be prohibited from preparing or putting on sale chocolate
prepared by him, or offered under his name, with wrappers,
marks, and signs similar to those of the plaintiff, or under
the same forms employed by him, and above all, from
the use of the same kind of paper, the same labels, open or
closed, the same form of cake or tablet, viz. in six demi-
cylindric divisions. The defendant was restrained, with
damages and costs. – Many other authorities could readily be
adduced to prove that unfair competition in business will be
suppressed by courts of equity; but a few brief extracts from
a single one in the Court of Appeals of Kentucky, in 1883,
may suffice.” In the opinion, delivered by Chief Justice
Hargis, may be found an epitome of the law of this matter.
The complainants had sought to restrain the infringement of
their so-called trade-mark for ploughs. In the court below,
it was found that the technical trade-mark had not been imi-
tated, and for that reason the suit was dismissed. In the be-
lief that the great underlying principle of right had been
overlooked, the complainants appealed. After ably discussing
the law of trade-marks, the appellate court felt constrained to
concur as to the fact found below ; but it rose to a higher
plane of morality, when the court said, inter alia: “The
appellees have not used a single letter, figure, or word that
belongs to appellants’ trade-mark proper, yet, by the exact
simulation of the plough in every perceivable point exposed
to an ordinary observer and purchaser, and the use of the
same coloring and staining, the same relative position of the
1 Menier v. Leblanc-Winckler, 28 Annales, 24.
* B. F. Avery & Sons v. Thos. Meikle & Co., Kent. L. R. and Journ., April,
1883; 23 Alb. L. J. 203.
§ 420.] INFRINGEMENTS. 423
letters and figures, as employed and used by the appellants,
avoiding the literal appropriation of any part of their trade-
mark, the appellees have obscured appellants’ trade-mark,
but at the same time sought to avoid detection and responsi-
bility in doing so, and to cause their ploughs to be taken for
and purchased as those of appellants.” It must be observed
that the court has treated this case as an infringement of a
trade-mark, although the imitation of the arbitrary symbol
itself had been studiously avoided, and only its non-essential
accessories had been copied. “Thus by skilful combination
of legal particles, taken one at a time and in the aggregate,
leaving the mere trade-mark untouched, they have so con-
fused its force and effect as to destroy its office and real effi-
ciency to distinguish the appellants' ploughs from all others.”
The relief prayed for was therefore granted.
§ 420. A Manufacturer has a Right to affix his own Name
to an article of his own production; and any injury which
another manufacturer having the same surname may suffer
in consequence thereof is damnum absque injuria. Said the
New York Court of Appeals in Meneely v. Meneely: * “Every
man has the absolute right to use his own name in his own
business, even though he may thereby interfere with or injure
the business of another person bearing the same name, pro-
vided he does not resort to any artifice or contrivance for the
purpose of producing the impression that the establishments
are identical, or do anything calculated to mislead. Where
the only confusion created is that which results from the
similarity of the names, the courts will not interfere.” We
have here an enunciation of the general rule, with a sugges-
tion as to the limitations and qualifications thereof. One
may enjoy his property, including his name, in a manner to
please himself, subject to the maxim, Sic utere two ut alienum
non laedas. And it is not a legal injury to another properly
to use one's own name.” So, if one's surname be Holloway,
he has a right to constitute himself a vendor of Holloway's
162 N. Y. 427; 20 Am. R. 489; 2 Am. L. T. (N. s.) 482.
* McLean v. Fleming, 96 U. S. 245; 13 Off. Gaz. 913. Burgess v. Burgess,
3 De G., M. & G. 896; 22 L. J. Ch. 675; 17 Jur. 292; 21 L. T. 58.
424 - LAW OF TRADE-MARKS. [$420.
pills and ointments;" or where M., having a recipe for a
liniment (not his own invention, nor protected by a patent),
communicated his secret to several members of his family,
and permitted every one of them, for his own or her own
benefit, to manufacture and sell the liniment with a certain
label furnished by M. attached, any one of that family may
lawfully use his or her surname as an affix to the article.”
Equity will not enjoin against telling the truth.” The Su-
preme Court of Rhode Island went so far as to hold that a
manufacturer has a right to attach his own name to his
manufacture, even though a rival manufacturer of the same
name has given it prestige in the market and may suffer in
consequence.*—The foregoing citations are illustrations of
the general rule. The exception to the rule has often been
discussed judicially. One must so use his own name as not
to create confusion in the public mind between his goods and
those of another of the same name.” In the Holloway case,
it was held that the defendant had no right to use his own
name in such a way as to make the public believe that he
was selling the goods of his brother, by using pill-boxes, pots,
labels, and wrappers similar to his. – In James v. James, the
plaintiffs, under an assignment from Robert James, the origi-
nal inventor, manufactured and sold an ointment known as
“Lieutenant James' Horse Blister,” and the defendant, Robert
Joseph James, began to sell an ointment under the same name,
with the signature “Robert James.” He was enjoined from
omitting the name Joseph from his signature.”— One may
part with the right to use his name as an affix to certain mer-
chandise, and will be restrained from so using it; as where one
named Oakes sold the exclusive right to manufacture and sell
“Oakes’ Candies.” The reason is, that the name thus used
is but an adjective of quality or description, which is not
understood by the public as a warranty that the person who
1 Holloway v. Holloway, 13 Beav. 209.
2 Marshall et al. v. Pinkham, 52 Wis. 572 (the court citing $308 of this book).
8 Canal Co. v. Clark, 13 Wall. 311; 1 Off. Gaz. 279; 5 Am. L. T. 135.
4 Carmichel v. Latimer, 11 R. I. 895; 23 Am. R. 481; 16 Alb. L. J. 78.
5 Meneely v. Meneely, supra. Clark v. Clark, 25 Barb. 76; R. Cox, 206.
6 L. R. 13 Eq. 421; 41 L. J. Ch. 353; 2 L. T. (N. s.) 568; 20 W. R. 484.
§ 420.] INFRINGEMENTS. 425
bears the name is the maker of the article; but only that the
article is made after the same formula as when he made it."
—Two persons, Holmes and Booth, having been principal pro-
moters of a plaintiff corporation established under the name
of Holmes, Booth, & Haydens, set up an opposition under
the name of The Holmes, Booth, & Atwood Manufacturing
Company, in the same business. By reason of the similarity,
the latter-named company was enjoined.”— A plaintiff ac-
quired from three brothers named Rogers the right to use a
trade-mark, “1847, Rogers Bros., A 1,” and the defendant
began to place on similar goods stamps containing the letters,
words, and numeral, “C. Rogers Bros., A 1,” and “C. Rogers
& Bros., A 1.” An injunction was granted against using
such stamps, or any other stamp containing the words “Rogers
Bros.,” although the defendant had used his stamps by the
permission of three brothers of the name of Rogers.”— It is
not an unusual circumstance, that, for the purpose of fraud,
one sells the right to use his name. In Thorley's Cattle Food
Co. v. Massam, in 1880, it appeared that Joseph Thorley,
the original maker of the cattle food, died in 1876, having by
his will directed that his business should be carried on by his
executors, with the assistance of his son, Joseph Thorley.
J. W. Thorley, a brother of the deceased, was induced to join
in getting up a company, and became a subscriber to a shilling
share therein. The Court of Appeal, by James, L. J., said:
“We have had nothing like a satisfactory explanation of how
J. W. Thorley's company came into existence; how they
came to form themselves into a company, unless it was that
they thought that Thorley was making a very good thing;
that they thought that Thorley's food was a very profita-
ble thing; that it had got a very great reputation, and
that some of them would like to steal the reputation which
Thorley's article had acquired. In order to do that, they
1 Skinner v. Oakes, 10 Mo. App. 45. -
2 Holmes, Booth, & Haydens v. The Holmes, Booth, & Atwood Manufactur
ing Co., 37 Conn. 278; 9 Am. R. 824.
8. The Meriden Britannia Co. v. Parker, 39 Conn. 450; 12 Am. R. 401; 13
Am. L. Reg. (N. s.) 153. *
4 42 L. T. R. (N. s.) 851; 14 Ch. D. 748.
426 LAW OF TRADE-MARKS. [$420.
seem to have somehow or other got into communication with
a gentleman who was a relation of the late Joseph Thorley,
and a connection of his executors, and who for some years
had been in the service of Joseph Thorley, and during those
years . . . had acquired a knowledge of the recipe, and had
acquired the exact knowledge of the manufacture; . . . but
having the name of Thorley, which was the distinguishing
mark of food for cattle, he either tendered himself for sale, or
was found for purchase by some person, in order that his
name might be got into a joint-stock company, limited, for
the sake of selling these goods. Why was that name got in
there, except for the purpose of inducing the world to believe
that it was the same concern, or that it was the Thorley whose
name was the principal characteristic of the name of the
article? The name of the company, I cannot help observing,
was J. W. Thorley & Co., Limited, and that J. W. Thorley
& Co., Limited, is, to my mind, to begin with, a fiction, an
intentional fiction. . . . But here the J. W. Thorley was not
a partner. J. W. Thorley was employed as an agent, as the
manager; and J. W. Thorley's only connection with the com-
pany, qua company, is that he held a one-shilling share in it,
the company itself having a capital of £200, or something of
that kind. To my mind, that would really be exactly the same
thing as if somebody were to establish a brewery at Burton,
finding some one of the mame of Bass, -because there is no law
to prevent a man assuming any name he likes, – and then
calling themselves J. Bass & Co., Limited, or W. Bass & Co.,
Limited, and advertising Bass & Co.'s pale ale.” The court
then went on to discuss the purpose of similarity of packages,
in shape, size, color, all evidence of fraudulent intention, espe-
cially when taken in connection with the name assumed. —
The rule as to prohibition from using one's own name applies
also to a pseudonym. As was said by Bramwell, L. J., in the
foregoing case, a surname is not a man's legal property, nor.
conferred upon him by law in any particular way. It is
gained by reputation, and if he choose to adopt the name of
Thorley, and other people call him by that name, he is Thorley
to all intents and purposes, although his name originally was
§ 420 a.] INFRINGEMENTS. 427
John Doe. — In Grow v. Seligman, in the Supreme Court of
Michigan, in 1882, the defendant had established a business
under the pseudonym of “Little Jake.” He sold the good-
will of his business, and stipulated not to use that fancy name
in trade as a rival to his assignee, who was to have the exclu-
sive benefit of the said name. The court held that there
was no reason in public policy why the vendor should not
be enjoined.
§ 420 a. French Cases as to the Use of one's own Name. —
The Court of Paris said, in 1875, that when one has become
known in a certain industry, or in connection with the
preparation of a certain product, rivals who bear the same
name should, above all others, avoid resemblances of marks
tending to create confusion.”—In the Court of Lyons, in
1875, the plaintiffs were successors of Lubin, perfumer, of
Paris, and owners of his trade-marks. Bottles bearing a
counterfeit label had been placed on sale by divers retail
merchants of that city. As to the use of the name “Lubin,”
the defendants justified by the production of an agreement,
duly registered, by the terms of which they had acquired
from one Jean Lubin, hair-dresser and perfumer at Cahors,
a number of formulas of perfumery products, with the right
to use his name. The court said that the bad faith of the
defendants was manifested by the circumstance that the label
of the bottle not only does not make known the domicile and
the identity of said Jean Lubin, whose name they pretend to
be their property, but does not designate themselves, nor indi-
cate the origin of the products placed by them on sale. They
were nevertheless found amenable under Article 8 of the act
of 1857, and mulcted in 5,000 francs, with costs, etc.”— In
the Tribunal of Commerce of Lyons, soon after,” between the
same parties, it was held to be dishonest competition to profit
by a similarity of name tending to establish confusion between
the respective products. For more than seventy-five years,
the plaintiffs or their predecessors had constantly used the
1 47 Mich. 647. * A. Boyer v. R. Boyer, 21 Annales, 20.
* For the registration law referred to, see Appendix.
4 20 Annales, 108.
428 LAW OF TRADE-MARKS. [$420 a.
name “Lubin’” to designate their commercial house. In that
name, reproduced in all their trade-marks, labels, letter-heads,
and invoices, their products were known in France and abroad.
The Tribunal further said that the name of Lubin had been
adopted by the defendants to profit by the similitude of name;
that they founded their perfumery house only with a view
to organize an illicit and dishonest competition. — As to a
wrongful use of one's name, this interesting case came up in
the Court of Montpellier, in 1877. Many times in the courts
of France have been discussed infringements of the cigarette-
paper known under the fanciful name of “JOB.”* Jean
Bardou died in 1852, leaving several children. Pierre Bardou,
the plaintiff, became proprietor of the place of business and
the trade-marks thereof, and especially of the stones, stamps,
seals, etc., for the purpose of impressing the marks. But
scarcely was he in possession than he was obliged to sue his
elder brother, Joseph Bardou, who had founded a similar
house, and claimed the right as soon as their father died to
use his marks. The title was judicially declared to be in
Pierre. Joseph was ordered to prefix his baptismal name.
Peace seemed to be definitely assured, when, in 1875, Joseph
and his son and associate, Léon, thought to create a new
mark consisting principally of the name “Papier Bardou.”
To this they gave an immense publicity, notably by prospec-
tuses in verse, having for an epigraph “Vox populi, vox Dei,”
in which verse the paper was boasted of as proceeding from
M. Bardou.” Freely translated the verse runs thus: “The
celebrated inventor, the sole manufacturer, who knew how
to neutralize empyreumatical oil, and only in the vat purify-
ing his paper, removed the dry taste which pricks the throat,
* Pierre Bardou and Pauilhac v. Joseph and Léon Bardou, 23 Annales, 49.
* See ante, § 898. t
8 “Ce célèbre inventeur, cefabricant unique,
Qui sut neutralizer l’huile empyreumatique,
Et, dans la cuve seule épurant son papier,
Enleva ce goût sec qui picote au gosier,
Grand défaut que toujours la feuille a cigarette
Tient du chlore irritant, de la pâte incomplète.
Dece papier malsain ne faites aucun cas;
Mais comme Le Bardou, vous m'en trouverez pas.” º
§ 420 a.] - INFRINGEMENTS. 429
that great defect which originates from irritating chlorine and
deficient paste. Never make use of that unwholesome paper;
and like Le Bardou you will not find any of it [empyreu-
matical oil].” This paper was also announced by placards,
and by medallions of a blue color, on which the words “Papier
Bardou.” appeared in conspicuous characters, which placards
were placed in tableau form among dealers, and the medal-
lions pasted on the walls of Perpignan, Toulouse, Montpellier,
etc. They bore an indication of the manufacturers, “ MM.
Jh. Bardou et fils,” with the notice, “Ne pas confondre avec
le JOB.” The plaintiffs demanded the suppression of the
words Papier Bardou, and of the specious warning not to
confound the defendants’ paper with that known as the JOB.
The demand as to the warning was agreed to, but all other
modification was refused by the defendants. The tribunal
below had forbidden Joseph and Léon Bardou to designate
in future their house under the sole name of Maison Bardou,
and this cigarette-paper as Papier Bardou, and that they
should not make use of these denominations on boxes and
packages of cigarette-paper, letter-paper, labels, prospectuses,
placards, and announcements, unless the prenomen Joseph
should precede Bardou ; and that the defendants should not
in any mode employ the initials J. B., whether alone or
together, in such a way that the products of the parties might
be confused. Six months' time was allowed to make the
changes, etc. Defendants appealed. The decision was af-
firmed; the appellate court holding that Pierre Bardou was
the sole proprietor of the mark of Jean Bardou, the common
father, and should be considered the veritable founder of the
commerce and property which has attached to the manu-
facture of cigarette-paper, known either as Papier JOB or
Papier Bardou. — Now comes a case where the names were
not quite alike. In the Tribunal Correctionnel of the Seine,
in 1877, the defendant, profiting by the analogy existing
between his name and that of Boboeuf, affixed to bottles
containing phénol prepared by him, a label, the ensemble of
which presented the general appearance of that of the com-
plaining party, the principal details thereof being manifestly
430 LAW OF TRADE-MARKS. [$420 a.
an imitation of the characteristic features thereof. Boeuf
reproduced in the identical position the fac-simile of a medal,
in size and interior disposition the labels agreeing. Under
his medal, the defendant printed the name “P. C. Boeuf,”
in the same style of type and same number of letters as in
the leading feature of the genuine “Phénol Boboeuf ’’ label.
Besides this, his signature, formed of the surname preceded
by the initial letters P. C. and the parafe completing it, were
combined in such a way as to present a sensible similarity to
the signature and parafe of Boboeuf. 500 francs damages,
destruction of labels, etc.1—In the Court of Paris, in 1879,
the plaintiff was in business at No. 13, and defendant, his
brother, set up a similar business at No. 28 of the same
street. Held, that defendant must differentiate his name by
a prefix or affix, so as to avoid confusion.” — The Court of
Cassation of France, in 1878,” held, inter alia: Every one
really personally exercising a commerce or an industry has
the incontestable right to inscribe his patronymic name on
his signs, announcements, invoices, and the products of his
industry. Such use of his name is an essential attribute to
the enjoyment of property. The Court of Paris, from which
an appeal was taken, had established the existence of repre-
hensible devices and efforts manifesting unfair competition
in the manufacture and sale of pianos, and for that reason
had ordered the absolute suppression of the name of Nicolas
Erard in all marks of commerce and manufacture, invoices,
circulars, announcements, prospectuses, catch-words, exterior
and interior signs, and all other particulars concerning the
manufacture and sale of pianos. The appellate court said
that the law of property had been misunderstood in the court
below, and reversed the decree as being too broad in its scope.
—But a few months later, in a case between the same parties
in the Court of Amiens, it was held that Nicolas Erard should
add to his nomen and prenomen affixed to his pianos, invoices,
announcements, and other publications whatsoever, the words
1 Héritiers Boboeuf v. Boeuf, 20 Annales, 188.
2 Galand v. Galand, 27 Id. 128. -
8 Mme. Weuve Erard v. Nicolas Erard, 20 Id. 225.
$421.] INFRINGEMENTS. 431
“ of Mulhouse”; and the surname should be six millimeters
high and one wide, the prenomen Nicolas to be ten millime-
ters high and two wide, and each to be placed in certain posi-
tions. The complainant was awarded 15,000 francs damages
and costs. The defendant appealed. The Court of Cassation,
in 1879, affirmed the decree; and said that, in obliging Nico-
las Erard to give more prominence to his prenomen than to
his nomen, and to employ characters of certain dimensions,
and to affix his trade-mark only in certain specified places, the
court below had not transcended its legitimate powers."
§ 421. In Faber v. Faber,” at a special term of the Supreme
Court of New York, in 1867, this question came up on a
motion to continue an injunction. The action was brought
by John Lother Faber, the manufacturer of the article known
as the “A. W. Faber’ lead-pencil, against John H. Faber
and his agent in this country, J. S. Frankenthal, for an in-
junction, and damages for violation of the trade-mark claimed
by the plaintiff. The plaintiff then resided and carried on
the manufacture of pencils at Stein, and the defendant J. H.
Faber at Schweinau, both which places are near Nuremberg,
Germany. At and near Nuremberg were many other manu-
facturers of lead-pencils. For the defence, it was contended
that the plaintiff had no trade-mark in the name “Faber”;
and that the method and style in which the pencils were
manufactured and put up, the kind of wrappers, labels, etc.
used, were not peculiar to the plaintiff, but were such as were
generally employed by the manufacturers at Nuremberg.
Sutherland, J., said that it was unfortunate for the plaintiff
that he and the defendant J. H. Faber were both manufac-
turers of lead-pencils at or near the same place in Germany,
and that both had the same name, Faber; for it was easy to
see that this circumstance may have been an injury to the
plaintiff; but the defendant Faber had a right to put or stamp
his own name in gold, gilt, or other letters, on his pencils,
and on the bands, wrappers, or covers in which they are put
up, as described in the complaint; and any injury which
the plaintiff had suffered, or might suffer, by such use of the
1 25 Annales, 886. * 49 Barb. 357; 3 Abb. Pr. (N. s.) 115.
432 LAW OF TRADE-MARKS. [$421.
defendant Faber's name merely, must be viewed as an injury
without a remedy; that the plaintiff certainly could not
claim the exclusive right to manufacture lead-pencils for the
American market, or the exclusive right to make them round,
or to cover or polish them with black varnish, or to stamp
gilt or gold numerals upon them to designate certain qualities;
that it was plain to him that the plaintiff had no right to
complain of the form or finish of the defendant J. H. Faber's
pencils, or of any mark or stamp upon them, viewed singly,
and out of their market-bands or enclosures. There was
nothing but the name of the maker stamped upon the pen-
cils, viewed singly, calculated to deceive the purchaser of a
single pencil, or of any number less than a dozen. Nor could
the plaintiff complain of the manner in which the defendant's
pencils were put up for the wholesale market. The plaintiff
certainly had no right to the exclusive use of a particular
colored paper, or kind of paper, for covering or enclosing his
pencils by the gross in a book form, or any other particular
form ; and the judge could not see how any wholesale pur-
chaser, knowing that the plaintiff Faber and the defendant
Faber both manufactured pencils, would be likely to be de-
ceived by the gross envelopes or wrappers, and purchase the
defendant's pencils by the gross for the plaintiff's ; especially
as it appeared that all the manufacturers of lead-pencils at
Nuremberg, to the number of twenty or more, put up their
pencils by the dozen, and by the gross, in substantially the
same manner, using substantially the same color and kind of
paper for the bands and for the outside gross envelopes or
wrappers, with substantially the same devices, numerals, and
words, with the exception of the maker's name stamped upon
them. As to the bands or wrappers of black glazed paper in
which the dozen and the ten dozen were enclosed or wrapped
before the gross are put up in book form, considering the ex-
planations of the answer, etc., as to the general use by pen-
cil manufacturers of the words “Crayons Polygrades” and
“Pour Dessiri, Architecture Bureau,” etc., no complaint
could be made of their use by the defendant Faber. Be-
sides, these words, and the gilt parallelogram and ornamental
§ 422.] INFRINGEMENTs. 433
work, device, or design surrounding them, and the maker's
name, could not deceive or mislead any purchaser by the
dozen packages or bundles. The motion to continue the
injunction was accordingly dismissed.
§ 422. The following case of Howe v. The Howe Machine
Co., at a general term of the Supreme Court of New York,
in 1867, illustrates the same doctrine. The facts sufficiently
appear in the following extract from the opinion of Suther-
land, J. That Elias Howe, Jr., in 1846, obtained a patent
for a certain combination of mechanisms called a sewing-
machine ; that his brother, the plaintiff, began manufac-
turing sewing-machines as early as 1854, and continued to
manufacture them at least up to the time of the arrangement
between him and Elias Howe, Jr., in 1862; and that the
plaintiff in his manufacture used the combination of mechan-
isms patented by Elias Howe, Jr., as his licensee. Elias
Howe, Jr. did not license the plaintiff to make sewing-
machines, but licensed him to use his patented right or com-
bination in the manufacture of sewing-machines. There is
nothing in the case to show that the plaintiff manufactured
the machines as agent for Elias Howe, Jr. The fact that he
was his licensee, and that he could not have manufactured
the machines without his license, does not tend to show the
agency. The uncontradicted history of the claimed trade-mark
is, that before 1857 the plaintiff placed on the machines the
letters and word “A. B. Howe”; that in 1857, Taylor, the
plaintiff's mechanic, suggested the substitution of “ Howe”
for “A. B. Howe,” which suggestion was adopted by the
plaintiff, and subsequently every machine manufactured by
the plaintiff had the word “Howe” in a conspicuous place on
it. The conclusion from the pleadings and affidavits is irre-
sistible, that the word “Howe” was thus used to denote
the plaintiff as the manufacturer, and not to denote Elias
Howe, Jr., as the inventor. It is obvious that the fact that
the plaintiff was the licensee of Elias Howe, Jr., and that the
plaintiff could not have manufactured his machines without
using the patented combination of his brother, and therefore
1 50 Barb. 236; R. Cox, 421.
28
434 LAW OF TRADE-MARKS. [$423.
could not have manufactured them without his brother's
license, did not and could not interfere with or impair his
right to adopt and appropriate a trade-mark, to mark or dis-
tinguish the machines manufactured by him from those man-
ufactured by other licensees of his brother. It is equally
clear that the plaintiff could adopt and appropriate the word
“Howe” as a trade-mark as against Elias Howe, Jr. The
plaintiff had a right to adopt and appropriate his surname
as a trade-mark, and it cannot be said that Elias Howe, Jr.,
though his surname was the same, had a right to use his own
surname in such a way as to deceive the public, and deprive
the plaintiff of the benefit of the notoriety and market which
his machines had gained.—This enunciation of the law the
judge based upon the cases of Sykes v. Sykes, and Croft v.
Day, especially the conclusion of the opinion of the Master of
the Rolls in the latter case. He further said, that the words
“The Howe Machine’’ are descriptive of the trade-mark
“Howe,” or “Howe, N. Y.,” used on the plaintiff's machines.
§ 423. Commentary.—This case is apt to mislead the super-
ficial observer, and even for a moment stagger the precon-
ceived notions of one used to critical examination. It has
been cited more than once in support of this absurd proposi-
tion, to wit: When two men in the same trade have the same
surname, one may employ that surname as a trade-mark to
the exclusion of any such right by the other. That is, when
the two brothers Howe made and sold sewing-machines, the
one who first stamped his surname upon a machine was the
sole possessor of the right to stamp his workmanship with his
true name. This conclusion has no warrant from any au-
thoritative source. In fact, when we again scan the opinion
of Mr. Justice Sutherland, we doubt his intention to convey
any such fallacious idea as his language seems to import.
The question before the court did not require any expression
of opinion as to the abstract right of the plaintiff to the
name, in the absence of fraud on the part of the defendants;
and the good faith of the defendants is manifest from the
unanimous decision of the court, denying the demand for
an injunction. Leonard, P. J., said: “There is no fraud
§ 423.] INFRINGEMEMrs. 435
upon the plaintiff in the use, by the defendants, of the name
of ‘Howe, in designating a machine manufactured by them,
which Elias Howe, Jr. had invented, and from whom the
defendants derive their right to use the name.” We might
abandon further investigation into the occult utterance of the
judge first cited, if it were not for the impression made by
his citation of the two English cases, in support of his propo-
sition that “the plaintiff had a right to adopt and appropriate
his surname as a trade-mark,” etc. Let us turn to Sykes v.
Sykes. What were the circumstances of that case ? Two
men of the same name and trade, one, the plaintiff, with an
established business reputation and a patent; the other, the
defendant, stamping his shot-belts and powder-flasks with the
words “Sykes' Patent,” and so falsely representing his goods
as manufactured by the plaintiff. We see that there is no
analogy between the Sykes case and that of Howe. Now
read Croft v. Day. A blacking manufactory had long been
carried on under the firm of Day & Martin, at No. 97 High
Holborn, London. The executors of the survivor continued
the business under the same name. A person of the name
of Day, having obtained the authority of one Martin to use
his name, set up the same trade at No. 904 Holborn Hill, and
sold their blacking as of the manufacture of Day & Martin,
90%. Holborn Hill, in bottles and with labels having a general
resemblance to those of the original firm. An injunction was
granted to restrain the continuance of so palpable a fraud.
The Master of the Rolls, an able judge (Lord Langdale), said
that “in such cases there must be a great variety of circum-
stances; and the court must deal with each case according
to the nature of its peculiar circumstances. The accusation
which is made against this defendant is this: that he is
selling goods under forms and symbols of such a nature and
character as will induce the public to believe that he is sell-
ing the goods which are manufactured at the manufactory
which belonged to the testator in this case. . . . My decision
does not depend on any peculiar or exclusive right the plain-
tiffs have to use the name of Day & Martin, but upon the fact
of the defendant using those names in connection with cer-
436 Law of TRADEMARKs. [$424.
tain 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. Such being my opinion,
I must grant the injunction restraining the defendant from
carrying on that deception. He has a right to carry on the
business of a blacking manufacturer honestly and fairly; he
has a right to the use of his own name: I will not do any-
thing to debar him from the use of that, or any other name
calculated to benefit himself in an honest way; but I must
prevent him from using it in such a way as to deceive and
defraud the public, and obtain for himself, at the expense
of the plaintiffs, an undue and improper advantage.” The
Howe case lacked the ingredient of fraud, or false suggestion.
Howe, the inventor of the mechanical combination, had given
it a name: it was “The Howe Sewing-Machine”; and no
other designation would have been so appropriate. Whoever
had a right to make and vend the article had an equal right
to call it by its proper appellation. That being conceded, it
necessarily follows that that portion of the syllabus of the
case which reads thus: “That the plaintiff had a right to
adopt and appropriate the word ‘Howe,’ as a trade-mark, as
against Elias Howe, Jr.,” is erroneous in the superlative de-
gree. The mere name of the manufacturer cannot in any
case become a technical trade-mark, notwithstanding numer-
ous dicta to the contrary. The error on the part of the judge
was to use the term “trade-mark” in a vague, indefinite
sense. We set out with the idea of demonstrating that Howe
v. The Howe Machine Co. is not a trade-mark case, and at its
worst phase nothing more than a possible case of unfair com-
petition. This has been done. *
§ 424. The case of Derringer v. Plate," in the Supreme
Court of California, in 1865, seems at the first glance to hold
that a man's name may at common law be used by him as a
trade-mark. Let us see if the court did so decide. This was
an appeal from a District Court. The plaintiff averred that
he was a resident of Philadelphia, and upwards of thirty years
1 29 Cal. 292; R. Cox, 324.
§ 424.] INFRINGEMENTS. 437
before had invented a pistol, known as “Derringer's pistol,”
and adopted as a trade-mark for the same the words “Der-
ringer, Philadel.,” which ever since had been his trade-mark,
and which he had caused to be stamped on the breech of all
pistols manufactured and sold by him; and that the defend-
ant, since 1858, had been engaged in the manufacture of
pistols, at San Francisco, similar to the plaintiff’s, on the
breech of which he had stamped plaintiff's trade-mark, etc.
Defendant had judgment on demurrer, and plaintiff appealed.
The contention made by the respondent in support of the de-
murrer to the complaint was, that the statute of California
in relation to trade-marks had, in effect, repealed the common
law ; and that the appellant, in order to maintain his action,
must show affirmatively that he had complied with the re-
quirements of the act passed April 3, 1853. The response was,
that the statute does not take away the remedy at common
law; that it is an affirmative statute ; and that an action
might be maintained both at common law and under the
statute. The substance of the rule as laid down in the cases
is, that where a party has a remedy at common law for a
wrong, and a statute shall have been passed giving a further
remedy without a negative of the common-law remedy, ex-
pressed or implied, he may, notwithstanding the statute,
have his remedy at common law.” The Supreme Court,
by Rhodes, J., said, inter alia: “The only question presented
on the appeal is, whether the statute of 1863, concerning
trade-marks, repealed or abrogated the remedies afforded by
the common law in trade-mark cases. The plaintiff does
not allege a compliance with the provisions of the statute.
He contends that the remedies given by the statute are
cumulative to those which a party was entitled to at com-
mon law; and the defendant insists that the statute forms a
‘complete scheme' in respect to trade-marks, and thereby
repeals the common-law rules relating to the same subject
matter.” — When we read the case for ourselves, we indeed
find that the judge was strictly correct in stating that ques-
1 Wheaton v. Hubbard, 20 Johns. 192; 13 Id. 322; Almy v. Harris, 5 Id. 175;
Clark v. Brown, 18 Wend. 213. .
438 LAW OF TRADE-MARKS. [$425.
tion to be the only one on appeal. The court was not re-
quired to pass upon the validity of a name of a manufacturer
as a common-law trade-mark; nor indeed was the mere name
presented, for it was coupled with the word “Philadel.”;
and even if nothing more than the name of Derringer had
been relied on as a mark or emblem, that name may possibly
have been stamped on in peculiar characters, as a copy of his
autograph, which would have given it a distinctive individ-
uality, and have imparted to it the essential characteristics
of the symbol of commerce. We here have the words of the
court in awarding judgment: “We do not fully agree with
counsel for either party in his construction of the act in
respect to its relation to and effect upon the common-law
remedies. The remedies provided by the act (at least those
applicable to registered trade-marks) are not cumulative to
those possessed at common law, but in that respect provision
is made by the act for a new case; nor do we think the act
forms a “complete scheme' of itself, in the sense that counsel
regards it, as requiring all trade-marks to be registered under
the act to entitle them to protection; though it may be re-
garded as a “complete scheme’ in the respect that it grants
certain remedies in cases of registered trade-marks, and ex-
pressly reserves to the owners in other cases the usual reme-
dies enjoyed at common law. Judgment reversed, and the
cause remanded, with directions to the court below to over-
rule the demurrer.” We must look farther, if we think it
possible that any court has solemnly decided otherwise. We
rest, therefore, on the proposition, that one cannot use his
mere name as a trade-mark.
§ 425. The remarks of Paxson, J., in the case of Gillis
v. Hall," seem to countenance the opinion that a man may
turn his surname into a trade-mark; but if we scrutinize the
whole record we shall come to an opposite conclusion. It was
there alleged, and not denied, that the defendant Hall had
begun the manufacture and sale of an article which he desig-
nated as “R. P. Hall's Improved Preparation for the Hair,”
and that upon the wrapper of his bottles were printed these
1 8 Phila. 231 ; 3 Brewster, 509; R. Cox, 596.
§ 425.] INFRINGEMENTs. x 439
words: “R. P. Hall's Improved Preparation for Restoring
the Hair. This preparation is entirely different from Hall's
Vegetable Sicilian Hair Renewer, but is compounded by the
same inventor, R. P. Hall.” If we refer to another case by
the same title, we find that the plaintiff and the defendant
had been partners in business, in making and selling a certain
preparation called “Hall's Vegetable Sicilian Hair Renewer.”
On the 15th of June, 1865, in consideration of the sum of
$30,000, the defendant Hall sold to the plaintiff all his, said
Hall's, interest in the firm, in the secret of said preparation,
the right to make and vend the same, and the exclusive right
to use his name therefor in the future sales thereof. This
agreement contained covenants as follows: 1. That he will
not use, or allow his name to be used, in the preparation of
any similar articles; 2. That he will not engage in the manu-
facture thereof; 3. That he will not impart to any one the
secret or recipe for the manufacture thereof; 4. That he will
not engage in the manufacture of any article similar to this;
5. That he will allow the plaintiff the free, uninterrupted,
and exclusive use of his name in the manufacture and sale of
said preparation;—and a stipulation to forfeit the said sum
of $30,000, if he violated any of said covenants. Upon a
violation of the said covenants, Gillis applied for an injunc-
tion. Hall denied the right of the plaintiff to equitable relief,
for the reasons that those covenants were in restraint of trade,
and therefore void. The objection, so far as it applied to
a general restraint of trade, was held to be well taken, as
against the policy of the law. Said Paxson, J.: “He may
manufacture and sell as many articles as he may desire for
the preservation of the hair; but he may not manufacture,
or sell, any of such articles as and for “Hall's Vegetable
Sicilian Hair Renewer.” The right to make and vend an
article with that particular name and trade-mark he has
parted with. He has bartered away his name, so far as the
right to apply it to this preparation is concerned.” Thus we
observe what question was before the court. The defendant
had broken his agreement, and had gone into unlawful com-
1 2 Brewster, 342; 7 Phila. 422; R. Cox, 580.
440 LAW OF TRADE-MARKS, . [$425.
petition with his former partner. Now, upon a rule to show
cause why he should not be punished for contempt, in dis-
regarding the order and decree of the court in the above-
mentioned case of injunction, the judge said: “The said
defendant has certainly misapprehended the scope of that
decree, as well as the meaning of the term “trade-mark.” He
may lawfully make any article known to commerce, which
is unpatented, but he may not apply the trade-mark of the
plaintiff to any such article. It is also to be observed, that
there is a wide distinction between covenants not to engage
in trade and covenants to restrain the use of a trade-mark.
The former may be void as being against the policy of the
law, while the latter, not being obnoxious to any such objec-
tion, will be enforced. In this case, the defendant Hall has
taken from the plaintiff's trade-mark that which gives it its
chief value, viz. the name of ‘Hall,” and placed it upon his
own. The plaintiff's article is known as ‘Hall's Vegetable
Sicilian Hair Renewer.’ Strike the name of “ Hall’ there-
from, and its distinctive characteristic as a trade-mark is
gone.” The general conclusions of the judge are indisputably
correct; and the only error therein consists in the improper
use of the term “trade-mark.” In the definition of the term,
we find that the manufacturer's own name is not an essential
part of the mark, although frequently combined with the
symbol that constitutes its essence. What was the real trade-
mark? Certainly not the words in common use to designate
the name of the article, the words “vegetable hair renewer.”
The word “Sicilian" is the only word that can stand the
test as a fancy appellation, an arbitrary symbol; and it would
be worthless for the purpose of the law if it were called into
requisition to imply that the article of hair preparation was
really Sicilian, i. e. made in Sicily. The case is simply
thus: the defendant indirectly violated the plaintiff's trade-
mark by using the symbol “Sicilian’’ in a covert manner,
calculated to deceive the public and divert custom from his
rival in trade; and all the language of his advertisement upon
the bottles was calculated to create the impression that he
sold the well-known article, or one superior to it. Doubtless
§ 427.] INFRINGEMENTS. 441
justice was done in every respect, except to language, by the
incautious use of technical phraseology.
§ 426. Curtis v. Bryan' is a case where the defendant sim-
ulated the label of the plaintiffs, adopted a stamp similar to
the plaintiffs', and fraudulently sold the article under the name
of the original inventor, as Mrs. Winslow's Soothing Syrup.
The plaintiffs' preparation had been in public use for nearly
twenty-five years, and had an established and very valuable
reputation. The name of Mrs. Winslow may be said to have
lost its primary signification, and to have become a mere
emblem, as in the case of the use of the historic name of
“Roger Williams.” The equity was clearly with the plain-
tiffs, and the defendant had, by unfair and dishonorable prac-
tices, sought to avail himself of, and turn to his own account,
the labor and the expense which the plaintiffs had borne for
years, to bring their article into favorable notice and general
use. He would have the public believe that the article he
was selling was the plaintiffs'. It mattered not, so far as the
principles of justice were concerned, whether the name did
constitute a fancy denomination or not ; for the general stat-
ute of the State embraced all cases of the kind, – the imi-
tation of labels, stamps, etc., -and the controversy before
the court did not need any nice distinction in terms. We will
continue the search.
§ 427. In Jurgensen v. Alexander * it appeared that for
twenty years previous to the suit the plaintiff was a manu-
facturer and vendor of watches in Switzerland and Den-
mark. It was found by the courts that the trade-mark used
by the plaintiff for the purpose of distinguishing and designat-
ing the watches manufactured by him was “Jules Jurgensen,
Copenhagen,” and that said trade-mark was so used and em-
ployed by him on all such watches so manufactured or sold
by him, being inscribed on the cap or inside back of each
watch; and that in the faith and credit of the said mark the
watches were bought, sold, and dealt in, and had acquired a
1 2 Daly, 212; 36 How. Pr. 33; R. Cox, 434.
* Barrows v. Knight, 6 R. I. 434; R. Cox, 238.
8 24 How. Pr. 269; R. Cox, 298.
442 LAW OF TRADE-MARKS. [$427.
wide-spread reputation and extensive sale. It was also found
that the defendant, a dealer in watches and other merchandise,
had exposed for sale four watches purporting to be manufac-
tured by the plaintiff, and bearing the mark “Jules Jurgen-
Sen, Copenhagen,” which mark thereon was false, simulated,
and spurious. We are not told whether the said words were
inscribed in any peculiar manner, or in any uncommon char-
acters. It was a clear case of fraud, whether these words
constituted a common-law trade-mark or not. This Case,
therefore, does not assist in the elucidation of the point under
consideration. Nor does that of Byass v. Sullivan, where
the plaintiff averred that the defendants unlawfully copied
and used his trade-mark or label on bottled porter, viz. “Best
Stout Porter, from R. B. Byass, London,” with a fac-simile of
his signature underwritten ; for that copy of a signature itself
was a good trade-mark. In Clark v. Clark,” it was held that
a party will not be restrained by injunction from using his
own name, unless the use by him be accompanied by circum-
stances indicating an intention to mislead the public. In
Ames v. King,” the answer denied that the plaintiffs had the
sole right to use the word “Ames’’ upon shovels, and denied
that the defendants ever stamped or marked any shovels with
the name “Ames” with intent to imitate the plaintiffs' shovels
or their mark, or to represent the same to be the manufacture
of the plaintiffs, or to injure, defraud, or deceive the public or
the plaintiffs; but admitted that he had stamped two hun-
dred dozen shovels for a dealer whose name was Edward. B.
Ames, and at his request had stamped the same “Ames,” but
not “O. Ames,” and solely to denote that they were sold, or
kept for sale, by Edward B. Ames. This alleged infringe-
ment was brought before the court under the Massachusetts
statute of 1852, entitled “An Act further to protect Trade-
Marks.” That statute conferred upon the court the power to
restrain by injunction the fraudulent use of trade-marks, and
other similar devices, employed “for the purpose of falsely
representing any article to be manufactured by ” a person or
1 21 How. Pr. 50; R. Cox, 278. 2 25 Barb. 76; R. Cox, 206.
8 2 Gray, 379.
§ 429.] INFRINGEMENTS. 443
firm who did not in fact make it. In the case at bar, the bill
stated a case clearly within the statute above cited. But the
essential averments in the bill of a fraudulent use of the plain-
tiffs' name by the defendant, for the purpose of falsely repre-
senting articles to have been made by them which were in
fact manufactured by the defendant, are particularly and fully
traversed by the answer. Bill dismissed." This not being a
case falling within the principles of the common law, but
resting upon a local statute, it cannot avail us in our present
investigation.
§ 428. Rodgers v. Nowill” is frequently misquoted. The
facts of that case are short and simple. The defendants,
manufacturers of cutlery at Sheffield, received an order from
the Messrs. Lord & Son for a quantity of pen-knives and
pocket-knives, to be stamped or marked with the letters.V. R.,
with a crown between them, and the words “J. Rodgers &
Sons, Sheffield,” below. They accordingly made and marked
the knives as ordered. The knives, when made, were, it
is said, received by the defendants, accompanied by a bill
of parcels describing them as purchased from John Rodgers
& Sons. The plaintiffs brought their action; and, having
proved the order for knives so marked as to resemble and pass
for their manufacture, and its execution by the defendants in
the manner stated, the case went to the jury. It was found
that the defendants had adopted the plaintiffs' mark. We
perceive that the infringement covered the whole of the mark,
and not alone the names of the plaintiffs.
§ 429. The case of Morison v. Salmon,” in the Court of
Common Pleas, in England, in 1841, appears at the first
glance to throw light upon this question, but in reality it does
not. The declaration, after stating that the plaintiffs prepared
and sold, for profit, a certain medicine called “Morison's Uni-
versal Medicine,” which they were in the habit of selling in
boxes wrapped up in paper, which had these words printed
thereon, alleged that the defendant, intending to injure the
1 See ante, § 67, The Collins Co. v. Oliver Ames & Sons Corporation.
* 5 Man., Gr. & Sc. 109; 11 Jur. 1039; 17 L. J. C. P. 52.
8 2 Scott N. R. 449; 2 Man. & G. 385.
444 LAW OF TRADE-MARKS. [$430.
plaintiffs in the sale of their said medicines, deceitfully and
fraudulently prepared medicines in imitation of the medi-
cines so prepared by the plaintiffs, and wrapped up the same
in paper, with the words “Morison’s Universal Medicine *
printed thereon, in order to denote that such medicine was
the genuine medicine prepared and sold by the plaintiffs, etc.
Field, on a motion to arrest the judgment, that the declaration
disclosed a sufficient cause of action. Looking at this as a
trade-mark case, where do we locate the essence of the com-
mercial symbol 2 It does not reside in the generic term
“medicine,” for that is common property, free to all who use
the language; nor is it in the name of the plaintiffs, for any
one else bearing the same surname had the same right to
stamp it upon the same unpatented articles of merchandise.
How could we hesitate to fix upon the word “universal ’’ as
the talisman? That word is used here as an arbitrary symbol,
or fancy denomination. It does not pretend to intimate that
the medicine to which it is affixed is universal; for then it
would be obnoxious to the charge of quackery, and, even though
it might not deceive the most credulous, it would meet the
fate of the marks in Heath v. Wright, and Fowle v. Spear.”
§ 430. In Holloway v. Holloway,” in the Rolls Court in Eng-
land, in 1850, the plaintiff, Thomas Holloway, complained that
his brother, the defendant, Henry Holloway, had begun to
sell pills and ointment at 210 Strand, under the description
of “ H. Holloway's Pills and Ointment.” The pill-boxes and
pots were similar in form to, and the labels and wrappers
were copied from, those used by the plaintiff, whose place
of business was at 244 Strand. The plaintiff prayed an
injunction to restrain the defendant from selling any pills
or ointment described as, or purporting to be, “Holloway's
Ointment,” or “H. Holloway's Pills,” or “H. Holloway's
Ointment,” in boxes or pots having labels so contrived or
expressed as by colorable imitation or otherwise to represent
the pills or ointment sold by the defendant to be the same
pills or ointment as were sold by the plaintiff.
1 3 Wall. Jr. 141; R. Cox, 154. 2 7 Penn. L. J. 176; R. Cox, 67.
8 13 Beav. 209.
§ 432.] INFRINGEMENTS. 445
§ 431. The Master of the Rolls (without hearing an answer)
said: “This case, upon the evidence before me, is perfectly
clear. The defendant's name being Holloway, he has a
right to constitute himself a vendor of Holloway's pills and
ointment; and I do not intend to say anything tending to
abridge any such right. But he has no right to do so with
such additions to his own name as to deceive the public, and
make them believe that he is selling the plaintiff's pills and
ointment.”
§ 432. In Burgess v. Burgess,” in the English High Court
of Chancery, in 1853, it appeared that, for upward of forty
years prior to 1800, John Burgess, the father of William R.
Burgess, the plaintiff, carried on business on his own account
as an Italian warehouseman at No. 107 Strand, London. In
1800, the plaintiff was taken into partnership by his father,
and from that time until 1820, when the father died, they
continued the partnership business under the style or firm
of “John Burgess & Son.” The son, as sole executor and
residuary legatee, succeeded to the business, and continued
it on his own account, but under the same style of “John
Burgess & Son,” and on the same premises at No. 107 Strand.
Among the articles in which the firm originally, and after-
ward the plaintiff, had been in the habit of dealing, was a
fish-sauce called “Essence of Anchovies,” which had been
originally manufactured by John Burgess, the father of the
plaintiff, about forty years prior to 1800, and ever since sold
by the firm under the name of “Burgess' Essence of Ancho-
vies.” The defendant, William Harding Burgess, the son
of the plaintiff, after being for many years employed at a
salary by his father in his business at the said place, upon
the occasion of a disagreement left his father's service, and
began to trade on his own account, at No. 36 King William
Street, same city. He caused to be placed over his shop-
front the words, “W. H. Burgess, late of 107 Strand,” and
on each side of the door of his shop fixed a metal plate,
with the words, “Burgess’ Fish-Sauce Warehouse, late of 107
Strand.” The bill complained also that the defendant was
1 17 Jur. 292; 22 L. J. Ch. 675; 3 De G., M. & G. 896; 21 L. T. 53.
446 - - - LAW OF TRADE-MARKS. [$ 434.
selling a fish-sauce purporting to be “Burgess' Essence of
Anchovies,” but at a lower price than that of the article sold
by the plaintiff under the same description or title, and that
such sauce was offered for sale by the defendant in bottles
similar in size and shape to the bottles used by the plaintiff,
accompanied with labels, wrappers, and catalogues bearing
a general resemblance to those used by the plaintiff in the
sale of his essence of anchovies; and in particular, that upon
such labels, wrappers, and catalogues he used the title “Bur-
gess’ Essence of Anchovies,” under which the article sold
by the plaintiff was well known, and had long enjoyed a
great celebrity in the market. It was alleged, also, that the
said words had been used by the defendant with the fraudu-
lent object of deceiving the public, and leading purchasers
to believe that they were purchasing the plaintiff's article.
Vice-Chancellor Kindersley ordered an injunction restraining
the defendant from using the words “late of 107 Strand,”
and “Burgess’ Fish-Sauce Warehouse, late of 107 Strand,”
but refused to restrain him from using the words “Burgess’
Essence of Anchovies.” The decision of the Vice-Chancellor
was affirmed on appeal.
§ 433. This is so manifestly an instance of unfair competi-
tion in trade, and not a trade-mark case, that remark were
supererogatory, unless to cite it as an additional illustration
of the doctrine that a man’s name cannot be transmuted into
a technical trade-mark for himself.
§ 434. In the Court of Paris, in 1863, (Massez v. Joly,”)
the plaintiff, a shoemaker, had for a mark the name of “J oly,”
enclosed in an oval. The defendant, Joly, used his own name
in the same manner and with the same object. The court
ordered that the defendant should modify his mark, either
by joining his Christian name, or by omitting the oval form,
so as to prevent confusion in the mind of the public. The
oval constituted the essence of the symbol. In the Leather
Companies case, in the House of Lords, in 1865,” both par-
1 10 Annales, 318. - -
2 11 H. L. C. 523; 35 L. J. Ch. 53; 11 Jur. (N. s.) 513; 12 L. T. (N. s.) 742;
13 W. R. 878; 6 N. R. 209. -
$435.] INFRINGEMENTS. - 447
ties made conspicuous use of the surname “Crockett,” being
that of the inventors of a certain process, and yet the court
did not entertain the notion that that name could be an es-
sential part of a trade-mark. Nor does the following case
sustain any such idea, although sometimes cited in support
thereof.
$435. A complainant, Samuel Stonebraker," being engaged
in the manufacture of certain medicines and other prepa-
rations, adopted and used certain labels to distinguish his
preparations from all others. These labels became generally
known to the trade and consumers, so that by them the prep-
arations were recognized, distinguished, and bought. The
manufacture and sale became a source of profit and emolu-
ment to the complainant. Certain persons thereupon fraud-
ulently engaged in the manufacture and sale of medicine and
preparations, which they sold, bearing a similar label with only
a colorable difference. Two of the defendants had employed
in business another, a brother of the complainant, for no
other reason than that his name was Stonebraker, and because
they believed that by employing a person of that name they
could with impunity consummate their intended frauds against
the complainant and the public. Pinkney, J., who heard the
case, said that the evidence showed beyond all doubt that
the agreement between the parties was but a combination to
deceive the public, and to enable the parties to it to obtain
for their medicines the benefit of the celebrity which those
of the complainant had in the market, at the expense of the
complainant, and in fraud of his rights. The defendant who
had thus loaned his name was himself a medical man, and
had a right to compound and vend medicines. His offence
was in selling his medicines as those of his brother. The
defendants copied the names given by the complainant to his
medicines; and on their wrappers and labels the language
that he had on his; and, as if to leave no doubt of their
fraudulent intent, printed on the wrappers of some of their
medicines and preparations the certificates given to the com-
plainant, in recommendation of his medicines, etc. This
1 Stonebraker v. Stonebraker, 33 Md. 252.
448 Law of TRADEMARKs, [$ 438.
design became a perfect success, so that experienced druggists
were deceived. -
§ 436. The Circuit Court passed a decree perpetually en-
joining and restraining defendant Stonebraker and his part-
ners, their agents, and all persons claiming under them, from
manufacturing or imitating any of the medicines, etc. which
had been known as “Stonebraker's Medicines or Prepara-
tions,” and from counterfeiting the labels, marks, etc. The
Court of Appeals of Maryland affirmed the decree.
§ 437. A trader is sometimes debarred from using a trade-
mark originated by himself; for by his own direct act, or by
operation of law, the title to its use may have been alienated
from him. In substance, there is no distinction between the
sale of a business and good-will by a trader himself, and a sale
by his assignees in bankruptcy. Therefore, on a sale by such
assignees, the trader has no right, upon setting up a fresh
business after his discharge, to use the trade-mark of his old
business, or in any other way to represent himself as carrying
on the identical business which was sold; although he has a
right to set up again in business of the same kind next door
to his old place of business." The principle of this ruling of
Vice-Chancellor James is plain. A trade-mark is frequently
an indication of place, and purchasers look rather to the local-
ity than to the person. If certain goods are associated with
the shop bearing the sign of the Crescent, or the Elephant, or
any other fanciful emblem, and go forth to the public bearing
the stamp of the Crescent, etc., then it is clearly an infringe-
ment for any one else in the same line to use the mark. But
if the mark be so personal in its character that it is identified
with the person, and imports that the goods bearing it are
manufactured by him, then the rule would be different; for
the law will not lend itself to the perpetration of a fraud.”
§ 438. The employment by a firm of a name identical with
that of an old commercial house is not illicit in itself, and the
suppression of the name will not be decreed. But when to
1 Hudson v. Osborne, 89 L. J. Ch. 79; 21 L. T. (N. s.) 886. -
2 See Bury v. Bedford, 10 Jur. (N. s.) 503; 4 De G., J. & S. 852; 33 L. J. Ch.
465; 10 L. T. (N. s.) 470; 12 W. R. 726; 4 N. R. 180.
§ 438.] - INFRINGEMENTS. 449
the use of this name are added abusive manoeuvres, having
for an object to deceive consumers, then it becomes necessary
to order that modifications be made in marks and tickets,
with the first name of the junior party, and sometimes the
date of the formation of the new house. In the case of Louis
Roederer & Co. v. Théophile Roederer, in the Court of Paris,
in 1865, the plaintiffs, the well-known vintners of Rheims,
complained of the defendant's use of the surname of the head
of their house, to their prejudice. The plaintiffs had adopted
a mark called Carte Blanche for their finest champagne wines.
The Tribunal of Commerce of Rheims found for the plaintiffs,
and directed that on the labels, corks, brands, tickets, etc., to
be used by the defendant's firm, the name Théophile should
be placed in letters of the same size, shape, etc. as the name
Roederer. The plaintiffs, thinking the remedy insufficient,
appealed, and produced before the appellate court prospec-
tuses which, both before and after the judgment of the court
of first instance, had been circulated, not only in France, but
also in Belgium and in England. The following shows the
contents of said prospectuses: “Grand Vin de Champagne
mousseux. T. Roederer & Co., of Rheims, Carte Blanche,
qualité unique, francs: 5. Merchants and consumers are re-
quested not to confound this wine with that of a similar house
at Rheims, and to suspect fraudulent imitations. Correspond-
ing depository in Belgium: A. Vernaelde, wine merchant,
29 Ommeganech Street, Antwerp.”
“LoNDON, October 13, 1864.
“GENTLEMEN, - In remitting herein enclosed the circular of the MESSRs.
TH. RoRDERER & CoMPANY., of Rheims, who give us the title of sole agents
for the sale of their CELEBRATED CHAMPAGNE-WINE, we request you to
forward to us your orders.
“The mark Carte Blanche' of Th. R. & Co. is so well known that
there is no need for us to recommend it to you,” etc.
Per Curiam: “As to the principal demand tending to the
prohibition of the use by the defendants in their firm name,
their marks and labels, of the name of Roederer, — consider-
ing that Théophile Roederer, having formed with the brothers
1 11 Annales, 58.
29
450 LAW OF TRADE-MARKS. [$ 438.
Bousigue (called Bley) an association under a collective name
for the sale of sparkling champagne wines, had a right to dis-
pose of his name for the profit of the partnership, they conse-
quently had a right to use it, as well in the firm title as in
their marks, labels, and advertisements, beyond the reach of
power to suppress the same, especially as against Roederer
himself, if he has created the house on his own account. As
touching the subsidiary conclusions, directing that the name
of Théophile Roederer take precedence in the firm or title,
marks, and labels, — considering that an association under a
collective title may borrow from among themselves the name
of any one most suitable for their title, marks, and labels,
they are not, however, at liberty to take a sign tending to
divert to their own profit the good-will of an old house bear-
ing the same name, one already made popular in the same
trade; that this good-will should be the result of a free and
legitimate competition and not of illicit actions, and that it is
an illicit action to cause a coincidence of mercantile names
to deceive the consumer;—considering that the judges of the
first instance have found as a fact that Théophile Roederer's
firm has established and organized for the purpose of appro-
priating, by means of the name it bears, the favor enjoyed
by the house of Louis Roederer; that, in fact, the antece-
dents of Théophile Roederer, — a stranger in the city of
Rheims, and to the commerce of champagne wines, – jus-
tify the conclusion that the part he plays in the partner-
ship is solely to lend his name to imitate the labels and
vignettes of Louis Roederer, the borrowing of the special
designation of ‘Carte Blanche, the resemblance of the sealing-
wax for the bottles, the similarity of marks upon the corks,
and the announcements, scattered even through Belgium and
England, in which the agents of the new concern felicitate
themselves upon having received the agency for the celebrated
champagne wine, recommending not to confound it with an-
other house of the same name, and retaining but the initial
of the name Théophile to make more conspicuous the name of
Roederer; — all reveal and characterize an unlawful competi-
tion. Considering that to remedy this abuse the judges below
$ 439.] INFRINGEMENTS. 451
should not have limited themselves simply to directing that
the marks, labels, and announcements of this new house
should for the future bear the prenomen of Théophile written
in full, and in characters of the same dimension as those of
the surname Roederer; that that would be an incomplete and
inefficacious remedy against confounding in commerce the
name of the new house with that of the old, but that the
same can be accomplished by diversifying them by exterior
signs, without the necessity of modifying the firm title, Thé-
ophile Roederer & Co.; that it will suffice for the future to
direct that the defendants shall be bound to insert in their
marks, labels, announcements, circulars, and bills, the men-
tion following, “House founded in 1864, and to inscribe it
thereon in characters of the same size and of the same form
as those of the name and prenomen of Théophile Roederer; –
for these reasons, the judgment appealed from is modified, in
that it orders only that the marks, labels, announcements,
and bills of the house of Théophile Roederer & Co. shall
bear for the future the prenomen Théophile in form and
dimension the same as those of the surname. . . . Ordered,
that the defendants shall in future insert in their advertise-
ments, bills, and prospectuses, as well as on their marks,
labels, and corks, 1st, the prenomen of Théophile ; 2d, the
mention following: “House founded in 1864.” Ordered, that
said mention shall appear in characters of the same dimen-
sion and form as those of the surname Roederer. Ordered,
that the present judgment shall be inserted by extract con-
taining the names and qualities of the parties, the reasons
and disposition made, in the newspapers of the Department
of the Marne, in three newspapers of Paris, and in four for-
eign newspapers selected by the plaintiffs, and at the expense
of the defendants,” etc.
$ 439. An Englishman established in Paris the sale of a
certain manufacture from farina for food, to which he gave
the name “Ervalenta-Warton,” compounded from a word of
fancy and his surname. Whatever may have been the intrin-
sic merit of this farina, through dint of advertising, it had
obtained in France as well as in England a grand success.
452 LAW OF TRADE-MARKS. - [s 441.
Influenced by the renown gained by Warton for his product,
another Englishman, named Klug, began the sale of a some-
what similar article of food, which he decorated with the name
of “Revalenta Arabica.” For a long time the competitors
carried on business side by side without a legal contest; but
eventually Warton died, and his widow, succeeding to his
affairs, brought an action against Klug for usurpation of the
denomination which had been adopted by her husband as a
trade-mark. The Court of Paris affirmed the judgment of
the court below, which had found the defendant guilty of
infringement, in using the thinly veiled expedient of slightly
modifying the name of the thing." f
§ 440. It is a counterfeiting of a trade-mark to affix the
symbol to a box or envelope, although the goods themselves,
enclosed therein, do not bear the same mark as the genuine.
Thus, where a manufacturer of gilt-headed nails had a star
for his mark, which mark he impressed upon the boxes con-
taining his products and his invoices, as well as on the goods,
and another person placed the same mark on the outside of his
boxes, but not upon the goods, it was held to be infringement.
Such was the decision of the Court of Paris in 1872, in Car-
moy v. Samson,” on appeal from a judgment of the Tribunal
Civil of the Seine. The lower court had held that a five-
pointed star, such as the plaintiff had adopted and the de-
fendant had imitated, is a sign commonly employed in other
branches of industry, and when isolated from all other dis-
tinctive characters is not susceptible of private appropriation.
The defendant, therefore, had not encroached upon an exclu-
sive right, especially as he had not actually stamped the mer-
chandise itself. Judgment was rendered for the defendant,
with costs. The appellate court, however, not only regarded
the star sufficient as a trade-mark, but found the defendant
guilty of counterfeiting, by the external use thereof. His ob-
ject was to deceive the purchaser, and he did it as efféctually
as if the star had been impressed upon each nail.
§ 441. As to who is the actual counterfeiter of a trade-
mark, the Court of Cassation of Belgium, in 1865, (Gilbert
* Warton v. Klug, 1 Annales, 40. * 17 Annales, 231.
§ 443.] INFRINGEMENTs. 453
& Co. v. Benedictus,') said: Inasmuch as the prohibition to
counterfeit trade-marks has for its object the preservation
from outrage of industrial property, it follows therefrom, -
1. That the counterfeiter is not the agent who materially
executes the simulated work, but he who causes it to be done
with an intent fraudulently to traffic in counterfeited objects;
2. That the wrong is consummated at the place where the
counterfeiter carries on the illicit traffic, although the act may
have had its inception in a foreign country.
§ 442. As to the question of infringement by the use of
numerals, we have a decision made at a general term of the
Supreme Court of New York, in 1872.” It was there held,
that the use of a number of a street, or that of a building in a
street, for part of a person's trade-mark, where other persons
have the same right to manufacture the same article in the
same street, or at the same number or building, cannot be
made exclusive, or the use by another be restrained by in-
junction. But where a person has the exclusive use of a street
number or building, he may very properly use it as a part of
his trade-mark. -
§ 443. Perversion of Mark. — A genuine mark may vir-
tually become a counterfeit by misapplication or transfer.
Thus, if a trader sells goods with his mark thereto attached
as an evidence of genuineness, and the purchaser adulterates
the goods, or uses the same envelope for the purpose of selling
a false article, he is a counterfeiter. So where one, having a
right to use a genuine mark upon paper bags for seeds, placed
therein seeds of an inferior quality, he was guilty in the eye of
the law of fraud, just as much as if he transferred a genuine
signature from one paper to another.” Or in a case like the
following. A gunmaker, who manufactured rifles that had
acquired a great reputation, placed his trade-mark thereon.
Some of the old parts were sold as old stores. The defend-
ants bought old parts bearing the plaintiff's mark, and fitted
1 12 Annales, 427.
* Glen & Hall Manuf. Co. v. Hall, 5 Alb. L. J. 109; 61 N. Y. (16 Sickels) 226;
19 Am. R. 278. -
* Bloss v. Bloomer, 23 Barb. 604; R. Cox, 200.
454 LAW of TRADE-MARKS. [$ 443.
them to rifle-barrels not of plaintiff's make. The fraud was
enjoined." Or where false representations are made, as in the
following cases. The plaintiffs sold their brandy in casks,
and also in bottles, the latter being of the better quality, and
placed on their bottles certain distinctive labels, etc. The
defendants purchased a large quantity of the plaintiff's infe-
rior or cask brandy, and sold it in bottles similar to those of
the plaintiffs.” A defendant had bought a considerable num-
ber of bottles that had contained the plaintiff's bitters and
which bore his marks, and sold them refilled with other bitters
of his own make.” The French courts of justice have had
opportunities to discuss this subject. In the Court of Amiens,
in 1872, it was held that where receptacles, such as siphons,
of gaseous waters bear the mark of a manufacturer, another
in the same business has not a right to avail himself thereof
for his products, although he founds his claim so to do on the
constant practice of the trade, permitting the employment of
siphons returned by consumers, in exchange for others sold
to them.” In the Tribunal Civil of the Seine, in 1879, it
appeared in evidence that the defendant had obtained por-
tions of a genuine famous article, and, supplying the other
portions made by himself, he marked the article thus com-
pleted with the symbol of the first inventor. He thus suc-
ceeded in foisting an inferior article on purchasers, and at the
same time damaged the reputation of the owner of the mark.
The court said that it was fraud to use the mark even on the
genuine portion.” In the Tribunal Correctionnel of Toulouse,
in 1881, there was a case of selling in genuine bottles in-
vested with false labels and fluid. The defendant was held
to responsibility, under Article 7 of the law of June 23, 1857,
and Article 423 of the Penal Code.” In 1884, in the Circuit
Court of the United States for the Northern District of Illi-
1 Richards v. Williamson, 30 L. T. 746.
2 Hennessy v. White, 6 W., W. & A’B. Eq. 221; Hennessy v. Hogan, Ibid.
225; and Hennessy v. Kennett, Cox's Man., case 556.
8 Hostetter v. Anderson, 1 W. R. (1 W., W. & A’B.) Eq. 7; 1 Australian Jur. 4.
* Pie v. Poulet, 20 Annales, 46.
5 Gogney v. Delanne, Ibid. 164. .
6 Ministère Public and F. Prot & Co. v. Carriès, 26 Id. 185.
$ 445.] INFRINGEMENTS. 455
nois, there was a similar case. The defendant had bought
from old-junk dealers genuine bottles. that had contained
“Warner's Safe Kidney and Liver Cure,” and had filled them
with some base concoction, and affixed counterfeits of the
label. He was mulcted in damages and costs." This matter
will be further discussed in a subsequent section.”
§ 444. This question was discussed in the Corps Législatif
of France, when the bill that crystallized into the trade-mark
law of 1857 was under consideration. One honorable mem-
ber (M. Legrand) said that certain products exist on which
by reason of their nature the trade-mark could not be imme-
diately applied. These products are placed in an envelope
on which is put the mark of the manufacturer; and the pro-
ducts find a sale more or less easy, according to the degree of
credit that that particular mark has in the market. He men-
tioned frauds of frequent occurrence, where certain vendors
had made themselves the intermediaries between the manu-
facturer and the consumer. They address their attentions to
the manufacturers the most renowned. In the beginning,
to establish confidence, they render to their principals such
as they have received; but soon afterwards, when the valua-
ble products have become associated with certain marks, they
open the packets and substitute an inferior kind of goods.”
$ 445. M. Levavasseur, in the same debate, said that in
nearly all the cities where textile fabrics are made, and nota-
bly so in Rouen, there exist commission merchants who buy
to sell, generally under a form different from that which the
manufacturer has given; thus, they divide the stuffs in pieces,
to make them assume new guises suited to the convenience of
those to whom the merchandise is sent. These textile fabrics
receive at the dressers an entirely new form, and the com-
mission merchant, to assure the sale, thereon places his mark,
known only to his principals. It is in this manner that the
greater part of the stuffs of Rouen sold in America are dressed
and exported.
* Warner v. Roehr, reported in Chicago newspapers of March 21, 1884.
* See infra, § 473, “Slander of Trade-Mark Property.”
* Moniteur, May 14, 1857.
456 - LAW OF TRADE-MARKS. [$ 446.
§ 446. In Gillott v. Kettle, at a general term of the Su-
perior Court of the City of New York, the fraud complained
of consisted in selling an inferior article of the plaintiff's
manufacture as being one of a superior quality. The case
came up on appeal from an order enjoining the defendant, as
hereinafter stated. The papers on which the injunction was
granted showed that the plaintiff had for a long time been
extensively engaged in the manufacture of steel pens, at Bir-
mingham, in England; that the pens made by him were
well known as such in the market, and were extensively sold,
as well in the United States as in England; that large quan-
tities of them were sold in boxes containing one gross each ;
that each box was labelled in a manner, and with a label
having devices upon it, which indicated that the plaintiff was
the manufacturer of the pens, and in consequence of which
they were bought and sold in the market, as pens made by
him; and that the labels had numbers” or marks impressed
on them, which indicated, and which were recognized by
dealers as indicating, an actual difference in the quality of
the pens. The pens in boxes numbered 303 were bought
and sold as being extra fine-pointed, and were in fact so.
The pens in boxes numbered 753 were of an inferior quality,
and were bought and sold as such, the number being under-
stood by dealers to denote their inferior quality. The former
were sold by the plaintiff at about seventy-five cents, and
the latter at about eighteen cents a gross. From the boxes
containing the plaintiff's label or trade-marks, and bearing
the number 753, the defendant was in the habit of removing
the plaintiff's label, and putting on, in place thereof, labels
which he made or caused to be made closely imitating the
genuine labels of the plaintiff, which bear the number 803.
This act was productive of great injury to the plaintiff, by
destroying public confidence in his honesty, and bringing the
pens made by him into discredit, by reason of his inferior
pens being disposed of as being his best pens.
1 3 Duer, 624; R. Cox, 148.
2. As to the numbers being trade-marks, see Gillott v. Esterbrook, 47 Barb.
455; R. Cox, 340. Com, of App. 48 N. Y. (8 Sickels) 874; 8 Am. R. 558.
§ 448.] INFRINGEMENTS. 457
§ 447. This case differs from those in which a manufac-
turer seeks to restrain others from placing his trade-mark
upon articles made by themselves, by which goods of his own
manufacture are known to be his, and are recognized as such
in the market. Here the defendant has not attempted to sell
an article made by himself, by fraudulently creating the im-
pression that it was made by the plaintiff; but he has at-
tempted to sell an inferior article — made by the plaintiff to
be sold as an inferior one of his own manufacture — by using
a label indicating a superior article. The fraud, so far as
successful, is twofold. The public is defrauded, by being in-
duced to buy the inferior for the superior article. The plain-
tiff is defrauded, by an unjust destruction of confidence that
his pens are put up for sale and assorted with reference to
the quality, indicated by the labels. Unless the fraud were
checked by the intervention of a court of equity, the damage
to the owner of the mark might be irreparable. The remedy
by injunction is invariably granted when the nature of the
injury is such that a preventive remedy is indispensable, and
should be permanent. The order was affirmed, with costs.
§ 448. The following curious case was submitted to the
writer, for his opinion as counsel. C. J. M., a wine and liq-
uor merchant in the city of New York, was threatened with
a prosecution for imitating the trade-mark of Bass & Co., of
England, upon ale and porter. “Then you do not sell a gen-
uine article?” “O, yes, we sell the very ale and porter that
we purchased from the manufacturers themselves.” “Then
the labels are imitated by you? that is, false labels are used
upon genuine goods?” “Not at all, for the labels also are
genuine. The whole story is this: we bought the ales and
porter at wholesale for the understood purpose of retailing in
England; and also obtained from the agent of the firm of
Bass & Co. a supply of their labels containing their trade-
marks. Instead of selling in England, we chose to bring the
ale and porter to this country, and by retailing here we reap
the profits that the manufacturers expected to enure to them-
selves. Query, Have we made ourselves liable in an action
for damages, or can we be enjoined?” The answer was, that,
458 Law of TRADE Marks. [$ 449.
in the absence of any agreement, it could not be perceived
how either an action at law or a suit in equity could be
maintained. It seemed like a naked question of morality and
mercantile faith. It was nothing but a trick in trade. The
foreign firm may protect itself in the future by selling only to
known confidential retailers.
§ 449. From an examination of the foregoing illustrations,
We cannot have failed to gain a general notion of the correct
theory of infringements. We observe that encroachments on
trade-mark rights usually have less of the characteristics of
downright robbery than of mean, dissembling knavery. The
craft of the fox is evinced more frequently than is the bold-
ness of the lion. Yet two traders may take the same symbol,
each in ignorance that the other uses it, or with an honest
doubt as to which has the legal right therein. The conflict
of claims may be the result of a difference of opinion as to
the alleged imitation. At the first glance, it is not always
easy to say what amounts to imitation. In the chapter on
Interferences, hereafter, may be seen a remarkable instance
of two things entirely unlike in appearance being adjudged
to be alike in effect." In that case, it was conceded by the
able counsel on each side, and found by the Patent Office, that
the picture of a bouquet with elaborate ornamentation, and the
simple word “Bouquet,” interfered with each other when used .
upon the same class of goods. If vision were the sole guide,
the lack of physical resemblance would have decided that no
interference existed. One delineation could not possibly be
mistaken for the other. Here is the test: Would the use by
different houses of the two things cause confusion ? The ear is
the medium to mislead a purchaser. He might ask this ques-
tion, “Have you the Bouquet ham?” and either of the traders
could truthfully reply in the affirmative. The picture and the
word could not lawfully coexist as marks for rivals dealing
in the same class of merchandise. The matter then resolves
itself into a question of priority of adoption. We see how one
may press closely upon the rights of another without the least
thought of fraud, and yet be adjudged to be a wrong-doer.
1 Schrauder v. Beresford & Co., § 661. - -
$ 450.] INFRINGEMENTS. 459
$ 450. Again, the same symbol may be used by two per-
sons having no interests in common, and still furnish no
ground for legal conflict. We have heretofore seen that
there is no property in an abstract symbol. It must be a
mark upon a vendible commodity to entitle it to judicial
attention. It does not signify if the emblem used by the
different parties be exactly alike, – in fact, be printed from
the same plate or impressed by the same brand, – unless it
also be affixed to similar goods. Now arises a point of con-
siderable difficulty. How shall we define the term class?
A class is an order or division of objects, grouped together
on account of their common characteristics. We must nar-
row the limitation, when applying the word to our present
purpose. This point has already been discussed in this
treatise, and some examples given of the construction of the
word class. Cutting instruments may be classified generally
as cutlery; and yet a chopping-axe, a pocket-knife, and a
scythe be said to belong to three distinct classes. Wine,
brandy, whiskey, gin, are all alcoholic liquors; but we see
that the Patent Office has held that they do not come in the
same class." We read the decision in the case of the Amos-
keag Manufacturing Co. v. Garner,” and learn, if we did not
know it before, that plain cotton cloths and printed cotton
cloths belong to different classes. Some latitude must be
allowed in determining to what class an article should be
assigned. If a manufacturer adopts a mark for a razor, and
uses it upon nothing else, can he subsequently claim that he
had obtained the exclusive right to its use upon all sharp
instruments of steel? Or if he adopts a mark for alcohol, does
he thereby exclude every other manufacturer or trader from
the use of the same symbol for whiskey or gin? Certainly
not. The classification of commerce must be consulted. The
experimentum crucis is this: What does a buyer ask for 2 An
experienced tippler may say that he is at times unable to dis-
tinguish old whiskey from brandy, so much are they alike in
taste, and that that circumstance is a good reason why the
halo of a trade-mark for one article should be considered
1 Ante, §§ 66–70. * 55 Barb. 151; 6 Abb. Pr. (N. s.) 265.
460 LAW OF TRADE-MARKS. [$ 450.
broad enough to embrace the other. This is a question of
evidence rather than one of classifying. If the purchaser
asks for brandy, he does not wish for whiskey. What does
he believe he is getting? If he is misdirected by a symbol,
the proprietor whose mark has been pirated loses a customer,
and for the wrong so done him is entitled to legal satisfaction.
The class of merchandise of the defendant may not be exactly
that of the plaintiff, and yet the deceit be complete. We
must apply the doctrine of analogous use. If a defendant
show that the class of goods to which he has affixed the mark
of the plaintiff is not in all particulars the same as his, shall
he thereby be screened from punishment? If there be two
distinct classes of goods bearing the same emblem, are they
so nearly alike that the public may naturally be misled? If
one applies a symbol to corn starch, can another evade it by
applying it to a somewhat similar article of farinaceous food 2
In Burnett v. Phalon,' the essential element of each party's
product was cocoa-nut oil, although in certain particulars
the articles were not alike; but when a buyer saw the word
“Cocoine,” he thought that he was obtaining the genuine
“Cocoaine.” So, also, when one asked for the plaintiff's
“Eau de la Floride,” represented to be a natural water from
Florida, he thought his wish was gratified when the defend-
ant delivered a chemical compound marked “Eau de la Fluo-
ride.” The object in each case was to deceive the public
by the usurpation of the reputation of another person. It is
eminently a question of fact for the practical experience of
a jury, whether, in a particular case, a resemblance is likely
to deceive the community.” In the “IXL * * matter, Wos-
tenholm & Son had no right to complain of the application
by others of the composition of letters first used by their
house; for as those others did not manufacture the same kind
of cutting instruments that they, the originators, did, no com-
petition arose, and no custom was lost. The goods are of
different classes. -
1 9 Bos. 192; 5 Abb. Pr. (N. s.) 212; 3 Keyes, 594. -
2 Guislain & Co. v. Labrugnère, ante, $ 397. See also ante, § 38.
8 Per Robertson, C. J., in Swift v. Dey, 4 Robertson, 611.
* Ante, §§ 68–70. -
§ 451.] REMEDIES, - LAW AND EQUITY. 461
CHAPTER IX.
REMEDIES, - LAW AND EQUITY.
§ 451. Remedies of different sorts.
§ 452. Remedy at Law.
§ 453. Forgery at common law.
§ 454. Penal statutes of States.
§ 455, 456. Criminal law of Europe.
§ 457. Action on the case. — Federal statutes:
§ 458. Fraud is of essence of injury.
§ 459. Actual damage must be shown.
§ 460. Wrong to trader is twofold.
§ 461. Representations need not be immediate.
§ 462–466. Remedy in Equity.— Injunction cautiously granted.
§ 467. Preliminary injunction, — when to be granted.
§ 468. Fraud or mistake, both causes for relief.
§ 469. Discovery, Account, and Costs.
§ 470. Inadequacy of legal redress.
§ 471. Innocent vendor not required to pay costs.
§ 472. So of innocent common carrier or bailee.
§ 473. Slander of trade-mark property.
§ 451. The Remedies against Piracy (a term broad enough
to embrace all infringements, whether atrocious or compara-
tively innocent) may be said to be threefold, and a single act
may incur all three prosecutions. They are as follows: 1. A
private action at law. 2. A suit in equity for an injunction
and an account of profits. 3. A criminal action for a public
wrong. A civil action, sounding in damages, may be brought
by the owner of a mark, for injury done to his property there-
in, an unwarrantable use of the mark, or a colorable imitation
thereof; or, as an indirect means of protecting the owner, an
action in the nature of deceit may be brought by a purchaser
who has been cheated. The remedy at law is sometimes
sought under common law; but more frequently by virtue
of statutes. Many of the individual States have legislated
upon this subject, not only providing civil redress for infringe-
ments of trade-marks (used in a comprehensive sense), but
462 - IAW OF TRADE-MARKS. [$ 452.
*
have also passed penal statutes for counterfeiting the same ;
some of which statutes prescribe severe punishments, in one
case the maximum for counterfeiting being imprisonment for
twenty years." Chapters VI. and VII. treat of our national
legislation on the subject. The civil remedies therein pro-
vided are a reaffirmance of pre-existing provisions of law and
equity, and novel only in allowing an action on the case for
false or fraudulent representations or declarations, whether
oral or in writing, made in the Patent Office in regard to a
trade-mark. -
§ 452. Remedy at Law. — Sometimes a criminal prosecu-
tion and a civil action for the same wrongful act may proceed
simultaneously.” An indictment for the piracy of a trade-
mark registered under the act of Congress of March 8, 1881,
must of course be found in a Federal court. But cases may
arise where it would be preferable to indict under the law of
the State where the crime shall have been committed. The
reason is this: the act of Congress of August 14, 1876, which
is made operative in conjunction with that above mentioned,
protects only technical trade-marks; but divers of the indi-
1 As to the penal statutes, see the following State laws:– California: Penal
Code of July 14, 1872, sect. 13,350 to 13,354, Hittel's. Connecticut: Gen. Stats,
Revision of 1875, p. 523. Illinois: Acts of May 2, 1873; and March 27, 1874,
sects. 115, 116. Indiana: Act of March 16, 1875. Iowa: Code of 1873, sects.
4079, 4080. Kansas: Act (that took effect) May 31, 1866, sects. 1, 2, Ken-
tucky : Gen. Stats., 1873. Maine: Rev. Stats., 1871. Massachusetts: Gen.
Stats., ch. 161, sect. 55 (Act of 1850, ch. 90); also Act of June 11, 1870. Michi-
gan: Act of Feb. 22, 1870. Nebraska: Gen. Stats. of 1873, p. 758; Nevada: Act
of March 8, 1865. New Jersey: Rev. Stats. (1877), title “Crimes.” New York:
Act of April 17, 1862, amended 1863, ch. 209; Act of May 14, 1875, ch. 303; also
Supplemental Act of June 8, 1878, ch. 401. Ohio: Act of May 5, 1877, ch. 11,
sects. 23, 24. Oregon: Crim. Code of 1864, sect. 583. Pennsylvania: Act of
March 31, 1860 (Brightley's Dig., 10th ed. 865); Act of 1865; Laws, p. 58; and
subsequent local acts. – This list does not pretend to be complete, being here
cited as illustrations of State legislation for the punishment of trespasses on
trade-mark rights.
* As in Chicago, Ill., in 1884. The case of The People of the State of Illi-
nois v. Frank Roehr, for counterfeiting the trade-marks of H. H. Warner, in a
State criminal court, and that of Warner v. Roehr, an action on the case, in the
United States Circuit Court for the Northern District of Illinois, went along
part passu. As the criminal offence was against both nation and State, there
might also have been a third case, i.e. a criminal prosecution under the act of
1876, as the trade-mark had been registered.
§ 452.] REMEDIES, - LAW AND EQUITY. 463
vidual States have greatly expanded the local definition of the
term trade-mark." There are two heads of crime under which
it might be expected that the fraudulent imitation of a trade-
mark would be indictable, – as a forgery, or as the obtaining
of money under false pretences. The former of these methods
was adopted in the case of Regina v. J. Smith, in England.”
The imitation in this case consisted of a printed label, which
was an exact imitation of the labels attached by the prose-
cutor, George Borwick, to packets of his powder, called
“Borwick's Baking Powder,” with this exception, that the
signature, “George Borwick,” was omitted in the counterfeit.
It was contended, on the part of the prosecution, that the
term forgery might be defined as the alteration or making
of a false document with intent to defraud; and cases were
cited in which the fraudulent imitation of a printed document,
such as a diploma of the College of Surgeons, the good-
conduct certificate of the master of a ship, and of a clergy-
man as to the character of a schoolmaster had been held to
be forgeries. It was, however, unanimously held by the
bench that the conviction was not sustainable; that the issu-
ing of the wrapper or label, without the powder which it
enclosed, would be no offence; and that, in the printing of
the wrappers, there was no forgery committed by the printer.
Bramwell, B., there said: “Forgery supposes the possibility
of a genuine document, and that the false document is not
so good as the genuiue document, and that the one is not so
efficacious for all purposes as the other ”; that, in the case
before him, “one of the documents is as good as the other, —
the one asserts what the other does, – the one is as true as
the other; but one gets improperly used.” Mr. Lloyd, in his
work on Trade Marks, says that he has not been able to find
any case in the Reports in which an indictment for obtaining
money under false pretences has been sustained in the case
1. As an example, see sect. 3196 of the Political Code of California. By it
the term trade-mark includes “every description of word, letter, device, em-
blem, stamp, imprint, brand, printed ticket, label, or wrapper usually affixed
by any mechanic, manufacturer, druggist, merchant, or tradesman,” etc.
2 Dearsley & Bell, 566; 8 Cox, Crim. Cases, 32; 27 L. J., M. C. 225; 4 Jur.
(N. s.) 1003; 31 L. T. 135; 6 W. R. 495; 47 C. C. C. Sess. Pap. 269; 48 Id. 8.
464 LAW OF TRADE-MARKS. [$ 453.
of a fraudulent use of a trade-mark, although he had been
referred to the cases of Reg. v. Gray & Gosling, in which the
prisoners were sentenced to twelve months’ hard labor for the
fraudulent use of the Messrs. Allsop's labels; and to another
case of Regina v. S. Jones, where a sentence of three years'
penal servitude was inflicted. He says that it is clear, how-
ever, that the principle is applicable; and, in the case first
cited, Willes, J., says: “In cases like the present the remedy
is well known: the prosecutor may, if he pleases, file a bill in
equity to restrain the defendant from using the wrapper; or
he may bring an action at law for damages; or he may indict
him for obtaining money for false pretences.” This opinion
of Mr. Justice Willes was assented to, with more or less posi-
tiveness, by the other judges; and it seems strange, says Mr.
Lloyd, that this form of indictment should not have come into
use by manufacturers for the purpose of protecting their
trade-marks. It may, however, be accounted for on the
ground that an action at law for damages, if successful, gives
a more ample compensation for the violation of their rights.
§ 453. Forgery at common law is defined to be “the fraudu-
lent making or alteration of a writing to the prejudice of
another man's right,” or as a false making, a making malo
animo, of any written instrument for the purpose of fraud or
deceit. In the case of Regina v. J. Smith, above cited, Pol-
lock, C. B., in giving judgment, said, speaking of the labels:
“They are merely wrappers, and, in their present shape, I
doubt whether they are anything like a document or instru-
ment which is the subject of forgery at common law. To say
that they belong to that class of instruments seems to me to
be confounding things together as alike, which are essentially
different. It might as well be said, that if one tradesman
used brown paper for his wrappers, and another tradesman
had his brown paper wrappers made in the same way, he
could be accused of forging the brown paper.” So in Regina
v. Closs, it was decided that painting an artist's name in the
corner of a picture, in order to pass it off as an original pic-
* 7 Cox Crim. Cases, 494; D. & B. 460; 27 L. J., M. C. 54; 3 Jur. (N. s.)
309.
§ 454.] REMEDIES,-LAW AND EQUITY. 465
ture by that artist, is not a forgery. Cockburn, C. J., in
giving judgment, said: “We are all of opinion that there
was no forgery. A forgery must be of some document or
writing ; and this was merely in the nature of a mark put
upon the painting with a view of identifying it, and was no
more than if the painter put any other arbitrary mark as a
recognition of the picture being his.” In the course of the
argument of this case it was stated by the counsel that “no
case had gone the length of holding that to stamp the name
of Manton on a gun would be forgery”; upon which Cromp-
ton, J., said, “That would be forgery of a trade-mark, and
not of a name’; and Cockburn, C. J., said, “Stamping a
name on a gun would not be a writing; it would be the imi-
tation of a mark, not of a signature.” Whether the common
law embraced such cases or not, the subject, in England, is
made clear; and the following offences are made misde-
meanors by Section 2 of the Merchandise Marks Act of
1862: 1. The forging or counterfeiting any trade-mark with
intent to defraud. 2. The applying a genuine or a forged
trade-mark, with intent to defraud, to anything not being
the manufacture, etc. of any person denoted or intended to
be denoted by such trade-mark, or not being the manufacture,
etc. of the person whose trade-mark shall be forged. 3. The
applying any genuine or forged trade-mark, with intent to
defraud, to anything not being the particular or peculiar
description of manufacture, etc. denoted or intended to be
denoted by such trade-mark; for instance, if a man has two
trade-marks, one for a particular description of goods of a
superior quality, and another for a different description of
goods of an inferior quality, the applying the trade-mark for
the goods of superior quality to the goods of inferior quality
will be a misdemeanor, if done “with intent to defraud,” such
intent being an essential ingredient in all such offences.
§ 454. Some of the States of this Union have passed stat-
utes, declaring it to be a misdemeanor punishable by fine and
imprisonment to forge or counterfeit, or cause to be forged or
counterfeited, any representation, likeness, similitude, copy, or
imitation of the private stamp, wrapper, or label affixed by
30
466 LAw of TRADE-MARKs. [$ 455.
any mechanic or manufacturer to his goods, wares, or mer-
chandise, or in the sale thereof, with intent to deceive or
defraud the purchaser or manufacturer of any goods, wares,
or merchandise whatever. For our present purpose, it is
hardly worth while to discuss these comprehensive enact-
ments, which are not confined to technical trade-marks, but
embrace wrappers, stamps, and labels. It may, however, be
well worth while to have recourse to local statutes when other
means are inapplicable, as when, although the technical sym-
bol is not imitated, mischief is done by the ingenious simula-
tion of a label or a wrapper, in color, size, shape, etc. In
such cases, of course, a Federal court is not the proper forum;
for such court possesses no power except such as both the
Constitution and the acts of Congress concur in conferring
upon them."
§ 455. The criminal law of some of the countries of Europe,
especially France, is severe upon fraudulent imitators of trade-
marks. . In the Tribunal Correctionnel of Rheims, in 1863,
(Clicquot v. Roudeau et al.”) these facts appeared. In 1863,
the London journals contained an advertisement of wines of
the house of La Veuve Clicquot, of Rheims, at advantageous
prices, at the Victoria Dock. Suspicions were aroused. The
boxes and the casks were found to bear counterfeit marks.
The Court of Queen's Bench ordered the seizure of the wines.
It transpired that an association, composed of Cazin, a wine
merchant, Roudeau, his principal agent, and three English-
men, were operating together, and selling wines under the
counterfeited marks of Moët, d'Epernay, and Veuve Clicquot.
All were deemed guilty in France (although-the acts were con-
summated in England), and severely punished. So, also, in the
Court of Paris, in 1867 (Heidsieck v. Souris, Dresel, et al.8).
Souris, a commission merchant, and Dresel, of Rheims, in Sep-
tember, 1866, formed a conspiracy with Theodore and George
Bayaud, merchants at New York, to imitate and usurp the
trade-mark of Charles Heidsieck, manufacturer of champagne
wine at Rheims, and to export the wine in large quantities to
1 United States v. Hudson & Goodwin, 7 Cranch, 32.
* 10 Annales, 101. 8 14 Id. 95.
§ 457.] REMEDIES, - LAW AND EQUITY. 467
America. In pursuance of their plan, Souris caused a mark
to be engraved like that of Charles Heidsieck, and to be re-
produced on the cork of each bottle, with the sole substitu-
tion of the name of Herman for that of Charles, in the same
characters, and the accessory ornament representing a comet.
Souris then proposed to export wine in baskets, whose covers
bore the four red bars, and all the external appearances of
those of the house of Charles Heidsieck. Upon their arrival
in America, labels were to be affixed to complete the decep-
tion. It was shown that one Herman Heidsieck, residing at
St. Louis, Mo., and not in the champagne-wine business, had
loaned his name to guarantee success. The court said that
the nefarious conspiracy had been organized on a vast scale.
10,000 francs damages, costs, etc. were allowed.
§ 456. In the Court of Paris, 1868 (Martell & Co. v. Badow-
reau & Patte”). The plaintiffs in this case were of Cognac,
the products of which place are known in all the markets of
Europe and America, and, having been victims of numerous
counterfeits, had seized in Badoureau's lithographic establish-
ment in Paris 12,000 labels bearing their name, and entirely
similar to those employed by them in their trade. Badoureau
set up that he had made the false labels at the order of Patte.
Held, that the counterfeiting was complete by making, it not
being necessary that use should be shown. The lithographer
who reproduces the mark or label by order of a third person,
without assurance that he is either the proprietor, or the agent
of the proprietor of the mark, cannot set up his good faith.
Damages against both. The court further ordered that the
labels and stone from which they were printed should be de-
stroyed; and that the judgment should be published in public
journals to be selected by the plaintiffs.
§ 457. It has been seen, that the form of action adopted in
vindication of the right to use a trade-mark is that of an
action on the case for deceit ; that is, so far as the common-law
forms have escaped the renovating inroads of the new school
of pleaders; and that action still survives under some other
name, or no name, under the simplified forms of pleadings of
* 14 Annales, 126.
468 LAW OF TRADE-MARKS, . [$ 458.
the codes of procedure. Under the United States statutes,
the action remains purely the old action on the case."
$458. In this action, fraud is of the essence of the injury.
There are, therefore, two main points to be proved, - the
fraudulent nature of the wrong committed by the defendant,
and the nature of the injury suffered by the plaintiff. The
nature of the wrong to be proved is well defined by Wilde,
C. J., in Rodgers v. Nowill.” The action was held not to be
maintainable in Singleton v. Bolton”; for there no sale was
proved to have been made by the defendant of a medicament
of his own under the mark of the plaintiff, but both the plain-
tiff and the defendant used the name of the original inventor
(Dr. Johnson), and no evidence was given of the defendant
having sold his ointment as if it had been prepared by the
plaintiff. So, also, in Crawshay v. Thompson,” it was held
that the mark used by the defendants was not used with the
intention of supplanting the plaintiffs, but that it was applied
to certain goods in the ordinary course of business, and in
execution of orders. This decision is grounded on the evi-
dence in the case, and turns on the 'question of what con-
stituted such a fraudulent use. There was no proof of an
intention on the part of the defendants to sell their manu-
facture as and for that of the plaintiffs; but it was contended
that their motive in using the mark was immaterial, if the
resemblance in fact existed, and they were aware of it. In
Blanchard v. Hill,” Lord Hardwicke said: “It is not the sin-
gle act of making use of the mark that was sufficient to main-
tain the action, but the doing it with a fraudulent design to
put off bad cloths by this means, and to draw away customers
from the other clothier.” McLean, J., said, in Coffeen v.
Brunton,” that from the cases theretofore decided it would
seem that an intentional fraud is not necessary to entitle the
plaintiff to protection, for the injury will be neither greater
nor less by the knowledge of the party. “If he has adopted
1 See Act of March 3, 1881. 2 Ante, § 356.
8 3 Doug. 293; R. Cox, 634. -
4 4 Man. & Gr. 357; 5 Scott N. R. 562; 11 L. J., C. P. 301. -
5 2 Atk. 484; R. Cox, 633. ° 4 McLean, 516; R. Cox, 82.
§ 458.] REMEDIES,-LAW AND EQUITY. 469
the same mark which will cause his article to be taken for
another in the market, which is known and approved of, it
is an injury which the law will redress. In commercial deal-
ings, the utmost good faith should be observed, and no one
is permitted to go into the market with a deception of this
character, so as to profit by the good faith or established
reputation of another.” In Dale v. Smithson, Hilton, J., held
that the right of the plaintiffs to maintain the action did not
in any degree depend upon the inquiry as to whether the
defendants intended to appropriate to their use a trade-mark
or label, known by them to have been devised and employed
by the plaintiffs in their business; but that it was enough if
it was made to appear that the defendants did the act com-
plained of; and so, although they may have used the mark
in ignorance of its being the exclusive property of any one.
It must be observed that this case, although nominally an ac-
tion under the Code of Procedure of the State of New York,
is not the technical action on the case, but was really a suit in
equity to restrain an infringement; and equity will restrain
independent of motive. This principle has been so uniformly
maintained by the courts, that it is almost supererogatory to
cite further illustrations; but, to place the question still more
clearly before the reader, we will look at other cases. In
Blofield v. Payne,” the declaration stated that the plaintiff,
being the inventor and manufacturer of metallic hones, used
certain envelopes for the same, denoting them to be his, and
that the defendant wrongfully made other hones, wrapped
them in envelopes resembling the plaintiff's, and sold them
as his own, whereby the plaintiff was prevented from selling
many of his hones, and they were depreciated in value and
reputation, those of the defendant being inferior. The court
held that the plaintiff was entitled to some damages for the
invasion of his right by the fraud of the defendant, though he
did not prove that the defendant's hones were inferior, or
that he had sustained any specific damage. Where a right
is invaded by a fraudulent act, though no specific injury be
1 12 Abb. Pr. 237; R. Cox, 282.
* 4 Barn. & Ad.410; 1 N. & M. 353; 2 L. J., K. B. (N. s.) 68.
470 - LAW OF TRADE-MARKS. [s 460.
proved, some damages, at law, must be given; as when a
publisher of a magazine or newspaper assumes the name of
one previously published, or represents the new publication
as a continuation of the former, when it is not so." In Marsh
v. Billings,” which was an action on the case, sounding in tort,
and governed by the same principle which has been repeatedly
recognized and acted on by courts, in reference to the fraudu-
lent use of trade-marks, it was held that the use of the words
“Revere House” on coaches was a fraud on the plaintiffs, and
a violation of their rights, for which an action would lie, with-
out proof of actual or specific damages. The same rule was
observed in Blofield v. Payne,” where it was held that by the
defendant's act the plaintiff was entitled to some damages,
inasmuch as his right had been fraudulently invaded. So,
also, in Rodgers v. Nowill.”
§ 459. To entitle him to recover, it is necessary for the plain-
tiff to show that an actual damage has been suffered. But
sometimes the law will presume damages, as where the defend-
ant made and sold medicines, calling them “Thomsonian
Medicines,” as and for the medicines made and prepared by
the plaintiff, so that persons purchasing the same supposed
and believed that they were purchasing the medicines made
and prepared by the plaintiff; for that was a fraud upon the
plaintiff for which the law will presume some damage. Such
a case, therefore, being proved, the plaintiff will be entitled
to recover nominal damages, at least, and something more,
if he can make it appear to the satisfaction of a jury that he
has sustained more than nominal damage.*
§ 460. The nature of the wrong suffered by the trader
whose mark is fraudulently used is twofold. It consists in
the injury to his reputation where an article of inferior value
is palmed off upon the purchaser; or else in the injury done
to his trade by general diversion of custom. In Coffeen v.
Brunton,” the court said, that if the defendant made repre-
1 Hogg v. Kirby, 8 Wes. 215.
2 7 Cush. 322; 14 Monthly L. R. (4 N. s.) 664; R. Cox, 118.
8 Ubi supra.
4 Thomson v. Winchester, 19 Pick. 214; R. Cox, 7.
5 4 McLean, 516; and same case in 5 McLean, 156.
§ 462.] REMEDIES, - LAW AND EQUITY. - 471
sentations that his liniment contained the same ingredients
as that of the complainant, while in fact it was not only dif-
ferent from the “Chinese Liniment,” but greatly inferior to
it, the effect must be to destroy in the market the value of
the complainant's liniment; and that would be ground for
the equitable interposition of a court of equity. That is an
injury for which a court of law cannot give adequate com-
pensation. However valuable the complainant's invention
may be, yet if it be discredited by a worthless article, it
would be impossible, in any reasonable time, to restore the
public confidence in the genuine article. In this consists the
injury; and the fraud arises from the false representations
that the composition is the same.
§ 461. Nor need the representations be immediate in order
to give a ground of action, as is shown by the case of Sykes v.
Sykes." The defence there proved that the sale of the spuri-
ous article was made to retail dealers, who were aware of the
fraud; but nevertheless it was held that the sale to them for
the purpose of a resale to the public, who would be deceived
by the printed stamp, was substantially the same thing as a
direct fraud by the original vendor.
§ 462. Remedy in Equity. — As a general proposition, it is
only when the legal title is clear that a court of equity will
interfere by injunction to restrain the use, or the colorable
infringement, of a trade-mark. In cases of doubt the court
should not grant or retain an injunction until the cause shall
have been heard upon the pleadings and proofs, or until the
complainant shall have established his right by an action at
law. Such was the decision of the New York Court of Ap-
peals, in 1848.” So the Lord Chancellor, in Spottiswoode v.
Clark,” who said that, unless the case be very clear, it is the
duty of the court to see that the legal right is ascertained be-
fore it exercises its equitable jurisdiction. And he said that
for this there are good reasons: the title to relief depends on
1 3 Barn. & Cr. 541; 5 D. & R. 292; 3 L. J., K. B. 46.
* Partridge v. Menck, 2 Sand. Ch. 622; 2 Barb. Ch. 101; and 1 How. App.
Cases, 558. 4. -
* 10 Jur. 1043; 2 Ph. 154; 1 Coop. 154; 8 L. T. 230–271.
472 Law of TRADE-MARKs. [$462.
a legal right, and the court only exercises its jurisdiction on
the ground that that legal right is established. The objection
to granting an injunction in the first instance is, that it pro-
motes after litigation. The order either grants an injunction
and compels the complainant to bring his action, or suspends
the injunction, with liberty to the complainant to bring an
action. If you compel him to go to a court of law, you pro-
mote litigation, and this course is forced upon parties at a
time when their feelings are deeply engaged in prosecuting
their imaginary rights. There is also, said he, another ob-
jection, which is, that the court expresses a strong opinion,
and it ought to be a strong opinion, and then sends the right
to be tried. It is better that the court should abstain from
expressing such an opinion. But, after all, the chief objection
is, that the court runs the risk of doing the greatest possible
injustice, in case its opinion upon the legal right should turn
out to be erroneous. If the plaintiff prove his title by a suc-
cessful action at law, he is indemnified by the defendant in
the account which the court has directed the latter to keep.
On the other hand, if the plaintiff fail in his proof at law,
there are no means in his power for compensating the defend-
ant for the loss he will have sustained by the suspension of
his trade during the operation of the injunction. This is a
sufficient reason for withholding that remedy, unless there be
a very clear preponderance of proof in favor of the complain-
ant in the first instance, or some conduct be shown on the part
of the defendant which renders it unadvisable to permit him
to continue his trade upon the footing of an account to be
taken." Mr. Justice McLean, in Coffeen v. Brunton,” said
that the right of the party who claims protection must be
clear; for, if it be controverted, chancery will leave the party
to his remedy at law; or, at least, to such a proceeding as
shall present the whole merits of the controversy, and enable
the court to decide it. Mr. Justice Duer, in the case of the
Amoskeag Manufacturing Company v. Spear,” said that the
rule is fully settled, and is recognized in nearly all the cases,
1 Lloyd on Trade Marks, p. 17. - * 5 McLean, 256.
8 2 Sand. S. C. 599.
§ 463.] REMEDIES, - LAW AND EQUITY. 473
that, in suits for infringements of trade-marks, an injunction
is never to be granted in the first instance, if the exclusive
title of the plaintiff is denied, unless the grounds upon which
it is denied are mainly frivolous. When the title is disputed,
the course is to let the motion for an injunction stand over
until the plaintiff has established his legal right in an action
at law; and Mr. Justice Duer cited with approval the ruling
of Lord Cottenham, in Motley v. Downman," who used the
strong expression that “he cannot conceive a case in which
the court will interfere at once by an injunction, so as to pre-
vent the defendant from disputing the plaintiff's legal title.”
Daly, J., in The Merrimack Manufacturing Company v. Gar-
ner,” said that courts of equity have not interfered in cases of
this kind, except in aid of a legal right; and if the fact of the
plaintiff's property in the trade-mark, or if the defendant's in-
terference with it has appeared at all doubtful, the plaintiff
has been left to establish his case first by an action at law.
Where the title of the plaintiff to appropriate a certain mark
or name to himself was not made out, or considerable doubt
existed respecting it, the court discharged an injunction order,
upon the defendants' entering into an undertaking in a pen-
alty to keep an account of their sales, and render the same
when required by a competent court.”
§ 463. The same principle has been applied by courts in
the exercise of their jurisdiction in patent and copyright cases,
and on the same grounds. In Stevens v. Keating,” the learned
judge said that, “if the injunction, having been once granted,
turns out to be unfounded, you are doing an irreparable injury
to the parties restrained, whereas, by withholding it, you may
be permitting some injustice, but certainly not an injustice at
all equal to that which you are doing by improperly grant-
ing it.” . In this case, the court went so far as to fix the time
within which the plaintiff was to bring his action; and on
his failing to proceed to the trial of that action, upon grounds
1 3 Myl. & C. 14.
* 2 Abb. Pr. 318, and 4 E. D. Smith, 387.
* Fetridge v. Merchant 4 Abb. Pr. 156; also Spottiswoode v. Clark, supra.
4 2 Ph. 338. wº
474 LAW OF TRADE-MARKS. [$468.
which by the court were considered to be insufficient to justify
his delay, and upon a subsequent motion on the part of the de-
fendant, the injunction which had been granted on the merits
of the case was dissolved, and the defendant was directed to
keep an account of his profits.
§ 464. The rendition of a verdict in a case in favor of plain-
tiff is not conclusive upon the right of such party to an injunc-
tion (where it is manifest that error has been done"); but the
considerations which would justify a judge in renewing the
discussion of a patentee's title, after solemn hearing and judg-
ment at law, should be such as, if presented to his view after
a trial at law, would have induced him to set aside the verdict.”
No interlocutory injunction should issue unless complainant's
title be clear, or admitted, for the court is not bound to decide
doubtful and difficult questions of law, or disputed questions
of fact, nor to exercise this high and (if exerted rashly) dan-
gerous power before the alleged offender has had an opportu-
nity for a full and fair hearing. The chief object is to prevent
irreparable mischief, not to give complainant means of coer-
cing a compromise on his own terms.” *
§ 465. If the defendant shows a belief that he has a just de-
fence, and is not a wilful pirate, then the case should be one of
evident mistake of law or fact, or both, in the defence which
he sets up, which will justify the festimum remedium.4
§ 466. The constitutional right of a trial by jury applies
only to actions at common law. In suits in equity, an inquiry
by the jury depends upon the discretion of the court,” it not
being conclusive, but only an aid to the conscience.
§ 467. Upon motions for preliminary injunction, if, after a
careful and impartial examination of the case, the court be of
opinion that the complainant is entitled by law to the writ,
it is a duty to grant it without evasion.” & -
$468. In equity, if the defendant, without fraud, use the
trade-mark of the complainant, he is still liable. If the right be
1 Many v. Sizer, 1 Fish. 31. 2 Parker v. Brant, 1 Fish. 58.
8 Parker v. Sears, 1 Fish. 93; Goodyear v. Dunbar, Ibid. 472. -
4 Ibid. 5 Ely v. Monson, 4 Fish. 64.
5 Blanchard v. Reeves, 1 Fish. 103.
§ 470.] REMEDIES,-LAW AND EQUITY. 475
violated, it matters not whether it be by fraud or by mistake.
The whole question in such case is whether the defendant's
label or mark is calculated to deceive the public, and to lead
them to suppose that they are purchasing an article manufac-
tured by the complainant, instead of by the defendant." To
entitle a complainant to protection against a false representa-
tion, it is not essential that the article should be inferior in
quality, or that the individual should fraudulently represent
it, so as to impose upon the public ; but if, by representation,
it be so assimilated as to be taken in the market for an estab-
lished manufacture, or compound of another, the injured per-
, son is entitled to an injunction. The injury is not the less,
though the false representations be made without a knowledge
of such interference.”
§ 469. Discovery, Account, and Costs. – Although it is not
within the scope of this treatise to discuss matters which can
be found more fully and more ably treated in books devoted
to equity jurisprudence, and in books of practice, still this
subject is worthy of observation, in its relation to trade-
marks. In many cases, the aggrieved party might be at a
great disadvantage, unless he had some means of access to
his opponent's books and papers. To enable him to fix the
amount of injury done by the wrongful conduct of the other,
he must look to discovery. How shall he, in the majority of
cases, ascertain the amount of sales, unless in this mode?
But how shall he proceed?
§ 470. We find a statutory provision” by which all courts
of the United States have power in the trial of actions at law,
on motion and due notice thereof being given, to require the
parties to produce books or writings in their possession or
power, which contain evidence pertinent to the issue, in cases
and under circumstances where they might be compelled to
produce the same by the ordinary rules of proceeding in
chancery. But this may really afford no remedy. On fail-
ure, judgment may be given against the defendant by default,
1 Millington v. Fox, 3 Myl. & C. 339; Davis v. Kendall, 2 R. I. 566.
* Coffeen v. Brunton, 5 McLean, 256; R. Cox, 132.
* Judiciary Act of Sept. 24, 1789; re-enacted, Rev. Stat., sect. 724.
476 LAW OF TRADE-MARKS. [$471.
and the plaintiff be left to grope in the dark. He must, then,
resort to a court of equity. There the familiar canons of chan-
cery jurisprudence stand in his way, if he seeks discovery to
enable him to enforce a forfeiture; for equity does not favor
forfeitures. But if he relinquish all claim to a penalty or
forfeiture, he may entitle himself to a discovery in aid of an
action at law for the recovery of damages."
§ 471. As a general rule, the costs of litigation must be
paid by the infringer,” even though he be an infant, who acted
in ignorance, and who submitted at once.” But where de-
fendants had innocently bought and sold, as genuine, an arti-
cle which was in fact spurious, although they were restrained
from infringing the complainant's trade-mark, they were not
ordered to account for profits, nor compelled to pay the com-
plainant's costs. The Master of the Rolls said, substantially,
that the right to an injunction usually carries with it the
right to costs; but if complainants ask for costs, and for some-
thing more than they are entitled to, they will lose the costs
which otherwise they might have received; and if the defend-
ants had offered to submit to the injunction and to pay the
costs, and the complainants had afterwards brought the case
to a hearing, he would have given the defendants costs subse-
quent to the offer.” Unfounded allegations in the bill are
reasons for granting costs to a defendant, although the com-
plainant otherwise prevailed;" and where a complainant has
set up claims as to a copyright, and gone into the internal
structure of the defendant's work, but failed on that point, the
defendant pays but a half, instead of the whole, of the taxed
costs." So, also, although a perpetual injunction is granted,
1 See authorities cited in 2 Abb. U. S. Cts. Practice, p. 92.
2 Rodgers v. Nowill, Wigram, W. C., 6 Hare, 325. Common Pleas, 5 C. B. 109;
17 L. J., C. P. 52; 11 Jur. 1039; 10 L. T. 88. Jurgensen v. Alexander, 24 How.
Pr. 269; R. Cox, 298. Edelsten v. Edelsten, 1 De G., J. & S. 185; 9 Jur. (N. s.)
479; 7 L. T. (N. s.) 768; 11 W. R. 328; 1 N. R. 300. McLean v. Fleming, 96
U. S. 245.
8 Chubb v. Griffiths, 35 Beav. 127.
4 Moet v. Couston, 33 Beav. 578; 10 L. T. (N. s.) 395; 4 N. R. 86.
5 Pierce v. Franks, 15 L. J. Ch. 122; 10 Jur. 25. Rose v. Loftus, 47 L. J. Ch.
576; 38 L. T. (N. s.) 409. Compagnie Laferme v. Hendrickx, Cox's Man., case
512. McLean v. Fleming, supra.
6 Metzler v. Wood, 8 Ch. D. 608.
$472.] REMEDIES, - LAW AND EQUITY. 477
no costs will be given, where the plaintiffs have refused the
defendant's offer at their peril in respect of costs." Where de-
fendants offer to print their labels so that they could not be
mistaken for the plaintiffs', both injunction and costs were
refused, the defendants having acted in good faith.” But de-
fendants were required to pay costs, although they had offered
to submit, since they had not offered to pay costs up to the
time of the offer.” Where a case is sufficiently open to doubt,
although an injunction has been granted below, an appellate
court will not give costs to either party.” Nor will costs be
allowed to a successful but disingenuous defendant.” In one
case,” although a motion was refused only because of the
complainant's laches for fifteen months, the defendant was
required to pay all costs of the application; and the prevail-
ing complainant will be allowed costs, although notice was
not given before filing the bill."
§ 472. A common carrier, entirely innocent of fraudulent
intent, but having certain falsely marked goods in his posses-
sion for the purpose of transportation, may be enjoined; but
the fact of good faith is ground for refusing costs. This was
the ruling in Upmann v. Elkan,” in 1871, by Lord Chancellor
1 Hudson v. Bennett, 12 Jur. (N. s.) 519; 14 L. T. (N. s.) 698; 14 W. R. 911.
Millington v. Fox, 3 Myl. & C. 338. Burgess v. Hills, 26 Beav. 244; 28 L. J.
Ch. 356; 5 Jur. (N. s.) 238; 32 L. T. 328; 7 W. R. 158. Moet v. Couston, supra.
2 Bass v. Dawber, 19 L. T. (N. s.) 626.
8 McAndrew v. Bassett, 4 De G., J. & S. 380; 33 L. J. Ch. 566; 10 Jur. (N. s.)
550; 10 L. T. (N. s.) 442; 12 W. R. 777.
4 Devlin v. Devlin, 69 N. Y. (24 Sickels) 212; 15 Alb. L. J. 290.
5 Ainsworth v. Walmesley, L. R. 1 Eq. 518; 38 L. J. Ch. 352; 12 Jur. (N. s.)
205. The Leather Cloth Co. v. Lorsont, L. R. 9 Eq. 345; 39 L. J. Ch. 86; 21
L. T. (N. s.) 661; 18 W. R. 572. Rodgers v. Rodgers, 31 L. T. (N. s.) 285. Est-
court v. The Estcourt Hop Essence Co., L. R. 10 Ch. 276; 44 L. J. Ch. 223; 82
L. T. (N. s.) 80; 23 W. R. 313. Tallcott v. Moore, 13 N. Y. Sup. Ct. (6 Hun)
106. Wylam v. Clarke, W. N. 1876, p. 68; Robineau v. Charbonnel, W. N.
1876, p. 160; L. J. Notes of Cas., 1876, p. 104. Fetridge v. Wells, 13 How. Pr.
385; 4 Abb. Pr. 144; R. Cox, 188. -
6 Cartier v. May, Lloyd on Trade Marks, 55, 57.
7 Coats v. Holbrook, 2 Sand. Ch. 586; 3 N. Y. Leg. Obs. 404; R. Cox, 20.
IPierce v. Franks, supra. Burgess v. Hately, 26 Beav. 249. Burgess v. Hills, su-
pra. The Collins Co. v. Walker, 7 W. R. 222. Field v. Lewis, Seton, 4th ed., 237.
Weed v. Peterson, 12 Abb. Pr. (N. s.) 178. Sawyer v. Kellogg, 9 Fed. R. 601.
8 L. R. 7 Chanc. Appeals, 130; 41 L. J. Ch. 246; 25 L. T. (N. s.) 813; 20
W. R. 131.
478 LAW OF TRADE-MARKS. [$472.
Hatherly, affirming a decree of the Master of the Rolls. A
firm of forwarding agents in London received from corre-
spondents abroad a number of boxes of cigars, being coun-
terfeit brands, to be delivered to several persons in England.
On application by the makers, whose brand had been imitated,
the agents gave information against the consignors, and offered
either to send back the cigars, or to remove the brand. The
Lord Chancellor said: “It has been urged that the plaintiffs
were not entitled to an injunction against the defendants, who
had been guilty of no offence, being merely carriers receiving
goods which, though fraudulently marked, were not for their
own use, nor to be sold for them for their own benefit, but
were merely received for the purpose of transmitting them to
the persons to whom they were consigned. I cannot conceive
a doctrine more dangerous or mischievous, or more fatal to
the authority of the court with respect to trade-marks. If
that argument prevailed, persons being abroad, as was the case
in this instance, and inclined to commit frauds upon an English
trade-mark, could easily do so by sending their different con-
signments together to the possession of the defendants (who
appear to be reputable agents and warehousemen), thereby
committing an injury in a manner most convenient to them-
selves and very mischievous to the person entitled to the
benefit of the trade-mark.” In such a case, the agent may be
compelled by a court of equity to disclose the names of places
to which goods having false marks have been transmitted
by him, and all other information that is within his knowl-
edge, or may be gathered from his books, eaccept the names of
customers, tending to redress the grievance of the complain-
ant.”— An injunction having been granted to restrain a dock
company from parting with wine spuriously marked with
the plaintiff's mark, on motion by a third person, who had
advanced money on the dock-warrants, in ignorance of the
spuriousness of the marks, for the wine to be delivered to
him, it was held that he was entitled to have it so deliv-
ered, on its being recorked, but that he must pay the costs
1 Carver v. Pinto Leite, appeal, James and Mellish, L. J.J., L. R. 7 Ch. 90;
41 L. J. Ch. 92; 25 L. T. (N. s.) 722; 20 W. R. 134.
§ 473.] REMEDIES,-LAW AND EQUITY. 479
of the application. Romilly, M. R., said, “The dock company
would have the first charge on the wine for their expenses;
Mr. Uzielli the second, for his advances and his costs; and
the plaintiffs the third, for their costs of suit.” Wharfingers,
with whom spurious champagne bearing a counterfeit brand
of “Veuve Clicquot, Ponsardin & Co.” was warehoused, and
who had notice of the injured party's intention to apply for
an injunction, refused to deliver up the wine to the indorsee
of the dock-warrants. Held, that they were justified in so
acting.”
§ 473. Slander of Trade-Mark Property. — The exclusive
right of user of an arbitrary symbol is property. On the
faith of it, goods are sold. But if a trader's rival in business
bring that symbol into doubt or disrepute, the goods bearing
it are not sold. There is no just reason why the owner
of the symbol, that has by adoption become a trade-mark,
should not be protected. Section 9 of the act of Congress
of March 3, 1881, recognizes the justice of redress, by allow-
ing an action on the case for a false representation or decla-
ration, oral or written, in respect to registering a trade-mark
in the Patent Office. That is obviously for the reason that
any statement in the nature of a libel or slander might
cause doubt, confusion, and consequent loss of trade. But
for such a wrongful act, there or elsewhere, redress must
generally be sought in a law court. To warrant relief by
injunction, it is essential that an infringement of some actual
property right be shown.” A court of equity will not, there-
fore, restrain the utterance of false statements on the ground
of protecting a trade-mark, inasmuch as that is not, strictly
speaking, an infringement on a property, right; and the rule
is well established that equity will not enjoin a mere slander
or libel, or the utterance of an untruth.* It has been said,
that “words, written or oral, which falsely depreciate the
1 Ponsardin v. Peto, and Ex parte Uzielli, 33 Beav. 642; 33 L. J. Ch. 871;
10 Jur. (N. s.) 6; 9 L.T. (N. s.) 567; 12 W. R. 198.
2 Hunt v. Maniere, 84 L. J. Ch. 144; 11 Jur. (N. s.) 73; 11 L. T. (N. S.) 728;
13 W. R. 363; 5 N. R. 295. -
8 High on Injunctions, $ 1093.
4 Singer Manufacturing Co. v. The Domestic Co., 49 Ga. 70.
480 LAW OF TRADE-MARKS. [$ 473.
value of chattel property, may be made the subject of an
action, provided that special damage ensue from them. The
distinction between a libel or slander on a person in the way
of his trade, which is actionable without proof of special
damage, and words injuriously reflecting on the quality of
his wares or merchandise, is sometimes rather fine.” 1 But
few cases are found in the books where written or oral re-
marks on property have been held actionable under the law
of libel or slander;” and even then it has been held that
special damage must be alleged and proved.” On the other
hand, it has been held that a statement in a newspaper,
that a ship of which the plaintiff was owner and master
was not seaworthy, was a libel on the plaintiff in his trade
and business, for which he might recover damages without
proof of malice, or allegation of special damage.* And it has
been held in a recent case, that the imitator of a label not
amounting to a trade-mark was liable in an action in the
nature of an action on the case; and that specific damage
need not be alleged or proved as essential to sustain the
action, but the jury might give general damages.”— As to
what is slander in such cases, it may be said that every act
of selling inferior goods, with an imitation of another's trade-
mark thereon, is in effect a slander. The Court of Cassation
of . France, in 1880, held that a registered trade-mark is so
far independent of the object to which it is attached that the
owner thereof has a right of action against counterfeiters or
imitators of that work, even when it shall be intended by the
wrong-doers for, or is affixed to, a product the sale of which
is forbidden by law (as, for example, a secret remedy).” It
may readily be understood that such a use might bring a
trade-mark into contempt, or make it infamous. And the
slander or libel may be not the less grievous, although the
imitator of a trade-mark does not affix it to goods for sale.
1 Broom Com., 514, 764; 1 Hilliard on Torts, 342.
* See Lindon v. Graham, 1 Duer, 670. -
8 Evans v. Harlow, 5 Ad. & Ell. (N. s.) 624; Kendall v. Stone, 1 Seld. 14.
4 Ingram v. Lawson, 6 Bing. N. R. 212.
5 Conrad v. Uhrig Brewing Co., 8 Mo. App. 277.
° Dunèsme v. Anastay, 25 Annales, 245.
§ 473.] REMEDIES, - LAW AND EQUITY. 481
In the Tribunal Civil of Lille, in 1883, this point was illus-
trated as follows. A judicial test had been ordered, for the
purpose of ascertaining the quality of zincs employed by the
defendant, a zinc manufacturer of Lille, in a certain construc-
tion. The establishment of the thickness of the zincs was
an especial object of investigation, and for that purpose there
was a classification of numbers on the tariffs of metallurgic
companies. In the course of the testing, to support his pre-
tensions as to the relative thickness of the zincs involved in
the examination, the defendant produced a table of compari-
sons, and exhibited to the architect expert two coins of zinc
bearing the stamp of the plaintiff company, “La Vieille Mon-
tagne,” whose manufactories were in France. The court
said: “Inasmuch as in the course of a contest as to the value
of works executed by him, Béglim produced, as pieces of
comparison with the materials used by him, pieces of zinc
bearing an imprint similar to the mark of the plaintiff com-
pany, and the words “Vieille Montagne—Paris, the number
indicating a thickness inferior to the real thickness, although
it appeared that the defendant had acted without fraudulent
intent, he was liable.” The plaintiff was awarded three hun-
dred francs damages and costs. The act of the defendant may
be classified as slander.” — The Court of Appeal of England,
in 1884; held that an oral slander, prejudicial to one's busi-
ness, may be enjoined. This is probably the first case of the
kind.
1 Société de la Vieille Montagne v. Béglim, 29 Annales, 62.
* See ante, § 443, “Perversion of Mark.”
* Loog v. Bean, 20 Central Law Journal, 18.
482 LAW OF TRADE-MARKS. [$474.
CHAPTER X.
DEFENCES.
§ 474. A defence may be either affirmative or negative.
§ 475. Unlawful business, deceit, etc.
§ 476. Noxious drugs palmed off as medicine.
§ 477, 478. Complainant must come into equity with clean hands.
§ 479. “Medicated Mexican Balm” case.
§ 480. Courts will weigh the effects of misstatements.
§ 481–488. False statement as to place of manufacture.
§ 484. A bill may be dismissed for even harmless deception.
§ 485–488. False statement of intrinsic excellence.
§ 489, 490. Untrue statement as to origin.
§ 491. As to quack medicines.
§ 492. Harmless, false, or exaggerated statement not fatal.
§ 493. Imitator sometimes estopped from alleging complainant's fraud.
§ 494, 495. Fictitious name of manufacturer not necessarily fraud.
§ 496. No defence that spurious article is equal to the genuine.
§ 497. Laches may be a defence.
§ 498. What not deemed laches.
§ 474. A Defence may be either Affirmative or Negative. —
It may be affirmative, i.e. aggressive in attacking the prior
title of the suing party, or an inherent defect in the nature
of the matter or thing claimed as a technical mark, or for bad
faith, or for some irregularity, or for laches amounting to
abandonment. It may be merely a negative defence in tak-
ing an intrenched position, asking only to be let alone. In
such case, a defendant does not assert a title in himself to the
trade-mark claimed by his adversary, but is content with
denying the use by him of imitations of the genuine mark;
or, if he has used copies of the peculiar symbol alleged to
have been infringed, asserts that he did not affix it to the
same class of goods, but to another class, as he lawfully might
do; or it may be that, by way of mitigation, he pleads his
own good faith in the act charged. The most important of
the grounds of defence to a bill for infringement is the well-
§ 475.] DEFENCES. 483
established rule of equity, that the protection of the court will
not be given to one whose case is not founded in truth." That
appears to have been first made use of in the case of Hogg v.
Rärby, in 1803.” The objection taken was that the complain-
ant, who claimed protection for the title-page of his magazine,
which professed to be “by William Granger, Esq.,” was in
fact guilty of an imposition on the public, it being shown that
the name of the alleged author was fictitious. The excuse of.
fered was, that such was in accordance with a custom of the
trade. Lord Eldon, C., said that he felt a considerable diffi-
culty as to the question, and that the custom, though it might
be very usual, appeared to him very much like a fraud on the
public. He nevertheless granted an injunction to restrain the
defendant from publishing a magazine with a similar title,
and said that the matter of misstatement should be left to
form an ingredient in an action for damages.— In Partridge v.
Menck,” in 1848, the complainant claimed an exclusive right to
impose upon the public matches made by himself as those made
by one Golsh; and, although the court decided the cause on
the ground of dissimilarity of the labels, a strong opinion was
expressed against his alleged right, on account of attempted de-
ception. — So, also, in Samuel v. Berger,” where the plaintiffs
asked the court to aid them in passing off watches made by
them as those made by another watch-maker named Brindle,
from whom they had bought authority to use his name, which
had acquired a reputation. The defendants sold other watches
made by Brindle before the sale to the plaintiff, and stamped
with his name. The court refused an injunction, with costs,
since to grant it would be to protect the sale of the spurious
article, and restrain that of the genuine.
$475. When Congress—in the registration act of 1870,"
and also in that of 1881° — declared that no action should be
maintained under it, by any person claiming an exclusive
right to any trade-mark used or claimed in an unlawful busi-
1 See ante, § 71. 2 8 Wes. 215.
* 2 Sandf. Ch. 622; 2 Barb. Ch. 101; 1 How. App. Cas. 158; R. Cox, 72.
4 24 Barb. 163; 13 How. Pr. 342; R. Cox, 178.
* Rev. Stats., sect. 4943.
° 1 Supplement to Rev. Stats., chap. 130, sect. 8.
484 LAW OF TRADE-MARKS. [$475.
ness or upon any article injurious in itself, or formed and used
with a design to deceive the public, it merely enunciated a
well-established rule of law and equity. That had always
been so; but possibly it was thought that the ill-disposed might
presume on the fact of registry. In a Circuit Court of the
United States, in 1847," it was held that the manufacturer of a
quack medicine was not entitled to the intervention of a court
of equity; for it is not the office of chancery to intervene,
by summary process, in controversies connected with such a
matter. The refusal of an injunction was on the ground of mis-
representations by the complainant, as to the quality and prop-
erties of his medicine. In the same court, in 1855,” a similar
ruling was made.—In 1858, the “Bloom of Youth, or Liquid
Pearl,” suit was brought to restrain the use of that fancy
name. The defence showed that the complainant's prepara-
tion contained carbonate of lead, or other noxious ingredients,
whereas he described it as being “free from all mineral and
poisonous substances,” and was therefore not entitled to relief.
The court below refused an injunction, and dismissed the bill.
The Court of Appeals of Kentucky, in 1873, affirmed the
decree.*— The New York Court of Appeals, in 1874, in
“Wolfe's Aromatic Schiedam Schnapps” case,” held that the
plaintiffs were not entitled to the favorable consideration of a
court of equity because (1.) they had endeavored to secure
a part of the good-will of the defendants' business, while
avoiding an infringement of their trade-mark; and (2.) that
they, as well as the defendants, had improperly represented
their article as not merely a spirit, but a medicinal prepara-
tion. — But an intention to deceive the public will not always
be inferred from the mere fact of untrue statements.” — In
Hennessy v. Wheeler, in 1877, the New York Court of Com-
mon Pleas dismissed a complaint on the ground that the plain-
tiffs were themselves guilty of misrepresentation in selling, as
quart and pint bottles, bottles that contained less, the defi-
º 1 Fowle v. Spear, 7 Pa. L. J. 176; R. Cox, 67.
* Heath v. Wright, 3 Wall, Jr. 141; R. Cox, 154.
8 2 Bush, 131; 15 Am. R. 707.
4 Wolfe v. Burke, 56 N. Y. (11 Sickels) 115.
5 See ante, § 72. - 6 5.1 How. Pr. 457.
§ 477.] DEFENCES. 485
ciency amounting to about seven thirtieths. The Court of
Appeals, however, took a different view,’ and held that, as the
bottles were not sold by the plaintiffs or others as measures
of capacity, but were of the ordinary sizes used in the trade,
the capacity of which was generally understood; and there
being no evidence that any one had been or was likely to be
deceived, the plaintiffs were therefore not disentitled to re-
lief. But the principle was conceded, although the facts did
not demand its application.
§ 476. The court said, in Smith v. Woodruff.” speaking of
the allegation that the article pirated on was itself a quack
medicine, that the justice and morality of this defence were
not very high in that instance, yet the rule must be followed
if the case were brought within its application; that it is a
defence that ought to be suggested by the court in some cases,
and probably would be in all cases where the imposition is
flagrant. For instance, where a quack compounds noxious
and dangerous drugs, hurtful to the human constitution, and
advertises them as a safe and sure remedy for disease; or where
some charlatan avails himself of the prejudice, superstition,
or ignorance of some portion of the public to palm off a worth-
less article, even when not injurious, the case falls beneath
the dignity of a court of justice to lend its aid for the redress
of such a party, who has been interfered with by the imitations
of another quack or charlatan. But it has been held that, in
a suit to restrain infringement, a defendant cannot, by alleging
injurious qualities in the complainant's goods, compel him to
disclose the ingredients of which they are composed.” In one
case,” an inquiry on that point was allowed, but only because
the complainant had opened the door thereto, in his own tes-
timony.
§ 477. The case of The Leather Cloth Co. v. The American
Leather Cloth Co.," in the House of Lords, in 1865, furnishes
1 69 N. Y. (24 Sickels) 271; 15 Alb. L. J. 454; 25 Am. R. 188.
* 48 Barb. 438; R. Cox, 373.
* Tetlow v. Savournin, 15 Phila. 170; 38 Leg. Int. 478.
* Burnett v. Phalon, 21 How. Pr. 100.
* 11 Jur. (N. s.) 518; 11 H. L. C. 523; 35 L. J. Ch. 53; 12 L. T. (N. s.) 742;
13 W. R. 873; 6 N. R. 209.
486 LAW OF TRADE-MARKS. [$478.
instruction upon more than one point, and it is well worthy of
the expenditure of time in its perusal in regard to the ques-
tion of truth in representations.
$478. The appellants and the respondents were rival joint-
stock companies, engaged in the manufacture of leather cloth.
The plaintiffs are an English company, formed in 1857, with
limited liability, for the purpose of making and selling an
article called leather cloth. They bought the business of an
American company, formed for the purpose of carrying on
this manufacture in the United States, and at West Ham,
in the county of Essex, in England. The name of the com-
pany was “The Crockett International Leather Cloth Com-
pany.” The original inventors and manufacturers of this
article, called leather cloth, were a firm of “Crockett & Co.”
in the United States, who, upon the formation of the Inter-
national Company, ceased to carry on a separate business,
and became shareholders in that company, but resumed busi-
ness, and were manufacturers of leather cloth in the United
States. The International Company.obtained, in the month
of January, 1856, an English patent for tanning the leather
cloth, and devised an elaborate label, to be attached to the
goods manufactured by them, which, being circular, had its
circumference formed by the words “Crockett International
Leather Cloth Company, Newark,” with the initials “ N. J.,
U. S. A., " meaning New Jersey, United States of America,
and also the words “West Ham, Essex, England.” These
words and letters formed the periphery or outer rim of the
label. Within the circle, at the top, was the word “Excel-
sior,” below which was an eagle with expanded wings, and
below the eagle were printed these words: “Crockett & Co.'s
Tanned Leather Cloth, Patented Jan. 24, 1856, J. R. &
C. P. Crockett, manufacturers.” The International Leather
Cloth Company carried on business as leather cloth manufac-
turers, both in the United States and in England, until 1857.
They used the stamp or label which has been described, as a
trade-mark, affixing it to the goods which they manufactured.
In 1857 the plaintiff's company was incorporated; and the
International Company sold and assigned to the plaintiffs the
§ 478.] DEFENCES. 487
business carried on by them at West Ham, together with the
English letters patent, with full power and authority to use
all and singular the trade-marks that had been used by the
International Company in their business in England. From
the time of this sale, the plaintiffs carried on, at West Ham,
the manufacture of leather cloth, according to the process
originally introduced by Crockett & Co.; and they constantly
used the trade-mark described, stamping it on their goods of
the first quality. In 1861, the defendants were incorporated
for the purpose of the manufacture and sale of leather cloth;
and they used as a trade-mark, on goods of the first quality
made by them, a stamp or label which appears to have been
formed upon the model of the plaintiffs’ trade-mark. They
did not, however, make use of the word “patented,” nor did
they call their leather cloth “tanned.” All these facts appear
in the opinion of the Lord Chancellor, on appeal to him from
Vice-Chancellor Sir W. P. Wood. The Lord Chancellor said:
“To continue the old style of a firm is a very different thing
from making false representations with respect to a vendible
commodity, in order to give it greater value, and to create a
greater demand for it in the market. The plaintiffs impose
upon the public by selling goods which are, in reality, manu-
factured by themselves at West Ham, as being the goods of
the Crockett International Leather Cloth Company, and as
having been manufactured by Messrs. Crockett, who were the
original inventors and manufacturers; and, further, they de-
scribed their untanned goods as being tanned, and as being
protected by the patent, which had not yet expired. Their
request is to be protected, and therefore justified, in continu-
ing to make these untrue statements to the public, in order to
secure a monopoly for their commodity. There is a homely
phrase, long current in this court, that a plaintiff must come
into equity with clean hands: that is not so with the present
plaintiffs, whose case is condemned by the principles to which
they appeal.” He thereupon, without hesitation, reversed the
decision of the Vice-Chancellor, and dismissed the bill ; but,
in disapprobation of the conduct of the defendants, he did so
without costs. &
488 LAW OF TRADE-MARKS. [$ 480.
§ 479. In Perry v. Truefitt, the plaintiff alleged that
the name or designation “Medicated Mexican Balm " had
become of great value to him as a trade-mark; and prayed
an injunction and account. According to his own statement,
the plaintiff used a printed show-card, in which he repre-
sented the article in question in the following terms: “Medi-
cated Mexican Balm, for restoring, nourishing, strengthening,
and beautifying the hair. Perry, 12 and 13 Burlington
Arcade, London. It is a highly concentrated extract, from
vegetable balsamic productions, of that interesting but little
known country, Mexico, and possesses mild astringent prop-
erties, which give tone to weak and impoverished hair, and
impart a glossy appearance to the naturally dull and harsh.
Where there is a tendency to fall off, the Mexican Balm exerts
its astringent qualities, and gradually, but infallibly, braces
the pores of the cuticle, and arrests the deterioration of the
most beautiful ornament of the human frame, – a fine head
of hair. This admirable composition is made from an origi-
nal recipe of the learned J. F. von Blumenbach, and recently
presented to the proprietor by a very near relation of that
illustrious physiologist.” The fact appeared that one Leathart
had invented the preparation, and sold the recipe for making
it to the plaintiff. The Master of the Rolls did not think it
a favorable case for the interposition of the court, there not
being the least evidence that the composition was formed of
vegetable balsamic productions from Mexico. Yet, as it was
a case of some doubt, he let the matter stand over, with lib-
erty to the plaintiff to bring an action.
§ 480. The circumstances in Pidding v. How” were less
dubious. The plaintiff, in his labels and advertisements, in-
timated that the tea sold by him as “Howqua's Mixture,” was
made by Howqua, in Canton, and was purchased from him
and imported into England by the plaintiff, in the packages
in which it was sold; that the tea which gave it its peculiar
flavor was very rare and high-priced, even in China, and was
grown in but one province of that country, viz. Kyiang Nan;
and that it could not be procured in England at any price.
1 6 Beav. 66; 1 L. T. 384. 2 8 Sim, 477; 6 L. J. Ch. (N. s.) 345.
§ 480.] DEFENCES. 489
On behalf of the defendants, affidavits were made by persons,
some of whom had been acquainted with Howqua. They
stated that the mixed tea sold by the plaintiff was neither
made nor used by Howqua ; that it was composed of scented
orange pekoe (which gave it its peculiar flavor), and of other
black teas of the ordinary kinds; that orange pekoe was not
considered, in China, to be one of the best teas; and that
that sort of tea had been imported and sold in England for
several years, and was generally imported and sold by persons
in the tea trade; that no black tea was produced in the prov-
ince aforesaid; and that the plaintiff purchased and mixed
his teas in England. The Vice-Chancellor said, substantially,
that, as between the plaintiff and the defendant, the course
pursued by the latter had not been a proper one (he having
imitated the plaintiff’s marks); but that it is a clear rule,
laid down by courts of equity, not to extend protection to
persons whose case is not founded on truth. “And,” said
he, “as the plaintiff in this case has thought fit to mix up
that which may be true with that which is false, in intro-
ducing his tea to the public, my opinion is, that, unless he
establish his title at law, the court cannot interfere on his
behalf.” He accordingly dissolved the injunction, with lib-
erty to the plaintiff to bring an action, reserving the ques-
tion of costs. – In Dixon Crucible Co. v. Guggenheim,” the
defendant made a point that the wrapper of the plaintiffs
averred a falsehood, in stating that the article sold by them
is prepared from pure carburet of iron. The court replied,
that no intention to mislead appeared; that, at best, it is a
question of science; that plumbago (graphite) is undoubtedly
the proper name of the article, though it was long known
to science as carburet of iron; and that it was entirely too
nice a question to be decided upon a motion for a special
injunction. Another point was made, that the label states
that the plaintiffs' article is prepared by Joseph Dixon & Co.,
whereas the bill avers that it is prepared and sold by a cor-
poration, viz. The Joseph Dixon Crucible Co. The court said
that that difference was not of such a character as to destroy
1 3 Am. L. T. R. (St.) 288, and 2 Brewster, 321; ante, § 396.
490 LAW OF TRADE-MARKS. [$481.
the plaintiffs’ right to equitable relief, there being nothing to
indicate any attempt at deception or imposition, the corpora-
tion being the successor of the individuals. *
§ 481. In Palmer v. Harris, in the Supreme Court of
Pennsylvania, in 1869, where an injunction had been refused
below by reason of the plaintiff's false representation, the
plaintiff claimed immunity from the strictness of the rule,
because the falsehoods were in a foreign language, presumed
not to be understood. The bill alleged that the plaintiff was
a tobacco merchant in New York, and made superior cigars,
known as the “Golden Crown,” which he sold in large
quantities; that in 1858 he devised a trade-mark, to wit, a
golden crown, and had labels with that mark lithographed
and printed, which, for his protection, he entered, on the 18th
of December, 1858, in the office of the District Court of the
Southern District of New York, in conformity with the act
of Congress respecting copyrights; * and that from that time
this trade-mark had been used by him and become identified
with the golden crown cigars. The labels were used by pla-
cing a larger one inside of the cover of the cigar-box, and
a smaller one over the edge of the box where the cover is
opened. The defendant, who is a printer, made a great
number of counterfeit labels of the plaintiff’s trade-mark for
persons unknown to the plaintiff, for the purpose of inducing
purchasers to believe that they marked the “golden crown’
cigars. Upon being notified, the defendant refused to discon-
tinue the printing and sale of the counterfeit labels. The
answer of the defendant admitted most of the allegations of
the bill, but averred as follows: “It is true, as matter of
fact, and I aver it to be so, that complainant's cigars are
manufactured and sold in the city of New York, and not at
Havana, and that therefore the announcement upon complain-
ant's label, Exhibit A, in the words following: “Fabrica de
Tabacos de las Majores Vegas, de la Vuelta Abajo, Calle del
Agua, No. 75, Habana,' is wholly untrue, and both calcu-
lated and intended to deceive, and, being so calculated and
1 60 Penn. 156; 8 Am. L. Reg. (N. s.) 187; R. Cox, 523.
* This act of entering as a copyright was a nullity in law. See ante, § 380.
§ 483.] DEFENCES. 491
intended, is not entitled to the aid of a court of equity for its
protection.” -
$482. The genuine labels in this case were parallelograms,
nearly square; on the smaller was inscribed “Golden Crown,”
below which was “L. P.,” and below that “Habana.” The
larger was enclosed in an ornamental border. On it were
“Golden Crown”; below that the figure of a golden crown;
then the Spanish words above quoted; and below all, and
outside the border, in very small letters, “Ent. according to
Act of Congress, A. D. 1858, by Lorin Palmer, in the Cl’k's
Office in D’t’c’t of the S. D’t of N. Y.” There was also a
government revenue stamp on the box. The counterfeit was
of the larger label, and was very similar to it, but wanting
the certificate of the entry of the copyright. The appellant,
the plaintiff below, made a point that the taking out of the
copyright, and declaring that fact on the label, neutralized the
words in Spanish; also, that the internal revenue stamp stated
the kind, quantity, and district where manufactured; and that
the assertions were innocent in their effect on the public, and
that the court should not canvass the motive.
§ 483. The court, by Sharswood, J., said, among other
things: “The party who attempts to deceive the public by
the use of a trade-mark, which contains on its face a false-
hood as to the place where his goods are manufactured, in
order to have the benefit of the reputation which such goods
have acquired in the market, is guilty of the same fraud of
which he complains in the defendant." He certainly can
have no claim to the extraordinary interposition of a tribunal
constituted to administer equity, for the purpose of securing
to him the profits arising from his fraudulent act.” As to
the notice of the entry as a copyright, the court said: “Apart
from the fact that this is in such very small type, and so ab-
breviated that it would probably escape the observation of
every one whose attention was not specially directed to it,
a circumstance which rather strengthens the evidence of an
intention to mislead the public, what is there in the fact that
1 See Manhattan Co. v. Wood, 108 U. S. 218; Siegert et al. v. Abbott, 61 Md.
276; and ante, § 71, where this doctrine is discussed.
492 LAW OF TRADE-MARKS. [$484.
the design or engraving had been copyrighted in the United
States, inconsistent with the declaration that the cigars con-
tained in the box were manufactured in Havana, of Cuban
tobacco? But, again, it is said that the United States in-
ternal revenue stamp would at once undeceive the purchaser,
there being a difference between the stamp used for articles
imported and for those of domestic manufacture. Few per-
sons would stop to notice this difference, and, besides, as it is
alleged, the trade-mark is pasted on the inside of the lid, and
when the box is open, for the purpose of retailing, the trade-
mark is brought directly in the view of persons wishing to
purchase, and the revenue stamp is not seen unless the lid is
turned down, and the box examined on the outside. It is
contended further, that the falsehood is in a foreign language,
of which it is to be presumed that the plaintiff's customers are
ignorant. Yet there is certainly enough to convey to every
one who can read, that the cigars are from ‘Havana..' . . . It
is not necessary that any one person has been actually de-
ceived or defrauded: it is enough that it is a misrepresenta-
tion calculated to have that effect on the unwary and unsus-
picious.” The decree refusing an injunction was affirmed,
and the appeal dismissed at the cost of the appellant.
§ 484. In Phalon v. Wright, the plaintiff claimed to have
compounded a new perfume, and to have invented a name for
it, to wit, “Extract of Night-Blooming Cereus.” He did not
claim any exclusive right in the perfume itself. He had thus
chosen the name of a rare, though well-known flower, and
claimed in the name alone an exclusive right, as his trade-
mark. He admitted that name to be a deception, so far as
used to indicate the real character of the compound; and that
the perfume was not an extract from the flower, the mark
being in that respect a pure invention. As an exhibit, the
plaintiff produced an advertising card, used to give publicity
to his preparation, upon which card he declared that the
new perfume is the extract of the “Night-Blooming Cereus,
distilled from this rare and beautiful flower, from which it
takes its name.” Thompson, J., said: “This is a deception,
1 5 Philadelphia, 464; R. Cox, 807.
§ 485.] DEFENCES. - 493
intended to impose upon the public by exciting curiosity to
learn the nature of the rare and beautiful flower. It may be
that the deception is harmless. The manufactured perfume
may be better than the genuine extract would be ; but still it
is a deception, and the plaintiff has no right to expect a court
of equity to aid him in carrying it on. . . . Thus the case
stands upon the plaintiff's own showing. The defendants, by
their affidavits, deny fully that the name upon their labels was
used to imitate the plaintiff's labels; and they show, by the
affidavit of the lithographer by whom the label was drawn
and prepared, that he did not know of the existence of the
plaintiff's label when he designed and drew that of the defend-
ants. The labels are so little alike, and the name of the de-
fendants so distinctly printed upon theirs, that, as has already
been said, no one purchasing Wright's Night-Blooming Cereus'
could suppose he was buying Phalon's. It is very manifest
that the defendants did not sell their preparation as that of
Phalon; and they clearly marked it as their own production.”
The motion for an injunction was dismissed. -
§ 485. In Hobbs v. Français, the plaintiff moved for an
injunction to restrain the defendant from violating his trade-
mark. It appeared that he and another, under the firm name
of Fabian & Co., in 1846, began the manufacture and sale
in the city of New York of a certain powder “for beautify-
ing the complexion and skin.”; that they had adopted as the
name of the said article the words “Meen Fun,” and devised
a label bearing that name, with certain devices upon it, to
put upon the boxes and packages containing said article; and
that they had sold said article by the name of “Meen Fun,”
until 1848, when his partner, Fabian, transferred to the plain-
tiff his interest in business, and the right to use the firm name,
labels, devices, and marks. Further, that after the said arti-
cle had acquired a reputation, and the sales had become large
and profitable, the defendant had made and sold an article of
skin-powder, put up in boxes like those of the plaintiff, and
had placed on them labels closely imitating the plaintiff's,
with the words “Meen Fun” thereon.
1 19 How. Pr. 567; R. Cox, 287.
494 LAW OF TRADE-MARKS. [$ 487.
§ 486. The plaintiff's label read as follows: “Patronized
by Her Majesty, the Queen. “MEEN FUN, the Celebrated
Chinese Skin Powder for Restoring, Beautifying, and Pre-
serving the Skin and Complexion, Preventing Cutaneous
Eruptions, Chapping, and Obviating too Copious Perspira-
tion. Adapted for all Climates. Fabian & Co., Sole Pro-
prietors, 24 Mark Lane, London,” etc.
§ 487. Per Curiam, Bosworth, C. J.: “The plaintiff's label
is calculated to induce the belief, and probably was designed
to induce the belief, that the article in the box on which it is
pasted is manufactured in London ; that the sole proprietors
of it have their place of business at 24 Mark Lane, London;
that it is intrinsically so excellent as to secure the patronage
of her Majesty, the Queen; and that the labels have paid the
stamp-duty required by some English statute. The truth is,
that it is made in New York, and that her Majesty, the Queen,
is probably ignorant of its virtues, or even of its existence. In
this respect, there is a manifest intention to deceive and mis-
lead the public. . . . The plaintiff's label, instead of indicat-
ing that he is the manufacturer of the article covered by it,
represents him to be the sole agent in the United States of the
proprietors of it, and that their place of business is in London.
It appears by the defendant's affidavit, that it is the prevail-
ing belief in this country that ladies' toilet articles of English
or French manufacture are superior to those made in this
country, and that the demand for the former is much better
than for the latter. The plaintiff's labels, therefore, contain
representations believed to be useful, and which must be
known to be false; and to secure to the plaintiff by injunc-
tion an exclusive use of such a label, and the exclusive privi-
lege of thereby deceiving the public, is an object to which a
court of equity will not lend its aid. The court does not
refuse its aid in such a case from any regard to the defend-
ant, who is using the same efforts and misrepresentations to
deceive the public, but on the principle that it will not in-
terfere to protect a party in the use of trade-marks which
are employed to deceive the public, and to deceive them
by fraudulent representations contained in the labels and
§ 489.] : DEFENCES. 495
devices which are claimed to constitute wholly, or in part,
such trade-marks. On this ground, the motion for injunction
must be denied.”
§ 488. Mr. Justice Duer applied this rule in Fetridge v.
Wells, — the “Balm of Thousand Flowers” case, – that they
who come into a court of equity seeking equity must come
with pure hands and a pure conscience. If they claim relief
against the fraud of others, they must be free themselves
from the imputation. The learned judge said, inter alia:
“The position so strenuously insisted on, that the plaintiff's
firm have an exclusive property in the words ‘Balm of Thou-
sand Flowers,” or, which is the same thing, an exclusive right
to use those words as a trade-mark, I wholly reject. . . . It
may be true that the defendants, if permitted to use in their
contemplated sales a trade-mark apparently the same as that
of Fetridge & Co., would commit a fraud upon the plaintiff
and upon the public; but if the plaintiff and his firm are
themselves engaged in the execution of a systematic plan for
deceiving the public; if they have been, and are, endeavoring,
constantly and daily, to multiply their sales, and swell their
profits by false representations of the composition, qualities,
and uses of the liquid compound which they invite the public
to buy, it is strenuously insisted that a court of equity would
violate its principles, and abuse its powers, by consenting
to aid them, by an injunction or otherwise, in accomplish-
ing their design; and to this proposition I yield my fullest
assent. . . . An exclusive privilege for deceiving the public
is assuredly not one that a court of equity can be required
to aid or sanction. To do so, would be to forfeit its name
and character.” The injunction previously granted was there-
fore dissolved, but without costs, since, although the plain-
tiff might justly be required to pay costs, the defendants had
certainly no title to receive them, being equally guilty of
wrong.
$489. In Partridge v. Menck,” in the Court of Appeals of
New York, in 1848, this question received a full consideration.
1 13 How. Pr. 385; 4 Abb. Pr. 144; R. Cox, 188.
* 1 How. App. Cases, 558; 2 Sandf. Ch. 622; R. Cox, 72.
496 LAW OF TRADE-MARKS. [$489.
This case came before the Vice-Chancellor of the first circuit
on a motion founded on the bill and answer, to dissolve the
preliminary injunction granted by an injunction-master, on fil-
ing the bill. It appeared by the bill that one Golsh, who for-
merly resided in the city of New York, began the manufacture
of a certain kind of friction matches, usually known as “loco-
foco matches,” for which he acquired a great patronage. His
matches were put up in small paper boxes, usually of brown
color, made with a cap or cover, which, when placed on the
box, covered about a third of its length; and his trade-mark
was a cut representing a straw beehive surrounded by flowers
and foliage, with the words “A. Golsh's Friction Matches”
above the hive. The cut and the words were printed on a
label, which was pasted upon the front of each box. The
complainant succeeded Golsh in his business, and continued
to manufacture and sell the same kind of matches, using the
same mark, the label being sometimes varied. His business
had extended so that large quantities of his matches were
exported to the West Indies, Mexico, and South America.
The bill charged that the defendants, Menck & Backes, had
been and were engaged in manufacturing friction matches,
purporting to be the Golsh matches. It set forth two labels
as being used by the defendants upon the brown-paper boxes
in which they put up their matches. One contained the bee-
hive and foliage, over which were printed the words “Menck
& Backes' Friction Matches, late chemist for A. Golsh,”
the words “late chemist for ” being in letters smaller than
the rest; and under the beehive were printed in two panels
the number and street in which their manufactory was sit-
uated, etc. The other label was pretty much the same, the
words “A. Golsh” being much larger and more prominent
than those above them. It was charged that this was a pirat-
ical and fraudulent invasion of the complainant's trade-mark.
The Vice-Chancellor said that, taking the whole label together
as it appeared on a single box of matches when offered for
sale, the resemblance of the beehive was qualified by the dis-
tinct terms, “late chemist for A. Golsh,” so that the article
did not purport to emanate from either Golsh or his suc-
§ 490.] DEFENCES. 497
cessor. He accordingly dissolved the injunction, placing his
decision on the ground of dissimilarity in the labels of the
respective parties. The complainant appealed to the Chan-
cellor. He affirmed the decision, and upon the same grounds,
not questioning the legal right of the complainant to use the
mark set forth in his bill. The complainant thereupon ap-
pealed to the court of last resort. The Court of Appeals
took a different view of the case, although the result was
the same. *
§ 490. Per Curiam, substantially: If the statements of the
bill are analyzed, it will be found that the complainant claims
the exclusive right to impose upon the public matches made
by himself as those manufactured by A. Golsh. He alleges
that “the label heretofore spoken of, which was used by said
Golsh, had an imprint of a beehive, and the words “A. Golsh,
Friction Matches, 124 Twelfth Street, between 5th and 6th
Avenues, New York,' which label has been and now is used
by your orator without variation.” In every essential partic-
ular, as it respected the complainant, the statement of the
label was false. The matches were not Golsh’s matches, in
the sense in which it was intended that purchasers should
understand those terms. Golsh was in Europe, and had no
interest or agency in their manufacture. Oral declarations to
a purchaser of the same kind, with a view to a sale of this
article, it was conceded, would have been fraudulent. That
they were made to assume a more permanent form, and one
better calculated to impose upon those who relied upon the
reputation, personal skill, and integrity of Golsh, can make no
difference in the character of the transaction. It is no suffi-
cient answer to this view of the subject, that the complainant
obtained from Golsh the secret of the manner in which his
matches were prepared, or that he manufactured an article in
all respects equal to that offered by the former proprietor.
So also did the defendants, if we may trust their answer.
Nor does it alter the case that the complainant purchased the
right to use the name of A. Golsh. The privilege of deceiv-
ing the public, even for their own benefit, is not a legitimate
subject of commerce; and at all events, if the maxim that he
32
498 LAW OF TRADE-MARKS, [$492.
who asks equity must come with pure hands is not altogether
obsolete, the complainant has no right to invoke the extraor-
dinary jurisdiction of a court of chancery in favor of such a
monopoly. The bill is therefore defective for want of equity.
The order was affirmed unanimously.
§ 491. In Fowle v. Spear," in 1847, the complainant applied
for an injunction to restrain the defendant from using wrappers,
labels, and bottles resembling those used by the complainant
in his business of selling “Wistar's Balsam of Wild Cherry.”
Kane, J., refused the relief asked for. From his opinion, it
appears that on one of the complainant's wrappers, which was
made a part of the bill, the balsam was described as “a valua-
ble family medicine for consumption of the lungs, coughs,
colds, asthma, bronchitis, croup; whooping-cough, difficulty of
breathing, pains in the side or breast, liver complaints, &c.,”
to which another paper, also among the exhibits, adds “influ-
enza, hoarseness, pains or soreness of the chest, &c.” The
judge said: “It is not the office of chancery to intervene,
by its summary process, in controversies like this. Non nos-
trum tantas componere. Looking at the incongruous group
of diseases for which the balsam prescribes itself to public
credulity, I must apply the principle of the Vice-Chancel-
lor's decision in Pidding v. How, 8 Sim. 477, that a com-
plainant whose business is imposition cannot invoke the aid
of equity against a piracy of his trade-mark. The only rem-
edy in such a case is at law.” In 1855, the same judge made
a similar ruling in the case of Heath v. Wright,” where the
complainant sought to restrain the defendant from using the
word “Kathairon,” of assumed prodigious efficacy in many
diseases.
§ 492. A mere False or Evaggerated Statement in a public
advertisement will not deprive the owner of his right to pro-
tection.” In Curtis v. Bryan,” the defendant interposed the
objection that the plaintiff's medicine was not what by the
advertisement it purported to be; and that it was not per-
1 Ante, § 475. 2 3 Wallace, Jr. 141; R. Cox, 154.
* See ante, § 71, on this subject.
* 2 Daly, 212; 36 How. Pr. 33; R. Cox, 434.
§ 493. DEFENCES. 499
fectly safe or harmless, but that, on the other hand, it con-
tained ingredients which are injurious and baneful to chil-
dren. The court said: “It is difficult to conceive upon what
principle of equity this defendant should be heard to raise this
objection. His own conduct in regard to the subject matter
is an unequivocal concession to the goodness and value of the
plaintiff's article. He interposes this objection to avoid an
injunction which restrains him from imitating the plaintiff's
article. After the plaintiff's preparation had been in use for
nearly twenty-five years, its sale having steadily increased
during all that time, the defendant appears, and places upon
the market an article which, by the practices and arts to
which he has had recourse, he would have the public purchase
as the plaintiff's article. If the article was not a good one,
why should the defendant imitate it? If it was injurious to
health, it is not reasonable to suppose that a prudent man
would venture to introduce a similar article under the same
name, and hope to succeed. . . . Experience is an excellent
teacher, and the fair trial of an article will furnish unerring
evidence of its worthlessness or value. It is obviously true,
that if a medicine can stand the test of twenty years of ex-
perimental use, and grow steadily and constantly in favor,
its properties cannot be injurious. But, as before observed,
the good faith of this defendant, in raising the objection, may
reasonably be questioned, and I am satisfied that it does not
lie in his mouth to make it. If a man's acts are any indica-
tion of his belief, on any subject, the conduct and admissions
of the defendant constitute a complete refutation to this objec-
tion. A man's faith is shown by his works.” The defendant
was accordingly restrained, with costs.
| $493. In Smith v. Woodruff," also, the doctrine of estoppel
was applied. Admitting, for the sake of argument, that the
plaintiffs' preparation was a fraud on the public, the court
said that that suggestion comes with a poor grace from one
who has, by the imitation, been guilty of the same fraud, if
such it happen to be. This case was an appeal from an
order dissolving an injunction restraining the defendant from
1 48 Barb. 438; R. Cox, 873.
500 LAW OF TRADE-MARKS. [$494.
manufacturing and selling a perfume called “Sweet Opopanax
of Mexico”; from selling any perfumery with that name;
from using the name in connection with any perfumery;
from using the plaintiffs' label, or any imitation or counter-
feit thereof; and from using the label then employed by the
defendant, as set out in the complaint. From the opinion of
the court, in reversing the order above mentioned, we learn
that the plaintiffs, in connection with their label, put forth a
puff, stating that “the opopanax is a native flower from
Mexico, of rare and very rich fragrance, from which this ex-
tract is distilled,” etc. On the part of the defendant, several
perfumers made affidavit that they had examined the perfume
of the plaintiffs; that they could tell, approximately, its in-
gredients; that it was not distilled from the flower of opopa-
nax, but was a compound of several well-known tinctures or
essential oils, combined with pure spirits. Others stated that
there was a resinous gum in the market, of a disagreeable
odor, but no flowers of opopanax. The plaintiffs and their
chemists swore that the said opopanax was used in the prepa-
ration, distillation, and manufacture of said perfume, and that
the perfume was made from it. Several perfumers also made
affidavits that it was not possible for any perfumer to tell the
ingredients of the plaintiffs' perfume. Under this contra-
dictory state of evidence, the rule was not available to the
defendant. The injunction was restored, with costs from de-
fendant.
§ 494. Fictitious Name of Manufacturer. — The fact that a
trade-mark bears a fictitious name as the name of the manu-
facturer does not affect the owner's right to protection, where
it is shown that it is not used with any fraudulent intent, and
does not in fact deceive the public. This point is illustrated
by the case of Dale v. Smithson, where Thomas Nelson Dale
was adjudged to have a lawful right to the exclusive use of
the following: “Courtria Flax, Thomas Nelson & Co. War-
ranted, Fast Colors and 16 oz.” The defendants, who had
closely imitated the plaintiffs' label (which strictly speaking
is not a trade-mark), contended that the plaintiffs could not
1 12 Abb. Pr. 237; R. Cox, 282.
§ 495.] DEFENCES. - - 501
acquire an exclusive right to the use of said label, because it
did not indicate the true origin or ownership of the thread to
which it was affixed, - the name of Thomas Nelson & Co. be-
ing that of a fictitious firm; and that, as the plaintiffs were
thus practising a deception upon the public, by passing off the
thread as being manufactured by persons who had no real ex-
istence, a court of equity should not interfere to protect them
in their fraud. -
$495. The court, by Hilton, J., said in reply: “The label
is manifestly one not intended to delude the public, by mak-
ing any representations or asserting anything in respect to
its qualities or properties which are untrue; therefore, it can-
not be said that, in protecting the plaintiffs in its use, we
are assisting in the perpetration of a fraud. It is not con-
tended that the thread to which this label is affixed is an
article without merit; while, on the contrary, the testimony
at the trial fully established the fact that by its excellence it.
had acquired a valuable celebrity among dealers, and, besides,
has become well known as the thread of the plaintiffs. . . .
The use of the name was not with any fraudulent intent,
but, as is stated by Mr. Dale, it arose from the fact that his
Christian name is Thomas Nelson, and it is quite obvious
that it was used for purposes of identification, and with about
the same object as if, instead, he had adopted some familiar
emblem, figure, or picture, by which the thread might be
designated, and become generally known in the market. 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 manu-
facturers of thread; and the label does not pretend to hold
out that any particular manner of manufacturing the thread
is followed by which this pretended firm is enabled to fur-
nish a better quality than any one else. Apart from the use
of this fictitious firm name, it is not claimed that the label
is false in any other respect; and, under the circumstances
shown in this case, I think it would be a gross injustice to
deny the plaintiffs protection in the use of a trade-mark" to
1 This term is improperly used here. See definition of “trade-mark,” $$ 89,
et seq.
502 LAW OF TRADE-MARKS. [$495,
which their title has been so clearly established.” This is
the doctrine held by the court in Stewart v. Smithson," in the
New York Common Pleas Court, in bane. After issue joined,
the defendants moved to amend their answer by adding the
following allegations: “And the defendants, on information
and belief, state that the mark claimed by the plaintiffs, and set
out in the third section of the complaint, viz. “Hall & Moody's
patent thread, Barnsley,’ was and is a false and fraudulent
mark, used by the plaintiffs to deceive and defraud, and that
the thread containing said mark, sold or kept for sale by
the plaintiffs, was not and is not patent, and that no patent
for said thread has ever existed; nor was said thread manu-
factured by Hall & Moody, nor by any person or persons
their assignees or successors, nor was said thread manufac-
tured at or brought from Barnsley, — all which the plaintiffs
well knew.” There was also another proposed amendment,
involving the same point. The motion was denied, on the
ground that the proposed amendments contained no defence.
The defendants appealed. The court, by Brady, J., said:
“The mere fact that names used on a trade-mark are fictitious
would not authorize the use of it by strangers. The question
to be determined in these cases is, whether the mark used by
the party claiming the protection of the court is owned by
him, without regard to its form, which such party has a right
to design according to his judgment or his fancy. If the de-
fendants had alleged that the firm names used on the marks
never existed, that would, for the reason stated, furnish no
justification for their use of it, and it would not have pre-
sented a defence in this action. They have not done so, how-
ever, nor have they alleged that firms whose names do appear
on the mark did exist, and that the use of their names by
the plaintiffs was wholly unauthorized. If they had alleged
this, then, in the application of the maxim, Potiorest conditio
defendentis, the courts might relieve them from any disturb-
ance by the plaintiffs.” – In McNair v. Cleave,” it appeared
that the plaintiffs were engaged in business without an act of
incorporation of any kind, under the name or style of “Ga-
i 1 Hilt. 119; R. Cox, 175. * Leg. Int., July 3, 1874.
$497.] g - DEFENCES. 503
laxy Publishing Company.” The defendants took the same
name. Held, that the plaintiffs were guilty of a fraud on the
public in adopting a name calculated to mislead, and had no
standing in a court of equity.
§ 496. No Defence that Spurious Article is equal to Genu-
tne. —It is no defence to a suit for assuming a trade-mark,
that the simulated article is equal in quality to the genuine."
Upon this point the following distinctions are made. If a
druggist prepares a certain kind of medicine, and designates
it by the name of a superior medicine, invented, prepared,
and sold by the plaintiff, and sells it as and for the medicine
prepared by the plaintiff, the plaintiff may maintain an action
against him, without proof of special damage. But where cer-
tain medicines are designated by the name of the inventor, as
a generie term, descriptive of a kind or class, the inventor is
not entitled to the exclusive right of compounding or vend-
ing them, unless he has obtained a patent therefor; and if
another person prepare such medicines of an inferior quality,
and by this means all medicines of this class be brought into
disrepute, such inventor can maintain no action for any loss
sustained by him in consequence thereof, unless they are sold
as and for medicines prepared by him.” Moreover, it is no
defence that the marks of the spurious goods, or the words
of the jobber who sells them to the retailers, inform those
who purchase that the article is spurious or an imitation.”
Such knowledge on the part of the immediate purchaser is
no defence.*
$497. Laches.—So if a plaintiff lie by for a long time
before filing his bill for an injunction, the while being aware
1 Coats v. Holbrook, 2 Sandf. Ch. 586; Partridge v. Menck, Ibid. 622; Tay-
lor v. Carpenter, 11 Paige, 292. .
2 Thomson v. Winchester, 19 Pick. 214; R. Cox, 7.
* Coats v. Holbrook, supra.
g 4. Sykes v. Sykes, 3 Barn. & Cr. 541; 5 D. & R. 292; 3 L. J. K. B. 46. Taylor
v. Carpenter, 2 Wood. & M. 1; 9 L. T. 514; R. Cox, 32. Taylor v. Carpenter,
2 Sandf. Ch. 603; 11 Paige, 292; R. Cox, 45. Chappell v. Davidson, 2 K. & J.
123; 8 De G., M. & G. 1. Edelsten v. Edelsten, 1 De G., J. & S. 185; 9 Jur.
(N. s.) 479; 7 L. T. (N. s.) 768; 11 W. R. 328; 1 N. R. 300. Glenny v. Smith,
2 Drew. & Sm. 476; 11 Jur. (N. s.) 964; 13 L.T. (N. s.) 11; 13 W. R. 1032. Bar-
nett v. Leuchars, 13 L. T. (N. s.) 495; 14 W. R. 166.
504 . LAW OF TRADE-MARKS. [$497.
of the encroachment, that exhibition of laches will be deemed
equivalent to a want of good faith. The case of Beard v.
Turner," before Vice-Chancellor Wood, in 1866, affords such
an instance. There, it seems, the plaintiff for two years before
filing his bill saw done the identical thing of which he com-
plained. The court said: “But suppose you wish to profit
by the act of which you say you have a right to complain,
and shall at some future period complain of, then I apprehend
this court will say, You must come here at once, for this rea-
son, that you ask in your bill for an account of the profits
made by this gentleman upon the sale of these goods. The
plaintiff may say, ‘It may answer my purpose to let the de-
fendant go on selling four or five years, and then at the end
of that time to say he is my salesman, and I come for an ac-
count of profits.” I know of no instance in which the court
has given relief with reference to a trade-mark except on a
prompt application. By not complaining at the time when
you might complain, (I do not say that it is your intention:
we must judge of the intention by the necessary result,) you
are lying by, the man continuing to use your property, with
the hope (and such is the prayer in your bill filed two or
three years afterward) of obtaining those profits which you
stood by allowing him to make under this designation, with-
out apprising him of your intention to make any such use of
it. On that ground it falls within the principle enunciated,
. in which it is stated that it is a fraud to allow a plain-
tiff to avail himself of delay to obtain benefit for himself. In
that case you will not grant him relief. You will assume,
when he allows another wrongfully to use that which, in the
plaintiff's judgment, would facilitate a rival in trade, that
being so, unless you come quickly, you must make a rival in
trade your agent, for the purpose of carrying on that business,
and for the purpose of getting an account at the end of four
years. . . . It appears to me, therefore, that if I had come to
a different conclusion, it might have affected the question of
costs, although it would not have affected the question of re-
lief. I could not give a person an opportunity of lying by,
1 13 L. T. (N. s.) 747.
§ 497.] DEFENCES. - - 505
and then asking for an account of the profits made by an in-
jury committed.”— In Harrison v. Taylor, in 1865, the Vice-
Chancellor refused an account of profits, on the ground of the
plaintiff's delay before beginning suit, although the defend-
ant had persevered in the use of the mark after having been
cautioned. — In The Amoskeag Manufacturing Co. v. Garmer.”
before Barnard, J., at special term, in 1869, a delay of nine
years in applying for an injunction to restrain the violation of
a trade-mark, was held good cause for refusing relief. The
plaintiff alleged that the defendants wrongfully used a trade-
mark belonging to the plaintiff, and used to stamp cotton
cloths. The judge said that the plaintiff had by silence con-
sented to, if it did not encourage the defendants in, the use
of the mark in question upon their labels, introducing these
prints to the trade generally throughout the country. That,
under these circumstances, to deprive the defendants of the
use of these labels would work to them great and irreparable
injury, wrong, and hardship, and at the same time give to the
plaintiff a dishonest and unconscientious advantage as the
fruits of the plaintiff's own wrong and negligence. The rule
is that the plaintiff must not be guilty of any improper delay
in applying for relief.” He said, further, that the design and
object of the plaintiff in enjoining the defendants, at that
particular time, from using the said labels, was to produce
financial embarrassment by destroying their profitable trade,
immediately after the payment by the leading member of the
defendants' firm, in pursuance of the terms of his father's will,
of the sum of $3,225,000; that to uphold the injunction upon
the papers before him would be grossly inequitable and un-
just to the defendants, – would enable the plaintiff to profit
largely by its own wrong and negligence, and thus turn the
court into an engine to oppress and destroy, when its true
office is to relieve a party from hardship and oppression, and
to protect him in the enjoyment of his rights, when they are
* 11 Jur. (N. s.) 408; 12 L. T. (N. s.) 339.
* 55 Barb. 151; 6 Abb. Pr. (N. s.) 265; R. Cox, 541.
* There can be acquiescence only where there is knowledge. Malins, V. C.,
in Weldon v. Dicks, 10 Ch. D. 247; 39 L. T. (N. s.) 467. So held, also, by Hall,
W. C., in Re Farina, 27 W. R. 456.
506 LAw OF TRADE-MARKs. [$498.
illegally and wrongfully invaded, or threatened with injury.
Injunction dissolved, with costs." —Laches in prosecuting in-
fringers has always been recognized as a sufficient reason for
denying a preliminary injunction.”
§ 498. What not deemed Laches. – When a trader believes
that he has good ground for complaining of a colorable imi-
tation of the style of his business, he is justified in waiting
until he can collect a sufficient number of cases to show that
the alleged attempt has succeeded, before he files his bill;
inasmuch as it would not be safe for him to come into court
until he could establish actual cases of deception.”
* This section was cited and approved by the court in McLean v. Fleming,
96 U. S. 258.
* Wallace, J., in 1885, in Estes et al. v. Worthington, 22 Fed. R. 822.
* Cave v. Myers, Seton, 4th ed. 238; Lee v. Haley, 22 L. T. (N. s.) 251; 5 Ch.
155; 39 L. J. Ch. 284; 18 W. R. 242. See infra, § 681, “Intention to abandon”;
and also $684 et seq., “Laches.”
§ 500.] DAMAGES. 507
CHAPTER XI.
DAMAGES.
§ 499, 500. When damages are recoverable.
§ 501. Damages presumed in some cases.
§ 502. No fixed and certain rule.
§ 503. Compensatory damages should be given.
§ 504. How measured.
§ 505. Must be proved from the evidence.
§ 506. Election of remedies.
§ 507. In equity, damages depend on defendant's profits.
§ 508. Intent an element in determining amount.
§ 509. Special damages must be alleged.
§ 510, 511. Plaintiff's negligence considered.
§ 512. Difficulty of determining damages.
§ 513, 514. Estimates, how made in some cases.
§ 515, 516. Rule in patent cases not applicable to trade-marks.
§ 517. Account of sales of merchandise.
§ 518. Wrong-doer not allowed to be the judge.
§ 519. Exemplary damages.
§ 520. Vindictive damages, when given.
$499. When Damages are Recoverable.—There must be
loss legitimately resulting from the unlawful usurpation of a
trade-mark, or the plaintiff cannot recover; for if there be no
loss, the injury must go unredressed. It is not sufficient that
an act unauthorized by law has been committed; because for
injuria sine damno there is no compensation. Substantial loss
to the plaintiff must have ensued by the mal-appropriation of
the mark, the right to the exclusive use of which was in the
plaintiff, to entitle him to substantial relief. De minimis non
curat lea.
§ 500. Thus, it would not be sufficient for the plaintiff to
prove that the defendant had threatened to adopt his mark,
or that he had actually—through an error as to the scope of
the copyright law — filed it with the Librarian of Congress;
or, through another blunder, had applied for a patent for the
508 Law of TRADE-MARKs. [$ 502.
design; — for these acts could not have worked to the legal
injury of the plaintiff. There being no property in the mere
representation of the symbol constituting a trade-mark, as has
been before stated and proved, no legal harm could have re-
sulted from a mere imitation of the symbol." The wrong
consists in affixing the mark to merchandise which the public
purchase thereby, erroneously supposing that it is the product
of the plaintiff. That is the whole basis of a right to dam-
ages in such case.”
§ 501. Damages will be presumed, in some cases. Where
one intentionally uses another's trade-mark on goods, – i.e.
merchandise of substantially the same class as his, - the law
presumes the using to have been done for the fraudulent pur-
pose of inducing the public, or those dealing in such goods,
to believe that those sold, or offered for sale, are the genuine
goods of the owner of the mark. The act is deemed to be an
attempt to supplant the latter in the good-will of his trade.
In such a case, nominal damages will be given, although no
specific injury shall have been proved, or even alleged.” It is
not even necessary to show guilty knowledge or fraudulent
intent to warrant damages.”
§ 502. No Fived and Certain Rule for damages can be estab-
lished, applicable to all cases,”— no inflexible or unyielding
guide, – but the rule generally recognized as the true one is
to give as damages the amount of profits the defendant shall
have made by his infringement.” As in trials at law the jury
are the proper judges of damages where there is no certain
measure of damages, the court ordinarily will not disturb
their verdict, unless on grounds of prejudice, passion, or cor-
1 But see Act of March 8, 1881, sect. 9, as to an entry in the Patent Office,
by means of a false or fraudulent representation, orally or in writing, ante,
§§ 355 et seq. * *
2 Southern v. How, 2 Poph. 144; Blanchard v. Hill, 2 Atk. 484; Singleton v.
Bolton, 3 Doug. 293; Blofield v. Payne, 4 Barn. & Adol. 410.
3 Taylor v. Carpenter, 11 Paige, 292, and 2 Sandf. Ch. 603; Blofield v. Payne,
supra; Rodgers v. Nowill, 5 Man., Gr. & Sc. 109; Coffeen v. Brunton, 4 McLean,
516; Marsh v. Billings, 7 Cush. 322; McLean v. Fleming, 96 U. S. 245.
4 Colman v. Crump, 70 N. Y. 573.
5 Ransom v. The Mayor, 1 Fisher, 252.
6 Bell v. Daniels, Ibid. 372; Derringer v. Plate, 29 Cal. 292.
§ 503.] DAMAGES. - 509
ruption in the jury. In all actions on the case, the question
is, What is the amount of damages sustained?” and that is
within the especial province of the jury to answer, after weigh-
ing all the testimony; but, as a general principle, a party is
entitled to damages corresponding with the amount of injury
suffered, however small.
§ 503. Compensatory damages should be given. The crite-
rion is indemnity;” and in estimating the actual damage, the
rule is to give the value of the use of the thing during the
illegal user, or, in other words, the amount of profits,” as was
said in analogous cases of patented machines. The proper
measure of damages, in case of violation of a trade-mark, is
generally the profit realized upon the sales of goods to which
the spurious marks were attached. The actual damages for
the infringement would seem, as a general rule, to be all
that could be reasonably claimed. There may be exceptions.
Cases may arise where the circumstances are aggravated, and
such as to repel altogether the bona fides of the infringement.”
Each case must necessarily depend upon its own circumstances.
Thus, where in an action on the case for imitating and using
the trade-mark of the plaintiffs, on thread made by the de-
fendant, and selling the same as and for the plaintiffs’ thread,
a verdict was found for the plaintiffs for eight hundred dol-
lars;" and on a motion for a new trial, the court refused to
disturb the verdict. Woodbury, J. (who had not tried the
case), said that he had little doubt that there was material
enough in the case from which to estimate actual damages,
such as the probable extent of sales by the defendant under
the marks, and the loss of sales and profits thereon to the
plaintiffs; and that the jury would, in a case like that, of a
known and deliberate intention, often renewed, and very pre-
judicial to the plaintiffs, not be very nice in their data and
1 2 Greenl. on Ev. § 255. 2 West v. Rice, 9 Met. 564.
* Parker v. Helme, 1 Fisher, 44.
* Wintermute v. Redington, Ibid. 239; Page v. Ferry, Ibid. 298; Taylor v.
Carpenter, 2 Wood. & M. 1. Buck et al. v. Hermance, 1 Blatch. 398.
* Nelson, J., in Guyon v. Sewell, 1 Blatch. 244. See also Foote v. Silsbee,
Ibid. 445; and Seymour v. McCormick, 16 How. 480.
* Taylor v. Carpenter, supra.
510 LAW OF TRADE-MARKS. [$ 504.
inferences, but be sure to give enough to cover all losses, and
ample indemnity, - not “smart money,” or “vindictive dam-
ages,” but full atonement for the wrong done. He said, fur-
ther, that in a case like that, if in any, no reason exists for
giving greater damages than have actually been sustained, or
what have been called compensatory;" and that there was
nothing peculiarly atrocious in the conduct of the defendant
to be punished by damages, and in no other way, as a public
example. It seems that Judge Sprague, who tried the case,
in his charge to the jury, used the term “exemplary dam-
ages”; but that language was construed by the superior judge
to mean a full indemnity for the individual wrong, in every
equitable view, that by example might operate the more
effectually in a preventive manner against a repetition of
such injuries. He further expressed his opinion, that the jury
did not give more than was sufficient to make the plaintiffs
whole, but rather less than the amount.
§ 504. How measured. – Every trespass on property gives
a right, at least, to nominal damages.” All damages must be
the result of the injury complained of, to wit, the simulation
of the trade-mark of the plaintiff, those which necessarily re-
sult, termed general damages, being shown under the ad dam-
num; for the defendant must be presumed to be aware of the
necessary consequences of his conduct, and therefore cannot
be taken by surprise in the proof of them. Where the dam-
ages, though the natural consequences of the act complained
of, are not the necessary result of it, they are termed special
damages, and are not implied by the law. Therefore, in order
to prevent a surprise upon the defendant, they must be par-
ticularly specified in the declaration, or the plaintiff will not
be permitted to give evidence of them. But where the special
damage is properly alleged, and is the natural consequence
of the wrongful act, the jury may infer it from the princi-
pal fact.8—The Court of Nancy, in France, in 1827, held
1 Citing Tracy v. Swartwout, 10 Pet. 81.
2 Hilliard on Remedies for Torts, 404.
8 2 Greenl. on Ev. § 254.
* Germain v. Sevène, Huard, Marques de Fabrique, 47.
§ 504.] DAMAGES. 511
that damages should be calculated according to the loss of the
plaintiff, and not according to the profits that the infringer
had been enabled to make. — The Tribunal of Commerce of
the Seine, in 1857, held, that the infringers ought to restore
to the complainants, whose property they have usurped, all
the illegitimate benefits which they have realized by aid of
their fraudulent practices; that they also ought to account
for the profits of which they have deprived the complainants,
and to repair the wrong which they have caused by the de-
pression of the price of the merchandise manufactured, and
the rise of the price of the raw material, usual and almost
necessary consequences of an unlawful rivalry; they ought
also largely to indemnify complainants for all they have suf-
fered in their credit, sacrifices of all kinds to which they
have been obliged to submit, and all the expenses which they
have been obliged to sustain to protect their rights. On these
conditions only can the great industries which honor the coun-
try, and which have too often to fight against the culpable
manoeuvres of infringers, maintain and defend themselves. –
In the Supreme Court of California, in 1871,” was considered
a case in which the court below had awarded as damages all,
profits made by the defendant, by the sale of the spuriously
marked goods, and the appellate court held that the damages
were not excessive. Crockett, J., in delivering the opinion,
said: “Every consideration of reason, justice, and sound policy
demands that one who fraudulently uses the trade-mark of
another should not be allowed to shield himself from liability
for the profit he has made by the use of the trade-mark, on the
plea that it is impossible to determine how much of the profit
is due to the trade-mark, and how much to the intrinsic value
of the commodity.”—The Supreme Court of New York, in
general term, in 1875,” held that there was no error in an
assessment of damages by a referee, in which he found that
the damages were equal to the profits which the plaintiff
* Tribouillet v. Monnier, Ibid. 48. (See also Blanc de la Contrefaçon, 682.)
* Graham v. Plate, 40 Cal. 593; 6 Am. R. 689; 4 Am. L. T. 75.
* Faber v. Hovey, Codd. Dig. 79,249. Mr. Cox, in a note to Case 481 of
his Manual, says that this case was affirmed in the Court of Appeals by a
divided court. -
512 LAW OF TRADE-MARKS. [$ 504.
would have made from the manufacture and sale of the same
number of articles as the defendant had sold under the spuri-
ous mark. — In a Circuit Court of the United States, in 1871,"
Dillon, J., said: “I am satisfied that the plaintiffs' sales have
been lessened at least to the extent of the two hundred dozen
bottles; and that their profits would have been on each case
of one dozen bottles the sum of four dollars.” The damages
were so measured. – In another Circuit Court of the United
States, in 1884,” Wallace, J., held that the damages should
be measured by the extent to which the unlawful use of the
trade-mark had interfered with sales. – Learned, J., in 1872,”
held that damages are not recoverable against a defendant
who is ignorant of the plaintiff’s rights and claims. In that
case the defendants had used stamps and labels of an old firm
to which they succeeded, and supposed that the use was law-
ful. Yet a perpetual injunction was allowed.—So also, in
equity, where a complainant has been guilty of laches in not
enforcing his claim for a long time, he will not be entitled to
damages, and may even be compelled to pay costs.” And
where a defendant is ordered to account, he cannot be charged
with bad debts as profits; and, on the other hand, he cannot
charge the plaintiff with the cost of manufacturing the goods
in respect of which the bad debts were incurred.” There are
decisions in cases analogous to those of trade-marks, that lay
down a rule on the point. In a Circuit Court of the United
States, in 1880,” McKennon, J., held that the measure of
damages for the unauthorized sale of a patented article is the
difference between the cost price to the patentee, and the
market price, where the sales were made." The same judge,
in 1882, in two cases where the patented designs for a carpet
1 Hostetter v. Vowinkle, 1 Dill. 329. ©
2 Atlantic Milling Co. v. Robinson et al., 20 Fed. R. 217.
8 Weed v. Peterson, 12 Abb. Pr. (N. s.) 178. --
4 McLean v. Fleming, 96 U. S. 245.
5 Edelsten v. Edelsten, 10 L. T. (N. s.) 780.
* American Saw Co. v. Emerson, 8 Fed. R. 806.
7 Affirming the master's report, which cited the controlling principle in Rub-
ber Co. v. Goodyear, 9 Wall. 788; Cawood Patent, 94 U. S. 695; Pitts v. Hall,
2 Blatch. 229; Cowing v. Rumsey, 8 Blatch. 86; and Hostetter v. Vowinkle,
1 Dill. 329.
§ 505.] DAMAGES. 513
had been so closely imitated that they were exact copies,"
held: “The damages are measured by the profits which would
have accrued to the complainant upon the number of yards
sold by the defendant. Such number of yards must, under the
circumstances, be presumed to have displaced an equal num-
ber of yards of the complainant's carpets.” In a case on ap-
peal in New York, in 1884,” substantially the same rule was
observed. A cosmetic made and sold through the defendant's
agency being an infringement of the plaintiffs’ rights, it was
held: “The price realized from the defendant's sales, less
what it would have cost plaintiffs to make and vend the quan-
tity sold by the defendant, was a measure of damages to which
defendant cannot object.” But where an intention to infringe
is clear beyond doubt, courts will not be over tender with a
wrong-doer. In two cases in a Circuit Court of the United
States, in 1882.” for infringing designs patented by the com-
plainants, the copying being as exact as possible, McKennon,
J., laid down a proper rule: “Under these circumstances,
the respondents ought to be held to the most rigid account-
ability, and no intendment ought to be made in their favor,
founded upon the alleged inconclusiveness of the complain-
ants’ proof of loss. On the other hand, such proof ought to
be considered and interpreted most liberally in favor of the
complainants, within the limits of an approximately accurate
ascertainment of their damages.” .
§ 505. But the damages must be proved from the evidence,
not from mere conjecture, independent of the evidence.* A
mere possible injury furnishes no ground of damages. In an
English case,” where a bill in equity had been filed to restrain
the infringement of a trade-mark, the court offered a decree
for an account of profits; but the plaintiffs elected an inquiry
as to damages. It was held that the law would not presume
* Bigelow Carpet Co. v. Dobson, and Hartford Carpet Co. v. Same, 10 Fed.
R. 385.
* Champlin et al. v. Stodart, Gen. Term of Supr. Ct., Fifth Depart., 20 N. Y.
Weekly Digest, 223.
* Bigelow Carpet Co. v. Dobson, and Hartford Carpet Co. v. Same, supra.
* Carter v. Baker, 4 Fisher, 404.
* Leather, etc. v. Hirschfield, L. R. 1 Eq.299; 13L.T. (N. s.) 427; 14 W. R. 78.
33
514 LAW OF TRADE-MARKS. [$ 505.
that the plaintiffs would have sold the amount of goods sold
by the defendant; but the burden of proof was on the plain-
tiffs to show special damage by loss of custom, or otherwise.
The remarks of the court have an important bearing on the
subject of remote or contingent damages: “How can the
court assume that the persons who bought what the plaintiffs
aver were inferior articles, at an inferior price, would neces-
sarily, if they had not done so, have bought the superior
articles at the higher prices?” In a case 1 where there was
evidence that persons were, by false statements of the defend-
ants' agent, induced to leave the plaintiffs' coach, and to go
in that of the defendants, it was held to be a fraud on the
plaintiffs, and a violation of their rights, for which an action
would lie, without proof of actual or specific damages; and
that the damages should not be confined to the loss of such
passengers as the plaintiffs could prove had actually been
diverted from their coaches to those of the defendants; but
that the jury would be justified in making such inquiries as
to the loss of passengers and injury sustained by the plain-
tiffs as they might think were warranted by the whole evi-
dence in the case. When it was stated in the declaration,
and proved on trial, that the defendants had obtained some of
the plaintiff's wrappers, and used them to palm off inferior
articles — metallic hones for sharpening razors, etc. — as the
manufacture of the plaintiff, Denman, C. J., stated to the
jury, that, even if the defendants’ hones were not inferior,
the plaintiff was entitled to some damages, inasmuch as his
right had been invaded by the fraudulent acts of the defend-
ants. The jury, having found for the plaintiff, with one
farthing damages, stating that they thought the defendants’
hones were not inferior to the plaintiff’s, it was held, in bane,
that, the act of the defendants being a fraud upon the plain-
tiff, even if it occasioned him no specific damage, it was still,
to a certain extent, an injury to his right. This case makes
it clear and conclusive that a plaintiff may recover without
proof of special damage.”
1 Marsh v. Billings, 7 Cush. 322; 14 Monthly L. R. (4 N. s.) 664; R. Cox, 118.
* See Blofield v. Payne, supra. See also Rodgers v. Nowill, supra.
§ 508.] DAMAGES. 515
§ 506. Election of Remedies. – He whose rights are in-
fringed has his election of remedies. He may proceed in
equity for an accounting of the profits that the defendant
has made, an injunction, etc., or he may sue at law for the
loss that he has suffered.
§ 507. In the first case, if the defendant has realized no
profit, there can be no recovery ; but in the second, he may
recover the damage he has sustained, whether the defendant
has made any profit or not. In a patent case, he may treat
the infringer who illegally appropriates an invention to his
own use, making profit thereby, as his trustee in respect of
such profits, and compel him to account therefor in equity.
In such case, the plaintiff may recover those profits, be they
more or less; and he can recover no more, however great the
damages may be which the alleged interferer has occasioned.
If, on an accounting, it should appear that the defendant used
the invention so unskilfully that he realized no profit, there
could be no recovery. On the other hand, the patentee may
sue at law for the damages which he has sustained, and those
damages he is entitled to recover, whether the defendant has
made any profits or not." In trade-mark cases, the rule is
much the same ; but in the latter, considerations are involved
which do not enter into ordinary patent infringements, as, for
example, loss of reputation, so that courts allow greater scope
in ascertaining damages. In one case,” where it was impossi-
ble to apportion the profits of the defendant, he was required
to lose the whole. -
§ 508. Intent. — A wrongful or malicious intent, express
or implied, is an essential and prominent element in deter-
mining the amount of damages to be awarded. The general
rule is, that it is of no consequence whether the defendant
actually intended the injury or not. In civil actions, the law
does not so much regard the intent of the actor as the loss
or damage of the party suffering.” Yet in actions for the
invasion of patent rights, the intent is generally considered,
1 Woodruff, J., in Cowing v. Rumsey et al., 4 Fisher, 275.
* Graham v. Plate, 40 Cal. 593; 6 Am. R. 639; 4 Am. L. T. 75.
* Johnson, J., in Auburn, etc. v. Douglass, 12 Barb. 557.
516 LAW OF TRADE-MARKS. [$510.
as in a case where the maker of a machine appears in truth
to be ignorant of the existence of the patent, and does not
intend any infringement; and though this will not altogether
exonerate him, it will tend to mitigate the damages." So it is
in trade-mark cases.”
§ 509. Special Damages.— The right to recover special
damages, i. e. damages additional to the amount of direct and
immediate injury, often depends upon the allegations in the
writ. Such damages must be specially alleged, solely for the
purpose of giving the defendant notice of the plaintiff’s de-
mand with regard to them; while, as before said, he is held
to take notice of such damage as is the necessary consequence
of his act, without any special allegation, and without any
statement of the particular circumstance of aggravation. It
is rarely in actions for the violations of trade-marks that the
right to such damages can fairly be established.
§ 510. Plaintiff’s Negligence. — In assessing damages, the
direct and immediate consequences of the injurious act are to
be regarded, and not remote, speculative, and contingent con-
sequences, which the party injured might easily have avoided
by his own act. Suppose a man should enter his neighbor's
field unlawfully, and leave the gate open; if, before the owner
knows it, cattle enter and destroy the crop, the trespasser is
responsible. But if the owner see the gate open and pass it
frequently, and wilfully or obstimately, or through gross negli-
gence, leave it open all summer, and cattle get in, it is due to
his own folly. So, if one throw a stone and break a window,
the cost of repairing the window is the ordinary measure of
damages. But if the owner suffer the window to remain un-
repaired a great length of time after notice of the fact, and
his furniture or pictures, or other valuable articles, sustain
damage, or the rain beat in and rot the windows, the damage
would be too remote.”
1 Bryce v. Dorr, 8 McLean, 583; Whittemore v. Cutter, 1 Gallison, 429; Jones
v. Pearce, Webster's Pāt. Cases, 125; Hogg v. Emerson, 11 How. 587–607. See
also Lowell v. Lewis, 1 Mason C. C. 182.
* Rose v. Loftus, 47 L. J. Ch. 576; 38 L. T. (N. s.) 409. Weed v. Peterson,
12 Abb. Pr. (N. s.) 178. g
* Shaw, C. J., in Laker v. Damon, 17 Pick. 284.
§ 513.] DAMAGES. 517
§ 511. We may apply the doctrine thus laid down by the
eminent jurist to the case of one who stands by and calmly
sees another pirate his mark. He may sustain many injuries
that by prompt action he might have avoided. Legal relief,
at best, is but part indemnity. The law in fact aims not so
much at satisfaction as at a division of the loss.
§ 512. After a review of the few cases bearing directly
upon the question under discussion, — that is, the true prin-
ciple for the measuring of damages in trade-mark infringe-
ments, – we relapse into uncertainty, and despair of finding
any nicely adjusted scheme to solve the problem. The in-
fringement of a mark at one time may be destructive of the
trade of the true proprietor; and at another time, and under
similar circumstances, it may be comparatively harmless. An
article of trade may have an ephemeral popularity which is
an immediate fortune to its producer, or it may be a thing of
limited sale, yet of continuing demand. All the surrounding
facts must therefore be weighed by the jury, referee, or mas-
ter, as the case may be, and although of as little account
singly as the dust in the balance, yet in the aggregate they
may cause the scale to kick the beam. Look at such a case
as Gillott v. Esterbrook," and the power of the grouping of
seemingly insignificant minutiae, to make a convincing proof
of fraudulent intent, will be plainly perceptible.
§ 513. In many classes of cases of injury to property, the
estimate of damage can easily be made, either by the value of
an article destroyed or wrongfully converted, or by a previous
liquidation. Thus, for the infringement of a copyright, the
legislature has laid down certain rules to meet all cases; but
when we turn to infringements of patent rights, and attempt
to reason from analogy, we find great difficulty. In Conover
v. Rapp,” Ingersoll, J., said that the plaintiff is entitled to
such actual damages as he has sustained; and that the actual
damages are the profits which the defendant has made. This
was a case of infringement of a patent for a machine for split-
ting wood; and evidence having been given that the defend-
ant used the machine, and also of the amount of wood split
1 47 Barb, 455. * 4 Fisher, 57.
518 LAW OF TRADE-MARKS. [$ 513.
by him during each day, the plaintiff calculated from that
what the actual damages were. The court instructed the jury
that a plaintiff is not able, with the utmost accuracy, in cases
of that kind, to give the exact amount of damages that he has
sustained. It is beyond his power. He does the best that he
can. If he is wrong in his calculation, the defendant can put
him right. The defendant knows the profit that he has made.
Therefore, said he, the jury must take the evidence as it is,
and come to the best conclusion they can as to what are the
actual damages. The jury having found a verdict for the
plaintiff, the defendant moved for a new trial before Mr. Jus-
tice Nelson. He delivered the opinion, that there was no error
in the charge of the judge, and denied the motion. Sawyer J.,
said, in Carter v. Baker," that the profits made by the defend-
ants are proper to be given as a part of the damages; and
that the jury might take into consideration other losses caused
by the infringement, beyond those profits actually received by
the defendants. In a patent case (Cowing v. Rumsey et al.”),
Woodruff, J., laid down the rule somewhat more specifically,
the true rule being what the plaintiff has lost, and not what
the defendant has gained. He said: “In such an action, it is
precisely what is lost to the plaintiff, and not what the de-
fendant has gained, which is the legal measure of the dam-
ages to be awarded. Under this rule it may often be entirely
proper to prove the profits of the ordinary use of the inven-
tion, and the demand existing in the market, evidenced by
sales made, and so, as an element of consideration, show the
profits realized by the defendant, in order to furnish to the
jury all proper materials for determining how much the plain-
tiff has lost. But I apprehend that they are to answer the
precise question, How much loss has the plaintiff sustained
by reason of the defendant's infringement? . . . There may
be cases so peculiar that there are no means of proving the
plaintiff's loss without proving the defendant's profits, and
such proof becomes clearly admissible ; but, even then, the
recovery is what the jury shall find to be the plaintiff's loss,
not because the defendant realized profits, but because, under
1 4 Fisher, 404. 2 Ibid. 275.
§ 515.] damages. 519
all the circumstances, the jury infer, as a fact, but for the
interference, the plaintiff would have realized those profits.
It may be said, with some plausibility, that the plaintiff's
damages may sometimes be greater than the profits which the
defendants have made, but ought never to be considered less;
and that the defendants, having illegally infringed, should
always be held to the presumption that the plaintiff would
have made as much as they have realized, and should not be
permitted to retain any of the fruits of their illegal conduct,
by showing that the plaintiff could not have manufactured or
used the invention so profitably.” This reasoning is lucid
and satisfactory, so far as applicable to a patent case, but
should not be strictly applied to a trade-mark infringement.
§ 514. A patentee is presumed to have employed genius, or
talent at least, and to have expended time and money upon
his invention; and in consideration thereof he is allowed, for
a limited time, a monopoly of the thing invented. No one else
in the country which grants the patent has a right to vend or
use the article. All profits from its sale or use belong to the
patentee or his assigns. The trade in it is absolutely his dur-
ing the lifetime of the patent. Not so the traffic in merchan-
dise to which a trade-mark may be attached; for a thousand
persons may have a perfect right to manufacture and sell the
same class of goods, and of the same quality and value, and
yet but one person have a right to impress those goods with a
certain peculiar symbol. It may be that the infringer has
facilities for selling a hundred times as much as he whose
mark is imitated. Would the small dealer be entitled to
receive as damages a hundred times as much profit as he
could possibly have made 2 Reason forbids it. Courts would
regard such a rule in a trade-mark case as extravagant and
mischievous. -
§ 515. Trade-mark and patent cases, therefore, cannot be
controlled by the same inflexible rule of measurement of dam-
ages for infringement. We are unembarrassed in a patent
case where the patentee has adopted a patent fee as one mode
of remuneration, and in the fee has fixed his own measure of
the value of the use of the machine for the entire term, or
520 LAW OF TRADE-MARKS. [$ 516.
until that particular machine shall be worn out, and the com-
putation is readily made; 1 for if the patentee has an estab-
lished price in the market for his patent right, or what is
called a patent fee, that sum with the interest constitutes
the measure of damages.” In one case, the plaintiff insisted
that he was entitled to recover for the infringement the full
amount which he would himself have made on the articles
sold, had he manufactured and sold them himself, upon his
own established terms. He gave evidence showing the price
at which he sold, and the profits realized upon sales at those
prices; and the court adopted those profits as the measure of
damages, and gave him the benefit of the rule, so far as the
damages could be ascertained from the testimony.” But not-
withstanding this will not be applicable to all cases of
trade-mark infringements, we can understand perfectly well
how the analogy may be of assistance. Let us take an
example. - -
§ 516. The plaintiff has the exclusive right to vend by a
fanciful designation a certain article, the secret of the manu-
facture of which he possesses. It is well settled, as matter of
law, that he has no exclusive right of property in the com-
pound itself, it not being patented; consequently, if any one
by fair means discover the secret of manufacture, he may go
into competition with the inventor himself in obtaining the
patronage of the public in the sales of the very article.” But
we set out with the fact that the plaintiff has the exclusive
title in the name of the article, the said name being an arbi-
trary symbol, and possessing all the essentials of a lawful
trade-mark. The public know the article by that name, and
would not buy it under any other. If the defendant sell the
identical compound, a knowledge of the ingredients of which
he may have obtained by chemical analysis, he may do so
without hindrance, provided he do not sell it under the name
given to it by the plaintiff; but if he do so sell it, he is
1 Spaulding v. Page, 4 Fisher, 641.
3 Sickles v. Borden, 3 Blatch. 536. -
8 Spaulding v. Tucker, 4 Fish. 633, as cited by the court in Spaulding v.
Page, supra.
4 Davis v. Kendall, 2 R. I. 566; R. Cox, 112.
§ 519.] DAMAGES. 521
guilty of infringement of the mark. The number of articles
sold by the defendant being ascertained, we have a means of
measuring the damages, by applying the rule in patent cases.
The presumption must be that the plaintiff would have made
all the sales, had it not been for the alleged conduct of the
defendant."
§ 517. Courts of equity seem to indicate a rule for meas-
uring damages, by their practice of ordering the defendant to
keep an account of sales of merchandise bearing the simulated
mark, to the end that they may be paid as indemnity to the
complainant. But that an entry in a defendant's book is an
exceedingly fallacious guide in actions at law must be mani-
fest, for many circumstances may conspire to cause injury
from the improper use of the mark, and many of such circum-
stances must be taken into consideration in assessing dam-
ages. Unfair competition may cause a loss of reputation and
good-will, and depreciation of the class of goods sold by the
parties. Sawyer, J., in Carter v. Baker,” told the jury that
they might take into consideration the fact that the plain-
tiffs may have sold their articles at a higher price than the
defendants had received; but yet that only those damages
which directly and immediately flow from the wrongful act
can be considered, and that remote consequential damages
must be discarded.
§ 518. No wrong-doer can be allowed to apportion or
qualify his own wrong. As a loss has actually happened
while his wrongful act was in operation and force, and which
is attributable to his wrongful act, he cannot set up as an an-
swer to the action the bare possibility of a loss, if his wrong-
ful act had not been done.” The disposition of the courts,
in such case, is to make the wrong-doer liable for injurious
consequences flowing from the illegal acts, although they be
very remote.
§ 519. Eremplary Damages. – In the case of Day v. Wood-
worth, in the Supreme Court of the United States,” Mr Jus-
1 Hostetter v. Vowinkle, 1 Dill. 329. 24 Fisher, 404.
8 Tindal, C. J., Davis v. Garrett, 6 Bing. 716 (19 Eng. C. L. R. 212).
4 13 How. 363.
522 LAW OF TRADE-MARKS. [$ 520.
tice Grier, in delivering the opinion of the court, said: “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, punitory, or vindictive
damages upon a defendant, having in view the enormity of
his offence, rather than the measure of compensation to the
plaintiff. . . . By the common, as well as by statute law,
men are often punished for aggravated conduct or lawless acts
by means of a civil action, and the damages inflicted by way
of penalty or punishment given to the party injured. . . .
And the damages assessed in the circumstances, showing the
degree of moral turpitude or atrocity of defendant's conduct,
may properly be termed exemplary or vindictive, rather than
compensatory.”
§ 520. Thus, one who shall counterfeit—a term implying
deliberation and intent, as contradistinguished from a casual
imitation — will be held to a more grave responsibility than
another, who unwittingly may have copied a rival's mark. In
a Circuit Court of the United States, in 1884, in an action
on the case, for counterfeiting trade-marks, Blodgett, J., in-
structed the jury that damages are the necessary result of the
defendant’s wrongful act: “the interference with the plain-
tiff’s business, and injury to the public confidence in the gen-
uineness of the article which the plaintiff deals in, by reason
of the fact becoming known to the public that the fraudulent
and simulated imitation of this medicine had been placed be-
fore the public. These are the elements of damage which
you are to consider. . . . In cases of this character, where you
are satisfied from the proof and from the admissions in the
case, that the fraud—the intention to defraud—is at the bot-
tom of the matter, . . . the jury are not confined to the exact
monetary damages shown by the evidence, but may give what
are known as vindictive or exemplary damages, for the pur-
pose of deterring others from embarking in the same schemes
of fraud or deception. . . . You are to take into consideration
what has been told you in reference to the fact that his [plain-
tiff's] sales were diminished; that he has apparently lost some-
thing; that he was obliged to notify the public of the fact
§ 520.] DAMAGES. 523,
that simulations or imitations of his goods are in the market,
and notify them how to detect this simulation; you are to say
what, under the circumstances, will compensate the plaintiff,
and act as smart money to deter others from embarking in
other similar transactions in the future.” The actual damage
proved amounted to only about a hundred and fifty dollars;
but the verdict was for twenty-six hundred and fifty dollars.
Of course costs were added."
1 Warner v. Roehr, reported in Chicago newspapers of March 21, 1884.
524 LAW OF TRADE-MARKS. [$ 521.
CHAPTER XII.
RIGHTS ANALOGOUs To THOSE OF TRADE-MARKs.
§ 521. Several species of incorporeal property therein embraced.
§ 522, 523. Good-will, generally.
§ 524–527. On dissolution of partnership.
§ 528, 529. Name of inn, hotel, or other place of business.
§ 580. Name of companies, etc., in France.
§ 531. False representations on signs of shops.
§ 532. Prohibition against using names of former employers.
§ 583. Unfair competition in usurping names of commerce.
§ 534. French cases as to business signs. \
§ 535, 536. Unfair use of names of products.
§ 537, 588. Labels and wrappers.
§ 539, 540. Property in the name of another.
§ 541. Label cases.
§ 542, 543. Improper use of the word “original.”
§ 544. Words in common use.
§ 545. Trade secrets.
§ 546. Title of a book or other publication.
§ 547-553. Examples of titles protected.
§ 554–556. Misuse of another's name.
§ 557. Name of a song.
§ 558, 559. Printed publications as trade-marks.
§ 560, 561. Names and designations on coaches, etc.
§ 562–564. Secret process, breach of faith, etc.
§ 521. SEVERAL species of incorporeal rights are protected
on principles similar to those on which rests the ownership of
a trade-mark. Indeed, many cases embraced within the mean-
ing of the title of this chapter have masqueraded as cases of
veritable trade-marks, while essentially widely differing in
nature. Such rights may consist in mere trade-names" of
persons, places, or manufactures; or in mere labels, wrappers,
styles of packages, or other means of representing goods. All
such matters may, like technical marks, be intimately con-
nected with the good-will of a business, and may be guarded
1 See ante, $91, “Trade-Name, as contradistinguished from Trade-Mark.”
§ 522.] RIGHTS ANALOGOUS To THOSE OF TRADE-MARKS. 525
from invasion through the same general equitable principles."
Not infrequently, these various matters intermingle, as cir-
cumstances of the same case.” It may be necessary to apply
strict definitions; and discomfiture and loss may be the result
of inattention to them. Yet there are cases where claimants
to a right of exclusive user of symbols have utterly failed in
that regard, while the prayers for general relief have been so
broad that courts of equity have been able to give ample pro-
tection against unlawful interference with business.” The
decision of a Circuit Court of the United States, in 1885,4
serves as an illustration of this point. Wallace, J., held that
a complainant could not maintain a claim to a right of exclu-
sive use of either the word “Disque” or “Pile-Leclanche’”
as a trade-mark applied to the batteries of which one or the
other was the proper descriptive designation, and cited author-
ities for the decision that it could not be exclusively appropri-
ated as a trade-mark therefor, even by the inventor himself.”
He also cited authorities to show that a man's name alone is
not a trade-mark, when it merely designates the kind or de-
scription of the thing being sold.” On that ground, the claim-
ant failed; but the prayer of the bill was broad enough for
the court to continue as follows: “The defendants have
imitated the label of the complainant to the minutest details,
except the signature at the bottom. The complainant is en-
titled to protection against the unlawful competition in trade
thus engendered by the simulation of its label; and upon that
ground, a decree is ordered in its favor.” By the method of
classification hereinafter followed, many cases are considered
under one general head.
§ 522. Good-will. — In 1856, Romilly, M. R., said: “There
is considerable difficulty in defining accurately what is included
1 See ante, § 34, “Principles on which Infringement is prohibited.”
* See ante, § 418, “Blending of Trade-Mark and other Rights.”
* See ante, § 43, “Unfair Competition in Business.”
* Leclanche Battery Co. v. Western Electric Co., 23 Fed. R. 276.
* Hostetter v. Fries, 17 Fed. R. 620; Singer Manuf. Co. v. Stanage, 6 Id. 279.
See also ante, § 220, “The Necessary Name of a Product,” $220a, and § 221.
* Singer Manuf. Co. v. Loog, 15 Reporter, 538; Wheeler & Wilson Manuf.
Co. v. Shakespear, 39 L. J. Ch. 36; Young v. Macrae, 9 Jur. (N. s.) 322; Canal
Co. v. Clark, 13 Wall, 311. See also ante, §§ 178 et seq.
526 LAW OF TRADE-MARKS. [$ 522.
under this term good-will. It seems to be that species of con-
nection in trade which induces customers to deal with a par-
ticular firm”;1 “ or,” as Lord Eldon, C., said, in 1810,” “the
probability that the old custom will resort to the old place”;
or, as Lord Langdale said, in 1842, “It is the chance or prob-
ability that custom will be had at a certain place of business,
in consequence of the way in which that business has been
previously carried on.”*— Judge Story says, quite comprehen-
sively, that it may be described to be the advantage or benefit
which is acquired by an establishment, beyond the mere value
of the capital, stock, funds, or property employed therein, in
consequence of the general public patronage and encourage-
ment which it receives from constant or habitual customers,
on account of its local position, or common celebrity, or repu-
tation for skill or affluence, or punctuality, or from other ac-
cidental circumstances or necessities, or even from ancient
partialities or prejudices. Thus, a nursery of trees and shrubs,
a favorite fashionable stand, or a newspaper establishment,
may and often does enjoy a reputation and command a price
beyond the intrinsic value of the property invested therein,
from the custom which it has obtained and secured for a long
time; and this is commonly called the good-will of an es-
tablishment.*—Tindal, C. J., said, in 1837: “The good-will
of a trade is a subject of value and price. It may be sold,
bequeathed, or become assets in the hands of the personal rep-
resentative of the trader.””— Pollock, C. B., said, in 1854:
“Very frequently the good-will of a business or profession,
without any interest in land connected with it, is made the
subject of sale, though there is nothing tangible in it; it
is merely the advantage of the recommendation of the vendor
to his connections, and his agreeing to abstain from all
competition with the vendee. Still, it is a valuable thing
1 Wedderburn v. Wedderburn, 22 Beav. 84; 25 L. J. Ch. 710; 2 Jur. (N. s.)
674; 28 L. T. 4.
2 Cruttwell v. Lye, 17 Wes. 335; 1 Rose, 123.
8 England v. Downs, 6 Beav. 269; 12 L. J. Ch. 85; 6 Jur. 1075.
4 Partnership, § 99.
5 6 Ad. & E. 438–454; 1 N. & P. 796–814; 2 H. & W. 464–471; 6 L. J. Ex.
(N. s.) 266—269.
...”
§ 522.] RIGHTS ANALogous TO THOSE OF TRADE-MARKS. 527
belonging to himself, and which he may sell to another for
a pecuniary consideration”;" and, as Wood, W. C., said, in
1859, “When you are parting with the good-will of a busi-
ness, you mean to part with all that good disposition which
customers entertain toward the house of business identified
by the particular name or firm, and which may induce them to
continue giving their custom to it.”*—Said Romilly, M. R.,
in 1860: “The good-will is a valuable and tangible thing in
many cases, but it is never a tangible thing unless it is
connected with the business itself, from which it cannot be
separated, and I never knew a case in which it has been so
treated"; 8 and at a later date he said, “There may be a
particular species of value attached to a particular spot where
a business has for a long time been carried on, and which may
be an asset of the partnership of very high value.”*—“The
sale of a business is a sale of the good-will. It is not necessary
that the word “good-will” should be mentioned.”*— But it is
not every kind of good-will that may be sold; for, as was
held, in 1841, the good-will of a bankrupt's trade, so far as it
is personal, remains with the bankrupt, although so far as it is
local it passes to the assignees in bankruptcy, and owing to
peculiar circumstances such assignees may not acquire any in-
terest in the good-will.” The reason of this exception may be
readily understood, when it is considered that the whole value
of a good-will may be inseparable from personal professional
skill, as for example that of a surgeon, such being very differ-
ent in nature from a commercial matter.” — Lord Chelmsford,
C., in 1857, said: “It is very difficult to give any intelligent
meaning to the term “good-will” as applied to the professional
1 Potter v. The Commissioners of Inland Revenue, 10 Ex. 147; 23 L. J. Ex.
845; 18 Jur. 778; 23 L. T. 269; 2 W. R. 561. *
* Churton v. Douglas, Johnson, 174; 28 L. J. Ch. 841; 5 Jur. (N. s.) 887; 33
L. T. 57; 7 W. R. 865.
* Robertson v. Quiddington, 28 Beav. 529.
* Parsons v. Hayward, 31 Beav. 199; 31 L. J. Ch. 666; 8 Jur. (N. s.) 474;
6 L. T. (N. s.) 523; 10 W. R. 531.
* Shipwright v. Clements, 19 W. R. 599, Malins, W. C.
* Ex parte Thomas, Court of Review in Bankruptcy, 2 Mont., D. & DeG.
294; 10 L. J. Bankruptcy, 75; 5 Jur. 967.
7 Farr v. Pearce, 3 Madd. 74.
528 LAW OF TRADE-MARKS. [$ 522.
practice of a solicitor in this abstract sense. Where a trade is
established in a particular place, the ‘good-will” of that trade
means nothing more than the sum of money which any person
would be willing to give, for the chance of being able to keep
the trade connected with the place where it has been carried
on. . . . But the term “good-will” seems wholly inapplicable
to the business of a solicitor, which has no local existence, but
is entirely personal, depending upon the trust and confidence
which persons may repose in his integrity and ability to con-
duct their legal affairs.”* Said the Lord Ordinary, in the
Court of Session of Scotland, in 1878: “There is truly no
such thing as good-will 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 different in the case of a trade or manufacture, where
the employer may have the possession of patents or trade
secrets, or may by long exercise of his trade or manufacture 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 individual skill of the employer,
but the reputation which his establishment has acquired, which
creates that incorporeal, but frequently valuable, estate known
as the ‘good-will’ 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 qtlite true that such
businesses are occasionally sold ; but what is thus sold in the
case of a living professional man retiring from business, is truly
the personal recommendation which the seller gives to his
former clients or patients in favor of his successor, coupled
with the predecessor's retirement from business. But when
the physician or law-agent is dead, nothing of the kind can
take place.” The Lord Justice Clerk concurred, and spoke of
the distinction between a trade, where the individual skill of a
trader has often less to do with the success of the undertaking
than other circumstances connected with it, and a profession,
1 Austen v. Boys, 2 De G. & J. 626; 27 L. J. Ch. 714; 4 Jur. (N. s.) 719; 31
L. T. 276; 6 W. R. 729.
§ 523.] RIGHTS ANALOGOUs To THOSE OF TRADE-MARKS. 529
which is only carried on with success by means of the brain
and other personal qualifications of the person conducting it.
Lord Ormidale said that he thought that it would be impossi-
ble to hold that a medical man's practice could be transmitted
so as to be an asset of his estate. This was the decision of
the court, although one of the judges dissented." — Yet the
Court of Appeals of Maryland, in 1870, held that the good-
will of the practice of a physician could be assigned for a
certain district.”
§ 523. The extent to which a good-will is protected is
illustrated in Crutwell v. Lye,” as is also its nature. In that
case, the good-will consisted in certain premises in Bath and
in Bristol, which were sold by the assignees in bankruptcy of
one of the defendants, Edward Lye, who had for some years,
together with his father, George Lye, carried on the business
of a carrier from Bristol through Bath to London; the same
parties having also a carrying business from Bristol through
Salisbury and Warminster to London. At the sale, the whole
of the premises of the Messrs. Lye, and their business as car-
riers from Bristol through Bath to London, and the good-will
of that business, were sold in one lot to the plaintiffs; the
carrying business from Bristol through Warminster and Salis-
bury being put up for sale separately, and eventually bought
by friends of E. Lye, the defendant, who then set him up in
that business. The question was, whether the defendant,
according to the facts stated, was really carrying on his own
trade, and not that of the plaintiff. A person having sold a
house and stock in trade is, in the absence of any special cove-
nant, at liberty to set up a similar business the very next door
to his former shop or warehouse.* That is merely a fair case
of competition in trade; but he must not, under color of chalk-
ing out a different course of trading, really carry on, for his
own benefit, the trade of others.” Lord Eldon considered
1 Bain v. Munro, 5 Ct. of Sess. Cas., 4th series, 416; 15 Scot L. Rep. 260.
* Warfield v. Booth, 33 Md. 63.
* In 1810, Lord Eldon, C., 17 Wes. 335; 1 Rose, 123.
* See also Bond v. Milbourn, 20 W. R. 197; Kennedy v. Lee, 8 Mer. 441.
* See also Harrison v. Gardner, 2 Madd. 198. Hudson v. Osborne, 39 L. J.
Ch. 79; 21 L. T. (N. s.) 386. Witt v. Corcoran, 2 Ch. D. 69; 45 L. J. Ch. 603;
34
530 LAW OF TRADE-MARKS. [$ 524.
that the facts in that case were not sufficient to prove a
fraudulent design on the part of the defendant. He said that
they amount to no more than that the defendant asserts a
right to set up this trade (the carrying business), and has set
it up as the like, but not the same trade with that sold, taking
only those means that he had a right to take to improve it.
§ 524. Partnership dissolved. — Upon a dissolution of part-
nership frequently comes the question, What shall be done
with the good-will? As was said by Wigram, W. C., in 1842,
“The whole or substantial part of a trade may consist in
good-will, leading to renewals of contracts with old connec-
tions. In such a case, it is the identical source of profit which
operates both before and after dissolution.” This term good-
will has no meaning except in connection with a continuing
business, and it may generally be said to be practically worth-
less except to the former partner desiring to continue the
business.” In a case before Romilly, M. R., in 1865, it ap-
peared that the complainant's husband and the defendant
entered into a partnership for fifteen years, under the name
of “Banks & Co.” At the end of ten years B. died, and the
complainant replaced him in the partnership for four years
longer, when the partnership was dissolved, and the assets
were divided, but no arrangement was come to with respect to
the firm name. The complainant continued in the same town
and in the same business, although not on the old premises, and
the defendant continued the business on the old premises, each
under the old name of “Banks & Co.” The court refused
an injunction to restrain the defendant from using the name,
saying that the name or style of the old firm was an asset of
the partnership, and if the whole concern and the good-will
of a business had been sold, that name, as a trade-mark, would
have been sold with it. If, by arrangement, one partner take
the whole concern, there must be a valuation of the whole,
34 L. T. (N. s.) 550; 24 W. R. 501. Labouchere v. Dawson, L. R. 18 Eq. 822;
41 L. J. Ch. 427; 25 L. T. (N. s.) 894; 20 W. R. 809. Graveley v. Winchester,
Seton, 4th ed. 257. Burrows v. Foster, 1 N. R. 156; 32 Beav. 18; Seton, supra,
Williams v. Williams, 2 Swanst. 253; 1 Wils. 473.
1 Willett v. Blanford, 1 Hare, 253; 11 L. J. Ch. 182; 6 Jur. 274.
* Robertson v. Quiddington, 28 Beav. 529.
§ 524.] RIGHTS ANALogous To THOSE OF TRADE-MARKs. 531
including the name or style of the firm. But if the partners
merely divide the other partnership assets, then each is at
liberty to use the name, just as they did before. The same
judge had held in 1859, that partnership assets, including
the title of a publication, must be sold for the benefit of the
partners, if it were of any value.” The court said, in Churton
v. Douglas: “The name of a firm is a very important part
of the good-will of the business carried on by the firm. . . .
The firm stamps its name on the articles. It stamps the name
of the firm which is carrying on the business on each article,
as a proof that they emanate from that firm ; and it becomes
the known firm to which applications are made, just as when
a man enters a shop in a particular locality.” By the au-
thority of that case, the purchaser of the good-will acquires
the right, not only to represent himself as the successor of
those who formerly carried on the concern, but also to pre-
vent other persons from doing the like.” When a firm is
dissolved, and there is no agreement to the contrary, the
good-will must be sold for the benefit of the partners, if any
of them insist on such sale;" and a court may order it to be
sold or disposed of in such a manner as may be deemed most
advantageous to the partners, and may permit a partner to
retain it upon payment of the value thereof.” This is the
modern doctrine, and the ruling of Lord Loughborough, C.,
in 1800," that upon a partnership without articles the good-
will survives, and that it is not an asset of partnership, is not
followed; nor did Lord Eldon, C., in 1808, concur in his opin-
ion.” In a case before Grant, M. R., in 1810, where there
1 Banks v. Gibson, 34 Beav. 566; 34 L. J. Ch. 591; 11 Jur. (N. s.) 680; 13
W. R. 1012; 6 N. R. 373.
2 Bradbury v. Dickens, 27 Beav. 53; 28 L. J. Ch. 667; 33 L. T. 54.
8 Wood, W. C., Johnson, 174; 28 L. J. Ch. 841; 5 Jur. (N. s.) 887; 83 L. T.
57; 7 W. R. 365,
* See Lindley on Partnership, 861.
5 Bradbury v. Dickens, supra; Fenn v. Bolles, 7 Abb. Pr. 202; Smith v. Ev.
erett, 27 Beav. 446; 29 L. J. Ch. 236; 5 Jur. (N. s.) 1332; 34 L. T. 58; 7 W. R.
605; also Bininger v. Clark, 10 Abb. Pr. (N. s.) 264. -
6 Shepherd v. Boggs, 2 N. W. Reporter, (N. s.) 870; 9 Neb. 258.
7 Hammond v. Douglas, 5 Wes. 539.
* Crawshay v. Collins, 15 Wes. 218.
532 LAW OF TRADE-MARKS. [Š 525.
were no articles prescribing the terms, it was held that some
of the partners could not insist on taking the share of another
partner at a valuation, nor retain the benefit of a clandestine
renewal to them of the lease of the partnership premises, since
that would be to give them the whole benefit of the good-will,
but that such renewed lease must be included in the valua-
tion of the partnership property.' But it was held, in 1855,
that when articles of partnership provided that the surviving
or continuing partner should have the option of taking over
the share of the deceased or retiring partner in the partner-
ship “property, credits, and effects,” and it having been agreed
that the partnership should be dissolved, and that the contin-
uing partner should take over the partnership “stock in trade
and effects” at a valuation, the good-will was not to be taken
into account and valued as being included in the partnership
“property, credits, and effects,” or “stock in trade and ef-
fects”; ” but in 1878, under articles which provided for the
valuation of the partnership “property and effects” on the
dissolution, there being no negative stipulation in the articles,
it was held by Hall, W. C., that the good-will must be taken
into account and valued, as being included in the “property
and effects”; * and Jessel, M. R., in a similar case, at the
same time held that good-will was included in the “effects .
and things.” “ It must be understood that when one partner
sells to another a going business, every advantage arising from
the fact of the sole ownership of the premises, stock, and es-
tablishment, including advantages acquired by the old firm in
carrying on its business, whether connected with the old place
or the old name, passes to the purchaser; but the vendor will
not be prevented from carrying on a similar business, when,
where, and with whom he pleases.”
§ 525. In Peterson v. Humphrey,” it was held that an in-
junction will lie, at the suit of one against his former copartner,
1 Featherstonhaugh v. Fenwick, 17 Wes. 298.
2 Hall v. Hall, 20 Beav. 139.
8 Reynolds v. Bullock, 47 L. J. Ch. 778; 39 L. T. (N. s.) 443; 26 W. R. 678.
4 Rolt v. Bulmer, W. N. 1878, p. 119.
* The McGowan Bros. Pump Machine Co. v. McGowan, 2 Cincinnati, 313.
6 4 Abb. Pr. 394; R. Cox, 212. -
§ 525.] RIGHTS ANALOGOUS TO THOSE OF TRADE-MARKS. 533
restraining the continuance of the use of the signs containing
the old firm name, without sufficient alterations or additions
to give distinct notice of a change in the firm. The parties
were in business on Broadway, in the city of New York, and
failed. Some arrangements were made with their creditors,
by which they were enabled to enter into a new business,
which each did on his own account, — Humphrey at the former
store in Broadway, and Peterson on Canal Street. Before the
failure, there was a broad sign above the second story of the
store on Broadway, in the name of the firm, “Peterson &
Humphrey,” and another over the entrance door. Peterson
requested Humphrey to remove those signs, and receiving a
refusal, obtained an injunction to prevent the use of them.
Before that, the sign on the door had above it the name of the
old firm, and the word “formerly,” so as to read “Humphrey
& Co., formerly Peterson & Humphrey.” The court said
that this last sign was true, and nobody could be deceived by
the last words; but the sign above the door might mislead,
and the injunction against it should be sustained. — In Howe
v. Searing," the plaintiff, a baker by trade, sought to restrain
the defendant from designating the bakery establishment kept
by him at No. 432 Broadway, in the city of New York, as
“Howe's Bakery,” and from otherwise using the name of
“Howe” in the business, so as to induce the public to believe
that the business carried on at 432 Broadway was conducted
by the plaintiff. Upon the trial at special term, it was proved
that, eight years before, the plaintiff carried on a large and
lucrative business at 432 Broadway, and during all the time
he carried on the business the premises had been known as
“Howe's Bakery,” and had gained great celebrity by that
name. Howe then sold out his lease of the premises, and all
the stock, wagons, and fixtures used by him in the business,
together with the “good-will” of the concern. After the sale
of the business stand and good-will, Howe, by agreement with
his vendee, obtained the privilege of resuming the business at
another stand, covenanting not in any manner to interfere
with the business carried on at the former stand, known as
* 10 Abb. Pr. 264; 19 How. Pr. 14; 6 Bos. 354; R. Cox, 244.
---
534 LAW of TRADE-MARKS. [$ 526.
“Howe's Bakery.” Held, that this was no recognition of the
vendee's claim to use the name “Howe.” On appeal from the
judgment in the plaintiff's favor, the decision was affirmed
by a majority of the court. Hoffman, J., said that the case
was decided upon all the authorities found bearing upon it.
The court recognized the principle, as one of public policy,
that business must be transacted under the name of the real
parties doing it, and not under other names.— This decision
fully accords with the law of France in relation to commercial
partnerships. By the 21st article of the Code of Commerce,
the names of associates only can constitute the firm name (la
raison sociale). This is intended to prohibit persons who suc-
ceed to the business of a deceased merchant from continuing
it under his name. “Credit,” said Hoffman, J., in comment-
ing upon that article, “is altogether personal. It does not
transmit itself by cession or inheritance. It is won by actions
and capacity. It is not right, then, that a successor should
avail himself of a fallacious credit in appropriating a firm’s
name extinguished by the death of one of those who gave it
the value.” 1 - - -
§ 526. It has been a question whether the right to use the
firm name is a part of the good-will belonging to the partner-
ship, or whether, in case of the dissolution thereof by the
death of the partner, it belongs to the survivors. That the
right to use the name of a known and celebrated firm in the
case of manufactures is often a very valuable possession, is un-
questionable; and, therefore, courts of equity will often inter-
pose to protect the right against the abuse of third persons, in
using it for their own advantage.” But it has been thought
that this right does not fall within the true character and
nature of good-will; but that it belongs to the surviving part-
ner. The case of Lewis v. Langdon * illustrates the theory
of property in a partnership name, as a species of good-will
attached, not to the place of business, but to the name of a
1 See the case of Compère v. Bajou et al., ante, §§ 209–211.
2 Story on Partnership, § 100; 2 Story on Eq. Jur., § 951; Eden on Inj., ch.
14; Motley v. Downman, 3 Myl. & Cr. 1, 14, 15; Millington v. Fox, Ibid. 338;
Knott v. Morgan, 2 Keen, 213, 219; Webster v. Webster, 3 Swanst. 490 m.
8 7 Sim, 421; 4 L. J. Ch. (N. s.) 258.
§ 526.] RIGHTS ANALOGOUs To THOSE OF TRADE-MARKS. 535
firm or of a trader. In this case, Vice-Chancellor Shadwell
held that a surviving partner had, on the death of his copart-
mer, a right to carry on the business under the designation of
the original firm; for that the good-will arising from the use
of a particular designation was, during the partnership, the
joint property of the firm, and became on the death of one of
the partners the sole property of the survivor. He, however,
while granting the injunction, directed the plaintiff to bring
his action at law. But this opinion does not seem to have
been generally acquiesced in. Hoffman, J., in rendering the
decision of the court in Howe v. Searing," intimates that it is
a well-settled rule that the good-will of a partnership business
does not survive to a continuing partner; and that it belongs
to the firm as much as the ordinary stock in trade. He said
that the case of Lewis v. Langdon, which seems to assert a
different rule, is not the law of the court on this point. He
referred to the decision in Hammond v. Douglas,” which ex-
plicitly asserts a different doctrine, speaking of the good-will
generally; and decides that a sale of it cannot be compelled
by the representatives of the deceased partner; and that it is
not partnership stock of which the executor may compel a
division, but belongs of right to the survivor. But in the case
of Dougherty v. Van Nostrand,” before him as assistant Vice-
Chancellor, he had thought that case could not be supported;
and the opinion in the last-mentioned case had been acted on
and approved in other cases.” Perhaps, says Lloyd," Churton
v. Douglas" approaches more nearly than any other of the
numerous cases on good-will to the case of a trade-mark.
There, the defendant had, in 1857, received a considerable
sum from the plaintiff, upon a dissolution of partnership, for
the purchase of “all his known rights and interests in the
partnership business and the good-will thereof.” The plain-
tiffs carried on the old business under the name of their new
firm, “late John Douglas & Co.” Four months afterwards,
the defendant again set up his old business, in partnership
1 See ante, § 525. 2 5 Wes. 539.
8 1 Hoffm. Ch. R. 68. * Williams v. Wilson, 4 Sandf. Ch. R. 379.
* Trade Marks, 35. * Johnson, 174; 7 W. R. 365.
536 LAW OF TRADE-MARKS. [$ 527.
with other persons, under the firm of “John Douglas &
Co.” The whole question, as in Crutwell v. Lye, before re-
ferred to, was whether, upon all the circumstances, this was
an attempt to set up, not a business similar to the old one,
but the identical business; and the court, coming to the con-
clusion that such was the defendant's intention, granted an
injunction, although the defendant's name was John, and the
style was genuine.
§ 527. In the Tribunal of Commerce of Paris, in 1857,
(Bautain v. Mercklein,”) it appeared that Bautain and wife
had sold to Mercklein and wife their establishment as opti-
cians. Among other conditions, it had been stipulated that
the defendants, as successors, might avail themselves of the
name of Bautain, as found convenient; but the Bautains re-
served the right to continue to carry on another place of busi-
ness which they had established in a different street from that
of their former place. The defendants used as a commercial
designation the formula, Maison Bautain, Bautain Opticien,
without the addition of the words Mercklein, successeur, where-
upon the plaintiffs brought suit for damages for violation of
contract in making a false representation. It was held, in
the first instance, that the defendants had obtained the right
to use the name of Bautain on their signs, cards, etc., and
the case was dismissed, plaintiffs to pay the costs. The plain-
tiffs appealed. The judgment below was reversed, on the
ground that it was only in the quality of successors in business
that the respondents had the right to use the name of Bau-
tain; but as no appreciable injury had resulted to the appel-
lants, no damages were allowed. To suppress the evil for the
future, the court forbade the respondents Mercklein to in-
scribe the name of Bautain on their invoices, addresses, and
signs, otherwise than as successors of the said Bautain and
wife, that quality to be expressly mentioned in conjunction
with the name of Mercklein. The respondents were adjudged
to pay the costs of the trial and the appeal. — In the Tribunal
of Commerce of Marseilles, in 1861, (Laurens v. Laurens,”) it
appeared that the plaintiff, Gustave Laurens, had, ever since
1 3 Annales, 207. * 8 Id. 221.
§ 527.] RIGHTS ANALOGOUs To THOSE OF TRADE-MARKS. 537
1836, carried on the pharmacy founded by his uncle, Joseph
Laurens, in 1814, with this sign: “Pharmacie Laurens.”
The plaintiff signed his name as “G. Laurens,” and so was
generally known. His cousin, the defendant, Paul Gustave
Laurens, established a pharmacy in the vicinity of that of
the plaintiff, and had for his sign “ G. Laurens.” The court
ordered that the defendant should qualify his designation,
suppressing the name of “Gustave.” In the Court of Bor-
deaux, in 1865, (Caminade & Co. v. Caminade,') it was held
that, although in case of similarity in the names of two mer-
chants, in the same line of business, the later comer is not
obliged to suppress the name of his firm on his marks and
labels, nevertheless he can be adjudged as an evidence of good
faith to add his distinctive designation. The defendant had
announced in circulars that he had founded at Cognac a mer-
cantile house, under the name of Ad. Caminade, for the pur-
chase and sale of Cognac brandies. It was shown by him
that, in his correspondence with his agents, he had notified
them not to confound his house, just commenced, and the
ancient house of Caminade, with which he had no connection
of either kinship or interest. Good faith was shown. The
court held that every person has a perfect right to use his
patronymic, in commerce as in anything else, subject, how-
ever, to the condition of being distinguished as much as pos-
sible from any other in the same trade. It was ordered, that
the defendant's full name appear, thus: Adrien Caminade.
This was affirmed on appeal, the defendant spontaneously
agreeing to add to his labels, etc. the words “Maison fondée
en 1864,” so as to prevent any possible confusion. — So, also,
in the Tribunal of Commerce of the Seine, in 1857, (case of
Pinaud & Amour v. Pineau,”) where the names, although dif-
ferently spelled, were idem sonans. It appeared that the
plaintiffs had carried on a hat-store, founded twenty-five
years before at No. 87 Rue Richelieu, in Paris, by Juste
Pinaud; and that the defendant quitted another street for-
merly occupied by him, and established a hat-store at No. 91
Rue Richelieu. It was charged that he did this to profit
1 13 Annales, 268. 2 4 Id. 86.
538 LAW OF TRADE-MARKS. [$ 527.
by the similitude of name to draw away the custom of the
plaintiffs. The defendant contended that he had a perfect
right to remove into the street mentioned, and that the differ-
ence in the spelling of the two names was quite sufficient to
avoid confusion; and, as a subsidiary precaution, he offered to
prefix his baptismal name of René. Per curiam: “Whereas
Pinaud & Amour are proprietors of a hat establishment
in Paris, in Rue Richelieu, 87, and known for twenty-five
years under the name of ‘Maison Pinaud’; and whereas
Pineau, a hatter previously of the Rue Fossés-Montmartre,
has recently established himself at No. 91 of the aforesaid
street, and, with the intention of profiting by the similarity of
names, he has placed over his store “Maison Pineau’; and
whereas he employs for the lining of his hats an escutcheon
which is a servile imitation of that adopted by Pinaud &
Amour, all which has been done to divert to himself the
custom of the old house of Pinaud; now, although he has an
incontestable right to establish himself under his true name,
and to place that name upon his place of business, yet he
must be interdicted from unlawful competition ; and measures
must be taken to prevent confusion in the mind of the public
between the two houses. Ordered, that the defendant sup-
press the word Maison, which in the usages of commerce indi-
cate an establishment of ancient date and reputation; also,
that he change the escutcheons chosen by him and placed on
the lining of his hats; and, finally, that the name of Pineau
shall be preceded by the prenomen René, and that these two
names shall be placed over both fronts of his store, and on his
invoices and letters of commerce, on the same line, and in the
same characters.” This judgment was to be inserted in two
newspapers selected by the plaintiffs, the defendant to pay
costs of advertisement and suit. The defendant accepted the
condemnation, but he executed it in a tardy manner, and in a
way indicative of bad faith. He placed his name, René Pi-
neau, on his principal sign; but on the glass of his entrance
door he left the sole name of Pineau. Besides that, his shop
having two fronts, the one on the Rue Richelieu and the
other on the Rue Saint-Marc, he had placed his surname on
§ 528.] RIGHTS ANALOGOUs To THOSE OF TRADE-MARKs. 539
one street, and his baptismal name on the other, so that pas-
sengers on the Rue Richelieu, who were more numerous than
those on the Rue Saint-Marc, would see but the name of Pineau.
He was again brought into court. For his reprehensible sub-
terfuge in attempting to continue his unfair competition to the
damage of the plaintiffs, he was condemned to pay them 2,000
francs, and the costs. – In the same court, in 1858, (case of
Bonnet et al. v. Henry Delisle,') it appeared that the sign
of “Maison Delisle” belonged for a long time to a house of
commerce, to which name the founders and their successors,
the plaintiffs, attached a very great importance. The defend-
ant, whose place of business was not in the same street with
that of the plaintiffs, used the same designation of “Maison
Delisle,” without anything to distinguish his establishment
from that of the plaintiffs. Ordered, that for the future the
defendant cease to designate his place of business under the
simple denomination of “Maison Delisle”; and that he pay
the costs. – And in the same court, in 1857, (case of Chevet v.
Lemasson,”) it was held that when members of the same fam-
ily, or merchants bearing the same name, have created rival
establishments, the proprietor of the most ancient has the
right to preserve the qualification of Maison, or Ancienne Mai-
son, and, in case of possible confusion, the junior should be
compelled to add his quality of successor on his signs and
prospectuses.—In the Court of Paris, in 1858, (case of Ter-
nauz v. Bournhonet,”) it was held that the successor, how-
ever far removed, of a house of commerce, has a right to put
on his bills and signs the name under which his house was
founded.
§ 528. Courts of equity will protect a party in the use of a
name of an inn, hotel, or other place of business, where the
sign or the name is simulated so as to deceive, or is calculated
to deceive customers. The adjudged cases proceed solely on
the ground of a valuable interest acquired in the good-will
of the trade or business. At the foundation of the principle is
the suggestion of falsehood. If a man creates a reputation for
his business, it is as the keeper of some particular house at a
1 4 Annales, 801. * Ibid. 330. * Ibid. 331.
540 LAw OF TRADE-MARKS. r- [$ 529.
known location, and it is piracy to draw off the custom of his
friends or customers who have identified him with the name
of his house. It is a personal right. By giving a particular
name to a building, as a sign of the hotel business, a tenant
does not thereby make the name a fixture to the building, and
the property of the landlord upon the expiration of the lease,
as was decided by the Supreme Court of California, in Wood-
ward v. Lazar." One may consent to the employment of his
name to designate a place of refreshment; but if such consent
be purely gratuitous, or unless there is some valid agreement
binding upon the party who gives his consent, he may with-
draw it at pleasure, and its further use will be enjoined, as in
McCardel v. Peck.” And a court of equity will protect by
injunction the name of an enterprise undertaken for the amuse-
ment of the public, as in Christy v. Murphy.” Even although
one's place be designated by two names indiscriminately, a
colorable imitation of the title will be enjoined.*—The name
“What Cheer,” as a sign for a restaurant, was held to be in-
fringed by that of another afterwards established near by,
reading, “New and Original What Cheer Restaurant”;" as
was the sign “Carriage Bazaar,” by the change of a rival's
sign from “Carriage Repository” to “New Carriage Ba-
zaar.”” But the sign “ IXL General Merchandise Auction
Store” was held not to be infringed by the sign “Great IXL
Auction Co.”;7 nor that of “Station Hotel” by one of “The
Royal Station Hotel”; * and no exclusive right can exist in
a name alleged to be infringed by a sign of “Civil Service
Boot Supply.” - -
§ 529. In France this protection is frequently granted. In
the Tribunal of Commerce of the Seine, in 1857, (case of Dor-
vault v. Hureaua,”) the plaintiffs had for about twenty-five
1 21 Cal. 448. So also in France: Boudet v. Berdin et al., 24 Annales, 67.
2 28 How. Pr. 120. 8 12 How. Pr. 77.
4 Howard v. Henriques, 3 Sandf. S. C. 725.
5 Gamble v. Stevenson, 10 Mo. App. 581.
6 Boulnois v. Peake, W. N. 1868, 95; 13 Ch. D. 513 n.
7 Lichstein v. Mellis, 8 Oreg. 464; 34 Am. 592. * -
8 Charleson v. Campbell, 4 Sess. Cas., 4th series, 149; 14 Scot. L. Rep. 104.
9 Civil Service Supply Association v. Dean, 13 Ch. D. 512.
10 4 Annales, 125.
§ 529.] RIGHTS ANALOGOUS TO THOSE OF TRADE-MARKS. 541
years used as a sign, and upon their labels, circulars, and pro-
spectuses, the words “Pharmacie Centrale de France.” The
defendants had as their sign the words “Pharmacie Rationelle,”
but added thereto the words “Centrale de France.” This fact
was recognized by the court as an attempt to create confusion
between the two establishments, and the defendants were pro-
hibited from the further use of the latter-mentioned words; as
was also done in a case between the same plaintiff and Teissier
& Co.," the year following. — In the same court, in 1858, came
up the case of Sehorthose v. Hogg,” two Englishmen, cousins-
german and pharmacists, and former fellow-students in the
office of one Robert. The plaintiff, as successor in business
of Mr. Robert, claimed the designation of “London Dispen-
sary,” under which his pharmacy was known, and also the
title of “Pharmacie de l’Ambassade d’Angleterre.” The de-
fendant pretended to have certain rights in Robert's pharmacy,
and accordingly used similar names and titles at his store in
another street from that in which the plaintiff’s was situated.
The defendant disclaimed all right to the said name and title;
but subsequently he took the designations of “London Dispen-
sary,” and of “English Embassy Chemist.” This was held
to be an infringement, and defendant was forbidden further to
use those titles to designate his place of business, and con-
demned to pay 500 francs damages, and the costs. – In the
same court, in 1859, (case of Lemercier v. Millin,”) it was shown
that Claude Bully had given his name to an aromatic toilet-
vinegar, of which he had transmitted the recipe to Jean Win-
cent Bully. The plaintiffs had purchased from the latter his
business and the sign of the inventor. The defendant made
and sold a toilet-vinegar under the name of “Bully,” with the
sign “Au Temple de Flore.” Judgment for plaintiffs. – In
the Court of Paris, in 1862, (case of Muller v. Compagnie Immo-
bilière,”) it appeared that the plaintiff had for more than fifteen
years carried on a hotel known as the “Hôtel de la Paix,”
situate at the angle of the Rue de la Paix and the Boulevard
des Capucines. The defendants built a hotel on the same
boulevard, and gave it the same name as the plaintiff's. The
1 4 Annales, 298. 2 Ibid. 255. 8 5 Id, 360. 4 8. Id. 265.
542 LAW OF TRADE-MARKS. [$ 529.
court below—the Tribunal of Commerce of the Seine — had
declined completely to suppress the name thus assumed by the
defendants, but accepted their offer to adjoin the word “Grand,”
and ordered that their sign be altered within the period of two
months, so that — in letters all of the same size— it should
read “Grand Hôtel de la Paix.” On appeal, it was held that
the words “Hôtel de la Paix” were indicative and character-
istic of the hotel owned by Muller, and that those words could
not be employed by others in the same business without vio-
lating his rights. A few weeks later, the same parties were
again before the court. Muller complained that, notwith-
standing the judgment in his favor, the defendants continued
to announce in the newspapers their hotel under the interdicted
name; and that the napkins and towels for table and toilet,
the bills of fare, etc., of the new hotel were thus marked; and
the letters “H. P.”—an abridgment of the sign — were en-
graved upon the glass-ware, the bottles, and the plate. The
defendants answered that the initials “H. P.,” and even the
words “Hôtel de la Paix" on the linen, all used in the inte-
rior of the establishment, could not prejudice the plaintiff, es-
pecially the use of the letters “H. P.,” which had no precise
sense. They also alleged that the interior arrangements had
all been ordered and executed long before the first suit, and
argued that the order of the court would not admit of such
stringent interpretation as to prevent even the temporary use
of the articles mentioned. Held, that the letters “H. P.” on
the porcelain, glass, vessels, silver, cutlery, and divers utensils
placed at the disposition of guests for a purely internal pur-
pose, did not in contemplation of law prejudice the plaintiff.
But, although the defendants acted without a fraudulent in-
tent, the use of the words “Hôtel de la Paix” was a damage
to the plaintiff. They were accordingly forbidden to let those
words appear on objects either on the exterior or in the interior
of their new hotel. But in consideration of all the circum-
stances, and the hardship that would result from instant sup-
pression, the court granted a delay of six months for the
removal of the words “de la Paix * from the linen and fur-
nishing-articles, and allowed the plaintiff his costs.
$ 530.] RIGHTS ANALOGOUS TO THOSE OF TRADE-MARKS. 543
$530. There are other French cases that convey instruc-
tion on this point of conflicting signs. In the Tribunal of
Commerce of the Seine, in 1880, came up a case of two fire-
insurance companies, – La Fraternelle Parisienne v. La Pa-
risienne.” “La Parisienne,” founded in 1837, was united in
1858 with “La Fraternelle,” and the two united companies
took the title of “ Fraternelle Parisienne.” In 1880, “Le
Globe,” a company insuring against hail-storms, changed its
name and took the denomination of “La Parisienne.” The use
of the same was enjoined, although the risks were different in
character. The French sometimes carry their sentiments of
good-will protection pretty far, as in a case in the same court,
in 1881, La Nationale v. La Société Nationale.” The plaintiff
was a life and fire insurance company, and the defendant a
military insurance company against accidents. They both
carried on business in the city of Paris, but their respective
establishments were not near each other, and the natures of
their transactions were not similar. The demand was that
the sign bearing the defendant's name should be taken down,
as likely to cause confusion. It was so adjudged.” — Varia-
tions in names do not always shield the borrower, if the courts
can reasonably infer a liability to mislead. In the same court,
in 1882, — Banque du Commerce et de l’Industrie v. Banque
Centrale du Commerce et de l’Industrie,” — it was held that
the simple addition of a word was not sufficient to avoid confu-
sion. —In the same court, in the same year, – Banque Popu-
laire v. Banque Populaire d'Escompte,”— the same rule was
applied. — In the same court, in 1884,” the plaintiff's sign be-
ing “Entrepôt d'Ivry,” the defendant in the same business
took for the same purpose “Chantier du Grande Ivry.” The
court said that a merchant is not permitted so to designate
his establishment, even with a qualification of his residence.
To avoid confusion in the mind of the public, the defendant
1 29 Annales, 232. 2 24 Id, 190.
* The late M. Pataille, who was certainly eminent authority in such mat-
ters, as an editor dissented from the view taken by the court. 24 Annales,
191. .
* 29 Annales, 231. f 5 Ibid. 234.
* Names of parties not given in the report. 1 Bulletin Officiel, 222.
544 - LAW OF TRADE-MARKS. [$ 531.
*
was ordered to change the sign, the court saying that he could
not lawfully make use in his business of invoices of the same
color and dimension, nor even of postal cards bearing the same
disposition of matter as those of his rival. Indeed, the Impe-
rial Court of Paris, in 1853, − Lebat v. Partongue," — held
that the color of a sign and its general aspect are considered
as sufficiently distinctive to be respected.
§ 531. False Representations on Signs, etc. of Shops. –
These matters, if calculated to induce the public to believe
that the owner is connected in business with a firm of estab-
... lished reputation, will be considered upon the same princi-
ples as govern rights in trade-marks. In Glenny v. Smith *
it appeared that the defendant had been employed by the
plaintiffs for three years in their shop, up to April, 1865, and
that in May of that year he set up in a like business for him-
self. The defendant's name, Frank P. Smith, was posted
immediately over his shop window, in black letters upon a
white ground, while upon the sun-blind and brass plate un-
der the window were the words “From Thresher & Glenny,”
the word “from " being printed diagonally to the rest, and in
smaller letters. On the part of the plaintiffs, the sun-blind
and brass plate were produced in court, and photographs of
the shop front, from which it appeared that, when the sun-
blind was drawn down, the defendant's name was not visible,
except to persons passing immediately under the window.
They also proved four cases in which persons had actually
been misled ; and to show that the defendant had some mis-
givings as to the propriety of his conduct, a conversation be-
tween him and one of the plaintiff's assistants was given in
evidence. The evidence of the defendant consisted of opin-
ions of persons who had inspected his shop, to the effect that
the public were not likely to be misled, and of his directions
that nothing should be said to purchasers to induce them to
think that Messrs. Thresher & Glenny were connected with
his business. An injunction was granted. The same rule was
1 Blanc, 709.
2 11 Jur. (N. s.) 964; 2 Drew. & Sm. 476; 13 L. T. (N. s.) 11; 13 W. R. 1082;
6 N. R. 363.
§ 532.] RIGHTS ANALOGOUs To THOSE OF TRADE-MARKS. 545
applied in England in later cases." In Boswell v. Mathie,” in
Scotland, in 1884, it appeared that the defender, who had set
up in the same business as her former employer, had placed her
own name on the blinds of her shop, adding the words “from
Boswell.” She pulled up the blinds so as to exhibit no part
of the inscription except the name “Boswell.” On labels,
bill-heads, etc., she styled herself “late manager to Boswell.”
She was interdicted on the ground that her actions were mis-
leading as to the blinds, and untrue as to the labels, etc.
§ 532. In the Tribunal of Commerce of the Seine, in 1857,”
the defendants, who had been employed by M. & P. at No. 3
Boulevard des Capucines, established themselves at No. 11 on
the same street. On a sign, they announced themselves as
“ex-artists of the house of M. & P., when they had the honor
to paint the photographic portraits of their Majesties, the Em-
peror and the Empress,” etc. After suit brought, they aban-
doned the words “ex-artists of the house of M. & P.,” but
retained the remainder. They contended that, as they had
performed the work, they had a right to say so, as their artistic
talent was their own, and they could assert authorship of the
portraits, which they had painted in the work-shop of their old
employers. Held, that they had no right to use the name of
their old employers; and that no artist or employee of a busi-
ness house could claim a right to preserve his individuality in
work so done. The Court of Paris, in 1863,4 decided that an
apprentice or workman has no right to announce himself as a
pupil of his former employer, on establishing a business for
himself, except with the consent of his employer. In the same
year, the Tribunal of Commerce of the Seine" held, that a
purchaser of a business may maintain an action to restrain
the former pupils and employees from naming themselves as
such on signs or manufactures, even though after the sale the
1 Scott v. Scott, 16 L. T. (N. s.) 143; Cave v. Myers, Seton, 4th ed. 238; Hook-
ham v. Pottage, L. R. 8 Ch.93 m.; 26 L. T. (N. s.) 755; 20 W. R. 720; L. R. 8 Ch.
91; 27 L. T. (N. s.) 595; 21 W. R. 47.
2 11 Sess. Cas., 4th series, 1072.
8 Mayer et al. v. Herlick et al., 3 Annales, 63.
4 Rommetin v. Crotte, 9 Annales, 173.
5 Dubois v. Demoiselles Louise and Lucille, 10 Id. 187.
35
546 LAW OF TRADE-MARKS. [$ 533.
former manufacturer authorized them so to do. The same
court, in 1864, reasserted that principle.”
§ 533. Unfair competition in business is sometimes evi-
denced by usurping a name by which the commerce of a rival
is known. If the “Lackawanna’’ case” could have been
maintained, it would have been on the ground of unfair com-
petition, for the name was not actually affixed to the coal. In
a case in Scotland, in 1879,” the following state of facts ap-
peared. Coal from the Lochgelly collieries had for many
years been known as “Lochgelly Coal,” and was the only coal
so known in the market; although there was a seam known
as the “Lochgelly Splint Seam,” which was not confined to
the Lochgelly collieries, but extended under other regions.
An interdict was granted against the use of the name “Loch-
gelly ” to designate coal wrought by the respondents, except
from their part of the Lochgelly Splint Seam, and then only
under the designation of “Lumphinnans Splint Coal, Loch-
gelly Seam.” In principle, this is like the “Akron’ case.*—
In another Scotch case, in 1888,” the pursuer, Dannachie, had
registered the name of his locality, “Glenboig,” as his trade-
mark for bricks. The respondents, who were located more
than two miles from Glenboig, stamped their bricks “Young's
Glenboig.” They were interdicted. — In the same country,
in 1884,” there was another case of the same class as the
“Lackawanna.” The pursuer and his predecessors, for more
than ninety years, at Dalmore, manufactured stones and hones
for sharpening edge-tools, and for polishing, under the so-
called fancy name of “Water of Ayr Stone.” This stone,
under that designation, became famous all over the world.
It had been registered as a trade-mark. The defenders sold,
in the same markets, a similar product, by the same name.
They pleaded that their place, like the pursuer's estate of
1 Fould v. Honegger, 10 Annales, 823.
2 Delaware & Hudson Canal Co. v. Clark, 13 Wall. 811. -
* Lochgelly Iron & Coal Co. v. Lumphinnans Iron Co., 6 Sess. Cas., 4th
series, 482.
4 Ante, § 182.
* Dannachie v. Young & Sons, 10 Sess. Cas., 4th series, 874.
* Montgomerie v. Donald & Co., 11 Id. 506.
§ 533.] RIGHTS ANALOGOUS To THOSE OF TRADE-MARKs. 547
Dalmore, is bounded by the river Ayr, and only separated
from Dalmore by the glebe land of the parish church. The
so-called fancy name was held to be merely generic. — In a
case in Ireland, in 1879, it was shown, that at Belfast there
are numerous springs of pure water, commonly known as
“Cromac Springs,” much used in the manufacture of aerated,
waters. The plaintiffs, who had one of these springs on their
premises, had adopted and registered the name “Cromac * as
a trade-mark. Whether any right to a trade-mark therein
existed or not, the defendant was enjoined against the use in
his business of these words: “Please observe the address,
The Erin Mineral Water Company, Cromac Springs, Belfast.”
The name “Cromac Springs” in the print was in larger type
than the rest of the sentence, and therefore likely to deceive.
— But it is not always that courts can remedy complaints on
this score. In the United States Circuit Court for the North-
ern District of Illinois, in 1885,” the court was asked to pre-
vent a corporation from unjustly being formed under the name
of the complainants, a foreign corporation. Gresham, J., said:
“The object of the defendants in causing an Illinois corpora-
tion to be created, bearing the same name as the complainant
company, is obvious. They hope by this means to secure
the benefit of part, at least, of the patronage which the com-
plainant has acquired. Unwilling to engage in open, manly
competition with the complainant and others carrying on the
same business, the defendants resort to a trick or scheme,
whereby they hope to deceive the public, and obtain an un-
fair advantage of the complainant. Such conduct might be
fairly characterized more harshly ; and it is with extreme
reluctance that I deny the complainant the relief prayed for.”
Whether relief could be granted after the creation of the cor-
poration, in fraud of the rights of the complainant, was not
determined. Another case of the same kind met the same
fate.”— The following sharply defined ruling, in 1879, was
perhaps owing to the technical prayer of the bill. A manu-
1 Wheeler et al. v. Johnston, 3 L. R. (Ireland) Ch. D. 284.
* Lehigh Valley Coal Co. v. Hamblen, 23 Fed. R. 225.
* Pennsylvania Coal Co. v. Douglas et al., Ibid. 226.
548 Law of TRADE-MARKs. [$ 534.
facturer of stoves and ranges not patented placed upon each
of these stoves and ranges a name and a number, and also
placed upon such of the separate parts, respectively, as were
liable to be worn out rapidly, the initial letter and the num-
ber of the stove or range to which it belonged. Every one of
these parts was well known, had acquired a high reputation,
and was sold under the name of the letters and numbers
placed on it. The defendant procured some of these parts,
made patterns from them, and cast from the patterns parts
of the stoves and ranges, inferior in quality to those of the
plaintiff, but having their peculiarities of ornamentation, let-
tering, and numbering; and advertised these parts for sale as
manufactured by himself, describing the parts by the name
used by the plaintiff to designate them. At first, the case
looks like one in which relief should be granted on the ground
of unfair competition. But the Supreme Court of Massachu-
setts, in 1879, held otherwise ; and in refusing an injunction,
reasoned thus: “It appears that the numbers were used by
the plaintiff and the defendant as they were used by manu-
facturers generally, to indicate a size or measurement: they
form no part of the trade-mark. The letters, in some instances
a single letter, in other instances two letters, are in no case
the trade-mark which the plaintiff described in the bill, and
cannot be regarded as likely, when considered by them-
selves, to mislead a purchaser into supposing that they were
the trade-marks described in the bill.”" This was therefore
decided on fact.
§ 534. In the Tribunal of Commerce of the Seine, in 1867,
(Mondin & Co. v. Sari et al.”) it appeared that the plaintiffs
had adopted, as a sign to indicate the nature of their business,
the words “ Agence des Théâtres.” It was held that another,
in the same line of business, who had adopted as his sign the
words “Office des Théâtres,” did not infringe upon any right,
the words being generic and common. It was no answer, that
the words might lead to confusion. — As an example of the
judicial suppression of a fancy name upon a shop sign, we
1 Magee Furnace Co. v. Le Baron, 127 Mass. 115.
* 14 Annales, 352.
§ 535.] RIGHTS ANALOGOUs To THOSE OF TRADE-MARKS. 549
have Chaize v. Fromentelle," in the Tribunal of Commerce of
the Seine, in 1865. The parties were tobacconists, carrying
on business in the same neighborhood. The plaintiff's sign
read, “La Civette” (civet-cat). He had previously been
compelled in defence of his rights to attack a certain Dame
Pousse, who had erected a sign reading, “A la Civette de la
Rue de Rivoli,” and had discomfited her by a judgment of sup-
pression, with 200 francs damages and costs. This time it
was the Dame Fromentelle who thought to avail herself of the
reputation of the plaintiff's wares by putting up a sign, read-
ing, “A la Nouvelle Civette.” As it was plain that her motive
was to profit by the justly gained popularity of the estab-
lishment of Chaize, a judgment was rendered similar to that
in the other case. — In Regnard v. Perrier,” in the Court of
Paris, in 1879, the same sign seems to have been infringed.
The defendant, a retailer of tobacco and liquors in the Ave-
nue de l’Opera, (Bureau No. 226,) took for a sign “A la
Civette.” The plaintiff, proprietor of the tobacco bureau
situated in front of the Théâtre Français and of the Palais
Royal, summoned him before the Tribunal of Commerce of
the Seine, for the purpose of having the obnoxious sign sup-
pressed, and to obtain damages for the trespass on his rights.
The plaintiff prevailed, and the sign was ordered to be re-
moved within a week's time, with damages and costs. On
appeal, the decision was affirmed.
$ 585. It is unfair competition to indicate an industrial
product under a name very similar to that of another's pro-
duct, in such manner as to create confusion. In a case” in
the Tribunal Civil of Lyons, in 1865, it appeared that the
plaintiff was the patentee of an invention to which he had
given the name of “Conformateur du Tailleur.” From the
name, we may infer that the invention was embodied in an
instrument for the shaping of garments to the person. Under
this denomination, the machine was indicated in the sign, and
in the prospectuses of the plaintiff. The defendant, also a
patentee, with the evident intention of causing confusion be-
1 11 Annales, 350. • 26 Id. 110.
* Berthelon v. Vergé, 11 Id. 349.
550 LAW OF TRADE-MARKS. [$ 585.
tween his machine and that of the plaintiff, placed upon his
sign the words “Conformateur pour Hommes et Dames,” in
characters corresponding with those upon his rival's sign.
Per Tribunal: This act on the part of Vergé does not consti-
tute a counterfeiting or a usurpation of the trade-mark of the
plaintiff, but it is an unlawful competition, and therefore the
word “Conformateur’ upon the business sign of the defend-
ant must be suppressed, as also upon his circulars and pro-
spectuses.— In the Tribunal Civil of the Seine, in 1875, it
appeared that the defendants were proprietors of a ready-
made-clothing house in Paris, called “Maison du Pont-Neuf.”
They placed on sale a certain over-garment called the “Mon-
tagnac,” for nineteen francs. Among numerous catch-words
inserted by them in the Figaro, of Paris, they announced that
the bureaux of the Mont-de-Piété were filled by an avalanche
of “Pardessus Montagnac,” intimating that the garments were
pawned for twenty-five francs each, and that measures had
been taken to stop the continuation of the traffic. M.M. de
Montagnac, manufacturers of cloth at Sedan, thought that the
use of their surname, honorably known in the fabrication of
cloth, prejudiced them, in causing the belief that the common
cloth worked up by the defendants issued from their manufac-
tory; and demanded that the name of Montagnac be removed
from the hand-bills, and from catch-words employed by the
defendants. It was so adjudged, with damages, etc. — In the
same court, in 1877, this case came up.” The plaintiff was pro-
prietor of a house of the name “La Maison de l’Aluminium.”
He engraved the name on the inside cases of watches for sale,
and also on all other articles of his manufacture, by way of a
trade-mark. The defendant, a watch-maker, sold watches of
aluminium quite like those of the plaintiff, and bearing on
the inside case the same name. It was held that the words
“La Maison de l’Aluminium,” being the name of a house of
commerce, did not constitute a trade-mark, but merely a sign,
even though they were affixed to the goods; but that it was a
clear case of unfair competition. — In the Court of Douai, on
1 Montagnac v. Halphen & Co., 20 Annales, 95.
* Testevuide v. Girault, 23 Id. 45.
§ 535.] RIGHTS ANALOGOUs To THOSE OF TRADE-MARKS. 551
appeal, in 1876, there was a cause” of the same nature as the
“Akron’ case.” For more than twenty years, the plaintiff
was a manufacturer of cement at Boulogne-sur-Mer, and his
product was all the time known as “Ciments Portland de
Boulogne-sur-Mer.” In 1875, the defendant set up works at
Desvres, eighteen kilometres from the plaintiff's place of man-
ufacture. In his labels, prospectuses, and letter-heads, he used
the denomination “Ciments de Boulogne-sur-Mer,” the geo-
graphical name being printed in bold lettering, while the
words “Usines de Desvres" were in minute letters. The
qualification as to the place of the works, did not save him
from a judgment of unfair competition, in both courts. – So
also in the Tribunal of Commerce of Nantes, in 1880,3 in a
case in which the defendant sought to deceive the public into
believing that sardines, put up by them at another place, were
those put up at Nantes, where the plaintiff had his business.
The boxes were similar to those of the plaintiff. The words
“Fabriquées comme à Nantes” were intentionally printed in
such small letters as to be almost imperceptible. — In the
Tribunal of Commerce of the Seine, in 1881,4 it appeared that
the plaintiff at Menat manufactured a tripoli, from a product
taken from ores (minières) of the locality, which he sold
under the name of “Minière de Menat.” The defendant sold
his product under the name of “Tripoli Roses des Minières de
Menat,” although he did not manufacture the same from ma-.
terial taken from Menat. He was forbidden to use the name,
or one like it, under a penalty of 1,000 francs for each in-
fringement; and the plaintiff was awarded 1,000 francs dam-
ages and costs. – But to entitle one to claim protection in the
use of the name of a place, he must there have his principal
place of business. In the Court of Cassation of France, in 1884,
on final appeal,” it appeared that the plaintiffs below had their
principal place of business at Jarnac, fourteen kilometres from
Cognac, and at the latter had merely a cheap, rented place;
* Lonquéty v. Fanchon & Co., 21 Annales, 317.
* Ante, $182.
* Pellier et al. v. Trottier frères et al., 27 Annales, 357.
* Voivet v. Scoppine, 28 Id. 47.
* Louis Foucaud & Co. v. Lucien Foucauld & Co., 80 Id. 13.
552 law or rºadenaars. - [$ 538.
while the defendant was truly located there. Although the
plaintiffs had incorporated the name “Cognac * into their
signs, labels, etc. as long before as 1862, the continuous use
did not serve them. - º
§ 536. The reflecting reader must perceive that many mat-
ters, cited and commented on in foregoing chapters, might
properly have been embraced in this chapter; and they would
have been so, but for the reason that courts discussed them as
trade-marks. It is undeniable that the line of demarcation
between technical symbols of merchandise and quasi marks,
or mere business indications, is not always clearly distinguish-
able." But, as is said by an English writer, “All such cases,
whether of trade-mark or trade-name, or other unfair use of
another's reputation, are concerned with an injurious attack
upon the good-will of a rival business; customers are directed
from one trader to another, and orders intended for one find
their way to the other.”” - -
§ 537. Labels and Wrappers. — We will now consider an-
other class of cases, which seem to form a connecting link be-
tween those where the good-will of a trade has been protected,
and those which may be characterized as relating to trade-marks
proper. This is where the advantage in the market (or good-
will) is due either to the name of the trader or trading-firm,
or to his or their place of business, or to both these causes com-
bined, but not being as a good-will allowed to rest merely in
nubibus, is embodied in a label or wrapper, and affixed to the
article sold. This name becomes then a quasi trade-mark,”
and the good-will of a business embodied in labels and wrap-
pers will be protected on principles applicable to trade-mark
infringements.” Even advertisements containing verses used
by another in his trade have been suppressed.” -
§ 538. Croft v. Day" is a very important case under this
head. The quasi trade-mark there consisted in the name of
1 See ante, § 52 and notes; also Linde v. Bensel, 22 Hun, 60.
* Sebastian's Law of Trade Marks, p. 12.
* Lloyd on Trade Marks, p. 36.
* Peitz v. Eichele, 62 Mo. 171.
5 Sedon v. Senate, cited 2 W. & B. 220.
6 7 Beav. 84.
§ 538.] RIGHTS ANALOGOUS TO THOSE OF TRADE-MARKs. 553
Day & Martin, and their address, 97 High Holborn, with other
devices on a printed label attached to the bottles of blacking
made by the plaintiffs, the executors of the former firm of
Day & Martin, and then carrying on the same business. This
was so closely imitated by the defendant, as to afford the fair
presumption that he intended the public to be deceived into
buying his blacking as and for that of the original firm. The
Master of the Rolls, in his decree, observed that the act com-
plained of was equivalent to a sale by the defendant of his
goods as those of the plaintiffs, and that two things were requi-
site for the accomplishment of this fraud. First, a general
resemblance of the forms, words, symbols, and accompani-
ments, such as to mislead the public; secondly, a sufficient
distinctive individuality was to be preserved, so as to procure
for the person himself the benefit of that deception which the
general resemblance was calculated to produce. — In Coffeen v.
Brunton,” the defendant, in combination with others, fraudu-
lently issued and sold a preparation called “Ohio Liniment,”
having upon the bottles containing it labels with directions
exactly similar to that used by the complainant for his “Chi-
nese Liniment”; and he made representations to induce the
public to believe that the composition sold by him contained
the same ingredients as the “Chinese Liniment.” McLean,
J., said that the alteration, being only colorable, showed that
the defendant intended to avail himself of the favorable rep-
utation acquired by the “Chinese Liniment.” An injunction
was granted to enjoin him from using labels, or directions, or
advertisements, or hand-bills, tending to produce a false im-
pression in the public mind that the liniment sold by him con-
tained the same ingredients as the “Chinese Liniment.” (It
should be noted that this case is frequently referred to as one
of trade-marks, but improperly so. The word “Chinese ’’ was
the only symbol capable of exclusive appropriation, and that
was not pirated.)— The Merrimack Manuf. Co. v. Garner” case
belongs to the label class. In that, the plaintiff's label was,
“Merrimack Prints, Fast Colors, *Lowell, Mass.”; and that
of the defendant, “English Free Trade, Merrimack Style,
1 4 McLean, 516. 2 2 Abb. Pr. 318; 4 E. D. Smith, 387.
554 LAW OF TRADE-MARKS. [$ 538.
warranted Fast Colors.” The court, in banc, dissolved an in-
junction which had been granted at special term, and left the
parties to try the issue of an actual imitation involving the
question of fraudulent intent and actual injury. — So also does
the case of Dale v. Smithson 1 belong to the label class. The
plaintiff affixed to each package of thread sold by him a label,
reading as follows: “Courtria Flax. Thomas Nelson & Co.
Warranted. Fast Colors & 16 Oz.” What word or symbol
is here to constitute an exclusive emblem? “Courtria” might
possibly, if it were a fancy denomination, and not descriptive.
The defendants adopted and used in a similar manner upon
their thread a label so closely imitating that of the plaintiff as
to leave not the slightest doubt of the intention of fraud. The
judgment at special term granting an injunction was, there-
fore, affirmed at general term. — Newman v. Alvord” is no
better than a label case. Both parties used the word “Akron,”
the name of the place where the plaintiff had a manufactory
and the defendants had not. The name “Akron,” being a
mere geographical designation, could not be exclusively appro-
priated, for the reason that all inhabitants of the place had a
perfect right to affix it to their goods. But as there was no
room for doubt, in the mind of the court, that the said name
was used by the defendants to enable them to avail themselves
of the patronage justly belonging to others, an injunction
granted at special term was sustained. — Falkinburg v. Lucy *
is a label case, although frequently miscalled a trade-mark case.
Sawyer, C. J., said: “Can there be any doubt that the verba-
tim copy of the entire label of plaintiff, except the heading,
the name of the maker, and place of manufacture, and adopt-
ing it as the label of the defendants, was done for the purpose
of inducing the public to believe that the defendants’ was
precisely the same thing as, and possessed the identical prop-
erties of, the compound manufactured and sold by the plaintiff,
and for the purpose of availing themselves of the reputation
established by the plaintiff?” It was sought to protect an
elaborate label under a statute of the State of California.”
1 12 Abb. Pr. 237. 2 49 Barb. 588.
8 35 Cal. 52. * See ante, § 452, note 2.
§ 538.] RIGHTS ANALOGOUS TO THOSE OF TRADE-MARKS. 555
Comprehensive as is the language of that statute, and palpable
as was the imitation of the plaintiff’s label, the Supreme Court
of California held that the label contained no peculiar names,
marks, etc., in the sense of the statute, which the defendants
had copied; nor was the plaintiff entitled to any protection of
the words in common use in our language which composed the .
profusely worded label. The injunction granted below was
accordingly dissolved. Probably the fault lay in the narrow-
ness of the prayer. — The case of Boardman v. The Meriden
Britannia Co.," in the Supreme Court of Connecticut, in 1868,
is a fair illustration of the protection which courts award to
a mere label, which has been fraudulently imitated for the
purpose of diverting custom from its legitimate channel. The
labels used by the respondents were of the same size and color
as the labels of the petitioners, and the same numerals were
used for the same class of goods. The petitioners’ label read
thus: “1-2 Gross L. Boardman's No. 2340 Wire Strengthened,
French Tipped Teaspoons"; and that of the respondents read:
” 1-2 Gross Meriden Brita. Co.'s No. 2340 Wire Strength'd,
French Tipped, Oval Thread Teaspoons.” Both parties seem
to have regarded the use of the numerals “2340 ° as giving
rise to the most important and most material question in
the cause; but Carpenter, J., in delivering the opinion of the
court, said that that was a question not necessarily involved
in the case. It is apparent, at a glance, that neither of the
labels contained a single essential element of a technical trade-
mark, although the court loosely used that convenient term.
From the finding of facts, we can judge for ourselves of the
class to which the case belongs. It was found that the re-
spondents manufactured “spoons similar in character to those
made by the petitioners, though differing somewhat in style
and pattern, and prepared labels resembling those of the peti-
tioners, and adopted the same numbers as had been adopted
by the petitioners, adapting said numbers to similar kinds of
spoons.” We can classify the case as one of unfair competi-
tion in trade by means of a simulated label. A remedy was
due. The court said: “Have the petitioners suffered dam-
1 35 Conn. 402.
556 LAW OF TRADE-MARKS. [$ 539.
age? On this point, there is no room for doubt. . . . Their
motive is apparent. They may succeed in reaping some
advantage from the numbers [2340] as thus used, but it is
manifest that it will be at the expense of the petitioners.” All
the judges concurred in giving judgment for the petitioners.
§ 539. As to the right of property in the name of another,
we have a case in the Court of Besançon, in 1861, - Lorimier
& Bovet v. Dubois. The house of Bovet, of Fleurier, a village
of the Canton of Neufchâtel, in Switzerland, manufacturers
of watches for exportation, especially to England and China,
authorized M. Lorimier, a watchmaker at Besançon, in France,
to use the name of “Bovet” as a trade-mark. Lorimier duly
deposited the said name as his trade-mark. By authority of
his right to use the same, he seized certain watches, then at
the custom-house, in transitwfor China. The Tribunal of
Pontarlier rejected the demand for condemnation. Lorimier
appealed. The appellate court said: “For more than thirty
years Lorimier has manufactured watches for the Bovet firm;
from the beginning of his relation with that firm, he has been
authorized to engrave upon the watches made by him the
name of “Bovet”; and for more than thirty years he has
constantly sold in China watches bearing the mark of “Bo-
vet,” the same being in Chinese characters. Said mark,
considering the relation of the two houses, is as much the
property of Lorimier as it is of the Bovet house. The de-
fendant has usurped, by his products of an inferior quality,
the confidence and the credit attaching to the merchandise
of the plaintiffs. If tolerated, there would be no security
for commerce. Two owners may use the same mark when
their interests are united. The right to the use of the mark
of “Bovet” in the Chinese is in both plaintiffs.” Injunction.
Damages, 1,000 francs and costs. – Although this is a matter
somewhat in the nature of a trade-mark proper, it should be
classed with mere labels, and treated as such. Being the
simple name of a manufacturer, it of course could not be
treated in any part of the commercial world as the peculiar.
arbitrary symbol that commerce requires. It serves our
1 8 Annales, 297.
§ 540.] RIGHTS ANALOGOUS TO THOSE OF TRADE-MARKS. 557
purpose as an illustration of the fact that a man may have a
qualified right to the use of another's name as a mere sign
or trade-name." -
§ 540. Colton v. Thomas * is to the same effect as the fore-
going. The complaint charged an improper and fraudulent
use of a name or designation of business, placed by the defend-
ant upon cards and in advertisements, and also upon a sign
hung out upon the street in front of his dental rooms. The
bill alleged that the plaintiff had purchased from Dr. Gardiner
Q. Colton the right to use the name of the “Colton Dental
Association,” in connection with the use of nitrous-oxide gas to
alleviate pain in extracting teeth ; and that he used the same
in all his advertisements, and prominently displayed it on his
signs, doors, and windows; that the defendant, who had been
in his employment, left him, and opened dental rooms in the
same street, and issued cards in form following: “Dr. F. R.
Thomas, formerly operator at the Colton Dental Rooms.
Teeth extracted without pain by nitrous-oxide gas”; — and
that he had a sign over his door of the same purport. It was
alleged that the words “formerly operator at the,” on the
cards and sign, were in small letters, illegible except to one
near, by, while the words “Colton Dental Rooms” were in
large, bold type and letters, so as to be seen at a great distance.
The plaintiff's right to use the name was not denied ; nor
did the defendant set up any corresponding right in himself.
From the opinion of Allison, P. J., we learn that the signs
which hung over the doors of the plaintiff's rooms, No. 737
Walnut Street, and over the defendant's, at No. 1027 of the
same street, were in size, shape, and general appearance very
like to each other. The material portions of the lettering
required a careful inspection for one to notice any difference
between them. They hung in the same manner, on the same
side of the street, and might readily be mistaken the one for
the other, especially by sufferers, impatient for relief. The
1 Oakes v. Tonsmierre, 4 Woods, 547; Skinner v. Oakes, 10 Mo. App. 45;
Filkins v. Blackman, 13 Blatch. 440; Fulton v. Sellers, 4 Brewst. 42; Booth v.
Jarrett, 52 How. Pr. 169.
* 2 Brewst. 308.
558 LAW OF TRADE-MARKS. [$ 542.
same might, to some extent, be said of the cards. An injunc-
tion was granted.
§ 541. The Dixon Crucible Co. v. Guggenheim 1 is purely a
label case, and it need hardly be referred to in this place fur-
ther than to invite attention to the fact that the protection
claimed was embraced in a statute of the State of Penn-
sylvania, for the protection of private stamps, wrappers, or
labels.” The defendant was enjoined against the use of the
name “Dixon,” to which he had no right or title. It was
not pretended that this was a case of a common-law trade-
mark. — In Blofield v. Payne,” a law case, the declaration
stated that the defendants wrongfully, and without the con-
sent of the plaintiff, caused a quantity of metallic hones to
be made and wrapped in envelopes resembling those of the
plaintiff, and containing the same words, thereby denoting
that they were of his manufacture. On trial before Denman,
C. J., it appeared that the defendants had obtained some of
the plaintiff's wrappers, and used them as alleged. It was
held by the court in banc, that, as the defendants had used
the plaintiff's envelope, and pretended it was their own, the
plaintiff was entitled to recover damages. – In Holloway v.
Holloway,” the defendant sold pills and ointment with labels
and wrappers copied from those of the plaintiff. The Master
of the Rolls pronounced the act to be as clear and as plainly
avowed a fraud as he ever knew, and granted protection ac-
cordingly. — In Edelsten v. Vick,” the defendant used labels
in palpable imitation of the plaintiff's, and was restrained.
§ 542. The original producer, and persons claiming under
him, are exclusively entitled to designate the same as “the
original.” This principle has been recognized in a number
of cases. Thus a defendant was restrained from selling his
sauce under the name of “The Original Lazenby's Harvey's
Sauce.”*— A sauce was invented many years ago by James
Cocks, of Reading, and named by him “Reading Sauce,”
1 3 Am. L. T. R. (St.) 288; 2 Brewst. 321.
2 Act of March 31, 1860, sect. 173: 8 4 Barn. & Adol. 410.
4 13 Beav. 209. 5 18 Jur. 7. -
* Lazenby v. White, L. R. 6 Ch. 89; 19 W. R. 291.
§ 543.] RIGHTS ANALOGOUs To THOSE OF TRADE-MARKS. 559
under which name it acquired considerable reputation. The
success of the manufacture induced others to make and sell
what they called “Reading Sauce ’’; and in order to distin-
guish the article manufactured by James Cocks and his suc-
cessor in business, he and they had for many years been in
the habit of wrapping the bottles of sauce with labels which
always bore the words “The Original Reading Sauce.” The
plaintiff's label was imitated in part; but he admitted that the
only thing to which objection could be taken was the use of
the words, “The Original.”
§ 543. The defendant alleged that the sauce manufactured
by him was from an original recipe, to which the plaintiff had
no title, and submitted that his sauce deserved the title of
original as much as that of the plaintiff; and he further
alleged that the plaintiff's was known to the trade as Cocks's
“Reading Sauce,” and not as the “Original Reading Sauce.”
Evidence in support of the last-mentioned allegation was given
in his behalf; while, on behalf of the plaintiff, two of the
partners in the firm of Crosse & Blackwell, pickle-manufac-
turers in London, deposed that the use of the word “Original”
as part of the title or description of a sauce such as Reading
Sauce, would lead those in the trade, and the public, to con-
clude that the sauce so described was the manufacture of
James Cocks or his successor. There was no evidence that
any one had been misled by the words on defendant's wrap-
pers. Lord Romilly, M. R., said, among other matter: “The
question, then, is this. There being abundant evidence to
show that there are a great number of persons who make
Reading Sauce, whether the person who is the owner of the
original recipe which gave the name and from which the
article called ‘Reading Sauce' acquired its character, is not
entitled to say, ‘I hold under the original inventor, and the
word original means that and nothing else.’” He said that
the use of the word by the defendant was calculated to de-
ceive. The defendant was accordingly enjoined."
1 Cocks v. Chandler, L. R. 11 Eq. 446; 40 L. J. Ch. 575; 24 L. T. (N. s.)
379; 19 W. R. 593. See also, to the same effect, Fullwood v. Fullwood, 9 Ch.
D. 176; 47 L. J. Ch. 459; 38 L. T. (N. s.) 380; 26 W. R. 435.
560 Law of TRADE-MARKs. [$ 545.
§ 544. Labels and cautions composed of words in common
use in our language cannot be exclusively appropriated as
trade-marks. But those labels and cautions, although not
protected by any virtue of their own, become powerful aux-
iliaries, bringing punishment upon the wrong-doer. Take
the case of Gillott v. Esterbrook." The selection of boxes,
sizes, colors, labels, cautions, and style of lettering, however
innocent it may have been under ordinary circumstances, be-
came the most conclusive evidence of the intent to mislead
the public, and to commit a fraud upon the plaintiff in relation
to his trade-mark; yet merely because all those things can be
brought forward as witnesses to complete a chain of testimony
of guilt, the mere label does not rise to the dignity of a trade-
mark proper. -
§ 545. Trade Secrets. – These are personal assets, as was
held by Lord Hardwicke, C.” The improper use of a secret
will be restrained. While an inventor has no exclusive right
to his secret, as against the public, especially those who in
good faith have acquired a knowledge of the secret, neverthe-
less he has a good property in it, which a court of equity will
protect against one who, in violation of contract and in breach
of confidence, tries to apply it to his own use, or to disclose it
to others. This is a well-established point.” A trader may
sell a secret of business, as, for example, a mode of dyeing,
and restrain himself generally from using that secret; * and
after the dissolution of a firm, a partner, who had become ac-
quainted with a secret recipe, through a breach of confidence
on the part of a third person, was restrained at the suit of the
legatees of the secret;" and he may be restrained if, after law-
fully obtaining the secret, and selling the good-will to his co-
partners, he sets up in business for himself, and attempts to
impart the secret to his workmen.” But under peculiar cir-
1 47 Barb. 455.
2 Gibblett v. Read, 9 Mod. 459.
8 Peabody v. Norfolk, 98 Mass. 452; 2 Story Eq. § 952. See infra, § 562.
4 Bryson v. Whitehead, 1 S. & S. 74; 1 L. J. Ch. 42.
5 Morison v. Moat, 21 L. J. Ch. 284; 16 Jur. 821. To the same effect, see
Ansell v. Gaubert, Seton, 4th ed. 235; Weston v. Hemmons, 2 Vict. L. R. Eq. 121.
* Hagg v. Darley, 47 L. J. Ch. 567; 38 L. T. (N. s.) 312.
§ 546.] RIGHTS ANALOGOUS TO THOSE OF TRADE-MARKS. 561
cumstances injunctions will be refused, as where the defend-
ant had been in the service of the complainant, the proprietor
of a secret medicine, and began to make and sell an imitation."
Lord Eldon, C., once said, “I do not think that the court
ought to struggle to protect this sort of secrets in medicine”;”
and, at another time, he refused an injunction to restrain the
defendant from violating an agreement not to divulge the
secret of a medical preparation, on the ground that, if there
were a real secret in question, the court could have no means
of interfering to enforce its order.” It is well settled, that
whoever can in good faith discover a secret recipe may make
and vend the article.*
§ 546. Title of a Book or other Publication.— There are
not a few cases in which the use of some particular title, not
amounting to a technical trade-mark,” has been restrained by
injunction. While the title of a book, newspaper, or other
printed publication for sale, may possess all the essential char-
acteristics of a technical mark, it is frequently otherwise; and
yet to prevent an unwarranted or fraudulent interference with
the publisher's good-will right, courts of equity will intervene.
Sebastian very properly says,” that, although the term copy-
right has been inadvertently applied to the right in the title
of a publication, — as, for example, by, Lord Romilly, M. R.,
in Mack v. Petter, in which he said, “The plaintiff is en-
titled to a copyright in the use of the title “Birthday Text-
Book,’” — there is no copyright therein. Wood, L. J., cor-
rectly said:* “It seems to us that there is nothing analogous
to copyright in the name of a newspaper, but that the propri-
etor has a right to prevent any other person from adopting the
1 Canham v. Jones, 2 W. & B. 218.
2 Williams v. Williams, 2 Mer. 157.
* Newberry v. James, Ibid. 446.
* Hovenden v. Lloyd, 18 W. R. 1132; Siegert v. Findlater, 7 Ch. D. 801; 47
L. J. Ch. 233; 38 L. T. (N. s.) 349; 26 W. R. 459. Manhattan Co. v. Wood et al.,
14 Off. Gaz. 519; on appeal, 108 U. S. 218.
* See ante, §§ 14, 15, 116 et seq.
° Law of Trade Marks, p. 171.
* L. R. 14 Eq. 431; 41 L. J. Ch. 781; 20 W. R. 964.
8 Kelly v. Huttor L. R. 3 Ch. 703; 37 L. J. Ch. 917; 19 L. T. (N. s.) 228; 16
W. R. 1182. -
36
562 LAW OF TRADE-MARKS. [$ 547.
same for any other similar publication.” This is now the doc-
trine of all courts. – The term title has its limitation, excluding
that which is secondary and merely qualificative, as is illus-
trated by a case that came up in the Court of Caen, in France,
on appeal, in 1878. The court said: “Although the title or
denomination of a journal is private property, by title or de-
nomination of a journal must be understood the same title, etc.
under which it is known or designated; that is to say, the
words written in very large characters at the head of the first
page, and not the qualifications which follow, and are printed
in much smaller characters in the second or third line. The
plaintiff's journal bears the words “Le Granvillars,’ in very
large characters, at the head of the first page, and filling the
first line, – that being the sole title under which it is known
and designated, though, truly, in the second and third lines
are printed in fine type the words, “Courrier d'Avranches de
Constance, et de la Côte, yet they are no part of the title of
the paper, but indicate the radius for which it is established
and to which it reports the local news. The defendant,
Durand, in entitling his journal “Le Courrier d'Avranches,’
has only availed himself of words that are publici juris.” The
following decisions throw further light on this subject.
§ 547. Evamples of Titles protected.— “The Real John
Bull,” infringed by “The Old Real John Bull”;” “The Edin-
burgh Correspondent”;” “The Edinburgh Philosophical Jour-
nal”; 4 “The American Grocer”; 5 “Household Words”; 6
“Bell's Life in London,” infringed by “The Penny Bell's Life
and Sporting News”; 7 “The London Journal,” infringed by
“The London Daily Journal”;” “London Society” magazine,
infringed by another styled “English Society”;” “The Birth-
1 Cagnaut v. Durand, 23 Annales, 143. See ante, §§ 109, 110.
2 Edmonds v. Benbow, Seton, 4th ed. 238.
* Re The Edinburgh Correspondent Newspaper, 1 Ct. of Sess, Cas., 1st ser,
new ed. 407, n.
4 Constable & Co. v. Brewster, 3 Ct. of Sess. Cas., 1st ser, 215 (new ed. 152).
5 American Grocer Publishing Co. v. Grocer Publishing Co., 51 How. Pr. 402.
6 Bradbury v. Dickens, 27 Beav. 53; 28 L. J. Ch. 667; 33 L. T. 54.
7 Clement v. Maddick, 1 Giff. 98; 5 Jur. (N. s.) 592; 33 L. T. 117.
8 Ingram v, Stiff, 5 Jur. (N. s.) 947; 33 L. T. 195.
• Cowes v. Hogg, w, N, 1876, p. 368; L. J. Notes of Cases, 1870, p. 267–
W. N. 1871, p. 40.
§ 548.] RIGHTS ANALOGoUs To THOSE OF TRADE-MARKS. 563
day Scripture Text-Book,” infringed by “The Children's Birth-
day Text-Book”; “The Iron Trade Circular (Ryland's),”
infringed by “The Iron Trade Circular (Edited by Samuel
Griffiths).””—The proprietor of “The Britannia” newspaper
incorporated with it another paper, called “The John Bull,”
and issued the combined paper as “The John Bull and Bri-
tannia.” The defendant, the former printer and publisher of
“The Britannia,” began to publish a new paper, under the
name of “The True Britannia,” and he was enjoined there-
from. But to entitle one to an injunction, there must be.
such a similarity of designation on the part of the defendant
as to be likely to mislead purchasers. Therefore, it was held
that “Punch,” published at 3d., was not infringed by “Punch
and Judy,” published at 14.4 It was not clear that the title,
“Our Young Folks; an Illustrated Magazine for Boys and
Girls,” was infringed by the use of the title, “Our Young
Folks’ Illustrated Paper”; so, for that reason, the case was
referred to a master to report whether the use thereof by the
defendant was deceiving, or was calculated to deceive, the pub-
lic."—The Court of Appeal of England refused an injunc-
tion to the proprietors of a dramatic and sporting newspaper
called “The Era,” which had for many years published arti-
cles signed “Touchstone,” to prevent the publication of a new
paper on the same subjects, under the title of “Touchstone,
or the New Era.”" An injunction was refused, because the
complainants were merely contemplating publishing while the
defendant had actually published his first number. So, also,
in the “Belgravia’’ magazine case.”
§ 548. In Hogg v. Kirby,” the complainant was proprietor
1 Mack v. Petter, supra.
2 Corns v. Griffiths, W. N. 1873, p. 93; Pemberton, 2d ed. 308.
* Prowett v. Mortimer, 2 Jur. (N. s.) 414; 27 L. T. 132; 4 W. R. 519.
4 Bradbury v. Beeton, 39 L. J. Ch. 57; 21 L. T. (N. s.) 323; 18 W. R. 33.
5 Osgood v. Allen, 1 Holmes, 185; 6 Am. L. T. 20; 3 Off. Gaz. 124.
* Ledger v. Ray, Cox's Man., case 550.
7 The Correspondent Newspaper Co. v. Saunders, 11 Jur. (N. s.) 540; 13 W.
R. 804. e
8 Hogg v. Maxwell, 12 Jur. (N. s.) 916; 15 L. T. (N. s.) 204; 15 W. R. 84. On
appeal, L. R. 2 Ch. 316; 86 L J. Ch. 437; 16 L. T. (N. s.) 133; 15 W. R. 470.
9 8 Wes. 215. .
564 LAW OF tºwars. [$ 548.
of a monthly magazine published by the defendant, and sold
at his shop on commission. The publication continued dur-
ing five months; but at the end of that time disputes arose
between the parties. It was agreed to discontinue the joint
publication, and a final settlement of accounts was had. The
complainant then circulated advertisements, stating that the
publication under its old title would be continued by him, and
that a sixth number of the magazine would be, as it accordingly
was, soon afterwards published by him. The defendant at
once advertised and published the first number of a periodical
work, under a title similar to the plaintiff’s, but described as
a “New Series, Improved.” An injunction was applied for,
to restrain him from selling any copies of his publication, and
from printing or publishing any, either under the same or any
similar appellation, and from borrowing and using the appella-
tion, or copying the ornaments, or any part of the plaintiff's
original publication. The court held, that, upon the facts
stated, there appeared to be an intention on the part of the
defendant to put his work before the world as a continuation
of the old magazine. Lord Eldon in that case did not rest his
decision so much on the ground of copyright, or of contract,
as upon that of fraud. He stated the question to be, not
whether the work was the same as the original, but whether
the defendant had not represented it to be the same, and
whether the injury to the complainant was not as great, and
the loss accruing to be regarded upon the same principles be-
tween them, as if it were, in fact, the same work. What we
may gather from that decision amounts to this: that, by a
certain resemblance of form and matter, a publisher may not
with impunity put forth to the public a literary work, to be
taken for another work of an established reputation, and thus
fraudulently reap the advantage enjoyed by the original work;
and that this advantage in the market corresponds in some
measure with the property created by the Copyright Act, and
is protected on analogous grounds." -
1 See Clemens v. Such, Codd. Dig. 312; Cox's Man, case 429, restraining
the use of the name “Mark Twain”; and see also Jollie v. Jaques, 1 Blatch.
618, refusing protection to the name “The Serious Family Polka.”
§ 549.] RIGHTS ANALOGOUS TO THOSE OF TRADE-MARKS. 565
§ 549. A case of a similar character is that of Spottiswoode
v. Clarke.” There the plaintiff was the owner of a publication
called “The Pictorial Almanac, for 1847?”; and the defend-
ant of one called “Old Moore's Family Pictorial Almanac.”
The plaintiff alleged that the defendant's work was a piracy
on his publication, and filed a bill for an injunction. With
regard to the substance and internal portion of the two works,
there was little or no resemblance; but the covers were, to a
certain extent, similar, both being decorated with a picto-
rial representation of the Observatory at Greenwich, and in
the title, as printed on the cover, making use of nearly the
same expressions. The bill alleged that this imitation was
intentional, and done with a view to deceive the public, to
the injury of the plaintiff. The Lord Chancellor said, among
other things: “In the course of argument, cases of trade-
marks were referred to; but trade-marks have nothing to do
with this case. Take a piece of steel: the mark of the man-
ufacturer from whom it comes is the only indication to the
eye of the customer of the quality of the article. So it is of
blacking, or any other article of manufacture, the particular
quality of which is not discernible by the eye. In the present
case, if anybody is deceived, it is not by the eye; for any-
thing more different than the two articles in question can
hardly be conceived. . . . Both covers represent a portion of
Greenwich Observatory, and profess the work to be for all
sorts of persons. It is difficult to believe that all this is acci-
dental; but if it is a fraud, it is the most clumsy fraud that
I ever saw, for it could deceive no one.” He accordingly dis-
solved the injunction granted below, the defendant undertak-
ing to keep an account, with liberty to the plaintiff to bring
an action. The whole gist of the matter lies in this: if no
one could be deceived, the plaintiff suffered no injury; but if
a casual observer would probably be misled, then the principle
laid down in trade-mark cases would be applicable, and the
use of a particular name, title, or wrapper would be restrained.
This case has been cited and followed.” .
i 10 Jur. 1043; 2 Ph. 154; 8 L. T. 230.
* Purser v. Brain, 17 L. J. Ch. 141. See also Chappell v. Davidson, 1 K. &
J. 123.
566 LAW OF TRADE-MARKS. [$ 550.
§ 550. In Snowden v. Noah," the complainant had pur-
chased from the defendant the right to publish at the city of
New York a newspaper called “The National Advocate.”
The defendant subsequently published at said city “The New
York National Advocate.” Sandford, Ch., held that there
was such a difference as to warrant the court in refusing an
injunction to restrain the defendant. — So, in Bell v. Locke,”
Walworth, Ch., denied an injunction to restrain the defend-
ant from publishing or circulating a newspaper called the
“New Era,” which was alleged to be an infringement of the
rights of the plaintiff, who published the “Democratic Re-
publican New Era.” Besides the difference in titles, the
defendant's paper, upon its face, purported to be a revival of
an old paper, in which he was formerly interested with the
complainant, which paper had been voluntarily discontinued
by both for more than eighteen months. – In Matsell v.
Flanagan, the complaint alleged that the plaintiffs were, and
long had been, the publishers and proprietors of the “National
Police Gazette,” which was commonly known to the public as
the “Police Gazette”; and it appeared that it was the only
“Police Gazette,” eo nomine, published in the United States,
at the time of the publication of this paper. It further ap-
peared that the defendants were engaged in publishing and
selling a paper called “The United States Police Gazette,”
which, from its general character and appearance, was a
fraudulent simulation of the plaintiffs' paper. The words
“Police Gazette,” forming a part of the title, were printed
in type similar in character to that employed by the plaintiffs
for their print, and a similar imitation characterized the gen-
eral form, style, type, and device of the paper complained of.
It was shown that the public were actually misled into pur-
chasing the defendants’ paper for that of the plaintiffs; and
the more easily as when “The United Stătes Police Gazette ’’
was folded, and lying upon the newspaper stands, as is usual
and customary, the words “United States,” which made the
difference between the titles of the two papers, would be con-
cealed. The manifest fraud in this case distinguishes it in
1 Hopkins, Ch. R. 347. - 2 8 Paige, 75.
§ 552.] RIGHTS ANALOGOUs To THOSE OF TRADE-MARKS. 567
principle from Snowden v. Noah and Bell v. Locke (supra).
The injunction was continued. — In Stephens v. De Conto,
the main question was, whether the name of a newspaper in
the Spanish language, called “El Cronista,” published by the
defendant, was an infringement upon the name “La Cronica.”
Monell, J., held that there was so manifest a dissimilarity
in the general appearance of the two titles, both as respects
the formation of the words and the character of the type em-
ployed in printing, that no Spaniard could mistake. But the
case was relieved of all difficulty, as it appeared that the pub-
lication of “La Cronica” had ceased. The injunction was dis-
solved, and the complaint dismissed. — In Dayton v. Wilkes.”
the good-will of a newspaper — that is, the celebrity which
it had acquired under the name of “Porter's Spirit of the
Times” — was fully recognized as a valuable property.— And
in Clement v. Maddick,” where an injunction was granted to
restrain the defendant from using the name “Bell's Life”
for his newspaper, the court characterized the suit as “an
application to support a right to property.” -
§ 551. In the court of Paris, in 1858, (case of Estibal v.
Petit-Demenge,”) an appeal from a judgment forbidding the
defendant from using the name of a journal—the “Chari-
vari” — on card-covers for the same, to be used in coffee-
houses, lecture-rooms, etc., it was held that such use did not
constitute a case of illicit competition or infringement. The
appellate court said that the gilt advertising-cards of the de-
fendant were but covers for the “Chariwari,” which could
not create confusion in the public mind with the paper itself;
and although, in enclosing the “Charivari” in the covers, the
defendant addressed the readers of the journal, that fact in
itself did not make him responsible in damages. The defend-
ant offered to alter his cards so that they should read, “Cover
for the ‘Charivari,’” which the court thereon directed to be
done. -
§ 552. In the Tribunal of the Seine, in 1855, (Castille v.
Dennery,”) it appeared that the plaintiff had published, in
1 4 Abb. Pr. (N. s.) 47; 7 Robertson, 343. 2 17 How. Pr. 510.
* 5 Jur. (N. s.) 592. 4 4 Annales, 384. 5 2. Id. 27.
568 LAW OF TRADE-MARKS. [$ 553.
1847, a romance entitled “Les Oiseaux de Proie" (The
Birds of Prey). The defendant brought out a drama under
the same title, which was thought by M. Castille to be an
infringement upon the name he had selected. Held: “Con-
sidering that for a long time the words Oiseaua de Proie
have been metaphorically employed to designate certain men;
that those men offer types so varied that they are the objects
of observations, of studies, and diverse paintings, to each of
which the said words are as applicable as to a romance by
Castille ; and that there is no invention in the title, – the
demand of the plaintiff must be refused.”
§ 553. An author or a publisher has, either in the title of
his work, or in the application of his name to that work, or
in the particular external marks which distinguish it, just
such a species of property as a trader has in his trade-mark.
He may, therefore, equally claim the protection of a court of
equity against such a use or such an imitation of that name
or mark as is likely, in the opinion of the court, to be a cause
of damage to him in respect of that property." Upon this
principle rests the case of Thunot-Duvotenay v. Degorce-Cadot,
in the Court of Paris, in 1869. Madame Michaud, widow of
the historian of the Crusades, had married M. Thunot-Duvo-
tenay, and conjointly with him and others in interest had
brought suit to prevent the further publication of a “History
of the Crusades,” which had been brought out by the defend-
ant. The defendant had, in 1868, by means of circulars and
notices, profusely scattered about, announced for sale the
“Histoire populaire et nationale des Croisades,” by Michaud.
Four numbers of this book were published. Having been
duly warned by process to cease the publication, he had re-
course to subterfuge to give to the complainants a seeming
satisfaction. In the fifth number, he ceased to edit the text of
the “History of the Crusades,” by Michaud, and substituted
therefor the “Jerusalem Delivered,” of Tasso. The substi-
tution deceived a portion of the public, who believed that the
“Jerusalem Delivered ” was a legend of the “History of the
Crusades,” which latter title continued to figure at the head of
1 Lloyd on Trade Marks, 2d ed., p. 42.
§ 554.] RIGHTS ANALOGOUs To THOSE OF TRADE-MARKS. 569
each page. These combinations and manoeuvres constituted
a manifest fraud. The Tribunal of Commerce of the Seine,
which had original cognizance of the case, held that it had
jurisdiction of the matter as a commercial act, the parties
appearing in the character of merchants. Judgment for com-
plainants. Upon appeal, the defendant invoked his good
faith to repel the presumption of tort. He fared no better
than in the forum below. The court said, inter alia : “Con-
sidering that Michaud is a contemporary author; that his
History of the Crusades has a merit and renown that the de-
fendant was among the first to recognize; that the defendant
is a bookseller and editor in Paris, where divers editions of this
book have been published; that under these circumstances he
cannot pretend ignorance of the fact that the name has not
become public property, but belongs to the heir and assignees,
or, if he had a doubt thereon, the most simple effort would
have dissipated the doubt; that he cannot pretend that he
prepared and commenced the publication in good faith, but
has manifested his bad faith by his acts; therefore he is
guilty of counterfeiting, and the judgment must be affirmed,
with costs.” 1
§ 554. In the remarkable case of Lord Byron v. Johnstone,”
in 1816, the defendant, a publisher, advertised for sale certain
poems, which he represented by the advertisement to be the
work of Lord Byron, on whose behalf a bill was (during his
lordship's absence abroad) filed to restrain the publication
under the title described in the advertisement. There ap-
pears to have been some doubt at the time of the original
publication whether or not the poems were Lord Byron's ;
but when the defendant, at the hearing, declined to swear
as to his belief that the poems in question were actually the
work of Lord Byron, the court granted the motion for an
injunction until answer or further order. This seems like
recognizing a proprietary right in a mere name. At least,
it goes so far as to grant relief against damage arising from
* This section was cited with approbation by the Maryland Court of Appeals
in 1878, in Robertson v. Berry et al., 50 Md. 591.
2 2 Mer. 29.
570 LAW of TRADE-MARKS. [$ 556.
the use of a particular name in conjunction with a particular
article offered for sale; it being impossible for the purchaser
to ascertain, on mere inspection, the truth or falsehood of the
representation on the faith of which he buys the article. -
§ 555. It is difficult to reconcile the principle of the decis-
ion in this case with that of the decision in Clark v. Freeman,"
in which the eminent physician, Sir James Clark, applied for
an injunction to restrain a chemist from publishing and sell-
ing a quack medicine under the name of “Sir James Clark's
Consumption Pills”; but the court refused to interfere, be-
cause it did not appear that Sir James Clark had sustained
any pecuniary injury. The only distinction between the prin-
ciple of the two cases seems to be this: that in the former
the author must be held to have a species of property in his
name, consisting in the recommendation to the public which
the use of that name gives to the sale of a literary work, while
it did not appear that Sir James Clark was in the habit of sell-
ing medicines, or of deriving a profit from the sale of medi-
cines, and therefore it could not be argued that he had suffered
injury in trade; and the court could not recognize an injury
done to his reputation, which it treated as an illusory dam-
age. It must, therefore, have held in the former case that the
author has a species of interest in his name, quite similar to
that of a trader in his mark affixed to the articles manufac-
tured by him. e
§ 556. Yet there does seem to be natural justice in pro-
tecting one's name from contempt or unpleasant notoriety,
which may amount to infamy. Could not the eminent phy-
sician have been seriously damaged in his practice by the
usurpation of his name by a quack? and was he not in all
probability injured in his professional reputation by the con-
duct complained of? If this decision be sound, may not any
man's name be blasted by the brazen villany of another who
chooses to borrow his name? In France, a different doctrine
is maintained, as is evident by the judgment of the Tribunal
Civil of the Seine, in 1869 (Charles de Bussy v. Charles Mar-
chal”) The defendant, well known in the literary world
1 11 Beav. 112; 17 L. J. R. (N. s.) Ch. 142. * 15 Annales, 143.
§ 557.] RIGHTS ANALOGOUs To THOSE OF TRADE-MARKS. 571
under the pseudonym of Charles de Bussy, is the author of
numerous publications which have appeared under the as-
sumed name. Among them is a brochure entitled “Les
Impurs de Figaro,” and another entitled “Le Cas de M.
Rochefort.” The plaintiff, an engineer of Paris, who aspired
neither to immodest notoriety nor the imputation of embroil-
ing himself in political affairs, obtained an injunction against
the further misuse of his name, with 50 francs damages, and
costs. – But it is sometimes lawful to use one's name or pseu-
donym, without his consent and to his prejudice, without
legal liability for the act. “Mark Twain’’ is a trade-mark
for some publications, and is not entitled to any protection in
others. In a United States Circuit Court, in 1883, Blodgett,
J., said: “An author cannot, by the adoption of a nom de
plume, be allowed to defeat the well-settled rules of the com-
mon law in force in this country, that the publication of
a literary work, without a copyright, is a dedication to the
public, after which any one may republish it. No pseu-
donym, however ingenious, novel, or quaint, can give an au-
thor any more rights than he would have under his own
name.”* Even the good-will was extinguished by such prior
publication. -
§ 557. The Name of a Song. — Certain music publishers
having adapted original words to an old American air, which
was rearranged for them, gave to the song so composed the
name of “Minnie,” and procured it to be sung by Madam
Anna Thillon, a popular singer, at M. Julien's concerts in
London ; and when it had by that means become a favorite
song, they published it, with a title-page containing a pic-
ture of the singer who had brought the song into notice, the
name “Minnie,” etc. Held, that the publishers had by these
means obtained a right of property in that name and descrip-
tion of their song, which a court of equity would restrain any
person from infringing.” Another party infringed upon the
same by using the words “Minnie, dear Minnie,” and was
restrained by an interlocutory injunction, without imposing
* Clemens v. Belford, 11 Biss. 459.
* Chappell v. Sheard, 2 Kay & J. 117; 1 Jur. (N. s.) 996.
572 LAW OF TRADE-MARKS. [$ 560.
upon the parties the necessity of trying the right at law."—
But where, the plaintiff being a writer and composer of songs
and music under the name of “Claribel,” the defendants
published and sold certain songs, of which the plaintiff had
written the words but not composed the music, with the words
“Song written by Claribel” on the title-page, an injunction
was refused.”
§ 558. The Titles of Printed Publications are sometimes
registered, as trade-marks, and they may legitimately be so
registered, provided they have such a distinctive individuality
as shall preclude the probability of confusion with the titles of
other publications. “Our Society,” and “Insurance Moni-
tor,” “seem to be free from any such objection, as applied to
periodicals. The same may be said of most of those men-
tioned in § 547.
§ 559. The Right to Evelusive Use must be Definite, to entitle
the claimant to relief. In England, it has been held that a
newspaper is not within the Copyright Act, 5 & 6 Wict. c. 45,
and therefore requires no registration under that act; but the
proprietor of a newspaper has, without registration, such a
property in all its contents as will entitle him to sue in respect
of a piracy.” But there must be something definite and cer-
tain in the thing sought to be protected. When the proprie-
tor of a newspaper sought to restrain the piracy of a “List of
Hounds,” the court was of opinion, that, although the piracy
might be established, the list was liable to such frequent
changes, and a correct list was so easily obtained, it was not
a case for an interlocutory injunction.”
* $ 560. Names and Designations on Coaches, etc. — A court
of equity will restrain a defendant from fraudulently using the
same words and devices on an omnibus that the complainant
may have previously appropriated to designate his. In Knott
1 Chappell v. Davidson, 2 Kay & J. 123.
2 Re Barnard v. Pillow, W. N. 1868, p. 94.
8 Re F. C. Barksdale, Cert. No. 424.
4 Re Charles C. Hine, Cert. No. 903.
* Cox v. Land and Water Journal Co., 9 L. R. Eq. 324; 39 L. J. Ch. 152.
(W. C. Malin's court.) -
6 Ibid. -
§ 561.] RIGHTS ANALOGOUS TO THOSE OF TRADE-MARKS. 573
v. Morgan, in 1836, in the Rolls Court of England, the de-
fendant was restrained from using upon an omnibus the names
“London Conveyance,” and “London Conveyance Company,”
or either of such names, or any colorable imitation of them, or
either of them, painted, stamped, printed, or written thereon,
or in any manner affixed thereto. — Stone v. Carlan,” in 1850,
is a similar case, the defendants having been restrained from
improperly using the name “Irving Hotel,” “Irving House,”
or “Irving,” upon coaches, and upon certain badges worn by
the defendants upon their arms and hats. – Deiz v. Lamb,”
in 1866, the “Prescott House" case, is another of the same
kind. — The same principle was applied in Winsor v. Clyde
and Stetson v. Winsor, in regard to the name “The Key-
stone Line,” for steamships.”— In the late case of The New
York Cab Co. v. Mooney, the defendant was perpetually en-
joined from using cabs painted and lettered to create the im-
pression that they belonged to the plaintiff.” -
§ 561. An action of trespass on the case may be maintained
under similar circumstances. Thus, in Marsh v. Billings,”
where the plaintiffs claimed and established the exclusive
right to use the name of a hotel,“Revere House,” upon coaches,
to indicate the fact that they had the countenance of the les-
see of that house for the purpose of transporting passengers
between that house and the railroads. For this privilege
they paid an equivalent in the obligations into which they
entered. The ground of action against the defendants was
not that they carried passengers to the Revere House, or that
they had the words “Revere House" on the coaches and on
the caps of the drivers merely, but that they falsely and fraud-
ulently held themselves out as being in the employment, or
as having the patronage and confidence, of the lessee of the
Revere House, in violation of the rights of the plaintiffs. The
1 2 Keen, 213.
* 13 Monthly L. R. 360; R. Cox, 115. See also same matter in Howard v.
Henriques, 3 Sandf. S. C. 725; R. Cox, 129. -
* 29 N. Y. Superior Court, (6 Robertson,) 537.
4 9 Philad. 513.
* Reported in New York Tribune, Sept. 25, 1884.
* 7 Cush. 322; 14 Monthly L. R. (4 N s.) 664; R. Cox, 118.
574 Law or rºadenaars. [$ 562.
Supreme Court of Massachusetts held, on appeal, in this case,
that the plaintiffs would be entitled to such damages as the
jury, upon the whole evidence, should be satisfied they had
sustained; and that the damage should not be confined to the
loss of such passengers as the plaintiffs could prove had actu-
ally been diverted from their coaches to those of the defend-
ants, but that the jury would be justified in making such
inferences, as to the loss of passengers and injury sustained
by the plaintiffs, as they might think were warranted by the
whole evidence in the case. * -
§ 562. Secret Process, Breach of Faith, etc.— There are also
cases involving a breach of trust, in disclosing a secret process,
a knowledge of which has been gained through confidential
relations of the parties. The earliest of these cases, New-
berry v. James, in 1817, shows the difficulties that have been
felt in dealing with questions of this sort. The complain-
ant claimed to be entitled, under the provisions of certain
agreements entered into by the ancestors of himself and the
defendants, respectively, to the exclusive right of selling cer-
tain powders and pills, well known as “James' Powders,” and
“Analeptic Pills,” as agent of the defendants, and prayed a
decree for specific performance of agreements. The pills and
powders were made up by the defendants from an alleged se-
cret recipe; and it was sought to restrain them from communi-
cating this recipe to any other person without the plaintiff's
permission. The court does not seem to have looked upon
this secret recipe in the light of property, - the subject of
certain agreements as to the manner of enjoyment, — and
as clearly liable to injury from divulgation. Had this been
done, there probably would not have been serious difficulty in
framing an injunction in restraint of such a contemplated in-
jury, even though the court might not have been able to decree
the specific performance of the agreement. On this head, the
Lord Chancellor said that either it was a secret, or it was
not. If a secret, what means did the court possess for enfor-
cing its own orders? If not a secret, there was no ground for
interfering. If the art and method of preparing the Analeptic
1 2 Mer, 447.
§ 562.] RIGHTS ANALOGOUs To THOSE OF TRADE-MARKs. 575
Pills, for which no patent had been procured, were a secret,
what signified an injunction, the court possessing no means of
determining on any occasion whether it had or had not been
violated? The only way in which a specific performance could
be effected would be by a perpetual injunction ; but this would
be of no avail, unless a disclosure were made to enable the
court to ascertain whether it was or was not infringed; and
in complaining of a breach of an injunction, it would be neces-
sary first to show that the injunction had been violated. The
injunction was therefore dissolved. — In Williams v. Williams,
it was said that the court would not struggle to protect secrets
in medicine of that sort; but that it was different in the case
of a patent, because there the patentee was a purchaser from
the public, and bound to communicate his secret at the
expiration of the patent. — This point has been settled with
tolerable distinctness in Dietrichsen v. Cabburn.” Lord Cot-
tenham virtually decided that, where there is such an infirmity
in an agreement that it cannot be performed in all its parts,
the court will not by injunction compel a defendant to per-
form the one part, it being at the same time unable to compel
the plaintiff to perform reciprocally the other, namely, that
which was positive in the agreement, if its aid should be ap-
pealed to by the defendant in order to procure for him the
benefit of the contract or agreement. — We find, however, that
in Youatt v. Winyard,” the defendant, who had been employed
as the plaintiff's assistant under an agreement by which he
was to have a salary, and be instructed in the general knowl-
edge of the business, but not in the secret of manufacturing
the medicines sold, was restrained from divulging those recipes
to which he had surreptitiously gained access; and from mak-
ing up and selling the medicines compounded from the reci-
pes, with certain printed instructions, almost literally copied
from the plaintiff's. In this case, the decree proceeded on the
ground of trust. — So, also, in Green v. Folgham,4 where the
defendant was held to be the trustee of the secret of compound-
ing “The Golden Ointment,” under the trusts of a certain
1 3 Mer. 157. 22 Phillips, 52.
8 1 J. & W. 394. * 1 S. & S. 398.
576 LAW OF TRADE-MARKS. [$ 563.
settlement, and was ordered to account for certain mesne profits
made by him in the sale of the ointment; the court even go-
ing so far as to direct the valuation of the secret to be made
for the purpose of administering the trust property. —In Tip-
ping v. Clarke," a case arising out of a dispute between two
merchants, in the course of which the defendant, in a letter to
the plaintiff, stated that he had acquired a knowledge of his
books and accounts, and that he intended to make a public
exhibition of them, we have a recognition of the same doc-
trines. – In Morison v. Moat,” it appeared that the plaintiff
and the defendant had for some years carried on in partnership
the business of making and selling “Morison's Universal Med-
icine.” On the dissolution of the partnership, the defendant,
who had retired, set up for himself, and made and sold the
original medicine under its former name as prepared by him.
The complainant, in praying for an injunction, put forward
the ground of fraud or misuse of his labels and trade-marks
by the defendant; but he relied on this only in aid of the
principal head, – that of breach of faith and contract; and
it is on this ground that the decision rests.”— In France,
the law recognizes the secrets of manufacturers as property,
and article 418 of the Penal Code severely punishes clerks
or workmen who divulge the secrets of manufacture of their
employers. º
§ 563. On the other hand, where no charge of breach of
trust is involved, courts will not protect the proprietors of
secret medicines or other compounds not patented ; and any
one possessing himself of another's secret by fair means may
make and vend the same, provided he sell it as his own manu-
facture, and not as that of a party complaining. Thus, in Davis
v. Kendall,” where the plaintiff had no patent, and therefore
no exclusive property in a medical compound invented and
sold by him, and known as the “Pain Killer,” the court said
that all were entitled to make and vend the compound. — The
12 Hare, 383. 2 9 Id. 241.
* As to authorities on this matter of secrets of trade, see 2 Story Eq. Jur.
§ 954; 3 Daniell’s Chancery Pleading and Practice, 1755.
* 2 R. I. 566.
§ 564.] RIGHTS ANALOGOUs To THOSE OF TRADE-MARKS. 577
same doctrine was recognized in Comstock v. White." The de-
fendants, after dissolving their connection with the plaintiffs
as partners, began to use the name or designation “Dr. Morse's
Indian Root Pills,” to which neither party had any exclusive
right. The court held that, while an injunction should not be
granted against an innocent defendant, yet where it appeared
that the defendants, in having connected themselves with the
plaintiff in selling the medicine by a particular name or desig-
nation, and having induced the plaintiffs to expend large sums
of money in advertising, etc. the medicine manufactured, and
then suddenly and without notice, in an unjustifiable manner
and apparently from improper motives, severed their connec-
tion with the plaintiff, and set up the same business for them-
selves, an injunction should be granted.
§ 564. As an instance of reparation for a wrong done, we
will take a case tried in the Court of Paris, in 1861, - Galy
v. Mauchien & Co.” Galy was the inventor of certain pharma-
ceutical products, which he sold under the denominations of
“Sirop iodhydrique, Iodhydrate de Fer,” of “Bonbons iod-
hydriques,” and of “Pâte pectorale de réglisse Iodhydrique.”
He made the defendants the exclusive agents for the sale of
his said products, upon the condition that they should use upon
flasks, boxes, and prospectuses the above-mentioned names,
and also the name of Galy as inventor. They omitted his
name, wherefore he sued. The court took into consideration
the publicity which the defendants had given to the spurious
labels, and said that, as the defendants had committed the
wrong by means of announcements made by the Société Hy-
giophile, in the journals “Le Siècle,” “La Presse,” “Les Dé-
bats,” “La Patrie,” “Le Constitutionnel,” “Le Pays,” and
in the journal called “La France médicale et pharmaceu-
tique,” it was just that the order of the court should receive
the same publicity, at the expense of the defendants. In
addition to costs, etc., the publication was ordered to be made
showing the judgment for the plaintiff.
1 18 How. Pr. 421. * 8 Annales, 374.
37
578 LAW OF TRADE-MARKS. [$ 565.
CHAPTER XIII.
PRACTICE IN THE PATENT OFFICE.
§ 565. Preliminaries to application for registration.
§ 566, 567. Selection of attorney and counsel.
§ 568, 569. Necessity for forms.
§ 570, 571. System of examination.
§ 572, 573. Course of pleading pursued.
§ 574. Inquiries not answered before application filed.
§ 575. Issue joined.
§ 576. Drawing and filing of application.
§ 577, 578. Amendments, – power limited,
§ 579. How amendments are made.
§ 580. Design of oath.
§ 581. Prima facie right to mark, -how established.
§ 582. Caution in making examination.
§ 583, 584. Indefiniteness in statement.
$ 585. Colors, – uncertainty in describing.
§ 586–589. Breadth of claim.
§ 590. Class, – too loosely defined.
§ 591. Degree of specificness.
§ 592–594. Analysis of hypothetical papers.
§ 595. Terse style of allegation required.
§ 596. Caution in declaring.
§ 597. Instances of invalid claims,
§ 598. Geographical names.
§ 599. Generic terms.
§ 600. “Great Lightening Ink Eraser” case.
§ 601. Name given to invention.
§ 602. Propriety in selecting an emblem.
§ 603. Colored threads a mark for woven fabric.
§ 604. Case of many joint claimants.
§ 605. Form of product not a mark.
§ 606. The doctrine of alternate forms.
§ 607. Rejection for false suggestion.
§ 608. Actual or constructive fraud.
§ 609. “Hamburger Tropfen” case.
§ 610. “American Sardines” case.
§ 611. “Richardson's Patent Leather Splitting Machine” case.
§ 612. Instances of false suggestions.
§ 613. Litigation not encouraged.
§ 565.] PRACTICE IN THE PATENT OFFICE. 579
§ 614. “Surrender” and “Reissue” not applicable.
§ 615. Money paid as fees, when returnable.
§ 616. When Office has jurisdiction, fee not returned.
§ 565. Preliminaries to Application for Registration.—
When the owner” of a trade-mark wishes to avail himself of
the advantages of registration, he should reflect how his object
can best be accomplished. He prepares his case with careful-
ness and thought. This he may do himself, and generally
with an assurance of safety, provided he possess that rare
quality known as “common sense.” But he may not always
feel perfectly safe in drawing up a few simple statements of
fact, for if he be a person really possessed of the rare quality
mentioned, in the majority of instances he will mistrust his
own powers, remembering that experience is the mother of
science. No man is wise at all times. The very simplicity
of the procedure is puzzling to him. Many men deem it to be
a simple matter to string a few sentences together in the form
of a will and testament. We know that the memory of the
man who drew his own will is always venerated as the lawyer's
best friend. Words are sometimes used in a wrong or loose
sense even by astute jurists and writers; what, then, may be
expected when a layman—however expert he may be with
ledgers and invoices — hastily pens an application for the
registration of his mark? That mark may be worth a for-
tune to him, although a mere “abracadabra" when discon-
nected from a particular species of goods. The meaningless,
arbitrary symbol becomes a talisman. How, then, shall it
best be protected?”
1. He must be “owner.” One cannot own a trade-mark for carpets in his
hands as a cleaner, for as to him they are not merchandise. (Re Hankinson,
8 Off. Gaz. 89.) A packer and vendor of fish, being also official inspector of
fish, has no private property in the official brand. (Chase v. Mayo, 121 Mass.
343.) Indeed, the brand could not be a trade-mark for the public authorities,
they not being traders. (See ante, §§ 189 et seq., as to definition of “Merchan-
dise,” and § 284, as to meaning of the term “Owner.”)
* “La marque employée honorablement peut et doit étre maintenant une
source de fortune, puisqu'on est star désormais qu'une protection efficace em-
pêchera qui que ce soit d'usurper le signe caractéristique dont on a fait le pavil-
lon de sa marchandise pour soi et ses successeurs.”— Marques de Fabrique, by
M. Emile Barrault.
580 LAW OF TRADE-MARKS. [$ 568.
§ 566. The Rules of Practice of the Patent Office (17–23)
furnish good advice upon this subject. The remarks made in
regard to a patent are also applicable to a trade-mark. The
value of either depends largely upon the careful preparation
of specifications and claims, and “the assistance of competent
counsel will, in most cases, be of advantage to the applicant;
but the value of their services will be proportionate to their
skill and honesty, and too much care cannot be exercised in
their selection.” But how shall a selection of counsel be
made from the multitudes of aspirants for forensic honors ?
Rule 17 says: “The Office cannot assume responsibility for
the acts of attorneys, nor can it assist applicants in making
selections. It will, however, be unsafe to trust those who
pretend to the possession of any facilities except capacity and
diligence for procuring patents in a shorter time or with
broader claims than others.” Making the necessary changes
in words, we may apply this caution to trade-mark matters.
§ 567. It is not every experienced counsel in patent cases
who is qualified to conduct, or advise upon, a question of law
applicable to trade-marks. It has frequently been made mani-
fest that one who has devoted himself exclusively to patent
practice is at a disadvantage, when dealing with rights in a
symbol of trade and commerce. His thoughts—habituated
to run in a groove — confound one thing with another of a
very dissimilar nature. The mischief of mistaking a certifi-
cate of registration for a patent, or anything in the nature
thereof, has been demonstrated in several places in this book.
Yet miscalled patent lawyers make this mistake every day.
It would therefore be judicious for the applicant to select one
who is not a mere patent agent as his legal adviser in dealing
with this question, involving so much commercial law. Fore-
warned, forearmed. The language of the papers may be the
foundation of all right to protection.
§ 568. Necessity for Forms. – It has been well said that
well-constructed forms are the consummate excellence in
every department of legal practice. As conveyancing is
nothing without forms, so is pleading nothing without them.
Forms are the only contrivances to secure precision, certainty,
§ 570.] PRACTICE IN THE PATENT OFFICE. 581
and facility." Form is of incalculable advantage to the prac-
titioner who draws the papers, for a case never fully reveals
itself until put into a definite form; it is an eminent auxiliary
in the analysis of the application in the Patent Office; and is
almost indispensable in the distraction and flurry of the trial of
a cause in court. Perhaps your case may never get into court.
That is more probable than otherwise, if your case is believed
to be impregnable, free from ambiguities, with a title clear.
Why come to the Office for registration of a trade-mark, but
with the view of arming for the conflict? You thereby apply
the maxim, that the surest way to avoid war is always to be
prepared for it. You do not come to the Patent Office for a
trade-mark, for, as has repeatedly been said in this treatise,
no power resides in the government to grant one ; * but you
do come to record the fact of your adoption of a mark, and
bear away with you the evidence of your assertion of title to
the sole use of a peculiar symbol.” You can have an adjudi-
cation upon the question whether your supposed trade-mark
is valid or not, and that adjudication may be the means of
closing the door to all strife. Your purpose is best subserved
by adherence to form.
§ 569. The Office does not stickle for mere technical form,
i. e. form independent of the merits. It looks rather to sub-
stance; and a high degree of artificiality is not desired. But
we must remember that there is in legal contemplation no
such thing as form without substance, or substance without
form. We know, by experience, that the precedents enable
us to embody all necessary allegations with ease and per-
spicuity. Thus are evolved upon the record questions of law
and of fact, so that they may all be exactly and intelligently
met.
§ 570. The system of examination is this. The papers
are inspected, to ascertain whether they are written in the
English language, in a fair and legible hand, on but one side
of a sheet, with all interlineations and erasures clearly marked
1 Tyler's Rules of Pleading, 50.
* See remarks of Wallace, J., in La Croix v. May et al., 15 Fed. R. 236.
* See section 2 of the Registration Act of 1881.
582 LAW OF TRADE-MARKS. [$ 572.
in a marginal note on the same sheet, and also to see that
they contain all indispensable allegations. The scrutiny may
disclose some fault susceptible of amendment. If so, it is
pointed out, so that the paper may be perfected.
§ 571. The case is then taken up on its merits. Some-
times a course of special pleading is pursued, until the essen-
tial questions are met. The application papers serve as a
declaration, in lack of a defence to which the claim is passed
for issue. Although the forms are few and simple, and the
Office affords every reasonable facility for the curing of de-
fects, a considerable degree of accuracy is quite necessary.
He who has made himself familiar with the science of spe-
cial pleading at common law, -little studied nowadays for
practical use, – as an aid to mental discipline, and as a
system of logical devolution of the issues of a strictly legal
controversy, will have an advantage over him who is slovenly
in thought.
§ 572. The Office may plead in abatement, as for want of
some material allegation. That having been cured by amend-
ment, the case proceeds upon the law thereof. Admitting
all the facts alleged by the prima facie case, the Examiner
takes exception to the legal right of the claimant; for it may
be that,-1. His record discloses the fact that the applicant
is not one of the persons, natural or artificial, included within
the provisions of the act of Congress of March 3, 1881; 2. Or,
that the proposed trade-mark is not sufficient in law, being
merely indicative of quality, or consists of words common to
the language, to which no one can claim an exclusive right of
use," because not indicating origin or ownership; * 8. Or, that
the same symbol has already been appropriated by another
person for the same class of goods, as is shown by records, or
otherwise is known ; 4. Or, that the right to claim protection
by virtue of the act has expired by limitation, in the case
provided for in section 5 of the act; 5. Or, that the proposed
mark is calculated to deceive the public; 6. Or, that it is in-
tended for use in an unlawful business; 7. Or, that the regis-
1 See ante, § 134, “Generic Names,” etc.
* See ante, §§ 144 et seq., “Indication of Origin or Ownership.”
§ 574.] PRACTICE IN THE PATENT OFFICE. 583
tration would be contrary to public policy, etc.; — all which
matters may be necessarily inferable from the language of
the applicant. While it is not probable that he would set a
trap to catch himself, he may, in telling all the truth, blunder
into difficulties from which he cannot be extricated. He is
estopped by his recitals. He has, perhaps, admitted too much,
as will appear in suppositive cases hereafter.
§ 573. As the application papers have the same purpose as
a declaration in an action, the Office must demur or plead
thereto. In not one of the cases given can it plead either by
way of traverse, or of confession and avoidance ; for there is
nothing to take issue upon. The Examiner then demurs for
insufficiency in substance and in form. The cases commented
upon are essentially insufficient. They are also stated in an
inartificial manner. The insufficiency may be excepted to in
general terms, without showing specifically more than one
insuperable objection. A single bullet may be as efficacious
as a shower of missiles. But when the refusal to register
amounts to nothing more than a plea in abatement, the Ex-
aminer aids the applicant by specifying the grounds of objec-
tion, and gives as many hints and facilities for amending as
can reasonably be expected. But as the peculiar province of
this officer is at times misunderstood, it must be stated in
this place that he is not obliged to furnish advice to any
applicant.
§ 574. No. 14 of the Rules of Practice of the Patent Office
is as applicable to a trade-mark as to a patent case. It is
there provided that the Office cannot respond to inquiries as
to novelty, in advance of an application, nor to inquiries
founded upon brief and imperfect descriptions, propounded
with a view of ascertaining whether the same claim had been
passed on, and, if so, in whose favor; nor can it act as an
expounder of the law, nor as counsellor for individuals, except
as to questions arising within the Office. These questions
arising within the Office are those which legitimately spring
from a case actually under consideration. The functions of
the Examiner of Trade-Marks are judicial in their nature.
He is neither advocate nor eounsel.
584 LAW OF TRADE-MARKS. [$ 576.
§ 575. The applicant may join issue with the Office, and
argue the law question raised, and produce judicial decisions
as to the law; or he may introduce new evidence to sustain
his title, and show that the decision was based on a mistake
of fact. For example, if his claim be rejected on the ground
that he belongs to a country that does not allow similar privi-
leges to citizens of the United States, he may suggest that
there is a treaty or convention between his country and this,
and the Office will take cognizance of any such fact that by
accident may not have come to light; or he may take issue
on the question of novelty; or admit that another person once
had title, but aver that he had lost it by abandonment; or
that the mark already registered is for a different class of
goods; or that the foreign protection has not expired, as pro-
vided for in section 5 aforesaid; or he may, as best he can,
meet any other objection. Of course it would be entirely
impossible to suggest the multiplicity of points that may
arise in the prosecution of a claim to the recognition of an
exclusive right in an emblem. Man is not a mere machine,
but is a being of mind.
§ 576. Drawing and Filing of Application. — It is to be
presumed that the applicant has a valid claim to the exclu-
sive use of a symbol as his trade-mark, before he comes to
the Patent Office. He consults the law as to the employ-
ment of descriptive or generic terms, and satisfies himself
that he has a right to a certain definite emblem, by priority
of adoption in his particular business. If he follow the dic-
tates of common sense, his case may be clear enough. He
takes approved forms, and modifies them, telling a plain, un-
varnished tale, in as concise language as may express his
meaning. Having signed each paper, with two witnesses
to the specification and the drawing or mounted fac-sim-
ile, and verified the declaration, the case is ready to be pre-
sented. If the specification be accompanied by an original
drawing, —on a sheet ten by fifteen inches, having a light
and simple single-line border one inch from the edge, leaving
the “sight” exactly eight by thirteen inches, – there need
not be other fac-similes; for copies will be made therefrom
§ 578.] PRACTICE IN THE PATENT OFFICE. 585
by the photo-lithographic process, without charge, the same
as in patent cases. But if the representation of the trade-
mark be a print, tag, or medal," it must be mounted and
signed, so as to be convenient for placing in a portfolio; and
ten fac-similes must be filed with it.”
§ 577. Amendments. – The power to amend application
papers is limited.” If this were not so, all the material facts
and allegations might be so varied from the original statement
as entirely to change its character. After a first rejection,
the applicant generally has a right to amend ; but this is not
always so; for the sworn papers may bear upon their face the
most conclusive evidence of fraud, and a party be estopped
from contradicting his own allegations. A rejection under
circumstances which display a lack of good faith may be
regarded as final. Suppose, as frequently happens, the ap-
plicant shows that he is endeavoring to usurp the credit that
belongs to a rival trader, by a servile imitation of his mark,
he cannot well complain if he is refused a second hearing.
He may, however, appeal to the Commissioner.
§ 578. No amendment is permitted to enlarge the scope of
the claim, unless upon supplemental oath or its equivalent.*
Solicitors of experience have, in many instances, so far disre-
garded the spirit and reason of this rule as completely to
transform the original case. The papers are found to be defi-
cient in essential averments. The solicitor, perhaps mechani-
cally, draws an amendment, striking out this, and inserting
that, with great recklessness of consequences. He sometimes
attempts to amend the sworn declaration, usually termed the
oath, by substituting words, or adding new allegations.” He
does not stop to think that he is thereby perverting evidence,
and that he might as well interpolate new statements in a
deposition after execution, or words in a deed after delivery.
1 See ante, $89, for examples of peculiar emblems: colored threads, a band
of gilt paper, medals, miniature metallic bell, etc.
* Trade-Mark Rule 9. *
* It must be warranted by something in the statement or fac-simile as origi-
nally filed. Trade-Mark Rule 12. See also General Rule 71.
* See ante, §§ 311, 312, 313, as to verification.
%. See requirements of Trade-Mark Rule 12.
586 & LAW OF TRADE-MARKS. [$ 580.
Nor does he pause to reflect that such irregularities completely
vitiate a case, and virtually destroy all value of registration,
and leave it without efficacy. A court is bound to adjudge a
certificate to be void, when the record shows it to have been
granted upon falsehood, or disregard of the sanctity of an
oath. Even if new matter in a declaration be in fact true, it
is in effect false, unless properly sworn to. But suppose that
no such glaring irregularity has been committed, and that
so far as form is concerned the party has sworn to his amend-
ment, even then he may be refused a favorable consideration ;
for he is not entitled for a single fee to the judgment of the
Office upon two different cases." He cannot be allowed to
amend by substituting another symbol as his mark.
§ 579. All amendments must be made on sheets of paper
separate from the original, and must be filed with the chief
clerk of the Patent Office, who will cause them to be duly
stamped, showing the date of reception. It is irregular to
file an amendment with the Examiner, or to change the ori-
ginal record by erasures, interlineations, or marginal notes.
A looseness of practice in this respect more than once put
the Office to serious trouble, and enabled roguish agents to
perpetrate great wrongs; while a strictness of practice in
another respect brought condign punishment upon culprits,
and excluded them from the Office. It must appear by
the file when, how, and by whom an amendment has been
made. - . .
§ 580. Design of Oath. — To secure faithfulness, and elicit
truthful testimony, is not the only design of the oath. It is
also intended to produce confidence in regard to the thing
sworn to. It is designed to produce an effect, not only
upon the person sworn, but also upon them to whom the oath
is made. Confidence among members of society is indispen-
sable to social comfort. Suspicion, doubt, and distrust are
the bane of social peace.” The statute intends that this oath
for confirmation shall be an end of all strife. So it would be,
if implicit faith could be reposed in it. As it is, it can be
1 Re J. C. Cooke, Com. Dec. 1871, p. 312.
* See that admirable book, Junkin on the Oath.
§ 581.] PRACTICE IN THE PATENT OFFICE. 587
only presumptive. What becomes of confidence, when an
examination of the original file in the Patent Office discloses
the fact that the sworn declaration has been tampered with,
—that after the oath was administered interpolations have
been made, and erasures and interlineations have materially
changed the meaning of important allegations? Attempts to
pervert the oath are daily made in the Patent Office, — how
oftentimes with success, need not be told. Suffice it to say,
that, if the paper bearing the record stultifies itself, the regis-
tration is a nullity.
§ 581. Prima Facie Right to Mark. — The Office will not
always question the right of the applicant to the use of a cer-
tain mark, although there may be circumstances of a dubious
nature. Cases there are in which statements not strictly true
may readily be corrected. Thus, in the following case, the
oath of a party was deemed of sufficient weight to remove all
doubt of the right to use the name, etc. of a foreign house.
The mark, which is for brandy-bottle caps, is described as
consisting of a circular colored border surrounding a white or
metallic ground containing a coiled belt or band consisting of
two circles, with a vertical bar with buckle or fastening device,
surmounted by a crown, and enclosing the letters “O. D.,”
the “O.” being on the left of the bar and the “D.” on the
right. Within the border, and forming a semicircle above
the crown, are the words “Otard, Dupuy, & Co.,” and at the
bottom of the white ground below the circles is the word
“Cognac.” In the space between the words “Otard, Dupuy,
& Co.” and “Cognac * are two stars. There was a momen-
tary hesitation on the part of the Examiner. He asked him-
self, Have the applicants a right to use the name of the French
firm 2 May not this mark, without some qualification, be apt
to mislead the public? May this mark not prove to be an
exact fac-simile of that of a foreign house ? How can even a
license to use it be presumed ? Is this proposed mark to be
affixed to genuine imported brandy ? The records of the
Office show that, some months earlier than the date of the
pending application, the same applicants had obtained regis-
tration of a mark for liquors exported or sold by Otard,
588 LAW OF TRADE-MARKS. [$ 582.
Dupuy, & Co., of Cognac, France, in which matter the appli-
cants are described as agents for said house. The registered
mark (No. 739) and that which was then pending are, in legal
effect, nearly identical. Conclusion: “The foreign house has
a large trade with this country, and therefore may be pre-
sumed to jealously guard against encroachments upon rights
which are allied to those of their customers. They may
easily protect themselves in the courts. Besides, the appli-
cants are in a line of business in which they have many vigi-
lant competitors. If, by possibility, there be error, it can
readily be rectified. A prima facie case has been made out.
Registration allowed.” "
§ 582. The Examiner sees enough to put him on inquiry.
A single word, perhaps, is submitted as the essence of the
mark. A single word, – but how much may that single word
contain l A word may be a wonderfully involved bud, which,
when breathed upon, unfolds and develops a complexity of
ideas. It may be as simple in appearance as an acorn, and
yet enclose interests as wide-spreading as the roots and branches
of an oak, with ramifications touching business matters of a
myriad of persons. Take as an example the word “Char-
treux,” (signifying a Carthusian friar,) which for many years,
in a multiplicity of suits, has figured before the courts of
France. One of the infringers had taken the feminine form
of the word. Of that, the Court of Cassation said, in 1872: 3
“The word ‘Chartreuse,’ applied as a denomination to the
liqueur manufactured by the religious community of which
the Père Garnier is the representative, is but an abbreviation
and the equivalent of a designation more complete: for it at
once indicates the name of the fabricants (the Chartreux);
the name or commercial firm of manufacture, which is no other
than the community of these same Chartreux; and, finally,
the place of manufacture, that is to say, the monastery of La
Grande Chartreuse.” — That single word contains a long his-
tory of strife. It has repeatedly been held to be a perfect
trade-mark, for the reasons just cited. The spoken word,
1 Re Cazade & Crooks, No. 993.
* Le Père Louis Garnier v. Paul Garnier, 17 Annales, 257.
§ 584.] PRACTICE IN THE PATENT OFFICE. 589
“Chartreuse,” is the enunciation of the mental conception:
the written word is the symbol of that enunciation. The
arbitrary sound of the voice is intimately combined with the
conceptions of the mind, and the arbitrary vocal sound is
connected with a symbol still more arbitrary, addressed to the
sight. The symbol excites in other minds the thoughts that
it was meant to call up, by the association of ideas."
§ 583. Indefiniteness.”— A so-called description of a trade-
mark may be so indefinite as really not to convey the least
idea of the intention of the applicant; as when, in an elastic-
suspender case, the mark—which was said to consist of a
man's face printed or stamped on the front side or surface
of the suspender, near the front end—had been generally ap-
plied, as read the specification, “with some sort of ornamented
design, printed above and below the figure, with the name of
the person represented by the picture under it, as shown.
But the ornamented design, on the top or bottom, or at both
places, may be omitted, or some other design substituted for
that shown, and the name of the person whose likeness is
printed on the suspender may be omitted, without materially
changing the character of my trade-mark; the essential fea-
ture of which is, the picture of a person printed upon the face
of the web or fabric.” The applicant claimed two peculiari-
ties, viz.: “1. A picture—on the front of the suspender— of
some personage of national or historic reputation of notori-
ety; 2. Having a face on the web, which is generally more
or less elastic, the expression of which may be varied by
stretching the material.” The applicant also stated that he
proposed “to change the likeness given in the picture, as ex-
pediency may require.” To this the Examiner, after point-
ing out contradictory recitals in the specification, ended his
decision thus: “This case presents none of the characteristics
of the fixed, invariable, unmistakable, definite symbol termed
a trade-mark.” 4.
§ 584. The reader can for himself analyze this specification.
What was claimed? A man's face, any man's face, and that
1 See ante, Chapter IV., “Indication of Origin or Ownership.”
* See ante, § 89, on this point.
590 LAW OF TRADE-MARKS. [$ 585.
face to be changed at pleasure. But even the lineaments of
that face were not to be permitted to remain in placidity; for,
being printed upon elastic suspenders, the features would be
contorted by each strain upon the webbing. But then there
was an ornamental design above and below the face, and the
name of the person whose face was represented 1 True, but
the ornament and the name were both dispensed with at the
will of the manufacturer. In a suit for infringement of a
trade-mark evidenced by such a specification, how could con-
viction of imitation possibly follow? If such, a broad claim
were inadvertently allowed to escape the scrutiny of the Office
upon an ea parte showing, it could not possibly form the basis
of any judicial demand. And yet this very specification had
been drawn by an experienced patent attorney, who had not
become imbued with the subtile refinements of the law of
trade-marks. He for a while refused to be comforted, and
appealed ; but, upon maturer consideration, he amended and
limited his specification, and obtained a certificate of registry."
$ 585. We cannot always be guided by the verbal descrip-
tion of colors which may be essential elements of a trade-mark,
or may be the ground of the label bearing it. Endless con-
fusion would result unless we were permitted to lay the con-
flicting marks or labels side by side, and inspect for ourselves.
What court or jury would rely upon witnesses in such a
matter? for witnesses may honestly disagree in attempting to
impart an intelligible idea of colors and shades. A writer”
on this subject says: “What idea is conveyed to the mind by
the mere mention of a red or a blue color? A scarlet coat is
called red; and the term ‘red ' is applied to a rose, a brick,
port wine, mulberries, cherries, and other things of very differ-
ent hues: the sky, a violet, a slate, and a steel helmet are
called blue; and the Arabs, who apply “green’ to a mouse-
colored horse as well as to a copper-colored Abyssinian, call
jet-black ‘blue”; and their ‘blue horse’ may mean one of jet-
black or iron-gray color. In like manner the Welsh glas,
“blue,” or “green,” is applied to black (provided it has no
1 Re James Twamley, No. 860.
2 Sir J. Gardiner Wilkinson, “On Color,” etc. London, 1858.
$ 585.] PRACTICE IN THE PATENT OFFICE. 591
brown tinge); and gray is also called ‘blue' (glas), — hence
glastum, a name of woad.” When we come to tints, the mind
is lost in a maze. The Roman artists say that more than
30,000 tints are used in mosaic. A slight variation in the
colors employed in a mark for goods may change its whole
aspect, just as a deepening of the natural shade of eyebrows
or the addition of a few bits of court-plaster may so change
the facial expression of a fair lady as to make us doubt her
identity. In a trade-mark there must be no doubt." To
judge of an alleged similarity between two trade-marks, we
must place them together. If calculated to create confusion,
one is an infringement on the other; but if the public can
readily distinguish between them upon a casual inspection,
there is no confusion. Let us take a case.” The applicants
say that the design shown in the drawing is a true copy of
their trade-mark for base-balls. We see the representation
of a red ball, with an imitation of its seams, and we read the
words “Dead Red Ball,” the name of the firm of the appli-
cants, and a description of the weight and circumference of
the real ball. What is the essential feature of the mark?
We are not told in the specification. One who has a right to
make the article (a base-ball) may lawfully make a picture
of it; and there is no pretence that the applicants have a
monopoly. What guides the purchaser in his selection? It
is the red color of the ball, more than the words. Then the
red ball is the trade-mark, if anything in the whole device
comes up to the requirements of the law. That being the
case, no one else has a right to the same mark for the class of
goods to which this is applied. But any person is at liberty
to use a blue ball, or a green ball, or indeed one of any color
or shade that could not be mistaken for that described. The
shape is not a mark in this case. Nor was it in the case of
Ricque et al. v. Forge et al.,” in the Court of Paris, in 1861,
where the plaintiffs' mark consisted of four rose-colored threads
as a border for their drillings, and the defendants adopted a
1 See ante, §§ 263 et seq., on Color as an essential element of a Trade-Mark.
* Re Peck & Snyder, No. 46.
8 8 Annales, 25.
592 LAW OF TRADE-MARKS. [$ 587.
bordering of two red threads, wherefore they were adjudged
to be counterfeiters. Now, in either of these cases, witnesses
might well disagree in naming the peculiar color used. What
is red, and what is rose-color? The necessity of ocular ex-
amination is obvious.
§ 586. Breadth of Claim. — This matter is entitled to more
consideration than it usually receives from applicants. Things
material are so united with things immaterial as to detract
greatly from the value of a mark. Sometimes so great in-
genuity seems to have been exercised to narrow down a claim,
that one cannot but wonder at the folly. When a broad
claim can be maintained for a word, for example, why en-
cumber it with a collection of other words? Look at the
consequences in case of encroachment upon the mark. The
word is so hedged about by unimportant things, devices, or
words, that it is almost impossible to convict of counterfeit-
ing. The name of a firm, or of the place of manufacture, the
term “warranted,” and other words not really any part of
the mark sought to be protected, detract from its strength;
and the pirate finds a sure refuge behind the veil of uncer-
tainty. — The highest court in France, in 1884, held that
the matter registered is an indivisible unit, and must be taken
as a whole. The plaintiff had, in his registry, described his
trade-mark as consisting, essentially, of the words, “Papier
hygienique, vrai Papier Goudron de Norwege, extra, fabricants
Joseph Bardou et fils, Perpignan”; and although the defend-
ant had usurped the only valuable part of it, “Papier Gou-
dron,” it was held that the plaintiffs had no remedy.
§ 587. Suppose, for the sake of argument, that the essence
of the trade-mark is the word “Anchor.” By the time that
a superior description of goods may have obtained a solid
reputation in the market, and the word “Anchor’’ as an
arbitrary symbol is the only thing that the purchaser looks
at to assure himself of the genuineness of manufacture, an
imitator appears. He is sued for infringement. He defends
himself on the plea that the mark described by the plaintiff
is so indefinite that he could not make it mean anything in
1 Bardou v. Lacroix, 29 Annales, 226.
§ 588.] PRACTICE IN THE PATENT OFFICE. 593
particular; and that, as he took but one word out of many
words used in the mark of his rival, he cannot be liable. On
inspection of the mark of the plaintiff, as registered, it is
found that the word “Anchor,” although it was that only
which he desired to protect, is preceded and followed by the
name of the party, his place of business, and the announce-
ment that his wares are the justly-celebrated, world-renowned,
best-class goods. He is taught a lesson. He learns that in
this instance simplicity is strength. His case is dismissed.
Nor is that always the worst result. He may find that, while
he has nothing but an elaborate mark, which is entirely
worthless, his triumphant adversary has established apparent
right to the exclusive use of the simple, yet valuable, word-
symbol “Anchor.” The evil could have been avoided by a
simple averment in his specification that the essential element
of his mark consisted of that word-symbol. A lack of precis-
ion of phraseology may destroy trade, the soul of which often
depends upon the recognition of a symbol. “A word fitly
spoken is like apples of gold in pictures of silver.” The dec-
laration in an action on the case requires no greater discrimi-
nation in the use of the exact word than does a specification.
§ 588. The claimant of an alleged trade-mark may, by too
great breadth, dissipate all his pretensions, and thwart his
own object. By attempting to grasp too much at once, he
puts himself in the position of the greedy boy with the
apples, and is left empty-handed. The representation of an
object, a word, or emblem, does not become a trade-mark until
actually associated with a particular description of goods.
How can a man hope to make a claim broad enough to cover
all kinds of merchandise ? Or how can he even think that a
device can be set forth to cover a hundred forms of the same
thing, — as “an eagle in any form or position”?" or “a
crown of any desired form, style, or kind, whether of the
shape usually known as a royal crown, or as a ducal crown,
or otherwise”?” The representations of eagles and of crowns
are almost infinite in number. In the latter case, the appli-
1 Ex parte H. M. Rowe & Co.
* Ex parte Thompson, Langdon, & Co.
38
594 LAW OF TRADE-MARKS. [$ 590.
cants averred that they had already registered one form of a
crown for the same class of goods; and that now, by way of
precaution, and in order to avoid any question as to the mean-
ing and scope of their former description, they desired to in-
clude all other crowns. The answer was, that the claim was
too indefinite, and in fact was anticipated by the former case
of the same parties. The opinion was also volunteered, that
the applicants were protected against the use by wrong-doers
of any device substantially the same as that already regis-
tered, or so nearly resembling it as to be calculated to deceive.
This dictum correctly states the law." - .
§ 589. A case like the following could not be recognized
as entitled to registration, or as sufficient foundation for any
redress under the law peculiar to trade-marks: “The mark
consists of a tattooed initial letter, which may be any let-
ter of the alphabet, stamped upon the upper-crust of the
pie; as, for instance, the letter A will stand for apple; B, for
blackberry; C, for currant, etc. Below this single initial we
stamp the letters “C. P. B.,’ standing for Connecticut Pie
Bakery.” -
§ 590. One of the most remarkable applications ever filed
was as follows. The claimant” represented that he was doing
business under the name and style of the “New Era Com-
pany,” in the city of New York, and was engaged in the
publication and distribution of books, papers, and tracts; and
also in the manufacture and sale of various articles of use,
consisting in part of tacks, nails, locks, bolts, butts, saws,
files, axes, hammers, bits, augers, planes and plane-irons,
shears, scissors, pocket and table cutlery, spoons, lemon-squeez-
ers, pins, needles, slates, hay and manure forks, hoes, spades,
shovels, rakes, scythes, ploughs, carpet-stretchers, tack-claws,
apple-parers, cherry-pitters, stove-polish, silver and plated
ware, gold and silver watches and jewelry, and general cast
and wrought hardware. He desired, therefore, to register as
his trade-mark for said goods a star, with the words “New
1 See ante, § 89 d, “A General Type of Objects,” etc.
* Ex parte Case & Martin.
* Ex parte W. M. Evans.
§ 592.] PRACTICE IN THE PATENT OFFICE. 595
Era” in the centre, etc. The decision of the Examiner reads
thus: “Such an omnium gatherum was never contemplated as
a subject of a trade-mark. Not more than one class of mer-
chandise can be included in a single application, while this
case may embrace forty thousand most incongruous things.
It is not understood how one person can constitute, by him-
self, the ‘New Era Company.’ This requires explanation.
. . . Case suspended for reconstruction.”” -
§ 591. Degree of Specificness. – This no rule can designate
except in a general way. It is a rule, that the declaration
must state everything that is of the essence of the cause of ac-
tion; and that is of the essence of the cause of action, without
which judgment cannot be given. The dropping of a word
may be the drawing of a rivet upon which depends the whole.
case. Omit any of the conditions precedent, and the Office
has no jurisdiction. For example, domicile of a person or firm
in the United States is in some cases required by section 1
of the act of 1881, and therefore is a necessary averment.
In case of a corporate applicant, the exact name thereof, and
the authority giving it existence, should be averred. So, also,
of residence and place of business, and of many other facts.
But surplusage is to be avoided. When the applicant is a
resident of or located in a foreign country, it is not necessary
to allege the existence of a treaty or convention of reciprocity;
for official notice will be taken of all such matters.
§ 592. It will not be a waste of time to analyze the follow-
ing hypothetical application papers. Every fault indicated has
been committed by one applicant or another, while sometimes
a single case is found to be marvellously replete with errors.
1. At that time there was a State law against such a fiction. So also the New
York laws of 1883, sect. 1, ch. 281, provide that, where the designation “Com-
pany” or “Co.” is used, it shall represent an actual partner or partners. . But
it was held by the Court of Appeals, in 1884 (Gay v. Siebold, 81 Alb. L. J.
273), of this law, that “it does not compel partners to disclose their true names
in the partnership designation. They may still do business under any style,
not untruly containing the name of any person, which they choose to assume,
such as the ‘Union Towing Company,’ the ‘Eureka Company,” or other fan-
ciful names. (Crawford v. Collins, 45 Barb. 269; Wright v. Hooker, 10 N. Y.
51.) . . . Even an individual may transact his business under such a name
without violating the statute.”
596 LAW OF TRADE-MARKS. [$ 592.
This is not the curious workmanship of a precisian, but a
truthful exemplification of every-day practice. Bear in mind
that these are FALSE MoDELS, not to be followed.
PETITION FOR REGISTRATION,
“To the Commissioner of Patents : —
“The petition of Antonio Gomez respectfully represents, that he
is the senior member" of the firm of Gomez & Romero, engaged in
the manufacture and sale of brandy and other liquors at the city
and county of New Orleans,” Louisiana. -
“That he alone and with others and the said firm * have used
trade-marks" for said articles," which trade-marks consist of the
printed labels" herewith filed,” or substantial copies” thereof. No. 1,
containing the words, “Otard, Dupuy, & Co., Cognac,’ surmounted
by a ducal crown and the letters “OD’ inside of a circular rep-
resentation of a strap or belt, is to be applied to our manufacture *
of brandy.” This is an excellent imitation of the imported arti-
1 Irrelevant. The application is made on his individual behalf, and not as
a member of a firm. -
* No such county. It should be, “Parish of Orleans.”
* Such phraseology would be incredible, if the real application from which
it is copied were not before the writer. A symbol cannot serve as a trade-mark,
unless the right to its use be exclusive.
* When 3 — for how long a time? (See subsect. 1 of sect. 1 of the act of
March 3, 1881.) *
* Not more than one trade-mark can be embraced by a single application.
This error is of frequent occurrence. t
6 The words “ said articles” include brandy and other liquors; but to what
number, and of what kinds, we are not informed by the papers in the case.
Nor need we care to know. Said section 1 calls for a statement of “the class
of merchandise and the particular description of goods comprised in such class.”
One class, and no more, is contemplated by the statute. .
7 Labels are not trade-marks, but, as we have before seen, are merely vehi-
cles for trade-marks. -
* A full verbal description is in all cases required; so that the specifica-
tion, when it shall have been printed, may sufficiently identify the trade-mark
claimed, without compelling recourse to drawings or other extraneous matters,
which may possibly become detached. .
* “Substantial copies”. Such words throw the mind into a state of still
deeper uncertainty. A copy must be a fac-simile, an exact counterpart.
10 This is an admission of atrocious piracy. The intent to deceive the public,
for the sake of dishonest gain, is too manifest to admit of doubt. .
11. It is not even brandy, but an imitation of brandy for a fraudulent
purpose.
§ 592.] PRACTICE IN THE PATENT OFFICE. 597
cle, is chemically pure, and medicinal," and is generally pronounced
by good judges to be superior to that brought from Europe.” The
names • Otard, Dupuy, & Co.” are only used as a fanciful emblem,
and have no intention to mislead as to origin; * and indeed our
label differs in several particulars from any label used by any such
concern.” Nos. 2, 3, 4, and 5, containing the names of different
kinds of liquors," are intended to be applied as indicated.
“He further represents that no other person, firm, or corporation
has a right to the use of said trade-marks, or of any substantially
the same,” or so nearly resembling them as to deceive the public."
“He therefore prays that the said lawful trade-marks” may be
granted” to him, as by law provided.
“ANToNIo Gomez.”
AFFIDAVIT.
“State of Louisiana,
Parish of Orleans, }.
City of New Orleans, -
“Antonio Gomez, being sworn, says that the foregoing statement
by him subscribed is true in substance and in fact, as he verily
believes; and that he and his partner reside at Havana, in the
island of Cuba, and are subjects of the king of Spain.”
“NAPOLEoN Jon Es, Motary Public.””
1 Surplusage, even if true. Falsus in uno, falsus in omnibus, - False in one
particular, false in all.
2 It is not allowable to deceive the public, even for their own benefit.
* False upon its face. Why take the name of a reputable house, but for a
vile purpose? Thucydides declared that a fraud cloaked with a specious pre-
tence reflects infinitely greater dishonor than open violence; because the lat-
ter is the effect of the power which fortune has conferred, and the former is
founded wholly in perfidy, which is the pest of society.
* An admission of an attempt at evasion.
* Even if more than one kind of liquor could regularly be embraced by the
same application, this mention of “liquors” would be too indefinite.
* The language of section 2 of the statute must be more fully followed.
* The law says, “to be likely to cause confusion or mistake in the mind of
the public, or to deceive purchasers.” (Sect. 3.)
8 A misnomer, as is evident from the circumstances.
° The Patent Office has no power to grant a trade-mark. It receives and
records it, and issues a certificate of registry. It has no creative power.
10. It gives some degree of satisfaction to learn from the applicant that he
had no legal standing before this tribunal. Neither he nor his firm was domiciled
in the United States. (There is now a treaty between Spain and this country
which gives an application a right to be entertained: April 19, 1883.)
11 The notary has omitted to affix his official seal, which is indispensable
598 LAW OF TRADE-MARKS. [$ 593.
§ 593. We have thus penned a simple-looking set of appli-
cation papers, in which almost every rule of law and of prac-
tice has been violated. The petition and the specification
have been jumbled into one; doubt has been created from
the start as to whether the applicant claimed for himself or
for his firm ; and the description of the mark, or marks, has
been left so undecided as to leave no ground for action. Such
faults could have been cured by amendment, i.e. by a recon-
struction of the case. But there are manifestations of fraud,
which instantly shut the door to all further consideration, and
estop the applicant from retractation or amendment. The
want of domicile is sufficient for the purpose of rejection.
The case dies without a hope of revival. Unhappily for
justice, no punishment can be inflicted upon the flagitious
wrong-doer beyond the loss of the fee paid in. — We will next
examine the application of a firm, or a corporation (we are at
a loss to say which).
IPETITION FOR REGISTRATION.
“To the Commissioner of Patents : — -
“Your petitioners' respectfully represent, that the Union Land
Company,” composed of A. Bell, Ch. Dolan, Ed. Foy, G. Ham, and
I. K. Lane,” is engaged in the manufacture * of pamphlets and cir-
under the act of Congress of Sept. 16, 1850. Rev. Stats., sect. 1778. No State
regulation can affect this positive requirement. A verbis legis non est recedendum.
(See Patent Office Rule 46.)
1 One glance of the eye shows that there is but a single petitioner.
* The meaning of this word as here used is not apparent. It may be in-
tended to indicate a corporation or a firm. If the former, the application should
be made by the corporation through its proper officers; and it should appear
whether the incorporation was by authority of the United States, or of any
State or Territory thereof, etc., as directed by Trade-Mark Rule 6. If a corpo-
ration, the names of corporators should not be alleged.
8 When names of persons are used, the same should be stated in full, mere
initials not being names in law. (See said Rule 6.)
* “Engaged in the manufacture.” This recital is not sufficiently compre-
hensive. The manufacture may be gratuitous, and indeed turns out to be in
this instance. If it be intended to imply mercantile operations, the words “and
sale” would make the purpose clear. A symbol cannot possibly be a trade-
mark unless in some mode attached to merchandise. -
§ 593.] PRACTICE IN THE PATENT OFFICE. 599
culars to advertise their business” as a land-improvement concern,”
at Baltimore County,” Maryland, and are entitled “to the exclusive
use upon the said articles manufactured by them of the trade-
mark described in the specification and accompanying labels,” said
trade-mark having been duly assigned to them,” for a valid consid-
eration paid by said company to the original designer and inventor
thereof."
“They therefore pray that the said company may be permitted
to obtain protection * for said trade-mark, and letters patent, or a
copyright therefor,” under the law in such case made and provided:
And they "do hereby appoint Simon Shallow, of said Baltimore,
or his substitute,” their true and lawful attorney, to make all neces-
sary alterations and amendments” in and to said trade-mark to
receive the protection,” and to transact all business in the Patent
Office connected there with. “A. BELL, President.”*
* “Pamphlets and circulars to advertise their business.” All idea of an
emblem of trade is at once dispelled.
* A land improvement concern can hardly be supposed to vend goods, wares,
and merchandise.
* Unhappily worded, to say the least.
* In what capacity, — as individuals, firm, or corporation ?
* “Labels” should be struck out, and “fac-similes” substituted.
* Where a party claims by assignment or alienation, the nature of the con-
veyance and alienation should be stated (Stephen on Pleading, 804, 311, 436).
Either a certified copy of the assignment should be attached to the application
papers, or, if the same shall have been filed in the Office, a reference should
be made to it. Especially is it necessary to be introduced as an exhibit in this
case, to show whether the transfer was made to it, the company, or to them, the
individuals. If assigned to them, it seems that the company paid the considera-
tion. Misty enough
* An inventor has no property in a design, unless it is patented as an
adjunct of a manufacture. Actual use is the criterion of adoption of a symbol
as a trade-mark. Intellectual conception has nothing to do with a mark, as an
emblem of commerce. No title could therefore be deduced from “the original
designer and inventor.”
* If it, the company in its aggregate capacity, i.e. as a corporation, is to
obtain protection, it must be only upon the application of its proper officers.
* Neither letters patent nor a copyright can apply to a trade-mark case.
19 They do not appoint, for the paper is signed by but one, who styles himself
“President.”
11. At all events, the substitute could not be appointed except by Simon Shallow.
* No alterations or amendments can be made in a trade-mark without de-
stroying its identity. If altered, it becomes something else.
18 Meaning the certificate of registry.
14 If this really is meant for an appointment by an incorporated com-
600 LAW OF TRADE-MARKS. [$ 594.
$ 594. Specification describing a trade-mark for pamphlets
and circulars used by the “Union Land Improvement Com-
pany,” of Baltimore, Maryland.
“Our trade-mark consists of the design” as fully represented
and described in the annexed cut or drawing,” composed in part
of the words ‘Union Land Company’ with our initials 4 on a
shield; but the said shield and initials may be omitted, or any
other design be substituted therefor, or vice versa."
“The most “essential features of this trade-mark are the words
mentioned, and the shield when used, together with the adver-
tisement * of the company, and notices of the valuation of build-
ing-sites, etc.; but these or any of them may be varied or omitted
according to circumstances.”
“This trade-mark, consisting of the parts described, we have used
in our business of publishing for some time past, and with good
effect.” The particular class of goods upon which said company
has used,” and still continues to use said trade-mark, consists of
pamphlets and circulars,” in addition to our signs and cards.” We
have been accustomed “to brand it with a stencil-plate and black
ink on packages of circulars and pamphlets sent to our various
pany, the conclusion should be somewhat thus: “Witness the seal of said
Corporation, and the signature of its president, at Such-a-place, in the
county of Baltimore and State of Maryland, this 8th day of October, A. D.
1885.”
* The true name should be given. There is a repugnance to the title pre-
viously stated.
* A trade-mark cannot correctly be said to consist of a design.
* Which is it, — a cut or a drawing 4 Inspection shows that it is neither,
but a stencilling.
* Whose initials 3
* The word “design” is out of place. We nearly despair of a solution of
this enigma.
* The word “most” must be eliminated.
7 How can it be essential at all, if it may be dispensed with?
* An advertisement eannot enter into a trade-mark.
* Sheer nonsense. #
19 Surplusage.
11 For how long a time? (Sect. 1 of the Act of 1881.)
* We have already seen that these pamphlets, and circulars are used as mere
advertisements.
* “Signs and cards.” Are these merchandise?
* How now applied and used?
§ 594.] PRACTICE IN THE PATENT OFFICE. 601
agents, or print it on the faces of the same * with the usual print-
ing-ink.
“TWitness : I. K. LAN.E.””
“A. BELL, President.
AFFIDAVIT.
“Commonwealth of Maryland,”
City & County of Baltimore," | "
“Personally appeared before me, a justice of the peace in and for
said city and county, the said A. Bell," who, being duly sworn,
doth depose and say that he is an officer of said company within
mentioned;" that they" have the right to the use of the trade-
mark described, and that no other person, firm, or corporation has
a right to the same,” or any part thereof;" that the description
and fac-simile presented for record are true copies” of our trade-
mark; and he further says that he is domiciled in and is a citizen
of the said State.”
“ADAM YoUNG,” J. P.””
* It would be hypercritical to say that the last, antecedent is the word
“agents.”
* Two witnesses are required. Query, —Is not this witness the person named
in the petition as a party 4
* Should be “State of Maryland.” (See Constitution of same.)
* The city and the county of Baltimore are different jurisdictions, the city
not being in the county proper, but being itself a borough with county powers.
This oath could not have been taken in both city and county. This error has
been committed a number of times in trade-mark applications, being generally
attributable to recklessness on the part of agents or self-appointed solicitors.
The oath must be discarded.
* Full name required.
6 He fails still to state that it is a corporation.
T This implies a lack of incorporation.
* This should read, “a right to the use of the same.”
9. This is too sweeping an assertion.
10 A description cannot well be termed a copy.
11. It is sometimes the fact that a person is a citizen of a State, but not of
the United States. The regulation made by the Commissioner of Patents on
the 29th of February, 1872, reads: “The form of oath for application for regis-
tration of a trade-mark will hereafter contain a statement of what country
the applicant is a citizen, the same as in patent cases.” (Sect. 1 of the Act of
March 3, 1881.)
1* No date to the jurat, not fatal, but an irregularity.
18 This officer, who improperly abbreviates his title to “J. P.,” leaves us in
the dark as to the question of his jurisdiction. He cannot be a justice of the
peace for both Baltimore City and Baltimore County.
602 LAW OF TRADE-MARKS. [$ 596.
§ 595. Examples equally vicious may be drawn in an al-
most infinite variety from cases actually filed in the Patent
Office. Brief and comprehensive as are the approved forms,
and intelligible as they are, they are constantly made the
sport of a spirit of misunderstanding. Instead of a terse
style of allegation, involving a strict retrenchment of unneces-
sary words, – which is the aim of the best practitioners in
pleading," — we behold extraneous matter, recklessness of
allegation, inconsistencies, ingenuity of falsehood. All the
errors of the preceding cases have not been pointed out; but
sufficient have been displayed to convince us of the necessity
of thought and caution in drafting a simple set of papers.
§ 596. In view of the fact that action in the Patent Office
is taken only to pave the road for possible ulterior proceed-
ings in law or in equity, too much caution cannot be observed
in declaring title. The metes and bounds of a field must all
be carefully defined, before a person can be charged with
encroachment thereon. Therefore, anything which does not
possess all the essential characteristics of a trade-mark, under
the generally accepted rules of commerce, cannot receive
recognition. A thing must exist before it can be acknowl-
edged. If the proposed mark be merely indicative of quality,
it must fall to the ground.” Yet this truth is slow in obtain-
ing credit. It was thought that the legal advisers who, in
1859, contended that the term “Schiedam Schnapps’ 8 con-
stituted a valid trade-mark, would long since have abandoned
that fallacious idea; but the position taken at the trial of a
certain cause * implies the contrary. In the Supreme Court
of New York, October 14, 1872, at special term, the matter
was again decided. It appears that, at about a year before
that day, the plaintiffs began the sale of an article of gin
manufactured by them under the name of “Hudson G. Wolfe’s
Bell Schnapps.” The defendant, a corporation succeeding to
the rights of the late Udolpho Wolfe, claimed this name to be
1 Stephen on Pleading, 424.
* See ante, § 134, “Generic Names.”
8 Wolfe v. Goulard, 18 How. Pr. 64; R. Cox, 226.
* Hudson G. Wolfe et al. v. Udolpho Wolfe Co., 2 Off. Gaz. 441.
§ 597.] PRACTICE IN THE PATENT OFFICE. 603
an infringement of its trade-mark, viz.: “Udolpho Wolfe's
Aromatic Schiedam Schnapps.” The defendant, by its agents,
threatened the plaintiffs with prosecution, and sent circulars
with a similar threat to their customers throughout the coun-
try. The latter were in many instances intimidated thereby.
The plaintiffs thereupon brought suit against “The Udolpho
Wolfe Company,” and asked an injunction to restrain the de-
fendant from thus interfering with their business. A pre-
liminary injunction was granted by Gilbert, J. The question
upon the hearing was this: Did the plaintiffs by their use of
the words before mentioned violate any right of the defend-
ant? Pratt, J., who heard the cause, said, inter alia: “The
evidence taken convinces me that, prior to 1848, the word
‘Schnapps’ had become a portion of our common language,
and was used to denote either gin or a class of articles of
which gin is one. The question of law arising on these facts
is a narrow one, and has been several times decided. . . . The
reason of the rule is obvious, – the language might otherwise
be impoverished, and the community be exposed to incon-
venience without any corresponding benefit. It follows from
these views that the plaintiffs must have judgment in their
favor.” This decision maintains two points. 1st. That the
defendant had no valid mark in the collocation of words men-
tioned. 2d. That the plaintiffs had a valid mark in theirs.
It was not necessary for the purposes of the suit that the
learned judge should go farther, or he might have truly said
that the word “Bell” is the essential part of the mark. In
the former suit, it was admitted in argument that the word
“Schiedam,” being the name of a town in Holland, could not
be appropriated by the plaintiff, and that the word “Schnapps”
was a word adopted from the German language, meaning a
dram.
§ 597. Just as worthless for the purpose of constituting
trade-marks are such words as “Old London Dock Gin”;1 or
“Prize Medal, 1862”;” or “Nourishing Stout.” So in the
1 Binninger v. Wattles, 28 How. Pr. 206.
2 Batty v. Hill, 84 T. R. (N. s.) 791.
* Raggett v. Findlater, L. R. 17 Eq. 29; 48 L. J. Ch. 64; 29 L. T. (N. s.) 448;
22 W. R. 53.
604 LAW OF TRADE-MARKS. [$ 598.
“Moline Plough" case, in the Supreme Court of Illinois, in
1870, where the manufacturers branded upon their ploughs,
for the purpose of designating the size, shape, and quality
of the different grades, respectively, certain letters and fig-
ures in combinations, as “A No. 1,” “AX No. 1,” “No. 1,”
“AX No. 11,” “B No. 1,” etc., it was held that no exclusive
right to their use existed; but that they could be used by any
other manufacturer of the same articles.” And so in the case
of Stokes v. Landgraff,” where certain words and figures were
employed to designate the size and quality of glass. The
“English's Broom * matter is also in the same category,” and
so also are many other cases to be found in close proximity
to it in this book, and all designating the mere quality of the
merchandise to which they were affixed, or being necessary
names and common phrases which all persons have a right to
use. — The following are samples of rejected cases. The
words “New York Cutlery Co.,” because the mere name of
the applicant; * “D. D. & Co. — Tasteless,” for drugs and
medicines, because they are either descriptive or deceptive ; *
the figure of a fish, for fishing-lines, as merely descriptive ; *
the words “Crack-proof,” for India-rubber goods, for the same
reason; 7 and also “Iron Stone,” enclosed in an oval border,
for water-pipes.” Minor non-essential elements of a composite
symbol were refused registration ; * as was also a combination
of two symbols, each of which had been registered in other
cases. 19
§ 598. In the Court of Lyons, in 1866, (Chabrier v. Peil-
lon,”) came up a suit involving a question similar to that
1 Candee, Swan, & Co. v. Deere & Co., 54 Ill. 489.
* Ante, §§ 157–160.
8 Ante, §§ 162, 163. Yet, March 24, 1885, the triple letters “xXx,” for bot-
tled lager-beer, was registered by the Anthony & Kuhn Brewing Co. (No
12,033); and on the same day, “XX” or “double X” for sad-irons, by John
Sabold, Jr. (No. 12,051).
4 Re Rowe & Post, 3 Off. Gaz. 496.
5 Re Dick & Co., 9 Id. 538.
6 Re Pratt & Farmer, 10 Id. 866.
7 Re The Goodyear Rubber Co., 11 Id. 1062,
8 Re Rader & Co., 13 Id. 596. 9 Re Coats, 16 Id. 544.
10 Re Smith, 16 Id. 679. 11 16 Annales, 73.
$599.] PRACTICE IN THE PATENT OFFICE. t;05
which arose in the subsequent “Akron’ 1 and “Lacka-
wanna ’’” cases in this country. On the banks of the Rhone,
in the environs of Seyssel, exists a natural repository of
asphaltum. To distinguish it from many mineral deposits of
the same kind situated in other parts of France, the usage has
been to attach the denomination of “Asphalte de Seyssel.”
The court held: “Considering that this is a denomination of
region adopted in the language of mineralogists and in the
usages of industry, said denomination cannot become the sub-
ject of an exclusive right of property for asphaltum extracted
from a particular place of deposit. That names of locality,
simple geographical expressions, are common property, and
can be employed with equal right by all interested in using
the designation, is well established as law.” The claim of the
plaintiff was accordingly rejected. This is the principle that
governed the Office in the “Geyser Spring”* case. The
“Congress Spring” + was not brought within the reason of
the rule, because all persons had not the same right as the
plaintiffs, who possessed the entire title to the land where
such spring had its outlet.
§ 599. In the Court of Bordeaux, in 1853, (Salignac & Co.
v. Levanier & Co.,”) it appeared that the plaintiffs had adopt-
ed as a designation of commerce for their brandy the words
“Salignac et Compagnie,” and beneath the same the words
“Propriétaires de Vignobles réunis.” The defendants, for the
same purpose, adopted the words “J. Levanier et Compagnie,”
and beneath the same the words “Compagnie des Propriétaires
de Vignobles.” Per Curiam : The words “Propriétaires de
Vignobles” (Vineyard Proprietors) is a generic term be-
longing to an indefinite number of proprietors, and cannot
indicate to commerce the origin of the article to which they
are affixed. Dismissed.”
1 Ante, § 182. * Ante, § 189. 8 Ante, § 276.
4 Ante, § 191. * Journal du Palais, 1854, p. 129.
* The report of this case states that, during the progress of this suit in
France, Salignac, in the name of his company, had obtained from the Lord
Chancellor of England an injunction and sequestration of certain goods so
marked, found in the London Docks. If so, it doubtless was on the ground of
unfair competition; for there is nothing of the nature of a trade-mark in the
whole case.
606 LAW OF TRADE-MARKS. [$601.
§ 600. An application was made, in 1872, for the registra-
tion of the words “Great Lightening Ink Eraser.” These
words, being descriptive of the article to which they were
intended to be affixed, could not be favorably entertained.
The Examiner made a suggestion that the interpolation of a
single letter had quite changed the meaning of the essential
word. Any ink eraser would lighten the ink marks, and
therefore might truly be called a lightening ink eraser. The
diminution of weight was not the exact point. The participle
could be taken in but one sense. It could not possibly be
meant to imply that the applicants’ eraser burst or darted
forth with an instantaneous illumination. That would be
nonsense. The second vowel made the trouble. The word
might better have been written “Lightning.” The use of
the metaphor would then have imported that, with the quick-
ness of the electric flash, the stains of ink would be caused to
disappear. Nor need that word be regarded as necessarily
descriptive. That improper spelling would, in ninety-nine
cases in a hundred, defeat the cause of the person who claimed
the word. The rule of idem sonans could not save it. But
this, however, is a fine point. — In the Court of Lyons, in
1884, an analogous case was decided. The registered mark
consisted of the words “Insecticide foudroyant.” It was
held that the adjective foudroyant (striking with a thunder-
bolt), applied to an insect-killing powder, is but an expres-
sion drawn from common language, although pretentious, to
intimate, in a single word, the efficaciousness of the powder
offered for sale, and cannot be deemed to be a technical term
under the French law of 1857.1
§ 601. An inventor may give the products of his genius, or
skill, or good fortune, a distinctive appellation of infinitely
greater value to him than a patent for the machine or dis-
covery. This is a matter that is worthy the consideration of
applicants for registration. The object is to select, or rather
invent, a designation peculiarly applicable to the thing of
1 Galzy v. Courcy, 80 Annales, 84. The learned editors, with a considerable
show of reason, in a note, dissent from the finding, and cite authorities the
other way.
§ 602.] PRACTICE IN THE PATENT OFFICE. 607
which a monopoly is desired. Now for an illustration of this
idea. In or about the year 1814, John B. Logier obtained
from the British government a patent for fourteen years, for
an instrument for guiding the hands of learners on the piano-
forte. He compounded two Greek words, signifying “to form
the hand,” and named his machine the “Chiroplast.” He
acquired great reputation and a considerable pecuniary profit
from the favorable reception of the instrument. If it had
occurred to him that this new word was a valid trade-mark,
it would have mattered little that his patent expired in four-
teen years; for the mark would have virtually given him a
monopoly so long as the public called for the “Chiroplast.”
As it was, the word is now generic.” – In Bardin v. Gobert
et al.,” the plaintiff had obtained a patent for a species of
ornamental feather produced by his invention of detaching
the epidermis of all kinds of natural feathers, and dyeing them
of all colors, as ornaments of various sorts for head-dresses,
finery, flowers, embroideries, lace-work, and tissues. This
constituted a new product of commerce. It needed a name.
He composed one, —“Faillantine.” This meant his patented
article, and nothing else. It was a perfect trade-mark. —
In late dictionaries of the English language, the word “har-
vester” is defined as one who gathers the harvest. The name
came to be applied to the machine; and now a whole class of
machines in the Patent Office are termed “harvesters.” The
term “vibrator” was applied to a kind of agricultural ma-
chine ; now there is a class of “vibrators.” So the term
“revolvers” includes many kinds of revolving pistol.
§ 602. Propriety must be the standard in the selection of
something intended to serve as a symbol of commerce.” Com-
merce extends throughout the world; therefore a mark should
be valid throughout the world to be valid in any country.
This is a general rule, that may possibly have exceptions.
Care must be observed to avoid copying established hall-
marks, or emblems common to specific manufactures. For
example: in articles of manufactured gold in Great Britain
1 See ante, § 221, “The Name of a Machine,” etc. * 12 Annales, 880.
* See case, ante, §§ 342–344; also cases in § 370.
608 LAW OF TRADE-MARKS, [$602.
and Ireland, an anchor shows that the gold wares were made at
Birmingham ; a dagger and three wheat-sheaves, at Chester;
“Hibernia,” at Dublin; a castle and a lion, at Edinburgh;
a castle with two wings, at Exeter; a tree and a salmon with
a ring in its mouth, at Glasgow; a leopard’s head, at London;
three castles, at Newcastle-on-Tyne; a crown, at Sheffield;
and five lions' heads and a cross, at York. The moral, re-
ligious, or political sensibilities of any people must not be
shocked by the perversion of an emblem sacred in their eyes.
There is no necessity for so doing, for the objects suitable for
use as trade-marks are as infinite in number as the sands of
the sea-shore. A violation of this rule is not only in bad taste,
but is also an outrage. The spirit of commerce is concilia-
tory. We must not blindly follow the loose, random sayings
of judges, that any emblem may be lawfully employed for
this purpose. To be a “lawful trade-mark,” the emblem must
avoid transgressing the rules of morality or public policy.
The law will not aid any person to bring obloquy upon ob-
jects and symbols consecrated to religion. But what is re-
ligion, in its relation to commerce 2 It is the recognition of
God as an object of worship, love, and obedience. All peoples
worship God under one form or another, or at least think
that they do. Their religious prejudices should not be
trampled upon. We tolerate all religions, true or false. A
reader of these lines may be a Chinaman. His joss must not
be caricatured. If a scoffer should endeavor to curry favor
with infidels by the profane use of an Agnus Dei, or of any
symbol of the Alpha and Omega, or the Ineffable Name, or
even of angels, apostles, Saints, and martyrs,” or of a thousand
1 The laws of many nations forbid the registry of sacred emblems. Very
recently, the Department of Customs of Russia issued an order on this subject,
which has been copied in the Bulletin Officiel (Paris, Feb. 12, 1885). It says
that lately there have been importations of foreign merchandise bearing trade-
marks composed, in part, of the image of the Virgin Mary (“la Mère de
Dieu"), of St. George the Conqueror (patron saint), and other saints; and it
continues, that “the right of property that a foreigner possesses in a mark in
his own country does not authorize the entry into Russia of manufactured
products invested with sacred images, and consequently no goods so marked
shall be permitted to enter the custom-house.”—Our Patent Office acts on this
rule of propriety.
§ 603.] PRACTICE IN THE PATENT OFFICE. 609
objects depicted by ancient art, and hallowed by associations,
would any court of justice sustain a claim to a trade-mark so
composed? No. This is a rule of general application. In-
deed, the Office hesitated to permit a representation of the
evil one himself to be registered as a trade-mark. The de-
vice is set forth in the specification as “a smiling, half-drunken
demon or devil, in a sitting posture, with the left leg raised
at an angle of about forty-five degrees, while the right one is
folded under it, and his tail passes over his right ankle. The
demon wears a broad-brim hat with conical top and feathers,
and in his arms and hands he carries six bottles.” The
frightful thing might possibly convey a moral lesson by an
association of ideas. The bottles turned the scale. It had
been recognized in Germany; and was registered." Suppose,
for the sake of further illustration of this topic, that the fiend
had borne the likeness of a human being venerated by a large
class of followers. It would have been in law an atrocious
libel, and must have been rejected on that account.
§ 603. We have seen that a colored bordering of a woven
fabric may be as valid a trade-mark as any other device, espe-
cially when announced as such, and recognized by the trade,
and consequently will be protected like any other symbol of
commerce.” But a mark must be well defined, and its nature
be calculated to effect its object. As to what would be
deemed an encroachment upon such a delineation, we have
a decision of the Court of Cassation of France, made in May,
1872 (Dugué & Co. v. Bobot-Descoutures”). Both parties
manufactured drillings. The complainants in their registra-
tion described their mark as composed of eight threads, ar-
ranged thus: two of violet, four of white, and then two of
violet. The court said that it thence follows that the distinc-
tive element of this mark is the number of threads, their dis-
position, and the alternation, as described. The defendants
used four deep lilac threads, disposed so as to intertwine like
a chain; whence it follows that the number of threads are
not the same in both marks. The color is not the same, the
1 Re Walter & Shaeffer, No. 434.
* See ante, §§ 89 and 268, for similar cases. 8 17 Annales, 305.
39
610 LAW OF TRADE-MARKS. [$ 604.
complainants having two colors, while the defendant has but
one color, — deep lilac. The disposition of threads is differ-
ent: the violet and white of the complainants' alternating, as
stated, while in the defendants' the color is a unit. To disre-
gard the number and disposition of threads in the complain-
ants' mark were to suppress one distinctive element, and to
take it without the basis they have adopted to characterize
the peculiar products of their manufacture. If their fabric be
examined, in piece or in roll, there can be no hesitation in dis-
covering the lack of resemblance between the two marks.
In a word, from any point of view, no imitation can be dis-
cerned upon which to found a claim to damages. Both marks
were recognized as valid.
§ 604. When a large number of persons are interested in a
trade-mark, either as members of a joint-stock unincorporated
company, or as the personal representatives of a deceased
person, or as guardians of infants, any of the number may be
selected to make the application for registration, for their joint
benefit. In one case, the papers were executed by one such
person, in his own behalf and “as the representative of, and
for the joint and equal use of, the heirs at law,” etc.; and yet
he asked that the registration should be made in his name, he
having adopted a trade-mark for the benefit of all the others.
He afterwards filed an unauthenticated certificate purport-
ing to be signed by seven others as “the only heirs at law
and legal representatives of Alpha Richardson, deceased,” in
which he, the applicant, was recognized as “the representative
of the heirs at law.” Papers so inartificially prepared could
not receive a very favorable consideration. The complication
might easily have been avoided in this way: if all the parties
had adopted a trade-mark for their united interest, or had
inherited such mark, they were tenants in common thereof,
and one might have been appointed attorney in fact by and for
the others; or, regarded as a copartnership, a single member
of the concern might quite as well have done the business of
obtaining registration. In either case, the petition should
have been assimilated to the form prescribed for a firm. All
1 See same case, ante, § 221, and infra, § 611.
§ 606.] PRACTICE IN THE PATENT OFFICE. . 611
the parties would then have acted through one, and the cer-
tificate of registry might have issued in the names of all, or to
them as a firm." .
§ 605. The following case is a curious instance of the ideas
that are sometimes entertained in regard to the constitution
of a trade-mark. It came up in the Court of Paris, in 1865
(Prudon v. Brousse et al.”). The plaintiffs made up cigarette
paper in the form of a roll or endless band, with sections
indicated, being kept rolled by means of a caoutchouc band,
which they patented. They then made a deposit of what they
assumed to be their trade-mark, i.e. the cylindrical form of
their product. The Tribunal of Commerce of the Seine hav-
ing rejected their suit, they appealed. The appellate court
affirmed the judgment, saying that, although that peculiar
form of the complainants' product had been used by them ex-
clusively for a number of years, it could not constitute the
commercial property known as a trade-mark.
§ 606. The Doctrine of Alternate Forms has sometimes come
up in practice. It is based on the decision of the United States
Circuit Court for the District of Connecticut, in Morrison v.
Case,” in which it was held that the words “The Star Shirt,”
the words “The Star Shirt” with the figure of a star, and the
words and device “The * Shirt” constituted a single mark.
On that authority, the Commissioner Duell reversed the decis-
ion of the Examiner, in Re Weaver, ea parte," and directed the
registration of a trade-mark consisting of the word-symbol
“Lion,” or the pictorial representation of a lion, or both.
Ever since then, it has been the settled practice to register
alternate forms, when they constituted true alternatives. The
reason given is that a trade-mark appeals in many cases to the .
ear as well as to the eye. The goods bearing the symbol of
a star will be known to commerce as the star goods, and so,
also, if they bear the word “Star.” “But,” said Examiner
1 Many manufacturers may unite to use a mark in common, and all thus be
co-proprietors, as, for example, a union of hardwaremen, and as joint owners
they may assign to successors or admit new members on an equal footing with
themselves. Arnoult et al. v. Franck, 27 Annales, 352.
2 Journal du Palais for 1865, p. 1125.
* 9 Blatchf. 548; 2 off. Gaz. 544. 4 10 Off. Gaz. 1.
612 LAW OF TRADE-MARKS. [$607.
Seely, in a case in 1885, “this doctrine has some limitations.
The question whether a word and a symbol presented for
registration, whether by the same party or by different par-
ties, are alternative forms of the same trade-mark, is one that
calls for the judgment of the Office, and it is not left to the
determination of the applicant. They must be exact alterna-
tives, such that, on sight of the symbol, the word naturally
occurs to the mind; such that, to express the symbol in lan-
guage, no other word will occur; such that the written or
spoken word unfailingly suggests to the mind the visible sym-
bol.” He cited an instance where a trade-mark for gloves
consisted of a picture of a kid with its dam ;" yet no one
would venture to assert that the word “Kid,” as an alterna-
tive form, could be a trade-mark for gloves. Similar to this
case is another,” where a pair of kids in harness is the essen-
tial feature for gloves. Nor can this doctrine be stretched to
cover cases in which the symbol is fanciful, while the name
expressive of it is descriptive of quality or the price of the
goods to which it is attached. In the case of 1885 referred
to, the alleged trade-mark consisted of a United States cent
in coin, affixed to a piece of tobacco, and the word “penny”
was claimed as an alternative form thereof... “Cent” and
“penny” are not convertible terms. Therefore it was held
by the Examiner that the word “penny” cannot by itself
constitute a valid trade-mark for plug tobacco, nor is it an
alternative form of the word “cent,” or of the coin of that
name. An appeal having been taken, no opinion on this
exact point of alternative forms was expressed by the Com-
missioner, he holding that the word “penny” could not be a
trade-mark, being merely descriptive and common to trade.”
§ 607. Rejection because of False Suggestion. — The appli-
cation papers may be perfect in form, and, so far as verbal
language goes, quite impregnable, and yet be open to assault.
The sworn statement is not always conclusive. The case as
presented is liable to dissection, and hideous deformities may
be exposed to view. The allegations may be true in letter,
1 Registration No. 9,851. - * Registration No. 11,984.
* Perkins & Ernst, 28 Com. Dec., 93.
§ 608.] PRACTICE IN THE PATENT OFFICE. 613
and false in spirit. The Office will penetrate the surface, and
endeavor to reveal any latent fraud. The declarations of
good faith may be overturned. Spurgeon says that no one is
more like an honest man than a thorough rogue. There
seems to be no end to the devices of unworthy traders, to
trick their rivals and the public; nor can there well be until
bounds shall have been set to human ingenuity. Yet, to war-
rant a refusal to register, there must be sufficient evidence of
unfairness to overcome the natural presumption of honesty
and fair dealing. For that reason, many suspicious cases are
allowed to pass muster, and to go into the field of active
strife armed with the certificate of the Patent Office, with
the chance that justice may eventually overtake them." The
Office is not bound to hunt for motives not made apparent by
the papers; yet, if the ea parte case cannot look one fairly in
the face, the blandest words cannot save it from condemna-
tion. It has been vehemently said that the Office is not the
conservator of the morals of the community, nor does it aspire
to be. But it has a duty to perform, and that duty is care-
fully to scan each proposed case, and, if necessary, to probe it
thoroughly. A self-styled trade-mark may upon examination
be found to be a brazen-faced counterfeit. Any objection to
validity which might be made in subsequent judicial proceed-
ings may be anticipated in an application for registration, and
fraud is certainly the most formidable foe that can appear.
§ 608. The fraud which would justify a refusal to register
a proposed trade-mark may be, — 1. Actual or positive fraud;
2. Constructive fraud. That is, it may be the intentional
employment of any cunning, deception, or artifice, to circum-
vent, cheat, and deceive purchasers;” or it may consist in
1 See C. A. Yale Cigar Manufacturing Co. v. C. A. Yale, 30 Off. Gaz. 1188.
The respondent was one of the partners and superintendent of the company
which owned the mark. He secretly and covertly obtained registration of the
mark “Grand Master,” for cigars, he never having individually adopted it.
The decision was in favor of the company. —In the Court of Lyons, in 1880,
(Seigle v. Mondon, Gomon, & Carre, 29 Annales, 177,) a similar case was decided,
with the same result.
* “Dolum malum esse omnem calliditatem, fallacium, machinationem ad cir-
cumveniendum, fallendum, decipiendum alterum adhibitam.” Dig. 4. 3. 1, 2;
Poth. Obl. n. 28.
614 - LAW OF TRADE-MARKS. [$609.
acts which, though not originating in evil design and con-
trivance to perpetrate a positive fraud or injury, yet by their
necessary tendency to deceive and mislead, or to violate public
or private confidence, are deemed equally reprehensible with
positive fraud, and therefore are prohibited by law, as acts done
ºnalo animo." The public must be protected, at least to the
extent of declining to recognize a mark as the valid symbol
of honest traffic when bad faith is apparent. Fraud is not to
be judged of by the event only, but also by the design.” Even
the appearance of evil is a sufficient justification for rejecting
an application. Without making invidious distinctions be-
tween the various classes of cases presented for registration,
we may use the following by way of illustration. -
§ 609. The words “Hamburger Tropfen,” Hamburg Drops,
were proposed for registration, as a trade-mark for a certain
kind of medicine.” The Office answered that it is difficult
to conceive upon what principle such words could be upheld
as a lawful trade-mark. They are printed upon a label en-
tirely in the German language, and, beyond doubt, addressed
to German-speaking people. To them the said words are
plain “Hamburg Drops,” and nothing more. The words are
therefore descriptive; that is, if the medicine truly consists
of drops coming from or made in Hamburg. Any person in
Hamburg has a right to manufacture “drops,” and as much
right to give those drops the geographical name of “Hamburg.”
But there is another objection. The label upon which the
said words are printed has upon it the representation of an
ornamented mortar and pestle, beneath which are the words
“Handels Marke,” besides a caution, and a fac-simile of the
signature, “Dr. August Koenig.” These words clearly indi-
cate the previous appropriation of the said representation as
a trade-mark, and that by some one other than the applicants.
By reference to the application papers, it will be perceived
that the medicine of the applicants, upon which article it is
1 1 Story Eq. Jur. § 258–440.
* “Fraudis interpretatio semper in Jure Civile non ex eventu duntaxat sed
ex consilio quoque consideratur.” Dig. 50. 17.79. -
* Ex parte A. Vogeler & Co., 1872.
§ 610.] PRACTICE IN THE PATENT OFFICE. 615
proposed to use the words “Hamburger Tropfen,” is manufac-
tured by them at Baltimore, Maryland. Such a label seemed
calculated to mislead the public. For both reasons, the appli-
cation was rejected.
§ 610. The words “American Sardines,” as applied to cer-
tain fish prepared for food, were refused registration, in 1872,
for a similar reason. The objections were, the descriptive
nature of the words on the one hand, and their tendency to
mislead on the other. The written argument of the applicant's
counsel admits that the fish to which these words are applied
are not really sardines, but are “menhaden’’ or “moss-bunkers,”
which, cooked in any ordinary way, are not eatable, owing to
their numerous fine bones, and were therefore used only for
making oil until treated by the applicant's patent process.
The words “American Sardines” cannot, in view of this fact,
be held to be descriptive. But a more formidable objection
remains for consideration, said the Examiner, — the tendency
to mislead the public. The counsel attempt to meet this ob-
jection by insisting that no one who had ever seen a sardine
could mistake the so-called American sardines for the genuine
Mediterranean fish; for the applicant's fish are “at least six
times as large, though supposed to be of the same (herring)
family.” The answer was as follows: “The truth is this:
the inferior fish, the moss-bunkers, are put up by the appli-
cant in tin boxes similar in size and general appearance to
those containing the genuine delicate fish, brought from the
vicinity of Sardinia. It is not possible for any unadvised pur-
chaser to draw comparisons between the appearance or size
of the applicant's preparation of fish and the genuine, until
the box is opened; and the box is not opened until after pur-
chase. By that time the mischief will have been done. It
may be that the wholsale dealer would not in the least degree
be misled by the misuse of the word ‘sardines, or by the
appearance of the box with its French words on a brass label;
and retail dealers might be cautious enough to look at the
English words on said label, and draw the correct inference;
but they are not the only classes who are to be shielded from
deception. The careless, the ignorant, the inexperienced,
616 LAW OF TRADE-MARKS. [Š 61i.
must be protected; for they buy on the faith of a single glance
of the eye at the outside of the box bearing the attractive ap-
pearance of a genuine package of sardines. It is denied that
there is any intention on the part of the applicant to mislead.
That is not material in our present investigation. The real
question is this: Is the use of the name “American Sardines,’
as applied to a box resembling the genuine sardine-box, cal-
culated to mislead the public in the purchase of an article of
merchandise? It is not necessary for the determination of
this question that any purchaser shall actually have been de-
ceived. Would the public be likely to be misled? They
would be. Then, the proposed trade-mark cannot have the
Sanction of registration. As to the bona fides of the applicant
in adopting said words: Why apply the word “sardines’? As
moss-bunkers, perhaps the article would not sell. It is said
that the words “American Sardines’ are not given to the fish
themselves, but to the fish as prepared under a peculiar process.
The public would buy the prepared fish as genuine sardines,
which they are not. Even if the American prepared fish are
superior in taste and nutritious qualities to the Mediterranean
fish, there is no reason why a purchaser should not have
exactly what he calls for.” On appeal, the decision was af-
firmed, on the same reasoning."
§ 611. An application was made for the registration of the
words “Richardson's Patent Leather Splitting Machine.”?
These words being purely descriptive of the article upon which
they were placed, the case was rejected upon that technical
ground. Upon a close inspection of the papers, it was ob-
served that the applicant set forth that he had adopted a trade-
mark consisting of those words, while in another place in the
same documents he alleged that the mark had been in use for
upwards of twenty years. The statements are objectionable
for repugnance. That is not all that may be said. To use a
mild expression, the mode of relating the facts is very sug-
gestive. Under this gentle aspect, what motive lies concealed?
The phraseology—“for a term of upwards of twenty years”—
is simple and indefinite enough, and may reasonably be in-
1 Re American Sardine Co., 3 Off. Gaz. 495. 2 Re Richardson, Ibid. 120.
§ 618.] PRACTICE IN THE PATENT OFFICE. 617
ferred to mean at least twenty-one years. A patent granted
prior to March 2, 1861, expired in fourteen years, unless ex-
tended, in which case its duration would have been prolonged
for seven years. In either event, the monopoly must have
ceased. What would have been the practical effect of a rec-
ognition of this assemblage of words as a trade-mark? For
all time, the idea must thereby have been conveyed that a
patent upon the machine was still in force, and the monopoly,
which government had limited, might by an ingenious manoeu-
vre have been perpetuated."
§ 612. We need be at no loss to find precedents on this
point of false suggestion. Where one person had adopted as
his trade-mark the word Ҽ" he was an infringer who used
the words “The Heroine” for the same class of merchandise.”
So, when one person distinguished his black cotton stockings
from those made by others, by six plain lines one above an-
other, and about the eighth of an inch apart, going round
each stocking near the top of the leg, and the word “Ethio-
pian" printed in Egyptian characters below said lines in a
segment of a circle, and another person stamped lines and
characters somewhat similar on his stockings.” So, also, in
the “Chemical Paint” case, the “Cocoaine” case, the “Eau
de la Floride” case, and many other instances that may be
found in this book. The intent is to deceive.
§ 613. Litigation not unduly encouraged. — Applications
for registration are frequently made with the hope of obtain-
ing thereby a prima facie title,” as the basis of judicial pro-
ceedings. It may be well worth the while of a capitalist to
be enabled, by the production of a certificate of registry, to
throw the burden of proof upon an adverse party; and by
obtaining a preliminary injunction founded thereon fetter, if
not destroy, the business of another. We will suppose that
some article has a transient popularity. The moment of
demand must be seized. The delay of a few months may be
1 See ante, § 71, “A Lack of Truth debars from Protection,” and $ 72, “An
Untrue Use of the word ‘Patented.’” -
* Rowley v. Houghton, 2 Brewster, 803; 7 Phila. 39; R. Cox, 486.
8 Hine v. Lart, 10 Jur. 106; 7 L. T. 41.
* Act of March 3, 1881, sect. 7.
618 LAW OF TRADE-MARKS. [$ 614.
fatal to success; for fortunes sometimes depend upon instan-
taneous action. The article is known by a certain mark, and
that mark is a name. That name is the talisman that works
prosperity. Whoever has the sole right to stamp that magic
symbol on his goods, wares, merchandise, has the monopoly.
An injunction is applied for. The proof of registration af-
fords strong presumptive evidence of title. The provisional
injunction is granted. Weeks, months, perhaps years, must
elapse before the controversy can be determined upon its
merits. In the mean time, the enjoined party suffers irrepar-
able injury. It matters little who shall eventually win the
battle. Craft, insolence, and abundant pecuniary means, will
by that time have reaped the golden harvest. This is not a
fancy sketch. Whatever may be the cause of a misstatement
of facts, the legal result is the same : the thing proposed can-
not become a lawful trade-mark. Thus, where it was alleged
that the trade-mark consisted essentially of the words “Rip
Van Winkle,” and a triangle enclosing the applicant's initials,
and it was found that another house had the words “Rip
Van Winkle,” as a mark for the same class of merchandise,
the application was rejected." The imitation was only in
part, but was sufficient to cause confusion, and likely to pro-
voke litigation. The word “Star,” for oil, was rejected be-
cause another person had already registered a device for oil,
consisting of a star containing the letter G;” and “Centen-
nial,” combined with a firm name and place of business, for
sparkling wines, because a previous applicant had registered
“Centennial” for alcoholic spirits.” -
§ 614. Surrender and Reissue cannot, in strict parlance, be
said to be applicable to a trade-mark case. But it sometimes
happens that errors creep into certificates, or application
papers. If the error is on the part of the Office, the party
cannot be prejudiced thereby; * and the correction will be
made without cost to the applicant." If, after a party obtain
1 Ex parte Fechheimer & Workum, 1872.
2 Re The American Lubricating Oil Co., 9 Off. Gaz. 687.
8 Re Busch & Co., 10 Id. 164. 4 Phelps v. Brown, 1 Fisher, 479.
* Re James Cochrane, Com. Dec., 1869, p. 60, and Re Havemeyer et al., Id.
1870, p. 5. -
§ 616.] PRACTICE IN THE PATENT OFFICE. 619
registration of a trade-mark, he discover that the certificate of
registry is inoperative, or invalid by reason of a defective or
insufficient statement or specification, or by reason of too
great a breadth of claim, which error has arisen by inadver-
tence, accident, or mistake, and without any fraudulent or
deceptive intention, he may be permitted to surrender his
certificate, and obtain another." -
§ 615. Money paid as Fee, when returnable. — It is pro-
vided by statute, “that the Treasurer of the United States is
authorized to pay back any sums of money to any person who
shall have paid the same into the Treasury, or to any receiver
or depositary, to the credit of the Treasurer, as for fees
accruing at the Patent Office, through mistake, certificate
thereof being made to said Treasurer by the Commissioner of
Patents"; * but a mere change of purpose, after the payment
of money, will not entitle a party to demand such a return.
§ 616. The money must actually have been paid through
mistake, to authorize a return. In any case, where the Office
has no jurisdiction of the subject matter filed, such return
will be made; as, for example, where a non-trading corpora-
tion filed an application for the registration of a mark, which
was therefore not a trade-mark in contemplation of law, the
money was returned. So, in a case where an applicant trans-
mitted a fee which he desired to be applied for copyrighting a
picture, which matter is solely within the cognizance of the
Librarian of Congress. But when the Office has undoubted
jurisdiction of the class to which the case belongs, the fee will
have been earned the moment of the first action by an officer.
The government does not undertake to warrant a valid title,
or any title at all. The party is presumed to know the true
state of facts, as well as the law, before he applies for registra-
tion. If his application is rejected for any cause, the money
paid will be retained, by way of costs.
1 Re Ives, Beecher, & Co., No. 547.
* Rev. Stats., sect. 4986. Patent Office Rule 215.
620 f.AW OF TRADE-MARKS. [$ 617.
CHAPTER XIV.
INTERFERENCES IN THE PATENT OFFICE.
§ 617,618. Practice moulded on that of courts of equity
$ 619, 620. Manner of conducting interference.
§ 621. Interference an interlocutory proceeding.
§ 622. In what cases declared.
§ 623. Matters to be considered.
$ 624. Priority of right.
§ 625. Preliminary interference,
§ 626, 627. Exact time of adoption required.
§ 628. Who shall make oath.
§ 629. Preliminary statements, – when to be open.
§ 630. When adjudicated by default.
§ 631. Failure to file preliminary statement,-effect of.
$632. When postponement is required.
§ 633. Declaration and dissolution of interference.
§ 634. Judgment based on concession of priority.
§ 635. Notice to parties.
§ 686. Arrangement of time for taking testimony.
§ 637. Notice states point in issue.
§ 638. Grounds of interference.
§ 639. Compulsory-testimony.
§ 640. Access to testimony.
§ 641. Printed copies of testimony.
§ 642. Postponements, – on affidavit.
§ 643. Defaults not generally opened.
§ 644. Information in relation to pending cases.
§ 645. Sources of evidence. -
§ 646. What matters evidence,—how obtained,
§ 647. Case closed, when.
§ 648. Hearings, when.— Duration of arguments,
§ 649. Appeals pro forma to Commissioner.
§ 650, 651. Commissioner's decision final.
§ 652. Practice exemplified.
§ 653–657. “Durham ” tobacco case.
§ 658. Opinion of Examiner.
§ 659. Opinion of Commissioner.
§ 660. Opinion of Judge Rives. – Comments.
§ 661. “Bouquet” interference case.
§ 662. Multiplicity of legal questions.
$ 619.] INTERFERENCES IN THE PATENT OFFICE. 621
&
§ 668. Motion to admit new party.
§ 664. “Paul Jones” case.
§ 665. As to title to the mark “Paul Jones.”
§ 666. Good faith, question of.
§ 667. Imposition on the public,
§ 668. Why assignee had no title to mark.
§ 669. Good faith as regards Walsh, Brooks, & Kellogg.
§ 670. Want of equity on their side.
§ 671. Conclusion and dissolution of interference.
§ 672. “Magnolia’’ and “Dave Jones” trade-marks,
§ 678. Learning and skill required in interference cases.
§ 617. INTERFERENCEs frequently demand a most skilful
management, and bring into requisition all the acumen and
learning of the ablest lawyers, so far, at least, as regards the
taking of testimony, and the application of the rules of evi-
dence. This presupposes an intimate acquaintance with the
law of the case in hand.
§ 618. The matter must be as carefully conducted as though
it were pending in a court of equity; indeed, the practice is
moulded upon that of such a tribunal." As in controversies
in courts, substantial rights may be frittered away by an in-
artificial mode of procedure; by a failure to evoke evidence of
material facts, owing to a slovenly mode of examining wit-
nesses; or by such irregularities in practice as are beyond tol-
eration when the interests of another party are at stake.
$ 619. True it is that the Office earnestly strains after the
furtherance of justice; but to this—as to all worthy endeavors
elsewhere — there is practically a limit; and litigants must
generally be left to rest as best they may upon the beds made
by themselves. An issue is joined, testimony is taken, objec-
tions and points are made, arguments are heard, and the Of-
fice decides upon the whole matter as presented. Leading and
other improper questions and answers to them are ruled out,
and, it may be, whole depositions are eliminated for a mani-
fest lack of good faith, or for some other fault, although it
may be only the result of sheer ignorance or carelessness. In
case of surprise, relief will be given to an innocent party.
1 Sect. 3 of the Trade-Mark Act of March 3, 1881, prescribes that the Office
shall follow, so far as the same may be applicable, the practice of courts of
equity of the United States in analogous cases.
622 LAW OF TRADE-MARKS, [$ 622.
Thus, upon a motion, in the nature of an appeal, to reopen an
interference, in order to receive testimony which had been de-
layed until after the day of hearing by the fault of the officer
before whom it had been taken, the decision of the Examiner
was suspended, and the case on appeal set for immediate hear-
ing upon the testimony and arguments by that time in." But
after a party had filed his preliminary statement and taken
This testimony, the Commissioner refused to open the case and
allow the other party to file a preliminary statement and take
testimony, where, although not originally a party, it appeared
that he had had knowledge of the pendency of the interference,
and the proceedings under it.” -
§ 620. It may here be remarked, that seeming mere irregu-
larities are sometimes manifestations of subtlety and craft.
The object is to discover the weakness of the adversary, and
then, by feigned surprise, or plausible excuse, to obtain leave
to take additional testimony. Witnesses can usually be found
to supply all deficiencies in evidence. When such a motive
becomes apparent, the Office is sometimes called upon to ex-
ercise ingenuity to circumvent villany.
§ 621. An Interference is defined to be an interlocutory pro-
ceeding for the purpose of determining which of two or more
persons, claiming to be the first to adopt a trade-mark, really
did first adopt it.” It may also be resorted to for the purpose
of procuring evidence of an alleged abandonment of the mark
in controversy.” -
§ 622. It will be declared in the following cases: 1. When
the parties have pending applications before the Office at the
same time, both or all the parties claiming priority of title
to the same mark, - or one substantially the same, – used to
indicate the same class of merchandise. 2. When an appli-
1 Hayden v. Phillips, Com. Dec. 1871, p. 170.
2 Aldrich et al. v. Bingham, Ibid. 90.
8 The Commissioner had authority, under the old law, to declare an inter-
ference in a trade-mark case. Lautz Bros. & Co. v. Schultz & Co., 9 Off. Gaz.
791. So held by U. S. Circuit Court, N. J. Dist., Hanford v. Westcott, 16 Id.
1181. The subsequent act of March 3, 1881, sect. 3, gives ample power in the
same respect.
4 See infra, Chapter XV., on “Abandonment.”
$ 624.] INTERFERENCES IN THE PATENT OFFICE. 623
cant — having been rejected upon a previously registered
trade-mark—claims an older subsisting title. º
§ 628. Under the rule as to an older subsisting title, this
case may arise, and may as well as not be anticipated in this
place. A. may have in good faith registered his mark, sup-
posing that no one else in the world had appropriated it for
the same purpose; and as a fact it may be that no other per-
son had any right to ask for registration when A. made his
application. He then stood alone before the Office, with a
prima facie case, at least. If any other person had a better
right to the thing, that right was not made manifest. Accord-
ingly, his claim is admitted, and a certificate of registry duly
issued. We concede that A. was the only person who had a
legal right to registry. By virtue of a treaty subsequently
made with some foreign country, B. comes in and demands
that his trade-mark be registered in pursuance of the treaty
stipulations. His proof is clear that he had adopted the mark
long before A. had. What is to be done? A. acted in igno-
rance of B.'s right, and in perfect honesty. To deprive him
of the apparent exclusive right to the use of his symbol of
trade may do him irreparable injury. He was diligent; he
was truthful. At the time of registration, he was the only
person in the world who had any standing before the Office.
$ 624. The solution of the question is easy to him who has
studied the principles upon which rest the laws of a right to a
trade-mark. The question thus far presented is one of regis-
tration. We must pass that by, and come to the real ques-
tion, – Who had the prior right to the use of the mark?
The right to a trade-mark is founded on immutable law, as
we have before seen. Such being the case, B.'s priority of
right must prevail; and for this reason: it was not his right,
but his remedy, which was in abeyance. The treaty which de-
molished the partition walls admitted him to all the privileges
of the most favored persons. But then he ousted another from
a vested right? No; it was only an apparent right; for if
the Patent Office had had any knowledge that any one else in
any country had an older title, the application for registration
would have been refused. B. had all the time a perfect com-
624 LAW OF TRADE-MARKS. [$ 625.
mon-law right, and could have sued in our courts as an alien
friend, without the slightest regard to the matter of treaty or
eonvention." B. having established his claim, the next step
is to issue to him a letter of registry. That will be to have
two outstanding titles to the same property at once. Yes,
until a court shall have enjoined one from the use of the sym-
bol, or the wrong-doer shall have voluntarily relinquished all
claim to it. The Commissioner has no power to cancel a cer-
tificate of registration already issued; for that is a matter for
judicial cognizance upon a suit to be brought by the gov-
ernment, either in its own name or the name of the Attor-
ney-General; or by some form of proceeding which can give
official assurance of the sanction of the proper authority.”
But the Commissioner may, in an interference issue, if he find
that another was the prior adopter, give him also a certificate
of registry; and thus place both parties on the same footing
before the courts and the public. His authority for so doing
is found in the proviso to the third section of the trade-mark
law of March 3, 1881.8 *
§ 625. Preliminary Interference. — Before the declaration
of an interference proper, a preliminary interference will be
declared. In that, each party will be required to file a state-
ment under oath, giving a detailed history of the circum-
stances of his adoption of the mark; the extent and manner
of application to merchandise; and the particular description
of goods to which it was by him affixed; and giving, so far as
1 An alien suing for violation of his trade-mark need not even allege the
existence of a treaty. Fils v. Sarrazin, 15 Fed. R. 489.
2 Mowry v. Whitney, 14 Wall. 620; 5 Fish. 513; 1 Off. Gaz. 499.
* In the United States, the first adopter, or one deducing title from him, is
alone entitled to registry. (Act of 1881, sect. 3.) In England, it was held that,
inasmuch as each of the parties had used a certain mark independently and
bona fide for several years, the mark should be registered in both names. (Re
Powell, Re Pratt, 1 Trade Marks, 237; Sebastian's Dig., No. 857; Cox's Man.,
case 589.) With respect to those technically termed “old marks,” the court
permitted identical marks to be registered to three different parties at the same
time (Re Jolley, Son, & Jones, 1 Trade Marks, 346); but if the mark be used
by more than three parties, it cannot be registered at all, as, by being used by
more than three, it lacks the element of distinctiveness. Re The Walkden
Aerated Waters Co., 1 Trade Marks, 39; Re Hyde & Co., 7 Ch. D. 724; 28 L. T.
(N. s.) 777; 26 W. R. 625; 1 Trade Marks, 245. -
§ 627.] INTERFERENCES IN THE PATENT office. '625
practicable, the exact date of each step in the act of appropri-
ation. This statement must be sealed up before filing; and
the name of the party filing it, and the subject matter of the
case, must be indicated on the envelope.
§ 626. As just intimated, the real point sought to be
evolved is the exact time of adoption; and, as circumstances,
the manner of application, place of adoption, and the class
and species of vendible articles to which it has been applied.
It should also appear who made the original appropriation,
whether the claimant or some one from whom he derived
title; and if done through an agent that fact should be stated.
The case of Schrauder v. Beresford & Co. shows the impor-
tance of a circumstantial detail of facts, and especially the
necessity for setting forth the exact date of placing the symbol
upon goods offered for sale.
§ 627. The statute requires that the length of time during
which the trade-mark has been used shall be stated in the
application ; and the statement is generally conclusive against
the affirmant in any subsequent proceeding; for it would not
be just to allow him to fix a date under oath, and afterwards,
when another claimed a prior title, to come in and alter the
date so as to anticipate his opponent's title. In one case,” the
Commissioner held that such preliminary statement should
always be regarded as conclusive against the party making it,
restricting him to the date, and substantially to the history
therein set forth, while, by a well-known rule of law, it can
never be used as evidence against the adverse party in inter-
ference; and in another case, it was said that if testimony,
taken upon an interference, tends to set up an earlier date
than was claimed in the preliminary statement of the same
party, it must at least be viewed with grave suspicion.” The
stringency of this rule is sometimes relaxed, upon overwhelm-
ing evidence of unintentional error, and of perfect good faith;
although, of course, the presumption is always against him
who would attempt to vary a statement made under the solem-
1 Infra, § 661.
* Kenyon v. Wesson, Com. Dec. 1871, p. 91.
* Tegmeyer v. Kerns, Ibid. 285.
40 -
626 LAW OF TRADE-MARKS. [$ 629.
nity of an oath. In a patent case," the Commissioner said:
“The object of the preliminary statement is to serve as a
pleading, in which each party, in ignorance of his opponent's
case, sets forth the history and date of his own invention.
This he must know better than any one else, and he will be
held to make a full and accurate disclosure, without evasion
or reservation. He must distinctly state the date which he
proposes to prove as that of invention, and he must set forth
the character of the substantive act of invention, upon which
he proposes to rely. . . . It is proposed to put an end to the
practice which, it is to be feared, has prevailed to too great
an extent, of striving on each side to learn an opponent's
date of invention, only to manufacture such proof as may be
necessary to fix an earlier date.” Yet cases do sometimes
arise when this rule cannot, in accordance with justice, be
enforced to its fullest extent; as, for example, where, in one
instance not reported in print, the evidence was clear that
by unavoidable mistake the date was incorrectly stated, one
numeral having been mistaken for another in transcribing.
Even in such a case, the evidence of good faith must be
beyond reasonable doubt. -
§ 628. The oath should be made by the party himself, un-
less, as may occur, he be not the most cognizant of the facts.
One may be able to state that he adopted a mark for his mer-
chandise, without being able to fix the exact date of the con-
summation of his intention, — that is, the actual stamping or
otherwise marking of his goods; for he may possibly have
acted through an agent at a distance from him. By virtue
of the maxim, Qui facit per alium, facit per se, the physical
act of his agent would enure to his (the principal's) benefit,
though the one were at the moment in Boston and the other
in San Francisco. In verifying the preliminary statement,
as in any other case of litigation, of course the best available
evidence should be advanced.
§ 629. The preliminary statements are not open to the in-
spection of opposing parties until both, or all, shall have been
filed, or until the time for filing shall have expired; nor then,
1 Schenck v. Rider, Com. Dec. 1870, p. 135.
§ 633.] INTERFERENCES IN THE PATENT OFFICE. 627
until they shall have been inspected by the Examiner, and
found to be sufficiently definite as regards the declaration of
dates. - -
§ 630. If the party on whom rests the burden of proof fail
to file a preliminary statement, or if his statement fail to
overcome the prima facie case made by the respective dates
of application, or if it show that he has abandoned his alleged
trade-mark, the other party will be entitled to an immediate
adjudication of the case upon the record; unless a presumption
arise that his claim of right to registration is affected by aban-
donment, in which case the interference may be proceeded
with. Although the statement of one party may admit his
lack of title to exclusive use of the mark in dispute, he may
be prepared to prove the same lack of title in his opponent.
§ 631. If the earlier applicant fail to file a preliminary
statement, no testimony will subsequently be received from
him tending to prove that he adopted the mark at a time prior
to that fixed in his application. The preliminary statement
can in no case be used as evidence on behalf of the party
making it. Its use is to determine whether the interfer-
ence shall be proceeded with, and to serve as a basis of cross-
examination.
§ 632. If either party require a postponement of the time
for filing the preliminary statement, he must present to the
Examiner his reasons therefor, in the form of an affidavit, and
prior to the day previously set.
§ 633. Declaration and Dissolution. — An interference will
not be declared until the subject matter involved is decided
to be registrable; and, when once declared, it will not be
dissolved without judgment of priority, unless it be found
that neither party is entitled to a certificate of registry, or
that no interference in fact exists. And at whatever stage
it is ascertained that there is no conflict between the claims
of the parties, it will be dissolved, whether before the Exam-
iner of Interferences, or the Commissioner; for to continue
it would be a waste of time, and would avail nothing." Thus
it will be dissolved, ipso facto, by the withdrawal of one of
1 Jenkins et al. v. Putnam, Com. Dec. 1870, p. 156.
628 Law of TRADE Manrá [$637.
the parties; 1 or it will be dissolved upon one of the parties
striking out from his specification the only element of con-
flict; * or it may be found that the registration of one will be
no bar to the other.” .*
§ 634. Judgment based on Concession of Priority will not be
given unless such concession be evidenced by a writing, under
the signature of the party himself. If there have been an as-
signment of the trade-mark, the assignee must join in the con-
cession, although not a nominal party. The withdrawal of
one party does not entitle the other to a decision in his favor
on the question of priority ; * for it may be that his with-
drawal is by way of nonsuit, with an intention to renew the
contest when better prepared; or it may be by collusion, when
neither party has any right. %
§ 635. Notice to Parties.— When an interference is de-
clared, notice will be given to the parties, or to their attor-
neys. When one of the parties has received a certificate of
registry, duplicate notices will be sent to him and to his
attorney of record. Where one of the parties resides abroad,
and has no known agent in the United States, in addition to
the notice sent by mail, notice may be given by publication
in the Official Gazette for such time as the Commissioner
may direct.” - .
§ 636. If there be more than two parties, the times for
taking testimony will be so arranged, if practicable, that each
shall have an opportunity for so doing in his turn, each being
held to go forward and prove his case against those who shall
have filed their applications before him.
§ 637. As the parties are to prove facts by the adduction
of evidence before the Examiner, and have, consequently, to
provide themselves with proper documentary or other testi-
mony, it is essential that they should be apprised of the
specific nature of the question to be tried, for guidance in
preparing proof. The notice of interference sent by the
º 1 Eames & Sealey v. McDougal, Com. Dec. 1871, p. 206.
2 Hawkins v. Lambert, Ibid. 273.
8 Jackson v. Nichols, Ibid. 278.
4. Eames & Sealey v. McDougal, supra.
5 Rule of Practice 102, as to interferences.
§ 638.] INTERFERENCES IN THE PATENT office. 629
Office states the point in issue. For example, in a complex
mark there may be one prominent element, as in the “Paul
Jones” case, hereinafter given, where that name of a naval
hero was really the whole case, although that name was dis-
played upon a flag flying on a ship under full sail. The par-
ties entered into the contest with the knowledge of the name
being the only material point of inquiry. *
§ 638. Grounds of Interference. — Marks do not conflict
unless they are identical in form, or have such “a near re-
semblance to each other that the public may confound them.
Although there may be points of resemblance, they will not
warrant the declaration of an interference, unless confusion
be likely to ensue. Take the following case as an illustration.
One person obtained a certificate of registry” for a trade-mark
for shirts, drawers, etc., which mark was described as consist-
ing of “a balance, a shield, and the word “Centennial,” ar-
ranged as shown, numbers designating the size and quality of
the goods being, if desired, marked upon the shield.” Other
persons, composing a partnership, subsequently obtained a
certificate” for a trade-mark, for substantially the same class
of merchandise. The mark of the latter was described as
consisting essentially of the word “Centennial.” The prior
adopter said that he was prepared to discard all the other ele-
ments of his mark, and confine his claim to the one word.
The Examiner held that the specifications on file were the
criteria of action; and that, as they did not disclose any con-
fliet of claims, inasmuch as the two things were so dissimilar
that they were not calculated to deceive, it was not a proper
case for an interference.” If the prior applicant limited him-
self to the use of the word in combination with other things,
it was his misfortune. Thus the junior applicants were left
with a broad claim to the word “Centennial,” which they
might use, in combination or not, at pleasure. For the pur-
1 Leopold Sternberger, No. 709, dated March 19, 1872.
* Thalheimer & Hirsch, No. 809, dated May 7, 1872.
* In Re Cornwall (12 Off. Gaz. 138), it was held that a star and crescent for
soap did not interfere with a previous registration by another of the figure of
a star for soap. But “Swan’’ was held to conflict with “Black Swan.” (Re
Jules E. Caire, 15 Id. 248.)
630 ſº LAW OF TRADE-MARKS. [$640.
pose of obtaining an adjudication on the question of priority
of adoption, the senior registrant filed a new application, in
which he claimed the word “Centennial" as the essence of his
trade-mark. That proceeding raised a simple question of fact.
On an interference trial, Sternberger proved priority as to
the actual affixing of the mark, and the Examiner decided in
his favor. On appeal, the decision was affirmed."
§ 639. Compulsory Testimony. — Previous to the passage of
the act of Congress of March 2, 1861, it was within the op-
tion of witnesses to give their testimony or not, so that there
were frequent failures of justice. That act provides, “That
the clerk of any court of the United States for any district
or territory wherein testimony is to be taken for use in any
contested case pending in the Patent Office, shall, upon the
application of any party thereto, or his agent or attorney,
issue a subpoena for any witness residing or being within said
district or territory, commanding him to appear and testify
before any officer in said district or territory authorized to
take depositions or affidavits, at any time and place in the
subpoena stated; and if any witness, after being duly served
with such subpoena, shall neglect or refuse to appear, or, after
appearing, shall refuse to testify, the judge of the court whose
clerk issued the subpoena may, on proof of such neglect or
refusal, enforce obedience to the process, or punish the diso-
bedience as in other like cases.” ” The act further provides
that the witnesses shall be allowed the same fees as are al-
lowed to witnesses attending the courts of the United States;
and they are not compelled to attend at any place more than
forty miles from the place where the subpoena is served, unless
the fees are paid or tendered in advance. -
§ 640. Parties have Access to Testimony on file prior to the
hearing, in presence of the officer in charge ; and copies may
be obtained by them at the usual rates.”
1 Sternberger v. Thalheimer & Hirsch, Com. Dec. 1873, p 24; 3 Off. Gaz.
120, -
* Re-enacted as Section 44 of the Patent Act of July 8, 1870; Rev. Stats.,
sect. 4906.
8 Rule 209.
§ 645.] INTERFERENCES IN THE PATENT OFFICE. 631
§ 641. Printed Copies of testimony greatly facilitate the
examination of cases ; and such copies are required in all
cases when the testimony is written otherwise than in a fair
and legible hand."
§ 642. Postponements. – If it become necessary for either
party to have the time for taking his testimony, or for the
hearing, postponed, he must make application to the Exam-
iner for such postponement, and must show sufficient reason
for it by affidavit filed before the time previously appointed
has elapsed, if practicable; and must also furnish his oppo-
nent with copies of his affidavits, and with reasonable notice
of the time of hearing his motion.
§ 643. A motion to open an interference for a rehearing,
after a decision sub silentio, will be refused where there has
been gross negligence in preparing for it. There is a case”
where, four months after the decision had been made, and
after frequent allowances of additional time, a party had the
cool assurance to ask for a still further opportunity. His
motion was denied. Up to that time he had taken no proof,
offered no affidavit except his own affidavits to show what
proof he desired to offer, or that any evidence existed; and
his affidavits gave no details, but were most general in state-
ments. The Office regarded his persistent waste of time as
intended simply for delay, although he made affidavit to the
contrary. This is an extreme case ; for it is seldom that re-
peated postponements would be countenanced, unless by the
consent of the adverse party.
§ 644. Information in Relation to Pending Cases is given
so far as it becomes necessary in conducting the business of
the Office, but no farther. Thus, where an interference is
declared between pending applications, each contestant is en-
titled to a knowledge of so much of his opponent's case as
would enable him to conduct his own understandingly.”
§ 645. Sources of Evidence.—As in equity cases, these are
principally four: 1st. The intelligence of the tribunal, or the
1 Rule 157.
* Covel v. Maxim et al., Com. Dec. 1869, p. 78.
* See 125th Rule of Practice in the Patent Office.
632 LAW OF TRADE-MARKS. [$648.
notice which it judicially takes of certain things, and the
things which it presumes; 2d. The admissions of the parties,
contained in their specifications and statements, which serve
as pleadings; 3d. Documents; and, 4th. The testimony of
witnesses.
§ 646. As a rule, parties may by written consent make
almost anything evidence, unless the effect would be injuri-
ous to the public; as, for example, the admission that one of
the parties has a good title, when the contrary is clear. No
such admission of an adversary would be deemed sufficient to
warrant the issue of a certificate of registration where the
Office had judicial cognizance of the untruth of the admis-
sion; for not only is the case to be decided upon the issue
joined by the parties, but the interests of the community at
large are to be looked after." The law of evidence as settled
by the courts is used in the matter of interferences, so far as
applicable. Official papers; the precise state of our relations
with a foreign government; the dates of public events, such
as proclamations of war and peace, which may affect the
forensic privileges of parties; treaties, and conventions with
foreign powers, – will all be judicially recognized. The prin-
cipal source of evidence is the testimony of witnesses taken
upon deposition. The practice of the Patent Office, for tak-
ing and transmitting testimony in an interference case, may
be found in the Rules thereof, Nos. 150–158.
§ 647. Case closed. —When no testimony shall have been
taken by the party upon whom rests the burden of proof, or
when testimony shall have been taken by such applicant, but
not by the other party during the time assigned to him, the
case will be considered to be closed; and, upon motion duly
made before the Examiner at the expiration of the time as-
signed to the parties respectively, it may be set for hearing at
any time not less than ten days thereafter.
§ 648. Hearings. – All interference cases pending before
the Commissioner on appeal, or before the Examiner of Inter-
ferences, will stand for argument at one o'clock on the day of
hearing, unless some other hour be specially designated. If
1 See Act of March 3, 1881, sect. 3.
§ 652.] INTERFERENCES IN THE PATENT office. 633
either party then appears, he will be heard; but a contested
case will not be taken up for oral argument after the day of
hearing, except by consent of both parties. If the engage-
ments of the tribunal before whom the case is pending are
such as to prevent it from being taken up on the day of hear-
ing, a new assignment will be made, or the case will be con-
tinued from day to day until heard. Unless otherwise ordered
before the hearing begins, oral arguments will be limited to
one hour for each counsel.”
§ 649. Appeals. – In cases of interference, appeals pro
forma may be taken to the Commissioner in person, and with-
out any appeal fee. The appeal must be accompanied by a
brief statement of the reason therefor; and both parties will
be required to file briefs of their argument at least five days
before the hearing. Printed briefs are in all cases preferred,
the practice of courts being followed in the citation of cases
and making of points.
§ 650. It is not unusual in such appeals for the parties to
file voluminous abstracts of testimony, sometimes running to
the extent of thousands of pages. At least enough of the case
should be shown to meet the exact points in controversy, and
enable an intelligent understanding to be had of the facts.
The more caution should be observed, as in this class of cases
the decision of the Commissioner is final.
§ 651. The remarks of the court in a certain patent case,”
in regard to granting reissues, are also applicable in matters
of interference: “The Commissioner is supposed to have all
the qualifications necessary to an intelligent decision of that
question, and there are strong reasons why his action should
be regarded as final. Such I understand to be the doctrine of
the Supreme Court of the United States, as announced in
numerous reported cases.””
§ 652. The practice in an interference case can best be ex-
plained by taking the record of an actual controversy as to
1 This is the substance of the provisions of Rule 146 in patent cases, now
adapted to trade-mark interferences.
* Whitely v. Swain, 4 Fisher, 123.
* 4 How. 404; 15 Id. 52; 17 Id. 84; Law’s Dig. 617.
634 LAW OF TRADE-MARKS. [$ 654.
the right to the exclusive use of a trade-mark. We shall thus
not only see the formal part of the proceedings which charac-
terize such a matter, but also have a curious exhibition of
the contrarieties of the human mind, as shown in opinions of
counsel and judicial officers. It will, in addition, furnish a
commentary upon the “glorious uncertainty” of the adminis-
tration of trade-mark law, when its settled principles are not
rigidly adhered to.
§ 653. We will take, for example, the case of Armistead v.
Blackwell. The applicant stands in the position of plain-
tiff, as he attacks the title of Blackwell, who had previously
registered as a trade-mark the words “Durham Smoking To-
bacco.” The Office having informed Armistead, through his
solicitor, that another party claimed priority of title, both
parties were required to file preliminary statements by a
certain day."
§ 654. Armistead responded by a sworn statement of his
version of the origin, etc. of the mark, partly from his own
knowledge, and partly on information and belief, deducing his
title through one Wesley A. Wright, and taking it back to
1860.” Blackwell also filed his statement, setting forth that,
in 1865, one J. R. Green, from whom he claimed title, was
engaged in manufacturing tobacco in "North Carolina at the
time of the approach of the armies of the United States under
command of General W. T. Sherman, and the retrograde
movements of the army of General Joseph E. Johnston, of
the so-called Confederate States, and in the vicinity of the
town of Durham. That when the armistice antecedent to the
surrender of the army of General Johnston was promulgated,
the two armies occupied positions adjacent to said town of
Durham, and the town and vicinity became common ground
to each army; that said Green sold large quantities of smok-
ing-tobacco to the soldiers; and from the circumstance of the
surrender at that place, he believed that the name “Durham.”
1 See Trade-Mark Rule 13, ed. of 1885.
* See Blackwell v. Dibrell, U. S. Cir. Ct., E. D. of Va., 1878, 14 Off. Gaz.
683, in which this point was involved. See also Blackwell v. Wright, Sup. Ct.
of North Carolina in 1875, 73 N. C. 310.
§ 658.] INTERFERENCES IN THE PATENT OFFICE. 635
would be popular. He said that the word “Durham ” was
first applied to smoking-tobacco in 1865.
§ 655. The preliminary statements conflicted as to the date
of the adoption of the word “Durham ” as a mark for to-
bacco, and as to the ownership of the right to its exclusive
use. The controversy could not be determined without
further action. The statements furnished insufficient data
for final judgment. The preliminary interference was at
an end.
§ 656 An interference proper was then declared, and due
notice served. The parties were informed that their claims
were adjudged to interfere with each other, and that a hear-
ing would be granted them on a certain day; that the testi-
mony of the applicant must be closed at a day fixed, and that
of the respondent at a later day; and that, at a still later day,
rebutting testimony, but no other, might be taken after the
closing of the testimony in chief. Ample time was given,
regard being had to the residences of witnesses and parties.
§ 657. The next step in the litigation was the taking of tes-
timony in behalf of the applicant, for he was obliged to prove
his case before his adversary could be called on to respond.
Due notice having been given, Armistead proceeded to take
depositions, the respondent appearing by counsel and cross-
examining. A similar course was then pursued by the other
side; just as if the cause were pending in a Circuit Court of
the United States. Then came the hearing, after which a
decision, which is condensed as follows.
§ 658. By the Evaminer: It is necessary to have a clear
conception of the exact point in controversy. Wherein con-
sists the trade-mark? There are two theories. The appli-
cant, Armistead, insists that the essence of it is in a single
word,” Durham,” used in connection with the words “Smok-
ing Tobacco.” The respondent, Blackwell, claims all these
words in conjunction with the words “manufactured by W. T.
Blackwell.” The bill in equity in the suit, the testimony in
which is here adduced, claims the word “Durham.” What
is the essential part of the mark? Not the words “Smoking
* Blackwell v. Armistead, 5 Am. L. T. 85; 3 Hughes, 163.
636 - LAW OF TRADE-MARKS. [$658.
Tobacco,” for such words in common use cannot be appro-
priated." Nor can the words “manufactured by W. T. Black-
well,” for they are in the nature of a mere advertisement. If
any word contains the essential attributes of the symbol known
to commerce as a tiade-mark, that word is “Durham.” The
respondent's first point denies that by any possibility it can
be a trade-mark, and cites cases. If the word “Durham ” is
used for the purpose of indicating that the merchandise to
which it is affixed is manufactured and sold at a place called
Durham, it cannot be a trade-mark.” Did the applicant use
it for that purpose? If the word is used in its geographical
sense, it means but one place, — a village in North Carolina.
That is conceded and proved. The applicant or his assignor
there began business in 1859, or 1860. The respondent now
carries on business there. Is there such a place as Durham
in North Carolina? Some witnesses speak of “Durham ”;
some, of “Durham’s”; others, of “Durham's Station.” The
official list of post-offices spells it “Durham's,” the apostro-
phe probably signifying “Durham's Station.” It is officially
so certified by the Acting First Assistant Postmaster-General.
That settles the question. The word as used by both parties
is not meant to indicate locality. The evidence shows that it
is used to denote the excellence of the tobacco.” It is not
pretended that the tobacco is raised at Durham’s Station; or,
if it were, that the soil of that locality possesses any peculiar
properties to make tobacco grown therein better than in any
other. The witnesses swear that the flavor imparted by the
tonka bean and other ingredients makes it superior, as manu-
factured in a peculiar manner. Blackwell did not mean it in
a geographical sense, when he began to use the word. His
sworn statement shows that. This does not concede, as law,
that a geographical name cannot be a trade-mark. It gener-
ally cannot be, for the reason given in the “Lackawanna’
case.” But this rule has exceptions. The leading authority
1 See ante, § 134, “Generic Names.”
* See ante, § 182, “Geographical Names,” and §§ 191, 192, on same subject.
* See ante, § 135, “A Trade-Mark may be valid although descriptive of
Quality.”
* See ante, § 189.
§ 659.] INTERFERENCES IN THE PATENT office. 637
is the “Anatolia.” case." Other cases affirm the same doc-
trine. In France, the same ruling was made. These rulings
are all consonant with reason, — harmonious with the cur-
rent of decisions. As to priority of adoption, Blackwell's evi-
dence goes no farther back than 1865; Armistead's goes back
to 1860, when his predecessor began to use it, and he contin-
ued to use it after he removed his factory from Durham's.
Beyond the shadow of a doubt, — if faith is to be placed in
the oaths of apparently credible witnesses, – the word was
used in 1860, and ever since, to distinguish a peculiar kind of
tobacco. This is the smoking tobacco that Armistead's as-
signor, Wright, made; substantially that for which he subse-
quently obtained a patent. The évidence proves that. The
only essential element of the mark is the word “Durham.”
When an exclusive title to that was once acquired, its owner
might use it as an isolated emblem, or he might combine it as
he pleased. It has been suggested that the word “Durham ”
is insufficient as a mark, because it does not indicate origin or
ownership. The New York Court of Appeals set that ques-
tion at rest when it held that the single word “Cocoaine”
possessed all the essentials of a common-law trade-mark. As
a conclusion of fact, Wright, the assignor to Armistead, was
the first to adopt it. The word was not originally adopted
as a distinctive name of a place, but as a fancy designation,
an arbitrary symbol. By long use, it has become associated
with Wright's patent. The symbol was never abandoned by
Wright;" and his property in its use was transferred by him
to Armistead. As a conclusion of law, the title is in Armis-
tead. Registration is therefore allowed. Thirty days' time
was allowed for appeal to the head authority of the Office.
The following is condensed from his opinion.
§ 659. By the Commissioner, on appeal: In October, 1871,
Blackwell registered; in December following Armistead ap-
plied for registry. Blackwell manufactured at Durham, North
Carolina; Armistead, at Lynchburg, Virginia, under an as-
signment from Wright. The evidence shows that Wright
1 See ante, $184. * See ante, § 237.
* See infra, Chapter XV., on “Abandonment.”
638 LAW OF TRADE-MARKS. [$ 660.
invented a flavoring compound for smoking-tobacco, which he
patented; and his tobacco obtained some reputation under the
name. On account of its flavor, it became a favorite. Wright
removed about two miles from Durham, where he continued
to manufacture for a few months, and then gave up business
and went into the rebel army. He resumed business in 1869.
That was at Liberty, Virginia, where he used the brand,
“Original Durham, W. A. Wright, Originator.” In 1870, in
company with another person, he manufactured tobacco at
Stewartville, Virginia, and marked their product “Durham
Smoking Tobacco.” After that, he assigned to Armistead.
There is nothing registrable in the labels of either party.
The parties have evidently misread some decisions. Courts
of equity have often granted injunctions against the fraudu-
lent use of words which the same court would not for a mo-
ment sustain as trade-marks. The “Akron Cement”" case
is in point. So is the “Brooklyn White Lead” case. In
these, the courts enjoined against fraud,” but with no inten-
tion of defining a trade-mark. Conclusion: neither party is
entitled to registration.” In the United States Circuit Court,”
the following is, in substance, the opinion hereinbefore re-
ferred to. With a profound deference to the general learning
of the judge, the errors of law are with hesitation pointed
out. The case is a study from beginning to end, and simply
as a study is it commented on.
§ 660. Rives, J. : The main question rests on priority in
the use of this disputed trade-mark. The defendant does not
pretend that Wright, under whom he claims, ever used the
identical trade-mark set up by the plaintiffs. On the con-
trary, he takes especial pains to show that he placed no par-
ticular value on the term “Durham.” The discovery which
he had made, and for which he seeks protection, was his
preparation for, or his mode of treating, smoking-tobacco, so
as to mitigate its noxious qualities, and impart to it an agree-
1 See ante, § 188. * See ante, $183.
8 See ante, § 43, “Unfair Competition in Business.”
4 Reported in full, 1 Off. Gaz. 603.
* Blackwell v. Armistead, supra. .
§ 660.] INTERFERENCES IN THE PATENT OFFICE. 639
able flavor. It is proved that the whole merit of this smok-
ing-tobacco, and its celebrity, were due to the flavoring. He
was confessedly the first to begin its manufacture at Durham's
Station. There was nothing in the locality that could reason-
ably have been counted on to commend his manufacture to the
public. Take his own statement, and what was his brand?
“Best Spanish Flavored Durham Smoking Tobacco.” What,
in view of the pleadings and the evidence, is the characteris-
tic — the vital element — of this trade-mark? Manifestly,
“Best Spanish Flavored.” This is the only conspicuous and
discriminating element of the trade-mark.” “Durham,” if
indeed a part of it, is subordinate and insignificant. There
is nothing to restrain succeeding manufacturers from engraft-
ing it on their brand, so long as they laid no claim to, nor
made use of, his words “Best Spanish Flavored ” compound,
which he indeed appropriated * by the first and original use
of this only conspicuous term in his stencil-plate in 1860–61.
It must be remembered that Wright was only in the infancy
of this manufacture at Durham; and that others followed and
developed it, till the complainants instituted their brand in
1865–66. What motive could have existed with Wright, all
whose reliance was on the merits of his flavoring compound,
to invoke the name of a small, thriftless station on a railroad,
settled by but two or three families, with a store and this
factory, to invoke its name to give celebrity to the prepa-
ration to which he solely looked for his reward?” It is
abundantly proved that his product was known, called, and
distinguished in the market as “Durham ” smoking-tobacco.
The plaintiffs secured their label by copyright.* Argument
and ridicule are relied on to show the inapplicability of a
copyright for such a print. The language of the statute is
certainly comprehensive enough to embrace a label of this
kind. The object of such copyright is to secure to “the
1 Misuse of term. See ante, Chapter III., “Definition and Nature of a
Trade-Mark.” -
* He could not possibly do so, for they are common language.
* Such was the very soul of the “Glenfield” case, -Wotherspoon v. Currie.
See ante, §§ 184, 185.
* A grave error. See ante, S$ 109, 380.
640 LAW OF TRADE-MARKS. [$ 661.
author, inventor, or designer” of any such “print” the sole
liberty of printing and vending the same. This is a per-
fectly legitimate resort to copyright in such a case, and for
such a purpose. Perpetual injunction and account of profits
decreed. --~
§ 661. The following decision will give another example of
the treatment of a trade-mark interference, and also furnish
points of practice and law which may serve a useful purpose.
Attention is particularly invited to the points of counsel, and
the concession made by one side, which was sufficient in itself
to warrant judgment for the other side, without the necessity
of recourse to the testimony. By the Examiner, in 1872:
“The alleged trade-mark of Schrauder, the applicant, consists
simply of the word-symbol” “Bouquet.' To increase the pic-
torial effect of this mark, ‘Bouquet’ may be associated with
a branch or wreath of flowers, or other appropriate ornaments,
but they are not a part of the mark. It is for cured meats.
The alleged trade-mark of Beresford & Co., the respondents,
consists of a bouquet, thus described. Two sprigs of leaves,
having their stems at the bottom of the lithograph, and fas-
tened together by a ribbon, are bent around the bouquet, so
that their ends nearly touch, and so as to form an oval.
Within this oval is the bouquet, composed of various colored
flowers, ears of grain, and several varieties of leaves. It is
for hams and breakfast bacon. One mark consists of the
word-symbol “Bouquet,' and the other of the representation
or picture of a bouquet. The question that arises is sui gen-
eris. It is believed that the precise point here suggested has
not been decided by any tribunal.” The name of an object
is brought into conflict with a picture of the object. The
former addresses itself more particularly to the ear; the latter,
to the eye. No countenance can be given by the Office to
what may possibly be turned into an instrument of wrong, or
even of annoyance in trade. Let us take a hypothetical case.
A customer inquires thus: ‘Have you the Bouquet brand of
* See ante, § 89a, as to this term.
* See ante, § 38, “Colorable Variation”; also, as to alternate forms, ante,
§ 606.
§ 661.] INTERFERENCES IN THE PATENT OFFICE. 641
hams?’ ‘We have.’ He is satisfied with the bare asser-
tion, and gives an order. He does not particularize the bou-
quet as a picture, nor as the article marked with the word
* Bouquet.’ It is characteristic of a trade-mark that it pos-
sesses a distinctive individuality, so that it may be confounded
with no other, whether by means of vision or of sound. That
decides the question. The two things conflict, the word
*Bouquet” and the bunch of flowers called a bouquet. This
is the doctrine of Seixo v. Provezende.” Another preliminary
question arises. Do both parties apply their marks to the
same class of merchandise, and the same species of goods??
If not, then the claims do not conflict. Schrauder's is for
cured meats, while Beresford & Co.'s is for hams and break-
fast bacon. Both parties mean the same kind of merchan-
dise, although employing different modes of expression. They
have, however, proceeded on two widely different theories
as to the law of the case. Schrauder has regarded the sym-
bol in its concrete relation only, i. e. as an emblem which
he had affixed to merchandise; but Beresford & Co. have
wandered into the domains of authorship and invention; and
claim the design as an abstraction,” and base their claim on
the fact that their agent, James, conceived the device. They
went so far as to order a lithograph of the bouquet, with the
intention of using it as a trade-mark on hams, with special
instruction as to details. They say that their agent's inven-
tion thereby became complete, as any man of ordinary intelli-
gence could understand and use the mark. They claimed as
assignees of James's trade-mark.” They concede that Schrau-
1 See ante, $89, for discussion of this point.
* Cranworth, L. C., therein said: “If the goods of a manufacturer have,
from the mark or device he has tised, become known in the market by a par-
ticular name, I think that the adoption by a rival trader of any mark which
will cause his goods to bear the same name in the market may be as much a
violation of the rights of that rival as the actual copy of his device.” L. R.
1 Ch. 192; 12 Jur. (N. s.) 215; 14 L. T. (N. s.) 314; 14 W. R. 357.
* See ante, §§ 66 et seq.
4 See “Abstract Symbol,” in the Index.
* The later interference cases of Swift v. Peters (11 Off. Gaz. 1110), and
C. A. Yale Manufacturing Co. v. C. A. Yale (30 Id. 1188), discussed these points,
and reaffirmed their doctrines.
41
642 .- LAW OF TRADE-MARKS. [$ 664.
der was the first to affix the symbol to goods." That was the
test of property.” Priority was therefore awarded to him.
§ 662. A multiplicity of legal questions upon the trial of
an interference arises before the Patent Office. The follow-
ing case” involves a number of nice points worthy of notice.
Any matter affecting the title to the thing in controversy
may be shown, subject, of course, to the established rules of
evidence. After reciting certain facts not necessary now to
be considered, the decision of the Examiner proceeds sub-
stantially thus. -
§ 663. Motion to allow a New Party to come in. — After the
declaration of interference, a motion was made for the substi-
tution of one John H. Farwell as a party in place of M. J.
Cole & Co. It is in evidence that the latter had on their
own petition been declared bankrupt, and one Henry D. Hyde
had been appointed assignee. Farwell filed an instrument
purporting to be an assignment and transfer of the trade-
mark in controversy. There is no evidence of the authen-
ticity of said instrument; and, indeed, it is not perceived
what legal right the assignee in bankruptcy of the individual
and partnership estates of M. J. Cole & Co. had to make the
transfer ; for the trade-mark had not been included in the
schedule of assets.” If there had been the formality of in-
cluding it among the assets, facts in evidence warrant the
conclusion that, in contemplation of law, the bankrupts
had really no trade-mark property to convey. As Farwell
took nothing by his so-called assignment, his motion to be
permitted to come in as a party litigant was necessarily de-
nied.
§ 664. The Essential Part of the Mark. — It was assumed,
for the purposes of this interference, that the name “Paul
Jones,” the conspicuous element in the mark, was that by
which the whiskey would be bought and sold, and known in
the market. The evidence shows that it was the prominent,
essential, and vital feature of their mark, as it is also of that
1 This was a fatal concession. See “Abstract Symbol,” in Index.
* Walch, Brooks, & Kellogg v. M. J. Cole & Co., in 1872.
* See case of Bradley v. Norton, 33 Conn. 157; R. Cox, 331.
§ 667.] INTERFERENCES IN THE PATENT OFFICE. 648
of their opponents." The inquiry was therefore directed to
that name, without which, as a component part of the com-
plex mark, neither party would have desiied to make a
contest.
§ 665. As to Title to the Trade-Mark. — The first question
to be settled is this: Did M. J. Cole & Co. have any property
in that name, as a portion of a trade-mark to be affixed to
whiskey? The testimony of Cole, of Gilmore, the clerk, and
of Hunt, the partner, established as a fact beyond any reason-
able doubt that M. J. Cole & Co. devised the symbol for their
own benefit, although one of their present opponents assisted
therein. The mark was to be used in connection with whis-
key, which M. Murphy & Co., the predecessors of Walch,
Brooks, & Kellogg, were to manufacture in Cincinnati, Ohio,
and of which M. J. Cole & Co. were to have the exclusive
sale in Boston, Mass. The title was clearly understood to be
in M. J. Cole & Co., notwithstanding the fact that, for the
sake of convenience, the branding-tool was made in Cincin-
nati, and at the expense of M. Murphy & Co.
§ 666. Good Faith. — The bona fides of the latter firm and
their successors may well be doubted, in connection with
the possession of the branding-tool. It was used by them
for whiskey sold to other persons in the West and South;
and, contrary to the contract, express or implied, made with
M. J. Cole & Co. To the latter-named firm, if to any, it
would seem the mark belonged. But there is one material
fact disclosed by the evidence which determines all their
claim. The name “Paul Jones” was used as a portion of a
brand, the other part of which was “Paris, Kentucky, Bour-
bon.” Cole testifies, “If anybody bought the whiskey sup-
posing that it was made in Paris, Kentucky, he would have
been deceived.” He says that it was thought that that brand
would take better with the trade.
§ 667. Imposition on the Public. — But one conclusion can
be deduced from the evidence in regard to the bona fides of
M. J. Cole & Co. in adopting that which they allege to be
1 See case of Filley v. Fassett, 44 Mo. 173; 8 Am. L. Reg. (N. s.) 402; R.
Cox, 530. - -
644 - LAW OF TRADE-MARKS. , [$672.
their trade-mark. Their intent was manifestly to impose on
the credulity of the whiskey-drinking public, by inducing
them to purchase as genuine Kentucky Bourbon County Whis-
key an article manufactured at Cincinnati, Ohio. The device
had its inception in fraud, and therefore was worthless for the
legitimate purposes of a trade-mark, even if the Cincinnati
whiskey were proved to be as valuable as that made in Ken-
tucky. Numerous judicial decisions support this view of the
law. The public have a right to the genuine thing. M. J.
Cole & Co., therefore, never had any legal property in the
words composing the alleged trade-mark.
§ 668. No Title in Assignee. — As they had no trade-mark
to assign when going into bankruptcy, it follows that their as-
signee took no such property with the assets.
§ 669. Good Faith of the other Party. —- How does the case
stand, as regards Walch, Brooks, & Kellogg? They claim as
a trade-mark the words, “Paul Jones, Paris, Kentucky, Bour-
bon,” etc. The said mark is intended to be applied to whiskey
manufactured by them at Cincinnati, Ohio. Their own testi-
mony is conclusive on this point. Indeed, they do not make
the slightest pretence that the whiskey manufactured by them
is distilled in the State of Kentucky. -
§ 670. Want of Equity. — There is no more equity on their
side than on the other. The argument of their counsel at the
hearing, that the words constitute a mere arbitrary symbol,
and that no deception was intended by them, does not re-
quire long consideration. The only meaning that general
purchasers would be likely to attach to the words would
be, that the whiskey was distilled at Paris, Bourbon County,
Kentucky.
§ 671. Conclusion. —Walch, Brooks, & Kellogg have not
presented a lawful trade-mark for registration. The interfer-
ence is therefore dissolved, and both applications rejected.
§ 672. Another Case.”—The firm of S. N. & H. Pike
adopted the words “Magnolia’’ and “Dave Jones” as trade-
marks for whiskey, manufactured by the firm before 1854. In
I See ante, § 71, “A Lack of Truth debars,” etc. t
2 Kidd & Co. v. Mills, Johnson, & Co., Com. Dec. 1874, p. 28; 5 Off. Gaz. 337.
§ 672.] INTERFERENCES IN THE PATENT of FICE. 645
that year, H. Pike withdrew from the business, and S. N. Pike
continued therein alone for about four years, when Lawrence
Myers joined him, and continued in the firm of S. N. Pike &
Co. until 1862. Myers then withdrew, and S. N. Pike went
on alone until 1864. Then was formed a new firm, consisting
of S. N. Pike, Joseph Tilney, and George W. Kidd. The firm
did business in the cities of New York and Cincinnati. Til-
ney withdrew in 1867, and the other two continued as S. N.
Pike & Co. In 1868, Pike, in his individual capacity, sold the
realty, appurtenances, fixtures, machinery, and apparatus used
by the firm in Cincinnati, but owned by him, and gave them
this memorandum signed by him: “Having sold to Messrs.
Mills, Johnson, & Co. my premises, No. 18 and 20 Sycamore
Street, I hereby extend to them and their successors the use
of all my brands formerly used by me in my Cincinnati
house.” The firm of Messrs. Mills, Johnson, & Co., the pur-
chasers, continued the business in Cincinnati; and S. N. Pike
& Co. entirely removed to New York. With the addition of
a new member, Isaac Bristow, they continued without change
of firm name. In 1872, Pike died, and the surviving partners
continued under the style of Geo. W. Kidd & Co. They
claimed title in the said trade-marks, and applied for regis-
tration. Mills, Johnson, & Co. had already registered them.
Hence the declaration of an interference. Held by Exam-
iner: The trade-marks belonged to S. N. Pike individually,
his firm having had only a license therein determinable at
pleasure, and the title to them passed to Mills, Johnson, & Co.
On appeal, the Commissioner reversed the decision. He held
that, the title having been in S. N. Pike by virtue of abandon-
ment by his former partners, he brought the same into the
successive firms which he formed, and that it belonged to those
firms, and could not be devested by his individual act. In
the Circuit Court of the United States for the District of
Louisiana, suit was brought by Johnson et al., as the succes-
sors in business of Mills, Johnson, & Co., against Kidd, as the
survivor of S. N. Pike & Co., in regard to the “Magnolia.”
mark. The court held that the complainants had the exclu
* See ante, § 57, “Title to a Trade-Mark by Assignment.”
646 - LAW OF TRADE-MARKS. [$672.
sive right under the sale of Pike to their predecessors. An
appeal was taken to the Supreme Court, and the decree below
was affirmed." The court, by Mr. Justice Field, said of
Pike : “He did not place his interest in the trade-mark in
the concern as a part of its capital stock. He allowed the
use of it on packages containing the whiskey manufactured
by them ; but it no more became the partnership property
from that fact than did the realty itself, which he also owned,
and on which their business was constructed.” As the case
appeared in the courts, a new element had to be considered.
It was not only the trade-mark proper, but all the words,
“S. N. Pike's Magnolia Whiskey, Cincinnati, Ohio,” en-
closed in a circle, that Johnson continued to use. He had a
perfect right to “Magnolia,” but had he a right to the whole
brand? Was not the use by him obnoxious to the charge of
misrepresentation?? No, said the court. “Its subsequent
use by the person to whom the establishment is transferred
is considered as only indicating that the goods to which it is
affixed are manufactured at the same place, and are of the
same character as those to which the mark was attached by
its original designer.” No suggestion was made that such
use amounted to deception.*
1 Kidd v. Johnson, 100 U. S. 617. It was held, in 1884, that a trade-mark
will pass under a general conveyance of all the assets and effects of a firm,
though not specifically designated. Morgan et al. v. Rogers, 19 Fed. R. 596.
* See ante, § 71, “A lack of truth debars a trade-mark from protection.”
* Citing Leather Cloth Co. v. American Leather Cloth Co., 11 Jur. (N. s.) 513;
Ainsworth v. Walmesley, 44 L. J. 355; and Hall v. Barrows, 10 Jur. (N. s.) 55.
4 In Stachelberg et al. v. Ponce (23 Fed. R. 430), in the United States Circuit
Court, Maine Dist., in 1885, Colt, J., held that an assignee or purchaser of a
trade-mark from the original proprietor must, in the use thereof, indicate that
he is assignee or purchaser, or he will not be entitled to protection in the use
of the mark assigned to him. The complainants claimed the trade-mark “La
Normandi,” or “Normandi,” as applied to cigars, and charged the defendant
with infringement by using the words “E. P. Normanda,” or “Normanda,” or
“Normandie,” for cigars made and sold by him. The complainant, Stachelberg,
had obtained the exclusive right to use the mark, by assignment from one
Asher Bijur of New York, and he subsequently transferred the right to his
firm. It appears that Bijur, the originator of the mark, had used it for years,
and built up an extensive sale for this brand of cigars by reason of their good
quality. The original trade-mark bore the name of the maker, “A. Bijur,” and
also the initials, “A. B.” For them, the assignee substituted his own name
§ 673.] INTERFERENCES IN THE PATENT OFFICE. 647
§ 673. From the foregoing examples, it is inferable that
an interference case in the Patent Office may involve innu-
merable matters in law and equity. A complication of appar-
ently heterogeneous questions sometimes may demand as great
professional skill as judicial examinations in any court. In
a still-continuing controversy for the ownership of a word-
symbol as a trade-mark for tobacco, the following matters have
necessarily been considered. The circumstances of adoption,
laches, abandonment, suspension of right in consequence of
a state of war, partnership (including survivorship), adminis-
tration of an intestate's estate, and various minor points. The
rules of evidence have been strained to their utmost tension
to countervail new circumstances that constantly obtrude
themselves. It must therefore be concluded that this branch
of practice demands great learning and skill.
“M. Stachelberg,” and his initials, “M. S.” The learned judge seems to have
found as a fact, that the complainants were guilty of misleading the public,
by false representations, into the purchase of their cigars as those made by
A. Bijur, the original owner. Otherwise, the citation of Manhattan Medicine
Co. v. Wood, 108 U. S., could not have been apposite.
648 - LAW OF TRADE-MARKS. [$ 675.
CHAPTER XV,
ABANDONMENT.
§ 674. Abandonment sometimes an affirmative defence.
$ 675. Confused notions of abandonment.
§ 676. Property belongs to the first occupant.
§ 677. Effect of abandoning a right.
§ 678. Extinguishment of a trade-mark.
§ 679. Arguing from false analogy.
§ 680. What amounts to abandonment 3
§ 681. Intention to abandon. — Illustrations.
§ 682. Actual abandonment must be proved.
§ 683. Abandonment operates from discontinuance of use.
§ 684, 685. Laches, what amounts to.
§ 686, 687. Abandonment not readily to be presumed.
§ 688. Misfortune sometimes works abandonment.
§ 689. Abandonment in one country is abandonment everywhere.
§ 690. Abandonment means intentional discontinuance.
§ 691. Indications of progress in trade-mark law.
§ 674. ABANDONMENT is sometimes alleged as an affirmative
defence, while it may incidentally be drawn into question in
ea, parte proceedings upon application for registration. It is
advisable, therefore, to ascertain the import of the term, as
applied to a trade-mark case, and to consider the facts that
may constitute it. But, at the very threshold of the inves-
tigation, we must be on our guard not to fall into error in
attempting to reason from wrong premises or false analogies.
$ 675. A common mistake is this: in confusing notions of
other kinds of rights with that right which consists in prop-
erty in the use of a certain emblem or device, with which a
manufacturer or merchant stamps his wares and merchandise.
A trade-mark differs essentially from all other matters of prop-
erty. For that reason, we cannot hope to arrive at an intelli-
gent understanding of the subject, unless we sedulously keep
several points in view. These are distinctions between the
dedication or dereliction of tangible property, deliberately
§ 676.] ABANDONMENT. 649
yielded into the common stock of the community or of the
world, and the forsaking of a claim to the exclusive use of a
mere shadow of incorporeal property, as is such emblem or
device which is to become a trade-mark. We have a clear
idea of the utter forsaking of lands, and of the casting of a
jewel or coin into the sea, or upon the highway; and we can
clearly conceive an abandonment of the right to a patent for
an invention, or an exclusive claim to the product of a person's
literary labor; but the subject of cession, actual or tacit, of
the right to prohibit all other persons from marking goods
in a certain mode, or with a peculiar symbol, is a matter that
is somewhat more difficult of comprehension. Let us inspect
the lines of demarcation.
$676. Property belongs to him who first makes declaration
of an intention to appropriate it to his own use, followed by
actual appropriation by him; and the title remains in him,
by a principle of general law, till he does some other act.
which shows an intention to abandon it; for then it becomes,
naturally speaking, publici juris once more, and is liable to be
again appropriated by the next occupant." Thus a deliberate
casting away of a valuable thing is an express abandonment
of private claim to its possession, and the finder becomes its
owner. So a conveyance of land by deed, or a long-suffered
adverse possession, is conclusive evidence that the former
owner intended to divest himself of title, in favor of the party
who shall have succeeded to the possession. So, also, if an
inventor from a motive of patriotism, generosity, despair, or
any other cause, acquiesce in the public use of his invention
for two years, he is debarred from subsequently obtaining a
patent therefor;” or he may abandon his claim to a monopoly
at any instant, and the right to the invention passes at once
into the public stock, and ceases to be susceptible of private
appropriation. In all such cases, whether of tangible prop-
erty or of incorporeal rights emanating therefrom, there is
something to affect the senses, and the land, or jewel, or in-
vention embodied in a machine or composition of matter, can
1 2 Bl. Com. 9.
* Adams & Hammond v. Edwards et al., 1 Fish. 1.
650 LAW OF TRADE-MARKS. - [$ 677.
be seen and felt; and property in the object or thing may
truly be said to exist. Not so with the symbol that a trader
has made the peculiar mark of his goods. We have seen
heretofore that there cannot be property in an abstract sym-
bol, whether that be an original design, or word, or emblem;
for it is only an index to a certain article of merchandise."
This undeniable truth being conceded, how can we draw a
parallel between the relinquishment of a hold upon something
which in itself is property, and another thing which until
actually affixed to a vendible commodity is purely ideal?
The land and jewel continue to be property under all circum-
stances; but a trade-mark ceases to be property the moment
that its exclusive use ceases, and it resumes its ideal state.
Its conjunction with a corporeal thing is like the union of
soul and body.
§ 677. The thing abandoned may be instantly and simulta-
neously seized by a large number of persons, and that either
in fact or by operation of law, as in case of a right of common,
or a right to use an invention; and when in such case the
original owner's grasp is once released, the exclusive right is
gone from him forever. He cannot regain it, as in the case
of a coin tossed by him into the public street, and which he
may be the first again to pick up. A trade-mark, however,
may be discarded and be resumed, unless in the mean time it
be taken possession of by another, or by a number of persons
with united interests, or by the community in general. In
the latter case, the arbitrary emblem may truly be said to be
extinguished; for when all may use, there is lacking an essen-
tial element, to wit, exclusive right. We are supposing that
the mark is one that is not personal in its nature, but one
which is associated rather with an object of commerce than
with a certain person. Yet we read of instances in which
courts have held that a man's name may lose all idea of per-
sonality, and become merely a generic designation.” But we
will not stop to discuss exceptional cases.” .
1 See “Abstract Symbol,” in the Index. * See ante, §§ 178–181.
* This section and that immediately preceding were cited with approbation
by the court, in Gray et al. v. Taper-Sleeve Pulley Works, 16 Fed. R. 436.
§ 679.] ABANDONMENT. 651
§ 678. Now, as to the extinguishment of a trade-mark.
Suppose, for the sake of illustration, that a word that has
been coined by a manufacturer to indicate a peculiar product
be intentionally disused by Said manufacturer, and that all
other persons in the same line of business by common consent
adopt the word as the most suitable name for the thing, — as
was the case as to the word “Lucilene,” a name given to
purified petroleum,” — then that name falls into the domain
of commerce, and is not susceptible of reappropriation by him
who first used it as a fanciful denomination for his article of
manufacture. But suppose, again, that, after having deliber-
ately abandoned the mark, the late owner change his inten-
tion, while the title is still in abeyance, he may repossess
himself of it, just as he might upon reflection recover the
jewel flung into the sea or on the highway. The case of the
inventor is quite different. He has no right to his invention
at common law. The right which he derives is a creature of
the statute and of grant, and is subject to certain conditions
incorporated in the statutes and the grant. He does not get
his right to a patent on the ground of any inherent natural
right.” -
§ 679. Herein we see the impropriety of arguing from
decisions made under allegations of abandonment of an in-
vention; for as the idea of invention does not enter into the
contemplation of the law applicable to trade-mark proper-
ty,” we must dismiss the false analogy from mind. To com-
plete and perpetuate the act of abandonment, there must be
a tender, an acceptance, and an adoption. The only mode
by which a trade-mark can be adopted is by user in the actual
affixing of the mark to merchandise.” How is it with an in-
vention ? If the first inventor choose to abandon the result
of his genius, after perfecting it so as to be applicable to a
practical useful purpose, and another and later inventor ob-
tain a patent therefor, the latter fails to obtain any lawful
benefit, not being the first inventor of the particular thing.
1 See ante, §§ 220 and 252, for other examples.
* American Hide & Leather, &c. Co. v. American Tool, &c. Co., 4 Fish. 284.
* See ante, §§ 346, 347. * See ante, §§ 52, 382–384.
652 LAW OF TRADE-MARKS. [$680.
Why? Because the title to the invention passed to the pub-
lic, the instant that the only person who had a right to a patent
dedicated his invention to the common stock of property.
But in the case of discontinuance of the use of a trade-mark
the public gain nothing thereby, except the negative benefit
of precluding an individual from profiting by the exclusive
use of it as a sign. Thus in a case” in the Court of Paris, in
1870, when the plaintiff's claim to the exclusive use of the
representation of a golden bee, as a trade-mark for hats, was
rejected, what did the public gain by the decision that the
emblem was not a private mark? The court said, among
other things, that, whether as an emblem or as an ornament,
the bee is common property. Any person might therefore
use it as an ornament for a hatter's label, or in any other
mode; but the plaintiff had no exclusive right to “a bee in
his bonnet.” There is no advantage to the public in the lib-
erty of adorning furniture or hats with golden bees; but there
is always presumed to be benefit in the use of an invention,
of which benefit use is the strongest kind of evidence. And
as to the denomination of an article of commerce, as evi-
dences of our right to call a thing by its true name, we might
cite authorities by the score. The name may originally have
been the coinage of a manufacturer to designate his peculiar
product; but it may have instantly become the only true
and proper denomination of the article, wherefore all might
use it.”
§ 680. What amounts to Abandonment of a Trade-Mark?—
It is more difficult to lay down a rule in this matter than
in the case of corporeal property. The latter we may see
and handle. The product of invention affects the perceptive
faculties. We cannot see a trade-mark unless it be in full
vigor. We may see a perfect representation of a signature,
or of an emblem of commerce, but the trade-mark itself is
visible only as an affix to some corporeal vendible object.
Hence one difficulty in determining the exact moment when
one must be held to have abandoned a trade-mark. A manu-
1 Hérold v. Gerbeau, 16 Annales, 76.
* See ante, § 220, “The Necessary Name of a Product.”
§ 680.] ABANDONMENT. 653
facturer or merchant may discontinue the stamping or brand-
ing of his products for many years before discontinuing the
sale of the goods marked by him, and may destroy his dies,
brands, or stencil-plates; for he may have laid up a large
stock of his wares or products, or he may have launched them
upon the ocean of commerce. Our government has em-
ployed a fac-simile of the very peculiar autograph of Mr.
Treasurer Spinner as a proprietary mark for national securi-
ties, to be sold or exchanged for gold or other valuables. The
printing of bonds and notes bearing that trade-mark may for-
ever cease, but the paper evidences of debt remain afloat, and
the mark continues to be constructively, if not actually, in
use. The nation will not have abandoned the mark by dis-
continuing the printing of it. By a parity of reasoning, a
private owner of a trade-mark does not necessarily abandon
it by ceasing to stamp it on goods as his sign-manual or pecu-
liar emblem, if merchandise bearing his trade-mark is still in
the markets of commerce. Thus, it was held by Chitty, J.,
in 1884, that the mere non-user by an owner of a mark be-
tween the years 1876 and 1882, though coupled with non-
registration, did not amount to abandonment, having regard
to the fact that he had not ceased to carry on his business,
and had not broken up the mould for his soap, and that a
number indicating soap bearing that mark was retained in
his price-list.” — Yet, although one continued the active use of
a mark or fancy name originated by him, protection was re-
fused, on the ground that he had abandoned all claim to an
exclusive right in it, by dismissing a suit begun by him to
restrain the use of it.”— In the same year, in the Circuit
Court of the United States for the Southern District of New
York, Wallace, J., said of a trade-mark: “It may be aban-
doned if the business of the proprietor is abandoned. It may
become identified with the place or establishment where the
article is manufactured or sold, to which it has been applied,
so as to designate and characterize the article as the produc-
tion of that place or establishment rather than of the propri-
1 Mouson & Co. v. Boehm, 26 Ch. D. 898.
* Browne v. Freeman, 12 W. R. 305; 4 N. R. 476.
654 LAW OF TRADE-MARKS. [$681.
etor.” — In the same court, and in the same year, Coxe, J.,
held that, where a certain brand for flour had been discontin-
ued and abandoned, another firm might legally adopt it for
the same kind of goods.”—The Court of Appeals of Kentucky,
in 1884,” held that, where a trader had removed from a build-
ing to which he had affixed a fancy name, “Tower Palace,”
he, by the act of removal, had abandoned all right to said
name, and a rival trader who followed him as tenant had a
right to the use of that name.
§ 681. Intention to abandon. — The criterion manifestly is
this: the evidence of such an intention. Without such inten-
tion there could not be abandonment, although it is equally
true that the intention may be inferred from circumstances of
neglect as well as of positive dereliction, and the party should
be concluded thereby. A person may temporarily lay aside
his mark, and resume it, without having in the mean time
lost his property in the right of user. Abandonment, being
in the nature of a forfeiture, must be strictly proved. For
example, if the proprietor of the word-symbol “Cocoaine ‘’
should be met in a suit with the allegation that he had lost
all exclusive right to the use of that trade-mark, it would be
incumbent on the party making that defence to show that he
had, by clear and unmistakable signs, relinquished his claim
to it as a trade-mark, so that other manufacturers or vendors
of preparations of cocoanut oil had actually employed it
as a generic term. If that point were established, it would
be manifest that the trade-mark had expired. This is what
is meant in French-speaking countries by the expression,
“to let fall into the public domain" (laisser tomber dans le
domaine public). We must examine the surroundings of each
case of imputed surrender, to be enabled to settle such ques-
tion of deliberate yielding up.” A defence of abandonment
is abhorrent, even in an action at law;" and the assertion of
1 Atlantic Milling Co. v. Robinson et al., 20 Fed. R. 217.
* Holt et al. v. Menendez et al. (Not yet reported.)
* Armstrong v. Kleinhaus, 19 Rep. 528.
* The original section, ending here, was cited with approbation by the Su-
preme Court of Indiana, in Julian v. The Hoosier Drill Co. et al., 78 Ind. 408.
* Taylor v. Carpenter, 2 Wood. & M. 1.
§ 681.] ABANDONMENT. 655
title, on the ground of abandonment by the prior owner, must
be established by the strongest proof." Mere lapse of time
does not per se warrant the conclusion of abandonment. The
circumstances of the case, other than mere lapse of time,
almost always give complexion to the delay, and either ex-
cuse or give it a conclusive effect.” Abandonment itself is a
fact, and not a conclusion of positive law, statutory or com-
mon, arising from any prescribed state of facts.” The pre-
sumption is against it.” It must be set up in pleading to be
availed of ; * and upon him who thus sets it up rests the bur-
den of clearly establishing by affirmative evidence a positive
and actual abandonment, or such laches as clearly indicate an
intent to abandon.” Abandonment may arise by express dec-
laration, or by conduct equally significant, as by acquiescence."
But a declaration of an intention to abandon does not always
bind, for one is entitled to the locus penitentiae. There must
be something more than mere words. The intention must be
manifested by acts,” and when so manifested it cannot be re-
called.” But mere non-user of a trade-mark is not conclusive,
where the owner was passive because he was powerless to
prevent infringements, and he is not estopped from asserting
his right when he is in a condition to enforce it.” As to the
lapse of time that could justify an inference of abandonment,
it has been judicially said, that no statute of limitations bars
one from protection of his trade-mark.” On this point are
many decisions, alike in principle, although varied with cir-
1 Sohl v. Geisendorf, 1 Wilson (Ind.) 60. See also Bump, Laws of Patents,
Trade-Marks, etc., 246, which cites many cases to the same effect.
* Ibid. 247; Russel & Erwin Manuf. Co. v. Mallory, 10 Blatch. 140.
* Sprague v. Adriance, 14 Off. Gaz. 308.
4 Hovey v. Henry, 3 West. L. J. 153.
* Williams v. Boston & Albany R. R., 17 Blatch. 21.
6 United States Rifle & Cartridge Co. v. Whitney Arms Co., 14 Blatch. 94.
7 Kendall v. Windsor, 21 How. 322.
8 See Bump, 248, and authorities there cited; and also Mouson & Co. v.
Boehm, supra. .
9 American Hide, &c. Co. v. American Tool, &c. Co., 1 Holmes, 503; Ran-
som v. Mayor of New York, 1 Fish. 252; Bell v. Daniels, 1 Bond, 212; Mellus
v. Silsbee, 4 Mason, 108.
10 McMillan v. Barclay, 5 Fish. 189.
in Taylor v. Carpenter, 3 Story, 458,
656 LAW OF TRADE-MARKS. [$ 682.
cumstances. In one case, a lapse of twenty years was held to
be no bar;" in another case, ten years;” in another case,
nine years.” Yet, in another case, it was held that a non-
user of a trade-mark for the period of eight years, notwith-
standing the fact that the owner was absent a considerable
portion of the time on military service in a time of war, was
conclusive evidence against him, and that it could not be re-
sumed as against one who had exclusively used it in the
mean time.* In the Court of Aix, in France, in 1876,” one
reason for dismissing the plaintiff's claim was that he had
knowingly, and without dispute, allowed the defendant for
more than ten years to use the trade-mark in controversy. —
From these examples, it is seen how impracticable it is to
make any inflexible rule on the subject. Circumstances must
always control a decision. The language of Chitty, J., in
1884, is worthy of quotation:* “Now it is said that user
is the life of a trade-mark, and non-user the death of it.
These of course are metaphorical expressions, which must be
received with caution. . . . A man who has a trade-mark
may properly have regard to the state of the market, and the
demand for his goods: it would be absurd to suppose he lost
his trade-mark by not putting more goods on the market
when it was glutted.” This matter of intention demands fur-
ther consideration in the light of other authorities. -
§ 682. Would it constitute abandonment for the proprietor
of a trade-mark calmly to look on while another files a claim
for the identical mark 2 No. Wherefore ? For the reason
that assertion of title and the recording thereof do not create
anything beyond a rebuttable presumption of property. So
said the Court of Cassation of France, in 1864, in affirming a
decision of the Court of Paris." Per Curiam : “The deposit
1 Gillott v. Esterbrook, 48 N. Y. 374.
* Wolfe v. Barnett, 24 La. Ann. 97.
* Lazenby v. White, 41 L. J. (N. s.) 354. -
* Blackwell v. Dibrell, 14 Off. Gaz. 633; 3 Hughes, 163. The court cited this
chapter as authority.
5 Eydoux v. Morel, 23 Annales, 252.
* Mouson & Co. v. Boehm, supra.
* Leroy v. Calmel, 10 Annales, 198.
§ 682.] ABANDONMENT. 657
does flot constitute an exclusive property in the mark. That
is necessary only for the purpose of enabling the owner to
obtain redress for infringement. It is necessary to inquire
always if the right existed previous to the deposit, and if the
depositor has not renounced it.”—This ruling is simply an
enunciation of a doctrine that is without exception main-
tained. It is the law of common sense. No one can obtain
a title to lands by placing a non-valid paper on record; for,
although having all the external appearance of truth, it may
have been forged, or never been delivered, and therefore not be
a deed in law. So of an emblem previously appropriated by
another as his trade-mark. The unjust registrant takes noth-
ing by his stealthy motion, and the true owner is not despoiled
thereby, although the attempt at fraud may furnish grist for
the judicial mill. In an analogous case," Clifford, J., held
that actual abandonment must be proved, and that it is not
possible to hold that the use of an invention without the con-
sent of the inventor, while his application was pending in the
Patent Office, could defeat the operation of the letters patent
afterwards duly granted. It may be that the owner of the
trade-mark was under a disability to register, as in the case of
a resident of France previous to the making of the convention
of 1869. Yet his title was perfectly valid at common law.
Section 9 of the statute of March 3, 1881, clearly recognizes
this truth, for it makes it actionable for any person to “pro-
cure the registry of a trade-mark, or of himself as the owner
of a trade-mark, or an entry respecting a trade-mark, in the
office of the Commissioner of Patents, by a false or fraudulent
representation or declaration, orally or in writing, or by any
fraudulent means,” etc. Now, it is obvious that, if one by
mere registration could divest another of a common-law right,
said section should never have been written. Section 10 of
the same statute carefully preserves all common-law remedies
for a wrongful use of even unregistered trade-marks. We
see, therefore, that it is not abandonment for an honest trader,
through inability or indisposition, to lie on his oars while
another person attempts to commit an act of piracy. The
1 Dental Vulcanite Co. v. Wetherbee, 3 Fish. 87.
42
658 LAW OF TRADE-MARKS. * [$683.
wrong-doer is “hoist by his own petard.” It must, however,
be conceded that a long-continued neglect to attack a tres-
passer may be a circumstance tending to prove an intention to
abandon. In one case," after the beginning of a suit based on
infringement, the real defendants (although concealed behind
others) made an attempt to appropriate the infringed trade-
mark, by going through the form of registering it as theirs,
under the Missouri statute of March, 1866. The court, by
Currier, J.; Scouted the idea that the law could be made
available for such a nefarious purpose, and said, as to that
statute, “It was not designed to weaken or abridge any ex-
isting rights, or any future right to a trade-mark which might
be acquired in the usual way, or to legalize, in any form or
measure, piracy in trade-marks.” Shepley, J., instructed the
jury in a patent case,” that “abandonment means a general
abandonment to the public, and must be shown affirmatively
and positively, as affecting the interest of the party; . . .
it is dedication to the public ; a giving up of the claim to the
monopoly in the invention.” In the case of an easement,”
the court said: “The presumption of abandonment cannot be
made from the mere fact of non-user. There must be other
circumstances in the case to raise that presumption. The
right is acquired by adverse enjoyment. The non-user, there-
fore, must be the consequence of something which is adverse
to the user.” This point of non-user calls up a case that
requires comment. -
$683. In the New York Common Pleas Court, in 1854,”
Ingraham, First J., charged the jury that the defendant was
liable for the sale of leather stamped with a former trade-
mark of the plaintiff, although at the time of said sale the
plaintiff employed exclusively a mark of a different device;
and that his property in the original trade-mark was not di-
vested by discontinuing its use. It may possibly be that the
reporter of the case, although a highly intelligent member of
1 Filley v. Fassett, 44 Mo. 173; 8 Am. L. Reg. (N. s.) 402; R. Cox, 530.
2 American Hide, &c. Co. v. American Tool, &c. Co., 4 Fish. 305.
8 Ward v. Ward, 7 Ex. 738. -
* Lemoine v. Ganton, 2 E. D. Smith, 343; R. Cox, 142.
§ 684.] . ABANDONMENT. 659
the legal profession, may have misunderstood the language of
the judge. On appeal to the court, in banc, Daly, J., in de-
livering the opinion of the court, said, more correctly: “The
fact that the plaintiff had discontinued the use of this trade-
mark for three years would not deprive him of a right of
action against the defendant, for selling leather which was
not manufactured by the plaintiff, but stamped in the same
manner in which the plaintiff had formerly designated the
leather manufactured by him, thus purporting to be of his
manufacture, and declared by the defendant at the time of
sale to be the genuine Lemoine calfskins.” If we were to
stop here, it might be with the erroneous impression that the
learned judge meant that the mark had not been abandoned
by a non-user for three years. He continued: “The wrong
and injury to the plaintiff consisted in the sale of calfskins
falsely purporting and declared to be of his manufacture; and
it makes no difference whether that object was effected by
counterfeiting the trade-mark which he uses at present, or
one that he formerly used. An injury results to him in either
case.” This, then, was not an action for infringement of a
trade-mark; but was an action for fraudulent competition and
deceit, by means of a certain device that had formerly been a
trade-mark." Lemoine had abandoned that device, and it had
ceased to be a trade-mark. The act of abandonment was
completed the instant that he intentionally discontinued its
use, – three years before.
§ 684. Laches. – What may be considered such remissness,
carelessness, or neglect, as shall work a forfeiture of right to a
trade-mark? It has sometimes been contended that a for-
bearance to prosecute infringers amounted to abandonment.
But this view has not received the sanction of our courts.
To be sure, we find an opinion of Wylie, J., of the Supreme
Court of the District of Columbia, which, taken just as it
appears in print, affirms that such forbearance does amount to
abandonment. It would be a piece of gross injustice to the
judge to omit to state that he receded from the position first
1 See ante, § 34, “Principles on which Infringement is prohibited,” and $43,
“ Unfair Competition in Business.”
660 LAW OF TRADE-MARKS. [$ 684.
w
assumed by him, and made all the amends in his power by
granting a decree in direct opposition to his published opin-
ion." From the published report, it seems that the com-
plainants are an incorporated company at Sheffield, England,
engaged in the manufacture of fine cutlery, and are the
successors of Joseph Rodgers & Sons, by whom the business
was first established more than a hundred years ago. They
alleged that their name and mark– a star and a Maltese
cross — had been infringed. The defendants were respecta-
ble booksellers and stationers in Washington, D. C., and
dealers in fine penknives, scissors, and other cutlery. A pre-
liminary injunction was asked for. The judge said, inter alia:
“I am of opinion that this suit cannot be maintained by these
complainants. . . . These goods have been manufactured in
Germany, and sold extensively in this country under this spu-
rious trade-mark, for nearly, if not quite, a quarter of a cen-
tury. These facts must have been known to the complainants
almost from the beginning. One of the affiants states that
he himself gave verbal notice of them to a clerk of the com-
plainants, at Sheffield, in 1865, and was informed that his
employers were perfectly aware of all that had been done.
And yet, in all this period, the complainants have taken no
measures, either in this country or in Germany, to vindicate
the exclusiveness of their title to the trade-mark in question.
They have seen, looked on, and permitted these German
manufacturers to employ a similitude of their own trade-mark,
and under it to make extensive sales to the people of this
country. This long acquiescence might not possibly debar
the complainants from remedy for their injury as against the
German manufacturers. . . . It tended to encourage, and
did encourage, our own people to part with their money in
exchange for these goods. It was in violation of no law or
contract, nor was it a wrong done to Rodgers & Sons, of
Sheffield, when the goods in question were bought by the
defendants in the city of New York. The neglect of these
English manufacturers to arrest within a reasonable period,
by legal measures, the violation of their rights in their own
- 1 Rodgers & Sons v. Philp & Solomons, 1 Off. Gaz. 29.
§ 684.] ABANDONMENT. 661
trade-mark by the Germans, amounted in law to a license to
the world to buy the goods from the latter under the imita-
tion trade-mark. All that can be expected of them is to take
care that they are not cheated themselves, and that they de-
fraud no one in their turn. It could not be tolerated that
manufacturers, like patentees, should have the right as long
as they should have a trade-mark—it might be for a hundred
years, as in the case of these complainants — to send agents
all over the country, and interfere with the business of every
man who happened to have bought goods manufactured by
other companies, and sold under an imitation trade-mark.”
Excellent! a title to roguery by prescription | Plea of a pi-
rate that he and his ancestors had been so long engaged in
the business of plundering foreign craft, that his right in the
premises had become perfect, and a prayer that the indict-
ment be quashed We might regard this opinion of the judge
as a gleam of judicial pleasantry, were it not for the solemn
style of the document as a whole. By consulting a previous
part of this same opinion, we find that the defendants say in
their answer that the goods were purchased with the knowl-
edge that they were manufactured in Germany; “that goods
of this manufacture, and stamped with this trade-mark, have
been well known to persons engaged in the business for nearly,
if not quite, twenty-five years, as being different from those
made by the English house of Joseph Rodgers & Sons; that
they are of equally good quality with those produced by the
English firm, and can be sold for thirty-three per cent less
than these.” We are all well aware by this time that it is no
defence that the spurious wares are as good as the genuine."
If that could be received as a defence to a prosecution for
infringement, farewell to protection l Nor is it a valid an-
swer that the trespass is of long continuance. There would
be, therefore, no just defence to the bill filed in the case
under discussion. So, upon reflection, thought Judge Wylie.
Out of a feeling of tenderness for the reputation of a judge, as
well as to demolish a false authority, let us now place in print
the sequel, which by some fatality has never found its way
* See authorities cited ante, in note to § 336.
}
662 LAW OF TRADE-MARKS. [$ 685.
into the “Official Gazette,” or (it is believed) any other legal
periodical or book of reports. On the 5th day of February,
1872, the cause came on to be heard before the same judge.
He decreed a perpetual injunction against the defendants,
their servants, agents, or employees, restraining them from
passing, putting up, selling, or offering for sale, penknives,
pocket-knives, or other articles of cutlery other than those
manufactured by the complainants, having imprinted, stamped,
or in any wise marked thereon a star and Maltese cross, or
any device substantially similar to, or in any manner imitat-
ing, said device of a star and a Maltese cross adopted and
used by the complainants, Joseph Rodgers & Sons, as their
trade-mark, etc. In consideration of the honorable conduct
of the defendants, in accepting the situation with good grace,
while not throwing any obstacles in the way of a righteous
result, the complainants remitted the costs. Let us now learn
what other judges have said upon the matter of abandonment
of trade-marks. - -
§ 685. Story J., once spoke thus: 1 “Again it has been
said, that other persons have imitated the same spools and
labels of the plaintiffs, and sold the manufacture. But this
rather aggravates than excuses the misconduct, unless done
with the consent or acquiescence of the plaintiffs, which there
is not the slightest evidence to establish; or that the plain-
tiffs ever intended to surrender their rights to the public at
large, or to the invaders thereof in particular.” The circum-
stances of this case are very similar to those in the Rodgers
& Sons suit; and the defence therein made set forth infringe-
ments by others upon the plaintiffs, an English house. — And
now comes another witness upon the same side of the question.
As to the pretence of right in plundering foreigners, Wood-
bury, J., said:” “I am not aware of any principle by which
a usage in this or a foreign country is competent evidence in
defence of a wrong. . . . The defendant now argues that this
evidence was competent to show an acquiescence by the plain-
tiff in the use of his marks, or to show a dedication of them
1 Taylor v. Carpenter, 8 Story, 458; R. Cox, 14.
* Taylor v. Carpenter, 2 Wood. & M. 1; 9 L. T. 514; R. Cox, 32.
§ 685.] ABANDONMENT. 663
to the public, as he knew that marks of theirs as well as of
others were used in this way, and without redress, in this
country as well as abroad. . . . But I am not aware that a
neglect to prosecute, because one believed he had no rights,
or from mere procrastination, is any defence at law, whatever
it may be in equity (1 Story, 282), except under the statute
of limitations pleaded and relied on, or under some positive
statute, like that as to patents, which avoids the right if the
inventor permits the public to use the patent some time be-
fore taking out letters. . . . There is something very abhor-
rent in allowing such a defence to a wrong, which consists in
counterfeiting others' marks or stamps, defrauding others of
what had been gained by their industry and skill, and robbing
them of the fruits of their “good name,’ merely because they
have shown forbearance and kindness. . . . It is rather an
aggravation to the plaintiffs that many others have injured
them.”— Lest the false doctrine be not sufficiently exploded,
we may cite further authorities, powerful enough to pulverize
the absurdity. When discussing the idea of acquiescence op-
erating as an absolute surrender of an exclusive right, Duer,
J., said: " “The consent of a manufacturer to the use or im-
itation of his trade-mark by another may, perhaps, be justly
inferred from his knowledge and silence; but such a consent,
whether expressed or implied, when purely gratuitous, may
certainly be withdrawn; and, when implied, it lasts no longer
than the silence from which it springs. It is, in reality, no
more than a revocable license.” Potter, J., eighteen years
later, used substantially the same language,” and held that it
is no defence that the fraud has been multiplied, and further
held that acquiescence cannot be inferred, and is revocable if
it could be. Upon appeal to the general term, two of the
judges held that it was no acquiescence in the plaintiff, where
it did not appear that he had discovered any individual whom
he could attack as an offender, although the plaintiff knew
that persons were trespassing upon him. The third judge
thought, that the knowledge of the fact of such infringement
1 Amoskeag Manuf. Co. v. Spear, 2 Sandf. S. C. 599.
2 Gillott v. Esterbrook, 47 Barb. 455.
664 LAW OF TRADE-MARKS. [$ 686.
for more than twenty years would be treated as an acquies-
cence by him. But not one of the members of the court
hinted that such acquiescence could amount to entire abandon-
ment. Currier, J., in speaking for the whole court, took the
same position that had before been maintained, and said that
the infringement of the plaintiff's mark by others in no way
aided the defence. Said he “The depredations of others
on plaintiff's rights furnish no excuse to the defendants for
similar acts on their part. It is rather an aggravation to
the plaintiff that others have also injured him. And courts
have not shown any disposition to encourage that line of de-
fence.” We hardly need to pursue the theme, for the weight
of judicial authorities all tends the same way, in vindica-
tion of the venerable maxim, “Jus et fraus nunquam cohabi-
tant.”? -
§ 686. Yet truth compels the citation of two French cases
which seem to assert that right and fraud may not only in-
habit the same house, but may dwell together in harmony.
The first is a judgment of the Court of Cassation.” It has
such an air of moral obliquity about it as almost justifies the
animadversions of the eminent jurists who have criticised and
condemned it. If we carefully scan all the facts, we may
possibly come to the conclusion that the judgment is recon-
cilable with the maxim above quoted, and also with that cited
and relied upon by the demandants' counsel, -“Contra non
valentem agere non currit praescriptio.”* It was admitted
by the tribunal of first instance, that, for more than half a
century, the files made and sold by the house of Spencer &
Stubs, now Spencer & Son, of Sheffield, England, had en-
joyed an incontestable industrial renown ; and that for many
years—thanks to immunities given on the Continent to the
1 Filley v. Fassett, 44 Mo. 173. -
* Blodgett, J. (Williams v. Adams, 8 Biss. 452), held that abandonment of a
trade-mark is not made out by showing numerous infringements in which the
owner of the trade-mark has not acquiesced. The same doctrine was main-
tained in Sohl v. Geisendorf, 1 Wilson (Ind.), 60; and by the Supreme Court of
Louisiana, in Funke v. Dreyfus, 34 La. Ann. 80; 44 Am. R. 413.
* Spencer & Son v. Peigney, 10 Annales, 197.
* See Broom's Legal Maxims, 700.
§ 686.] ABANDONMENT. 665
counterfeiting of foreign products — the manufactures of the
demanders had been imitated in innumerable quantities, with
the mark and name of the genuine house, all which was done
without the acquiescence of the demanders. By long usage,
continued the mouth-piece of the tribunal, the name and mark
had come to be the characteristic indication of a product;
and therefore the owners had lost all right to the exclusive
use by the effect of a sort of prescription of fact, longi tem-
poris, for the name and mark had ceased to indicate origin
or ownership. The Advocate-General Bédarrides asks, on ap-
peal, “Of what prescription do they speak? The tolerance
of usurpation, can that serve to found a right?” The Court
of Paris, on appeal, discoursed thus: “Considering that, for
more than fifty years, the mark composed of a crescent, a
Z reversed, and the name of Spencer has been adopted by
French industry in the fabrication of a species of file; that
this mark does not designate the origin, nor even the nature,
of the fabric; that the French fabricants have rendered it
common in France, and have given to it a just celebrity:
considering that Spencer & Son, in availing themselves of
Article 12 of the treaty of commerce between France and
England of the 10th of March, 1860, had not the power to
take a mark which had become the property of French indus-
try; that for the purpose of distinguishing their products
they could take only a mark peculiarly their own, and that
what they really did deposit with the clerk of the Tribunal
of Commerce of the Seine is a mark composed of a crescent,
a Z reversed, the name of Spencer, and the name of their
place of manufacture, Sheffield: considering that it is only
to the last mark that Spencer & Son have an exclusive right;
that Peigney has respected their property on this point, and
in placing on the files made by him the mark which for long
years had become proper to French commerce, he has com-
mitted no tort; and adopting in full the reasons of the judges
below, let the appeal go for naught, and order that the judg-
ment appealed from have full and entire effect, and condemn
Spencer & Son to the costs of appeal.”—It is worth while
to glance at later French and German authorities. The Tri-
666 LAW OF TRADE-MARKS. [$686.
bunal Civil of Lyons, in 1872, held that abandonment of
a registered trade-mark is not presumed, and cannot be pre-
sumed, from the fact of refraining from suing infringers dur-
ing a time of more or less duration; and yet the defence had
established the fact, that prior to 1845 the plaintiff had in his
prospectuses admitted that his mark had been counterfeited.—
In the month after that decision was made, the Court of Aix
held that abandonment will not be presumed from the fact
that the manufacturer and owner of the mark, to discourage
competition, sold inferior products without affixing his mark
thereto.”— In the Court of Paris, in 1874, it was held that
abandonment is not to be presumed even when the inventor
had published the name for the use of a particular business
concern, and others could be interdicted for using the par-
ticular designation.”—So also in the Court of Cassation, in
1875, it was held that the fact that a certain number of in-
dustrials had made use of the inventor's name to designate a
product obtained by the aid of his formulae would not suffice
to make that name publici juris, nor to turn it into a neces-
sary name of the product.*— In the year after that, in Ger-
many, the Court of Appeal of Cologne held that a trade-mark
should not be considered as abandoned to the public from the
mere fact that it had been used by a few members of a cer-
tain class of merchants, when it had not been used generally
by that class.”—So the Court of Paris, in 1877, said that
the proprietor of a regularly deposited trade-mark could not
be deprived of his claim to exclusive user, unless he should
have consented to its cession without reserve, or should have
abandoned it in an absolute manner, that is to say, with an
unequivocal will to let it fall into the public domain. The
facts in that case were these. The plaintiff had published a
list in which — among a great number of other and common
marks, to be selected at pleasure by his retail customers, and
to which they could join their own names—he had included
1 Menier v. Buisson et al., 18 Annales, 24.
* Menier v. Rochebrun, Ibid. 29.
* Liebig and Liebig's Extract of Meat Co. v. Collemann et al., 19 Id. 83.
* Demot, Dubrac, & Benités v. Société des Heritiers Liebig, 20Id. 115.
* Mulhens v. Buchholz, 24 Id. 29.
§ 687.] ABANDONMENT. 667
the mark involved in the suit; but he had continued to affix
to his products a notice that his label and mark were regis-
tered. That was evidence that he had not abandoned." — In
1882, the Tribunal of Havre,” said, that whereas property in
a mark can be abandoned expressly or tacitly, tacit abandon-
ment cannot be presumed, and simple acts of tolerance can-
not be deemed renunciation ; that non-user itself during the
time, more or less long, permits nevertheless the claim to
property in a mark, provided that during that time it did
not fall into the public domain. — The late M. Pataille, cer-
tainly very high authority, gave as his opinion, that the de-
fault of suing for false imitation going back for more than
three years cannot be regarded as abandonment, when cou-
pled with the fact that the owner of the trade-mark had
legally registered it, and had not ceded his right.”
§ 687. We must constantly bear in mind that the decision
of law in the case of Spencer & Son is based on the question
of fact determined in the tribunal below. The mark had lost
its pristine integrity. Its individuality was annihilated. It
might be likened to a ship decoyed by false lights, and dashed
into fragments on the rocks, to become a common prey. The
mischief had been done beyond redress. The mark had lost
all power to distinguish the manufacture of any particular
person or company. It had become, through an unfortunate
concurrence of circumstances, the mere sign of a class of goods.
We perceive, therefore, that this cannot be deemed, even in
theory, to be a case of abandonment. The law will protect a
man’s life, but it cannot restore vitality. A dead man must
remain dead.* The tribunal of last resort, the Court of Cassa-
tion, was bound by the fact established below. It said, inter
alia : Inasmuch as Spencer & Son have deposited in France
another mark, differenced from the preceding by the addition
of the name of their place of manufacture, Sheffield, they have
an incontestable exclusive right of property in that; but as
1 Carrière v. Durand et al., 25 Annales, 166.
* Chapu v. Legrand et al., 27 Id. 201.
8 Affaire Wrau v. Divers, 26 Id. 85.
* “Medicina mortuorum sera est.” Quintil.
668 LAW OF TRADE-MARKS. [$ 688.
this latter mark has not been usurped, the judgment must
be affirmed. — Our wrath subsides when thus reaching the
inevitable conclusion, that the demanders were virtually con-
querors. The supreme court had not the power to overturn a
fact found. It did the best it could by intimating in clear
language that the trivial addition of the name of a place made
a new mark. — As the house of Spencer & Son never intended
to abandon the trade-mark, it had not been abandoned.
§ 688. The case of Stubs v. Astier et al., in the Court of
Paris, in 1864, on appeal from the Tribunal Civil of the
Seine, involved the same principle. The Tribunal confiscated
the spurious goods, consisting of cutlery, and imposed a fine.
Hence the appeal. The appellate court said that the mark
claimed by the complainant as his peculiar property had long
been in France the index of a product of superior quality,
and had ceased to be an indication of the origin of manufac-
ture, but had become the very designation of the nature of
the product of which it is the denomination. That a mark so
long known to the public to cover products of a superior qual-
ity would operate to the exclusion of all others was manifest,
and it would cause considerable damage to French industry
to deprive it of the fruit of labor to enrich Peter Stubs; that
such a result would, in effect, extinguish the just stipula-
tions of reciprocity contained in the treaty of commerce of
March 10, 1860.” It must also be considered that Peter Stubs
can assure his rights, in the wise limits that the law has
traced, by giving to the mark used by him in France a pecu-
liarity of appearance that can suffice to prevent confusion
between his products and those of other persons. He will
then have obtained all the advantages that the said treaty
intended for foreigners. — When we reflect upon this judg-
ment and the one immediately preceding it, we come to the
conclusion that the courts did not desire to countenance fraud
in the slightest degree. The originally trustworthy marks
1 10 Annales, 212. º
* Such was also the reasoning of the Court of Rouen, in a case of citi-
zens of the United States, in 1883. Lanman & Kemp v. Bognard et al., 29
Annales, 200. &
§ 689.] - ABANDONMENT. 669.
had, through misfortune, – brought on indeed by piracy, —
lost all power to indicate origin or ownership. By a slight
modification of the device, a perfectly valid trade-mark could
be established. The public would know whose products they
were purchasing, and the foreign manufacturers would reap
the advantages legitimately belonging to them.” We reach
another conclusion: these two cases do not militate against
The generally accepted rules in abandonment cases.
§ 689. Abandonment in one Country is Abandonment in all
Countries.—Commerce is not bounded by territorial limits.
The whole of the habitable globe is hers. It is true that the
owner of a counterfeited mark may not have the means of
pursuing pirates in foreign lands, but his rights remain un-
diminished. It is only the remedy that is lacking. Reprisals
upon trade must continue in most countries until reciprocity
of protection be guaranteed by treaties or conventions; but
certainly it cannot be pretended that there is an abandonment
when one has no possible opportunity of attack or defence.
Our government does not forfeit its exclusive right to certain
proprietary marks, because they are counterfeited in Europe.
It is a well-known fact, that when an American merchant
visits certain Belgian, German, and Swiss manufactories, he
is asked what English maker's trade-mark he desires to have
stamped upon his purchases. Doors, similar to those used by
vendors of paper-hangings, are swung open, and all the trade-
marks of British manufacturers are displayed by the shame-
less depredators. The victims are well aware of this practice;
but their hands are tied. They are strangers and foreigners,
and have no standing in court until enfranchised by treaty
stipulations.” Do they forfeit their rights by reason of mere
1 Mellish, L. J. (in Ford v. Foster, L. R. 7 Ch. 611; 41 L. J. Ch. 682; 27 L. T.
(N. s.) 219; 20 W. R. 818), said: “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 original owner of the trade-
mark as if they were his goods.”
* Since the first publication of this section, nearly all European nations
have, by treaties, or stipulations in the nature thereof, allowed foreigners to
670 LAW OF TRADE-MARKS. [$ 690.
lapse of time? No. There being no intention to abandon
their marks, it follows that their marks are not abandoned.
Abandonment must be as broad as the domain of commerce.
The converse of this proposition is, that if one retain his right
to a trade-mark in one country, he retains it in all. If the
trader were obliged to repel every assault upon his prop-
erty, under pain of forfeiture of title to it, what would be the
consequence? He would constantly have to be in a bellige-
rent attitude, and to be ubiquitous. He would soon fall into
the “Slough of Despond.” Might would inevitably usurp the
place of Right. Is he, then, not compellable to assert his
right? Certainly he is, but only within reasonable limits.
The law does not demand the performance of impossibilities.
The wisdom of all nations attests the correctness of this idea.
Nevertheless, it must be remembered that a symbol that is
publici juris in one country is so in all others. The Court of
Cassation of France, in 1874, held that, even when treaties
confer reciprocity in trade-mark rights in France and Eng-
land, the vulgarization of a mark in England is an obstacle
to the claim of that mark in France.—So also in an appeal
to the Saxon Court Royal of Leipzig, in 1878, it was held
that foreign trade-marks that have ceased to be legally such in
the country of origin are equally invalid in other countries.”—
And so, in the Court of Appeal of Brussels, in 1884,” the same
rule was applied.
§ 690. Conclusion deduced from the foregoing Authorities. –
The phrase “abandonment of a trade-mark” means an in-
tentional discontinuance of it. The original proprietor may
register, and consequently to sue. But registration has not a retroactive effect.
The Tribunal of Commerce of Brussels, in 1883, held that a registration of a
trade-mark in Belgium by a foreigner, anterior to a treaty with his country,
is a nullity. 1 Bulletin Officiel, 178. – In the same year, the Court of Cassation
of France held that the registrant of a trade-mark has no redress for coun-
terfeiting before registration. Ibid. 198. —It is not vainglorious again to call
attention to the truth, that in the United States a more liberal spirit has always
prevailed, and that, without regard to nationality or formalities of registration,
foreigners have stood on an equality with our own citizens. .
1 Lawson et al. v. Dechaille, 19 Annales, 153.
* Affaire Armstrong, 23 Id. 216.
8 Jaubert-Bonnaire v. Wilford, Bulletin Officiel, January 8, 1885.
§ 691.] ABANDONMENT. 671
readopt it, unless in the mean time some other person or per-
sons shall have lawfully become possessed thereof; or unless
the device shall have become a mere designation of quality or
kind of product. In the latter case, the trade-mark is extin-
guished. If readopted, it has all its original force and vigor.
If a trade-mark be purely personal in its nature, it cannot be
appropriated by another by virtue of abandonment; for other-
wise a false credit might be gained thereby.
§ 691. It may now be said of the subject of Abandonment,
as of other matters preceding it in this book, that the natural
resting-place has been reached. But the writer does not in-
tend to abandon the study of this interesting branch of juris-
prudence, — the Law of Trade-Marks. The same inquiring
spirit which has impelled his pen will watch the gradual com-
pletion of a system now emerging from infancy, the founda-
tion of which is laid in the doctrines collected in these pages.
At every step he has been cheered by additional light. Even
Japan, by the lips and pen of one of her representatives, has
furnished valuable information upon cognate subjects, although
not in a shape available for the present purpose. From clear
indications, the belief is justified that all civilized nations will
soon unite in an harmonious code for the protection of the
trade-mark, as the surest guaranty of universal commercial
faith." In the mean time, beneath the touch of able jurists
throughout the domain of Commerce, rough stones shall be-
come as polished corners of the Temple, and present theories
be permanently established in the intellectual superstruc-
ture.”
* See ante, § 26, and the Laws of Various Countries, in the Appendix. Has
not this prophecy of more than a dozen years ago been almost completely ful-
filled 3 Has not even Japan proved her right to be classed with the most en-
lightened nations in respect to the subject of this treatise ? Truly, a common
bond of interest has drawn all civilized countries into a close communion.
* What is demonstrated, on comparison of this revised edition with the first?
That crude speculations have crystallized into established principles; and that
conflicting opinions have, by the attrition of mind on mind, been reconciled,
adjusted, and reduced to harmonious order.
APPENDIX.
TREATIES, CONVENTIONS, ETC, IN RELATION TO
TRADE-MARKS.
Convention between the United States and the Austro-Hunga-
rian Empire, November 25, 1871. Proclaimed June 1, 1872.
(17 Statutes at Large, 917.)
ARTICLE I.
Every reproduction of trade-marks which, in the countries or
territories of the one of the contracting parties, are affixed to cer-
tain merchandise to prove its origin and quality, is forbidden in the
countries or territories of the other of the contracting parties, and
shall give to the injured party ground for such action or proceed-
ings to prevent such reproduction, and to recover damages for the
same, as may be authorized by the laws of the country in which
the counterfeit is proven, just as if the plaintiff were a citizen of
that country.
The exclusive right to use a trade-mark for the benefit of citizens
of the United States in the Austro-Hungarian Empire, or of citi-
zens of the Austro-Hungarian Monarchy in the territory of the
United States, cannot exist for a longer period than that fixed by
the law of the country for its own citizens. If the trade-mark
has become public property in the country of its origin, it shall be
equally free to all in the countries or territories of the other of the
two contracting parties.
ARTICLE II.
If the owners of trade-marks, residing in the countries or terri-
tories of the one of the contracting parties, wish to secure their
rights in the countries or territories of the other of the contracting
parties, they must deposit duplicate copies of those marks in the
Patent Office at Washington, and in the Chambers of Commerce
and Trade in Vienna and Pesth.”
1 See the note to Article II. of Convention with France, p. 675.
43
674 ** APPENDIX.
ADDITIONAL ARTICLE to the Treaty of Commerce and Navigation
between the United States and Belgium, of July 17, 1858.
Proclaimed July 30, 1869. (16 Statutes at Large, 765.)
Penewed June 11, and proclaimed June 29, 1875.
The high contracting parties, desiring to secure complete and
efficient protection to the manufacturing industry of their respective
citizens, agree that any counterfeiting in one of the two countries
of the trade-marks affixed in the other on merchandise, to show its
origin and quality, shall be strictly prohibited, and shall give ground
for an action of damages in favor of the injured party, to be prose-
cuted in the courts of the country in which the counterfeit shall be
proven. &
The trade-marks in which the citizens of one of the two countries
may wish to secure the right of property in the other must be
lodged to wit: the marks of citizens of the United States at Brus-
sels in the office of the clerk of the Tribunal of Commerce, and the
marks of Belgian citizens at the Patent Office in Washington.
CoNVENTION between the United States and Belgium, of April 7,
1884. Proclaimed July 9, 1884. (Statutes for 1883–84,
List of Treaties, etc., 56.)
ARTICLE I.
Citizens of the United States in Belgium, and Belgian citizens in
the United States of America shall enjoy, as regards trade-marks
and trade-labels, the same protection as native citizens, without
prejudice to any privilege or advantage that is or may hereafter be
granted to the citizens of the most favored nations.
ARTICLE II.
In order to secure their marks the protection provided for by the
foregoing article, the citizens of each one of the contracting parties
shall be required to fulfil the laws and regulations of the other.
AGREEMENT between the United States and Brazil, September 24,
1878. Proclaimed June 17, 1879. (21 Statutes at Large,
659.)
The citizens or subjects of the two high contracting parties shall
have, in the dominions and possessions of the other, the same rights
APPENDIX. 675
as belong to native citizens or subjects in everything relating to
property in marks of manufacture and trade.
It is understood that any person who desires to obtain the afore-
said protection must fulfil the formalities required by the laws of
the respective countries.
CoNVENTION between the United States of America and France
concerning Trade-Marks, of April 16, 1869. Proclaimed
July 6, 1869. (16 Statutes at Large, 771.)
ARTICLE I.
Every reproduction in one of the two countries of trade-marks
affixed in the other to certain merchandise to prove its origin and
quality is forbidden, and shall give ground for an action for dam-
ages in favor of the injured party, to be prosecuted in the courts of
the country in which the counterfeit shall be proven, just as if the
plaintiff were a subject or citizen of that country.
The exclusive right to use a trade-mark for the benefit of citizens
of the United States in France, or of French subjects in the terri-
tory of the United States, cannot exist for a longer period than
that fixed by the law of the country for its own citizens.
If the trade-mark has become public property in the country of
its origin, it shall be equally free to all in the other country.
ARTICLE II.
If the owners of trade-marks, residing in either of the two coun-
tries, wish to secure their rights in the other country, they must
[respectively deposit duplicate copies of those marks in the Patent
Office at Washington,” and in the clerk's office of the Tribunal of
Commerce of the Seine, at Paris.
1 This Article II. is not correctly translated. On March 21, 1877, the French
Minister at Washington invited the attention of the Secretary of State to the
fact of the omission of a material word, “devront respectivement étre deposées
en double exemplaire,” etc. On April 25, 1877, the Secretary answered, that
our government interpreted the article in the same sense as it has in the French
text. (Coudert, Marques de Fabrique, p. 45.)
* Many errors have been committed in consequence of a misconception of
the scope and meaning of the language of this article. The Commissioner of
Patents, on December 6, 1872, made a decision thereon, of which the following is
an extract: “That clearly means that a resident of this country wishing to secure
protection for his trade-mark in France must give constructive notice to the
people of that country, by depositing duplicate copies in the clerk's office of the
Tribunal of Commerce of the Seine; and so of a resident of France, who is re-
quired to deposit his mark in this Office. So far as the tribunals of this country
676 APPENDIX.
Convention between the United States and the German Empire,
of December 11, 1871. Proclaimed June 1, 1872. (17
Statutes at Large, 921.)
ARTICLE XVII.
With regard to the marks or labels” of goods, or of their pack-
ages, and also with regard to patterns and marks of manufacture
and trade,” the citizens of Germany shall enjoy in the United States
of America, and American citizens” shall enjoy in Germany, the
same protection as native citizens.
DECLARATION between the United States and Great Britain, Octo-
ber 24, 1877. Proclaimed July 17, 1878. (20 Statutes at
Large, 708.) º
The subjects or citizens of each of the contracting parties shall
have, in the dominions and possessions of the other, the same rights
as belong to native subjects or citizens, or as are now granted, or
may hereafter be granted, to the subjects and citizens of the most
favored nation, in everything relating to property in trade-marks
and trade-labels.
It is understood that any person who desires to obtain the afore-
said protection must fulfil the formalities required by the laws of
the respective countrics.
DECLARATION between the United States and Italy, June 1, 1882.
Proclaimed March 19, 1884. (Statutes for 1883–84, List
of Treaties, 16.)
The citizens of each of the high contracting parties shall enjoy,
in the dominions and possessions of the other, the same rights as
are concerned, the mere deposit of copies of a mark in this Office, by residents
of this country, does not amount to registration. The Act of Congress of July
8, 1870, is the governing rule in the latter case.” (Matter of Lanman & Kemp.)
This is the rule under the Act of 1881.
Before the passage of the Act of 1870, many residents of the United States
deposited copies of their marks in the Patent Office. That was done without
authority of law, and consequently no certificate of such deposit can be received
in evidence. This is an important point.
1 The use of this word must not be permitted to mislead into the idea that
labels are technical trade-marks; for, as has been shown in the foregoing treatise,
they are only mere vehicles for trade-marks.
* These five words mean trade-marks proper.
* Observe the broad term, which is limited to citizens of the United States.
APPENDIX. 677
belong to native citizens, or as are now granted, or may hereafter
be granted, to the subjects or citizens of the most favored nation,
in everything relating to property in trade-marks and trade-labels.
It is understood that any person who desires to obtain the afore-
said protection must fulfil the formalities required by the laws of
the respective nations.
ADDITIONAL ARTICLE to the Treaty of Navigation and Commerce
between the United States of America and the Emperor of
JRussia, of the 18th of December, 1832. Concluded and
signed at Washington, January 27, 1868. Proclaimed Oc-
tober 15, 1868. (16 Statutes at Large, 725.)
The high contracting parties, desiring to secure complete and
efficient protection to the manufacturing industry of their respect-
ive citizens and subjects, agree that any counterfeiting in one of
the two countries of the trade-marks affixed in the other on mer-
chandise, to show its origin and quality, shall be strictly prohibited
and repressed, and shall give ground for an action of damages in
favor of the injured party, to be prosecuted in the courts of the
country in which the counterfeit shall be proven.
The trade-marks in which the citizens or subjects of one of the
two countries may wish to secure the right of property in the other,
must be lodged exclusively to wit: the marks of citizens of the
United States in the Department of Manufactures and Inland Com-
merce at St. Petersburg, and the marks of Russian subjects at the
Patent Office in Washington.
TREATY between the United States and Serbia, for facilitating and
developing Commercial Relations, October 2 and 14, 1881.
Proclaimed December, 1882. (22 Statutes at Large, 966.)
The high contracting parties, desiring to secure complete and
efficient protection to the manufacturing industry of their respective
citizens and subjects, agree that any counterfeiting in one of the
two countries of the trade-mark affixed in the other on merchan-
dise, to show its origin and quality, shall be strictly prohibited and
repressed, and shall give ground for an action of damages in favor
of the injured parties, to be prosecuted in the courts of the country
in which the counterfeit shall be proven.
The trade-mark in which the citizens or subjects of one of the two
countries may wish to secure the right of property in the other,
678 APPENDIX.
must be registered exclusively to wit: the marks of citizens of the
United States in the Tribunal of Commerce at Belgrade, and the
marks of Serbian subjects in the Patent Office at Washington, sub-
ject to the conditions and restrictions prescribed by the laws and
regulations of the country in which the trade-marks are registered.
CoNVENTION between the United States and Spain, June 19, 1882.
Proclaimed April 19, 1883. (22 Statutes at Large, 979.)
ARTICLE I.
The citizens and subjects of each of the contracting parties shall
enjoy, in the dominions and possessions of the other, the same
rights as the natives of the country in everything relating to the
ownership of trade-marks, industrial designs or models, or manu-
factures of any kind. º
Persons desiring to secure the aforesaid protection shall be obliged
to comply with the formalities required by the laws of the respect-
ive countries.
TRADE—MARK LAWS OF WARIOUS COUNTRIES.
AUSTRIAN LAW OF DECEMBER 7, 1858.
I. General Provisions.
ART. 1. Under the name of “trade-marks” are understood,
in the present law, the particular signs serving to distinguish in
commerce the products and the merchandise of one manufacturer
from the products and merchandise of another (emblems, ciphers,
vignettes, &c., constituting such signs).
ART. 2. When a manufacturer desires to secure the exclusive
use of a trade-mark, he must register it, conformably to the pro-
visions of the following chapter.
ART. 3. A person cannot obtain an exclusive right to marks
consisting of signs in general use in commerce for particular mer-
chandise, or to marks which consist only of letters, words, or
numerals, or of the arms of the State or of its provinces.
ART. 4. The exclusive right to a trade-mark only prohibits
other manufacturers from the right to use the same mark on the
APPENDIX. 679
species of merchandise belonging to the production or objects of
commerce and industry to which the protected mark has been
appropriated. o
ART. 5. The right to an exclusive mark is inherent in the in-
dustrial enterprise to which the mark is attached. This right is
extinguished with the enterprise. A change of the enterprise
changes also the proprietorship. In this case, however, the new
proprietor is obliged to have, within three months, the mark tran-
scribed in his name under penalty of forfeiture, except always in a
case where the manufacture shall be continued by the widow or a
minor heir of a manufacturer, or on account of an estate in succes-
sion or in bankruptcy.
ART. 6. No person shall arbitrarily take the name, the firm-
title, nor the escutcheon or denomination of another manufacturer
or native, to designate merchandise or products.
ART. 7. All that is stated in the present law in regard to trade-
marks shall apply equally to marks borne on packages, boxes, vases,
envelopes, &c.
ART. 8. The present law does not change any of the provisions
in regard to particular marks ordained for certain classes of mer-
chandise, especially the provisions as to stamping.
II. Registration of Marks.
ART. 9. The mark of which a manufacturer desires to secure
the exclusive right (art. 2) must be deposited in duplicate at the
Chamber of Commerce and Industry of the district in which his
manufactory is situate and carried on. One of the copies shall re-
main on deposit at the Chamber of Commerce and Industry, and
be attached to the register of inscription; the other is returned to
the depositor furnished with the statements designated in the fol-
lowing article. º
ART. 10. On each of the two copies the employee or function-
ary appointed for the purpose by the Chamber of Commerce and
Industry shall write: a, the number of the order of registry;
b, the day and hour of presentation ; c, the name of him for whom
the mark has been registered; d, the designation of the commer-
cial enterprise to which the work is appropriated, – to which he
shall affix his signature and seal of office.
ART. 11. The registration is subject to a tax of 10 florins,
which shall be paid into the fund of the Chamber of Commerce
and Industry.
ART. 12. From the day and the hour of the presentation of the
mark at the Chamber of Commerce and Industry commences the
right of the depositor to the exclusive use of the mark, and it is as
680 APPENDIX.
of this period that his right of priority shall be judged, in case the
same mark shall be deposited by another person in the same Cham-
ber or in other Chambers of Commerce and Industry.
ART. 13. To obtain the transcription of the right to a mark,
in the sense of article 5, the applicant must present the proof of
acquisition of title to the industrial enterprise in question. The
transcript is subject to the same tax as the first requisition.
ART. 14. The Chamber of Commerce and Industry shall always
keep the register of marks open to the inspection of the public.
ARTS. 15–22. (These give a right to suppress a spurious mark,
and to destroy instruments and appliances for counterfeiting; and
also give an action for damages.)
BELGIAN TRADE-MARK LAW OF APRIL 1, 1879.
ART. 1. Every sign serving to distinguish the products of an
industry, or the objects of a commerce, is considered as a mark of
manufacture or of commerce. The name of a person, as well as
that of a commercial or industrial house, may serve as a mark in
the distinctive form given to it by the owner.
ART. 2. No one can claim the exclusive use of a mark if he
has not deposited the fac-simile in triplicate, with the stereotype
of his mark, at the office of the clerk of the Tribunal of Commerce
in the place where his establishment is situated.
ART. 3. Whoever has first made use of a mark may alone make
the deposit.
ART. 4. The instrument of deposit is inscribed on a special
register and signed both by the depositor, or his attorney, and the
clerk; the power of attorney remains annexed to the instrument.
It states the day and hour of the deposit. It indicates the kind of
industry or of commerce for which the depositor intends to employ
the mark. A copy of the instrument of deposit is given to the
depositor. Another copy is sent, within the week, with one of the
deposited fac-similes and the stereotype of the mark, to the central
office, by which the announcement of the deposit, the description,
and the design of the mark shall be published in a special publica-
tion, six months at the farthest after the reception of the packet.
ART. 5. For each mark deposited a tax of ten francs is paid.
The deposit is received only on the production of a receipt proving
the payment of the tax.
ART. 6. Foreigners who conduct in Belgium industrial or com-
mercial establishments enjoy, for the products of these establish-
ments, the benefits of the present law on fulfilling the formalities
APPENDIX. 681
which it prescribes. The same applies to foreigners or Belgians
who conduct their industry or commerce out of Belgium, if in the
countries where their establishments are situated international con-
ventions have stipulated reciprocity for Belgian marks. In the
latter case the deposit of the marks takes place at the office of the
clerk of the Tribunal of Commerce of Brussels.
ART. 7. A mark cannot be conveyed except with the establish-
ment of which it serves to distinguish the objects of manufacture
or of commerce. Every conveyance of a mark between the living
shall be registered at the fixed charge of ten francs. The con-
veyance is of no effect as to third persons, until after a deposit
of an extract of the conveyance in the forms prescribed for the
deposit of the mark.
ART. 8. Are punished by an imprisonment of from eight days
to six months, and a fine of twenty-six francs to two thousand
francs, or of one of these penalties alone : –
(a.) Those who have counterfeited a mark, and those who
have fraudulently made use of a mark.
(b.) Those who have fraudulently affixed, or made to appear
by additions, retrenchment, or by alteration, on the products of
their industry or the objects of their commerce, a mark belonging
to another.
(c.) Those who have knowingly sold, or placed on sale or in
circulation, products invested with a counterfeit mark, or mark
fraudulently affixed.
ARTs. 9–15. (These provide penalties of fine and imprisonment
for counterfeiting, or selling spuriously marked goods. The goods
may be ordered to be destroyed.)
ART. 16. A fraudulent registration may be annulled.
ART. 17. All pre-existing laws on the subject are repealed.
BRAZILIAN LAW OF TRADE-MARKS. (Imperial Decree No.
2682, of October 23, 1875.)
Article 1 defines a trade-mark as the name of a manufacturer or
merchant or firm, in some distinctive form ; or any other denota-
tion, emblem, stamp, seal, signet-stamped mark, relief, or wrapping
of any kind, which may distinguish manufactured goods or articles
of trade. Registration is a condition precedent to protection.
Marks composed exclusively of numerals or of letters, or of
representations of objects that may give rise to scandal, are pro-
hibited from registration. The law is applicable to foreigners on
terms of reciprocity.
682 APPENDIX.
CANADA.
CoNDENSED EXTRACT OF THE TRADE-MARK Law of MAY 15, 1879.
1. A register of trade-marks shall be kept in the office of the
Minister of Agriculture, in which any proprietor of a trade-mark
may have the same registered by complying with the provisions of
the Act.
2. The Minister of Agriculture may, from time to time, subject
to the approval of the Governor in Council, make rules and adopt
forms.
8. The Minister of Agriculture may cause a seal to be made, and
therewith seal trade-marks, copies, &c.
4. No person shall be entitled to institute any proceeding to
prevent infringement of a trade-mark unless the same be duly
registered.
5. The Minister of Agriculture may object to register any trade-
mark in the following cases: First. If the said trade-mark is iden-
tical with or resembles a trade-mark already registered. Second.
If it appears that the said trade-mark is calculated to deceive or
mislead the public. Third. If the said trade-mark contains any
immorality or scandalous figure. Fourth. If the so-called trade-
mark does not contain the essentials necessary to constitute a
trade-mark properly speaking.
6, 7. (Mode of presenting the case, by forwarding to said Min-
ister a drawing and description in duplicate, with a declaration
of novelty, and the fee. On registration, one of the copies of
drawing and description, signed by the Minister or his Deputy,
duly sealed and certified, shall be returned to the applicant. The
certificate is made prima facie evidence in all courts of law or of
equity in Canada of the facts therein alleged.)
8. For the purposes of this Act are included all marks, names,
brands, labels, packages, or other business devices, which may be
adopted for use by any person in his trade, business, occupation,
or calling, for the purpose of distinguishing any manufacture,
product, or article by him manufactured, produced, compounded,
packed, or offered for sale, no matter how affixed, whether to the
article itself or to its case or other receptacle. Timber or lumber
on which labor has been expended by any person in his trade,
business, occupation, or calling shall be deemed a manufacture,
product, or article.
9–11. A trade-mark may be general or specific, the latter being
intended for merchandise of a particular description. A general
mark shall endure without limitation. A specific mark endures
APPENDIX. & 683
for twenty-five years, renewable for similar periods. The appli-
cant for registration must state whether his mark is general or
specific.
12. Fees, payable in advance: For general trade-mark, $30.00.
For specific trade-mark, $25.00. Renewal of the latter, $2000.
If the application be refused, the fee, less five dollars, will be
returned.
13–19. (These provide for cancellation at the request of the
owner, for assignment, and for hearing disputes as to title. In-
fringement is made a misdemeanor, punishable by fine, to be paid
to the owner. A private suit may be maintained for damages.
The public registry shall be open to inspection. The Minister
may correct clerical errors of his office.)
DENMARK.
LAw of JULY 2, 1880, FoR THE PROTECTION OF MARKs of TRADE
AND COMMERCE.
I.
ART. 1. It is forbidden to all persons to affix to their merchan-
dise intended to be put into general circulation, or on the packing
thereof, the name of another person or firm, or the name of a place
of manufacture of products of another person. It is equally for-
bidden to affix on such merchandise, or on its packing, a trade-
mark to which another person has the exclusive right, in the terms
of the following provisions.
II.
ART. 2. Whoever engages in Denmark in the manufacture or
sale of merchandise intended in a general manner to be put into
circulation, may acquire in Denmark the exclusive right to the
mark or marks of fabric which he affixes to his merchandise, or
packing thereof, to distinguish the same from merchandise made
or sold by others, on the condition of declaring his mark, by inser-
tion in the register for that purpose, conformably to the rules of
the present law.
ART. 3. The register of trade-marks is held for all the kingdom
at Copenhagen, by a conservator named by the Minister of the
Interior, and after the rules of disposition, of form, and of conduct,
determined by the said minister.
684 APPENDIX.
ART. 4. The declaration called for in article 2 should be made
in writing and presented or sent without expense to the conservator.
It should contain : —
1. The full name of the declarant, his domicile, or the name of
the firm and place of business. -
2. A clear description of such mark, indicating at the same time,
if need be, the mode of employing said mark (for example, if it
should be affixed to the merchandise itself or on its packing, pasted,
branded, or stamped, &c.). This description should be accompa-
nied by a fac-simile of the mark, of four inches in height by six
inches in length or more, on strong paper. The deposit of this
fac-simile should be in three copies. It should be followed by
the deposit of a duplicate of the stereotype, which will not be
returned. - º
The declaration should be signed by the declarant and accompa-
nied with fees to the amount prescribed for declarations and
publications.
ART. 5. So soon as possible after the reception of the declaration
and the payment of the duties, the conservator shall receipt there-
for in writing, with a statement of the day of reception. From the
time of the declaration, it being seen that all the provisions above
prescribed have been observed, if otherwise no obstacle to regis-
tration exists (Art. 6), it shall be proceeded with, and publication
thereof shall be made (Art. 8). -
ART. 6. Registration of the declaration shall be refused:—
1. If the mark consists only of numerals, or words, or letters.
2. If it contains names of a person or a firm different from
the proper name or firm-style of declarant, or the name of a place
which shall not be the seat of production of the merchandise manu-
factured by the declarant, unless the declarant establishes before the
conservator that he has acquired the right of user, as a trade-mark,
of the name or firm-style in question.
3. If the mark declared on contains public arms or public marks.
4. If it contains objects calculated to provoke public scandal.
5. If the same mark has previously been regularly declared on
by another person. -
In case of refusal of registration, the conservator shall give
notice thereof to the declarant, with a statement of reasons for
refusal. The declarant can, if he believe his rights to be damaged
by such decision, refer the matter to the Minister of the Interior,
who will decide.
ART. 7. (This relates to entering in register, &c., or refusal for
valid reasons to enter on record.)
ART. 8. (As to publication of register.)
APPENDIX. 685
ART. 9. (The registration of a mark is subject to a duty of thirty
kroner.) -
ART. 10. (Giving any person the right to examine register,
personally, or by obtaining extracts therefrom.)
ART. 11. (Accounts of the conservator.)
III.
ART. 12. Whoever shall have made the declaration prescribed
by articles 2 and 4, and obtained registration, thereby acquires
an exclusive right to invest his merchandise, or his packings, with
the declared mark, and to place in commerce the merchandise thus
marked. When several persons declare the same mark, the ex-
clusive right belongs to the first in date. The right acquired in
the user of a mark passes after the death of the grantee to his
successor or to his heirs without a new declaration, but only for
the term of one year from his decease.
ART. 13. (Obsolete by limitation.)
ART. 14. The declaration for a mark containing letters or words
shall not prevent other persons from the use of the name or firm-
style to designate that merchandise. -
No one can acquire by declaration the right to marks which shall
to that time have been in general use by all trades, or by certain
classes of traders.
ART. 15. The measure of protection ordained by the present law
against the unlawful use of a mark, of a name, or firm-style, shall
extend also to the case where said mark, name, or style shall be
represented with differences likely to escape the attention of the
ordinary mind. -
(ARTs. 16, 17, and 18 relate to remedies for infringements.)
IV.
ART. 19. The benefit of the present law may be extended by
royal ordinances to traders who have their places of business in
foreign nations, on condition of reciprocity, on the following terms:
1. The declarant shall indicate some attorney domiciled in Den-
mark to act for him.
2. He shall establish the fact of having complied with the condi-
tions prescribed in the country of his residence for the protection
of trade-marks.
3. He shall enjoy the right accorded by the present law only for
the period of protection in his own country.
686 APPENDIX.
FRENCH LAW OF JUNE 23, 1857.
TITLE I. — Of the Right of Property in Marks.
ART. 1. The mark of manufacture and commerce is optional.
Decrees rendered in the form of regulations of public administra-
tion can always, except in certain cases, declare marks to be obliga-
tory for the products that they specify. As marks of manufacture
and of commerce shall be considered names under a distinctive
form, denominations, emblems, imprints, stamps, stamped tickets,
vignettes, reliefs, letters, ciphers, envelopes, and all other signs
Serving to distinguish the products of a manufacturer and the
objects of a commerce. - -
ART. 2. No one can claim the exclusive property of a mark,
unless he shall have deposited two fac-similes thereof with the
clerk of the Tribunal of Commerce of his domicile.
ART. 3. The deposit has effect but for fifteen years. The
property in a mark may always be protected for a new term of
fifteen years by means of a new deposit.
ART. 4. Besides the charge for stamp and of registration, there
is a Tègal charge fixed at one franc for the drawing-up of the entry
of each mark and for the cost of proceeding.
Title II. — Dispositions Relative to Foreigners.
ART. 5. Foreigners who possess in France establishments of
manufacture and commerce enjoy for the products of their estab-
lishments the benefit of the present law upon fulfilling the formali-
ties that it prescribes. -
ART. 6. Foreigners and the French whose establishments are
situated outside of France shall equally enjoy the benefit of the
present law for the products of their establishments, if in the
countries where they are situated diplomatic conventions have
established reciprocity for French marks. In this case the deposit
of foreign marks shall take place with the clerk of the Tribunal of
Commerce of the Department of the Seine.
TITLE III. — Penalties.
ART. 7. The punishment shall be a fine of from 50 to 3,000
francs, and with imprisonment of from three months to three years,
or of one of these penalties only : —
1st. For such as shall have counterfeited a mark or made use of
a counterfeit mark. *
2d. For such as shall fraudulently affix to their products or the
objects of their commerce a mark belonging to another.
APPENDIX. 687
8d. For such as shall have knowingly sold or exposed for sale
One product or more than one product invested with a false mark
fraudulently imitative, or bearing indications tending to deceive the
purchaser as to the nature of the product.
ART. 9. They shall be punished with a fine of from 50 to 1,000
francs, and with imprisonment of from fifteen days to six months,
or with one or the other of such penalties : — g
1st. Who shall not have affixed to their products a mark declared
to be obligatory.
2d. Who shall have sold or exposed for sale one product or
more than one product not bearing the obligatory mark for that
species of product.
3d. Who shall have contravened the provisions rendered in exe-
cution of article 1 of the present law.
ART. 10. The penalties established by the present law are not
cumulative.
The heavier penalties are only to be pronounced for acts done
anterior to the first act of pursuit. -
ART. 11. The penalties prescribed by articles 7, 8, and 9 may
be increased to double in case of repetition of the offence. It is
such repetition when within the five years anterior a condemnation
shall have been pronounced against the prisoner for one of the
misdemeanors provided for in the present law.
ART. 12. Article 453 of the Penal Code shall apply to the mis-
demeanors under the present law.
ART. 13. Besides, offenders may be deprived of the right of
participating in election of tribunals and of chambers of commerce,
of consulting chambers of arts and manufactures, and of councils
of selectmen, for a term not exceeding ten years.
The Tribunal may order the posting-up of the judgment in
places to be determined, and its insertion in full in newspapers to
be designated by it; the whole at the cost of the condemned.
ART. 14. The confiscation of products recognized as contrary
to the provisions of articles 7 and 8, even in cases of acquittal,
may be pronounced by the Tribunal, besides the apparatus which
especially served for the commission of the wrong.
The Tribunal may order that confiscated products shall be de-
livered to the owner of the mark counterfeited, or fraudulently
affixed, or imitated, independent of and in addition to ample dam-
ages that may have been given.
It shall prescribe, in all cases, the marks adjudged to be counter-
feited contrary to the provision of articles 7 and 8.
ART. 15. In the cases premised in the first two paragraphs of
article 9 the Tribunal shall prescribe always that the marks de-
688 APPENDIX.
clared to be obligatory shall be affixed to the products subject
thereto.
The Tribunal may pronounce the confiscation of products, if the
prisoner shall have undergone during the last five preceding years
a condemnation for one of the misdemeanors provided in the first
two paragraphs of article 9.
TITLE IV.
ART. 16. Civil actions relative to marks are brought before the
civil tribunals and judged as summary matters. (The remainder
of this title relates to the mode of procedure. Title W., which
contains the remaining part of the Act, relates to general and
transitory matters, as, for example, the seizure and condemnation
of foreign merchandise falsely bearing either the mark or the
name of a resident of France; and other subjects of but local
interest.) *
LAW OF THE GERMAN EMPIRE RESPECTING TRADE—
MARKS, IN FORCE EVER SINCE MAY 1, 1875.
§ 1. Traders whose firm is entered in the commercial register
can apply to the proper court for the entry, in the commercial
register of the district in which the principal firm has its domicile,
of marks which are to be used on the goods themselves, or on the
packing, to distinguish their goods from those of other traders.
§ 2. The application must contain a clear drawing of the trade-
mark, together with a description of the class of goods for which
the mark is destined. - -
§ 3. The registration of trade-marks, the use of which by the
applicant is protected by the law of the State, and also of such
marks which, up to the beginning of the year 1875, have been
universally received in commerce as the recognized marks of a
certain trading firm, may not be refused. -
For the rest, the registration is forbidden if the mark consist
exclusively of numerals, letters, public words, armorial bearings,
or scandalous designs. -
§ 4. The registration is made in the name of the firm of the
applicant. The time of the application is then to be noted. If a
trade-mark already registered has to be registered again, owing to
the transfer of the head domicile, the time of the first application is
then to be noted. * r
§ 5. On the petition of the partners of the firm, the registered
trade-mark will be cancelled.
APPENDIX. 689
It is cancelled officially, -
1. If the firm is removed from the commercial register.
2. If an alteration in the firm is applied for without a simulta-
neous application for the maintenance of the mark.
3. If ten years have elapsed since the register of the mark
without an application for its further maintenance, or since such
application without its having been renewed.
4. If the mark, according to § 3, ought not to have been
registered. - -
§ 6. The first registration and the cancelling of a mark shall be
notified in the “Deutscher Reichs-Anzeiger.”
The costs of the notification of the registration are to be borne
by the proprietor of the firm.
§ 7. For the first registration of a mark, which is not protected
by the law of the land, a fee of fifty marks is to be paid. -
The State's government can excuse the payment of a fee for the
registration of such marks as, up to the commencement of 1875,
have been accepted generally in trade as the known marks of
certain tradesmen. &
Other registrations and cancellings are gratis.
$ 8. The right to affix on goods or their packing a mark ap-
plied for in respect of such goods, at the commercial register, or
to traffic in such goods, belongs exclusively to the proprietor of
that firm to which the application was first granted. s -
$ 9. With respect to trade-marks, which are protected by the
law of the State, likewise with respect to such marks as up to the
commencement of the year 1875 have been accepted generally in
trade as the known marks of a certain trader, no one except the
proprietors protected by law, or universally acknowledged in trade,
can acquire a right to such by an application for registration, pro-
vided that the proprietors shall have made the application before
October 1, 1875.
§ 10. By the application for a trade-mark, which contains let-
ters or words, no one will be prevented from using his name or
his firm, even in making use of abbreviations for the verification
of his goods. .
No one can acquire a right by application to trade-marks which
have hitherto been freely used by all, or by certain classes of
traders, or the registration of which is not permissible.
§ 11. The proprietor of a firm for which a trade-mark is regis-
tered must have it cancelled on the demand of the party who has
a right to exclude him from the use of the mark, or, as far as the
trade-mark belongs to those mentioned in the second paragraph of
§ 10, on the demand of a participator.
44
690 APPENDIX.
§ 12. The right obtained through application for a trade-mark
is cancelled, - -
1. By the withdrawal of the application, or by a request to can-
cel it on the part of the proprietor of the firm to which it belongs.
2. When one of the cases in §§ 1–3 occurs.
§ 13. Every home manufacturer or trader can bring a civil
action against any one who unlawfully marks goods with the
name or the firm of the former, or who marks them with a trade-
mark to the use of which the former is exclusively entitled, pray-
ing that the latter may be precluded from the right to use such
mark, and be forbidden to use it any longer.
Similarly, the injured manufacturer or trader can bring a civil
action against any one who unlawfully traffics in, or exposes for
sale, marked goods, praying that the latter may be forbidden to
deal in such goods. - -
§ 14. Whoever unlawfully marks goods or the packing thereof
with a trade-mark, intended to be protected by the present law,
or with the name or the firm of a home manufacturer or trader,
doing so knowingly, or who knowingly traffics in such unlawfully
marked goods, or exposes them for sale, shall be punished by a
fine of from 150 to 3,000 marks, or by imprisonment not ex-
ceeding six months, and must give compensation to the injured
party. *
The prosecution only takes place on petition of the injured
party. - -
§ 15. Instead of the fine provided for by this law, compensation
to the amount of 5,000 marks can, on the demand of the injured
party, be awarded to him.
For this compensation the condemned parties are liable as joint
debtors. -
When a fine is imposed, it excludes any further money com-
pensation.
§ 16. The court will determine, if any, and what, damages are
to be assessed, and it does this according to the evidence, fixing
the amount it thinks proper.
§ 17. If the accused is found guilty, then, with respect to the
goods found in his possession, the marks on the packing or the
goods are to be destroyed, or if the removal of the goods is not
possible, the packing or the goods themselves are to be destroyed,
on the petition of the injured party.
If the accused is condemned, the injured party shall be author-
ized to publish the sentence at the cost of the condemned party.
The manner of publication, as well as the period thereof, is to be
declared in the sentence.
APPENDIX. 691
§ 18. The protection afforded by the provision of the present
law to the proprietor of a trade-mark, a name, or a firm, will not
be lost when the trade-mark, name, or firm is reproduced with
changes, which can only be recognized after being the object of
particular scrutiny.
§ 19. Civil suits brought by virtue of this law are taken as
commercial suits, according to the Spirit of the Imperial and States'
laws.
$ 20. The provisions of the present law apply to the trade-
marks of tradesmen who have no registered firm in the Empire,
as well as to the names or firms of foreign manufacturers or trades-
people, if, in the State where the latter have their domicile, Ger-
man trade-marks, names, and firms enjoy protection through a
notification in the “Reichs Gesetzblatt’’; the following special
rules will, however, be enforced as regards the trade-marks ($1):—
1. An application to register a trade-mark must be made to the
Commercial Court, at Leipsic, with a declaration that the appli-
cant submits to the jurisdiction of the said court in all plaints
brought by virtue of this law.
2. With such application, proof must be given that in the foreign
country all requirements have been fulfilled to afford the applicant
protection to trade-marks there.
3. The application entitles to a right to such trade-marks only
so far and so long as the applicant is protected in its use in the
foreign country.
ACT OF GREAT BRITAIN FOR THE REGISTRATION OF
TRADE-MARKS, 1883.
62. (1.) The comptroller may, on application by, or on behalf
of, any person claiming to be the proprietor of a trade-mark, regis-
ter the trade-mark.
(2.) The application must be made in the form set forth in the
first schedule to this Act, or in such other form as may be from
time to time prescribed, and must be left at, or sent by post to, the
Patent Office, in the prescribed manner.
(3.) The application must be accompanied by the prescribed
number of representations of the trade-mark, and must state the
particular goods or classes of goods in connection with which the
applicant desires the trade-mark to be registered.
(4.) The comptroller may, if he thinks fit, refuse to register a
trade-mark, but any such refusal shall be subject to appeal to the
Board of Trade, who shall, if required, hear the applicant and the
692 APPENDIX.
comptroller, and may make an order determining whether, and
subject to what conditions, if any, registration is to be permitted.
(5.) The Board of Trade may, however, if it appears expedient,
refer the appeal to the court; and in that event the court shall
have jurisdiction to hear and determine the appeal, and may make
such order as aforesaid.
63. Where registration of a trade-mark has not been, or shall
not be, completed within twelve months from the date of the appli-
cation, by reason of default on the part of the applicant, the appli-
cation shall be deemed to be abandoned.
64. (1.) For the purposes of this Act, a trade-mark must con-
sist of or contain at least one of the following essential particulars:
(a.) A name of an individual or firm printed, impressed, or
woven in some particular and distinctive manner; or
(b.) A written signature, or copy of a written signature, of the
individual or firm applying for registration thereof as a trade-
mark; or
(c.) A distinctive device, mark, brand, heading, label, ticket,
or fancy word or words not in common use.
(2.) There may be added to any one or more of these particu-
lars any letters, words, or figures, or combination of letters, words,
or figures, or of any of them. -
(3.) Provided that any special and distinctive word or words,
letter, figure, or combination of letters or figures, or of letters and
figures, used as a trade-mark before the thirteenth day of August,
one thousand eight hundred and seventy-five, may be registered as
a trade-mark under this part of this Act.
65. A trade-mark must be registered for particular goods or
classes of goods.
66. Where a person claiming to be the proprietor of several
trade-marks which, while resembling each other in the material
particulars thereof, yet differ in respect of the statement of the
goods for which they are respectively used or proposed to be used,
or statements of numbers, or statements of price, or statements of
quality, or statements of names of places, seeks to register such
trade-marks, they may be registered as a series in one registration.
A series of trade-marks shall be assignable and transmissible only
as a whole, but for all other purposes each of the trade-marks
composing a series shall be deemed and treated as registered
separately. º
67. A trade-mark may be registered in any color, and such
registration shall (subject to the provisions of this Act) confer on
the registered owner the exclusive right to use the same in that or
any other color.
APPENDIX. 693
68. Every application for registration of a trade-mark under
this part of this Act shall, as soon as may be after its receipt, be .
advertised by the comptroller.
69. (1.) Any person may, within two months of the first adver-
tisement of the application, give notice in duplicate at the Patent
Office of opposition to registration of the trade-mark, and the comp-
troller shall send one copy of such notice to the applicant.
(2.) Within two months after receipt of such notice or such
further time as the comptroller may allow, the applicant may send
to the comptroller a counter-statement in duplicate of the grounds
on which he relies for his application, and if he does not do so,
shall be deemed to have abandoned his application.
(3.) If the applicant sends such counter-statement, the comp-
troßler shall furnish a copy to the person who gave notice of oppo-
sition, and shall require him to give security in such manner and
to such amount as the comptroller may require for such costs as
may be awarded in respect of such opposition; and if such security
is not given within fourteen days after such requirement was made
or such further as the comptroller may allow, the opposition shall
be deemed to be withdrawn.
(4.) If the person who gave notice of opposition duly gives such
security as aforesaid, the comptroller shall inform the applicant
thereof in writing, and thereupon the case shall be deemed to
stand for the determination of the court.
70. A trade-mark, when registered, shall be assigned and
transmitted only in connection with the good-will of the business
concerned in the particular goods or classes of goods for which it
has been registered, and shall be determinable with that good-
will.
71. Where each of several persons claims to be registered as
proprietor of the same trade-mark, the comptroller may refuse to
register any of them until their rights have been determined ac-
cording to law, and the comptroller may himself submit or require
the claimants to submit their rights to the court.
72. (1.) Except where the court has decided that two or more
persons are entitled to be registered as proprietors of the same
trade-mark, the comptroller shall not register in respect of the
same goods or description of goods a trade-mark identical with
one already on the register with respect to such goods or descrip-
tion of goods.
(2.) The comptroller shall not register with respect to the same
goods or description of goods a trade-mark so nearly resembling a
trade-mark already on the register with respect to such goods or
description of goods as to be calculated to deceive.
694 APPENDIX.
73. It shall not be lawful to register as part of or in combina-
tion with a trade-mark, any words, the exclusive use of which
would, by reason of their being calculated to deceive or otherwise,
be deemed disentitled to protection in a court of justice, or any
Scandalous design.
74. (1.) Nothing in this Act shall be construed to prevent the
Comptroller entering on the register, in the prescribed manner, and
subject to the prescribed conditions, as an addition to any trade-
mark, -
(a.) In the case of an application for registration of a trade-
mark used before the thirteenth day of August, one thousand eight
hundred and seventy-five, –
Any distinctive device, mark, brand, heading, label, ticket, letter,
word, or figure, or combination of letters, words, figures, thofigh
the same is common to the trade in the goods with respect to
which the application is made.
(b.) In the case of an application for registration of a trade-
mark not used before the thirteenth day of August, one thousand
eight hundred and seventy-five, –
Any distinctive word or combination of words, though the same
is common to the trade in the goods with respect to which the
application is made.
(2.) The applicant for entry of any such common particular or
particulars must, however, disclaim in his application any right to
the exclusive use of the same, and a copy of the disclaimer shall be
entered on the register.
(3.) Any device, mark, brand, heading, label, ticket, letter,
word, figure, or combination of letters, words, or figures, which
was or were, before the thirteenth day of August, one thousand
eight hundred and seventy-five, publicly used by more than three
persons on the same or similar description of goods, shall, for the
purpose of this section, be deemed common to the trade in such
goods.
75. Registration of a trade-mark shall be deemed to be equiva-
lent to public use of the trade-mark.
76. The registration of a person as proprietor of a trade-mark
shall be prima facie evidence of his right to the exclusive use of
the trade-mark, and shall, after the expiration of five years from the
date of the registration, be conclusive evidence of his right to the
exclusive use of the trade-mark, subject to the provisions of this Act.
77. A person shall not be entitled to institute any proceeding
to prevent or to recover damages for the infringement of a trade-
mark unless, in the case of a trade-mark capable of being registered
under this Act, it has been registered in pursuance of this Act, or
APPENDIX. 695
of an enactment repealed by this Act, or, in the case of any other
trade-mark in use before the thirteenth of August, one thousand
eight hundred and seventy-five, registration thereof under this part
of this Act, or of an enactment repealed by this Act, has been re-
fused. The comptroller may, on request, and on payment of the
prescribed fee, grant a certificate that such registration has been
refused.
78. There shall be kept at the Patent Office a book called the
Register of Trade-Marks, wherein shall be entered the names and
addresses of proprietors of registered trade-marks, notifications of
assignments and of transmissions of trade-marks, and such other
matters as may be from time to time prescribed.
79. (1.) At a time not being less than two months, nor more
than three months, before the expiration of fourteen years from the
date of the registration of a trade-mark, the comptroller shall send
notice to the registered proprietor that the trade-mark will be re-
moved from the register unless the proprietor pays to the comp-
troller before the expiration of such fourteen years (naming the
date at which the same will expire) the prescribed fee; and if such
fee be not previously paid, he shall, at the expiration of one month
from the date of the giving of the first notice, send a second notice
to the same effect.
(2.) If such fee be not paid before the expiration of such four-
teen years, the comptroller may, after the end of three months from
the expiration of such fourteen years, remove the mark from the
register, and so from time to time at the expiration of every period
of fourteen years.
(3.) If, before the expiration of the said three months, the regis-
tered proprietor pays the said fee, together with the additional
prescribed fee, the comptroller may, without removing such trade-
mark from the register, accept the said fee as if it had been paid
before the expiration of the said fourteen years.
(4.) Where, after the said three months, a trade-mark has
been removed from the register for non-payment of the prescribed
fee, the comptroller may, if satisfied that it is just so to do, restore
such trade-mark to the register on payment of the prescribed
additional fee.
(5.) Where a trade-mark has been removed from the register
for the non-payment of the fee or otherwise, such trade-mark shall,
nevertheless, for the purpose of any application for registration
during the five years next after the date of such removal, be
deemed to be a trade-mark which is already registered.
80. There shall be paid, in respect of applications and registra-
tion, and other matters under this part of this Act, such fees as
696 APPENDIX.
may be from time to time, with the sanction of the Treasury, pre-
scribed by the Board of Trade; and such fees shall be levied and
paid to the account of her Majesty's Exchequer in such manner as
the Treasury may from time to time direct.
The Act contains general provisions, a few of which may be
briefly noted as follows: —
The Patent Office shall be under the immediate control of an
officer called the comptroller-general of patents, designs, and trade-
narks, who shall act under the superintendence and direction of
the Board of Trade.
The comptroller may refuse to register a trade-mark of which
the use would, in his opinion, be contrary to law and morality.
The name of an assignee, &c., of a trade-mark may, on proof
of title, be entered on the register; and any person appearing in
the register as proprietor may absolutely assign, or otherwise deal
with the trade-mark.
Every register shall be open to the public, and certified copies
thereof be given, on payment of the prescribed fee. Copies, or
extracts from the register, certified by the comptroller, and sealed
with the seal of the Patent Office, shall be evidence in all courts,
and in all proceedings. The court may, on the application of any
person aggrieved by an omission, without sufficient cause, from
any register, or by an entry, without sufficient cause, in any regis-
ter, order the varying or expunging of the entry.
The court may decide any question as to the rectification of a
register, and may direct an issue of fact to be tried, and award
damages.
The comfptroller has power, on request, to correct any cleri-
cal error, or cancel an entry.
The registered proprietor of any registered trade-mark may ap-
ply to the court for leave to add to or alter such mark in any
particular, not being an essential particular within the meaning of
this Act, and the court may refuse or grant leave on such terms as
it may think fit.
If any person makes or causes to be made a false entry in any
register kept under this Act, or a writing falsely purporting to be
a copy of an entry in any such register, or produces or tenders or
causes to be produced or tendered in evidence any such writing,
knowing the entry or writing to be false, he shall be guilty of a
misdemeanor.
Where discretionary power is given to the comptroller, he shall
not exercise that power adversely to the applicant for registration
of a trade-mark, without (if so required within the prescribed time
APPENDIX. 697
by the applicant) giving the applicant an opportunity of being
heard personally or by his agent.
It is a misdemeanor to falsely represent a trade-mark to have
been registered, with a fine not exceeding five pounds.
“Person” includes a body corporate. “The Court” means
(subject to the provisions for Scotland, Ireland, and the Isle of
Man) the High Court of Justice in England. “Comptroller”
means the Comptroller General of Patents, Designs, and Trade-
Marks.
The Trade-Mark Registration Act of 1875, as amended in 1876,
1877, is repealed.
ITALY.
LAw of AUGUST 30, 1868.
This is very much like that of France, of June 23, 1857, which
See.
TRADE—MARK LAW OF JAPAN OF JUNE 7, 1884.
ART. 1. When trade-marks are registered at the agricultural
and commercial departments in a book specially provided for the
purpose, the owners of such marks may enjoy the exclusive privi-
lege of employing them for a term of fifteen years from the date
of registration.
ART. 2. Persons who are desirous of obtaining a right to the
exclusive use of trade-marks must apply for registration by for-
warding specimens and a detailed account of the marks. This
account will explain the nature of the marks and the manner of
using them, and will give the name and classification of the articles
to which they are to be attached. When registration is permitted
a certificate will be granted.
ART. 3. Applications for the registration of trade-marks will
be retained by the authorities for two months from the date of
their receipt, after which time they will receive sanction, should no
conflicting applications have been received in the interim. When
two or more persons happen to apply for registration of the same
marks, or of marks which closely resemble each other, with the
intention of affixing them to articles of the same classification, the
application or applications of later date will be rejected; and when
they are under the same date all will be rejected.
698 APPENDIX.
ART. 4. Suitable measures will be taken by the Minister of
Agriculture and Commerce to exhibit the registered trade-marks
to the public.
ART. 5. Registration of the following marks must not be applied
for : 1. Marks which are exactly the same as, or are likely to be
mistaken for, marks already registered, and which are designed to
be affixed to articles of the same classification. 2. Marks which
represent the name of a place, a person, a shop, or a company,
and those representing the general name of articles, or national
arms, either foreign or domestic. 3. Marks which are universally
employed by a particular class of merchants, or which are used in
accordance with the common customs of the commercial community.
4. New marks which are exactly the same as, or likely to be mis-
taken for, marks adopted prior to the promulgation of the present
regulations, and actually used up to the present time, and all marks
of a similar character intended to be attached to articles of the
same class or description.
ART. 6. When persons who have registered their marks change
their residences, the local jurisdiction, or their personal names, or
abandon their trade, or suspend it for a year or upwards during the
term for which the marks are registered, they must give notice of
the said change, abandonment, or suspension to the authorities
within three months.
ART. 7. When heirs succeed to the business of their predecessors
during the term of the exclusive use of the latter's trade-marks,
they must report the fact to the authorities within three months
after their succession.
ART. 8. When persons who have obtained registration of marks
desire to assign, wholly or in part, the right of using such marks to
other persons, they must apply for fresh registration. In such
cases the period of the exclusive use of the marks will be reckoned
from the date of original registration.
ART. 9. When it is desired to apply or transfer the same marks
to articles of other classifications, or to introduce Some alterations
into them, application must be made for fresh registration. In
such cases applications will be dealt with in accordance with article
3 of these regulations.
ART. 10. When persons who have obtained registration desire
to continue the exclusive use of trade-marks after the expiration
of the registered term, they must apply for fresh registration
within three months before the expiration of such term.
ART. 11. In the event of certificates of registration being lost
or damaged, application must be made for fresh certificates.
ART. 12. When, after the registration of trade-marks, frauds are
APPENDIX. 699
detected in the original application for their registration, or in the
specimens or detailed accounts furnished in accordance with these
regulations, or when it is found that the original applications were
carried out in violation of article 5, the registration will lose its
validity, and the certificates will be cancelled by the authorities.
ART. 13. When the owners of registered trade-marks relinquish
their business entirely, they will lose their right to the exclusive
use of the marks from the date of such relinquishment. This
provision also holds good in the case of the suspension of a trade
for three years.
ART. 14. Applicants for registration of trade-marks must pay
the following fees, provided that, in case their applications are
rejected, the money will be refunded: 1. The sum of ten yen.”
must be paid for the registration of one trade-mark, and if the same
mark is to be applied or transferred to articles of different classes,
five yen must be added for each class. 2. Applications for transfer
wholly or in part, or for alteration of trade-marks, or for the con-
tinuation of their use after the expiration of the registered term,
will involve the payment of five yen for every mark. 3. One yen
must be paid for obtaining a fresh certificate of registration.
ART. 15. The owners of registered trade-marks may claim dam-
ages from, or lay information against, any person who encroaches
upon their privileges.
ART. 16. Persons who counterfeit registered trade-marks and
employ them will be punished by imprisonment with hard labor,
for a term not less than one month and not more than one year,
in addition to a fine of from four to forty yen. Persons who use
trade-marks clandestinely will be liable to a punishment mitigated
by one degree from the above.
ART. 17. Those who make and use marks which are likely to
be mistaken for registered marks will be liable to imprisonment
with hard labor for a period of not less than fifteen days and not
more than six months, and to a fine of from two to twenty yen.
ART. 18. Persons who, with full knowledge of the fact, under-
take the sale of commodities bearing trade-marks of the nature
interdicted by articles 16 and 17, will be liable to a fine of from
four to forty yen.
ART. 19. In the cases set forth in the three preceding articles,
16, 17, and 18, the trade-marks will be confiscated, and when the
marks are inseparable from the commodities, the commodities
themselves will be destroyed.
ART. 20. Those who fraudulently effect the registration of trade-
marks, or falsely assert that they have obtained registration, will
* A yen is equal to our dollar.
700 APPENDIX.
be punished by imprisonment with hard labor for a term of from
fifteen days to six months, together with a fine of from two to
twenty yen.
ART. 21. Persons who neglect to make a due report within a
prescribed period, in accordance with articles 6 and 7, will be liable
to a fine of from one yen to 1.95 yen.
ART. 22. Persons infringing these regulations will not be dealt
with in accordance with those provisions of the penal code which
refer to the occurrence of several offences.
ART. 23. Offences enumerated in articles 16 to 18, inclusive,
will be taken cognizance of only after information is laid by the
owners of the registered trade-marks.
ART. 24. When such information is laid against offenders by
the owners of marks, the judges may suspend the sale of all com-
modities bearing the marks in question, pending investigation.
There are also By-Laws and Classification of Articles, which may
be found in full in No. 44 of the United States Consular Reports.
August, 1884.
CONDENSED EXTRACTS FROM THE NETHERLANDS
TRADE-MARK LAW OF MAY 25, 1880. (23 Off. Gaz. 1334,
in full.)
ART. 1. Any person desiring to secure the right to the exclu-
sive use of a mark to be placed upon his goods, or upon the wrappers
thereof, for the purpose of distinguishing such goods from those
of others, shall send two copies, bearing his signature, of a dis-
tinct representation or drawing of such mark, and a minute de-
scription thereof (stating in said description the kind of goods for
which the mark is to be used), to the clerk of the District Court of
his place of residence.
If he have no place of residence within the kingdom in Europe,
the transmission shall be made to the clerk of the District Court of
Amsterdam, and he shall select a place of residence within the
kingdom in Europe. The transmission may also be made by a
person authorized for this purpose, in writing.
The mark shall contain no words or designs offensive to public
order or good morals. It shall not consist exclusively of ordinary
letters, figures, or words. Nor shall it consist (even though a
slight alteration be made) of the arms of the kingdom, or of
those of a province, commune, or other legally constituted public
corporation.
The fee for registration and publication is ten florins.
APPENDIX. 701
ART. 2. The clerk shall enter the application in the public
register, and give the depositor a certificate, and within three days
report the case to the Department of Justice, which shall cause it
to be published in the official paper.
ART. 3. If the mark offered for registration is identified with,
or does not differ sufficiently from, a mark for the same kind of
goods which is owned by another person, or for the ownership of
which another person has made application, such person may,
within six months after the publication, apply to the court, to the
end that the registration be forbidden. After a notice of fourteen
days, a hearing is had. From the decision of the judge there is
no appeal; but within a month application may be made to have
the decision set aside.
ART. 4. If the court forbid that a mark be registered, the
Department of Justice shall be duly notified thereof, and a note
of the fact shall be made in the register.
ART. 5. If within six months from the date of the announce-
ment of the application for registration no application be made,
the registration shall be made. The fact shall be announced in the
“Nederlansche Staatscourant’ on the 15th of the month.
The same law provides that the registration may be renewed in
fifteen years; and punishes the counterfeiting of a trade-mark by
fine and imprisonment.
LAW OF NORWAY OF MAY 26, 1884, THAT WENT INTO
OPERATION JANUARY 1, 1885. (30 Annales, 169.)
The provisions of this law are very similar to those of Sweden,
which see. The registration bureau is established at Christiania.
ROUMANIA.
The law for the protection of trade-marks went into operation
June 27, 1879. Its provisions are much like those of the French
law of June 23, 1857.
702 APPENDIX.
(Translation from the Russian.)
EXTRACT FROM THE STATUTE OF LAWS RELATING TO
MANUFACTURING INDUSTRY. (Code of Civil Laws, Vol. XI.,
Part 2, Edition of 1857.)
RELATIVE TO THE IMPOSITION OF MARKS ON PRODUCTS OF RUSSIAN
MILLS AND MANUFACTORIES.
§ 74. The right of stamping or marking Russian manufactured
produce of various descriptions shall be enjoyed by every manu-
facturer. No official investigations shall be made at works or
factories as to whether the products of the same are marked or
not.
§ 75. Free exportation out of the Empire shall be allowed of
both marked and unmarked Russian manufactured goods, subject,
however, to the proviso that this permission shall apply only to
such goods as are allowed to be exported under the existing
tariffs.
$ 76. Goods of Russian origin bearing trade-marks shall enjoy
the following privileges: — %
(a.) When foreign goods not bearing the stamp of the custom-
house shall be discovered, together with Russian merchandise
bearing genuine Russian trade-marks, the latter goods shall be
recognized as of Russian origin, and shall not be liable to con-
fiscation; they may only in such cases serve as security for
penalties, as any other goods, according to the customs regula-
tions. If, however, there shall be found among the smuggled
goods merchandise alleged to be Russian, but which shall bear
no trade-mark proving their origin, they shall in such cases be
confiscated without any investigation as to their origin.
(b.) Russian goods bearing trade-marks, when reimported from
abroad, shall be allowed to re-enter the country free of duty.
Such goods, however, as shall bear no trade-marks shall be treated
as foreign, in accordance with the customs regulations.
§ 77. In order to introduce a uniform system of trade-marks,
the following rules are established : —
(a.) The mark shall bear on it the Christian name and sur-
name of the manufacturer, or these may be indicated by initials;
the seat of the manufactory must also be shown.
The mark must be solidly and legibly imposed, and the letters
must be in the Russian character; other letters may also be
1 Reports relative to Legislation in Foreign Countries on the subject of Trade-
Marks (British Parliament, 1879), p. 96.
APPENDIX. 703
used, on condition that a Russian mark shall, in addition, be
employed.
(b.) On the establishment of a new manufactory, the owner,
who may be desirous of using a trade-mark, shall inform the de-
partment of Commerce and Industry of such wish, and also state
where the manufactory is situated, and the nature of the industry
which will be pursued in it; a specimen and written description of
the trade-mark which it is contemplated to use must be forwarded
at the same time.
(c.) Whenever a manufactory shall be sold or closed, the manu-
facturer shall inform the Department of Commerce and Industry
of the same.
(d.) Should a manufacturer deem it necessary to make some
alterations in his trade-marks, he shall signify such intention to
the Department of Trade and Manufactures, stating from what
period the new trade-marks will be imposed on the goods.
(e.) Should the Department of Commerce and Industry dis-
approve of the proposed trade-mark on the ground of its being
either contrary to regulations, or that a similar mark has already
been registered, from which the proposed mark does not differ
sufficiently, an alteration in the submitted mark shall be demanded
by the Department.
(This law also punishes counterfeiting, and gives a right to
damages. Goods of Russian origin are protected, though not
bearing trade-marks.)
CONDENSED EXTRACTS FROM THE SWEDISH TRADE-
MARK LAW OF JULY 5, 1884, THAT WENT INTO OPERA-
TION JANUARY 1, 1885. (30 Annales, 161.)
1. Every person having the right to the use of a trade-mark,
whether personal or attached to his place of business, whether he
be manufacturer, agriculturist, miner, merchant, or other trader,
may by registration secure the exclusive privilege of using his
special trade-mark to distinguish in commerce his products from
all others; whether said mark be affixed directly to his merchan-
dise, or applied to the envelope or wrapper.
2. The trade-mark bureau for the whole country is established
at Stockholm.
3. An application must be post-paid. It must contain a com-
plete description of the mark, state the name of the owner, his
business location, and the class of goods to which the mark is
704 APPENDIX.
attached. With it must be three copies of the mark on strong
paper not more than ten centimetres high by fifteen wide; and the
fee of forty crowns. -
4. Registration is prohibited to so-called marks consisting: 1,
only of numerals, letters, or words not in peculiar form; 2, of a
concealment of the true name of the applicant; 3, public arms or
seals; 4, objects of an offensive nature; 5, of an exact resemblance
to another registered or announced mark, or such a near resem-
blance as to be calculated to deceive or mislead.
(Registration lasts ten years, and may be renewed. It is pro-
vided that a foreigner may register, provided his country affords
similar privileges to Swedes. Registration expires with registra-
tion in the foreign conntry. A foreign applicant must show that
he has complied with the formalities required by the registration
law of his own country.)
CONDENSED EXTRACTS FROM THE SWISS TRADE-MARK
LAW OF DECEMBER 19, 1879. (23 Off. Gaz. 2237, in full.)
ART. 1. The Swiss Confederation recognizes and protects marks
of manufacture and trade in conformity with the provisions of the
present law. w
ART. 2. The following are considered as marks of mamufacture
or trade: Firm-names, as well as symbols placed adjacent to, or
in lieu of them, that appear upon manufactured articles or mer-
chandise, industrial or agricultural, or upon their coverings or
envelopes, in order to distinguish them and establish their origin.
ART. 4. The initials of a firm are not sufficient to constitute
a mark. Similarly, symbols placed adjacent to or in place of names
of firms cannot be protected if they consist exclusively of ciphers,
letters, or words, or are contrary to good morals. Public heraldic
devices appearing upon the marks of individuals are not placed
under the protection of the law.
ART. 5. The use of a mark in so far as concerns firms cannot
be claimed in court unless the mark has been regularly deposited,
and the registry published in the official trade bulletin or some
other official -federal bulletin designated for that purpose. In
absence of proof to the contrary the presumption will be that the
first depositor of a mark is also the equitable possessor.
ART. 6. The mark must be distinguished by essential character-
istics from those already registered, unless it is applied to a
different class of products or merchandise.
APPENDIX. 705
ART. 7. The following are authorized to register marks : —
1. Manufacturers having the seat of their manufacture or produc-
tion in Switzerland, and merchants having a commercial house
regularly established within the same. 2. Manufacturers or mer-
chants established in States that allow citizens of Switzerland
reciprocity of treatment, provided these manufacturers or mer-
chants furnish proof in addition, that their marks or firm-names
are sufficiently protected in the place of their establishment.
ART. 8. The duration of rights established by registering a
mark is fixed at fifteen years, renewable indefinitely for the same
period. Fee for each registry or renewal twenty francs.
ART. 9. The mark can only be transferred with the enterprise,
the product, or merchandise of which it serves to distinguish.
The transfer is of no effect in regard to third parties till after the
registration and publication of the act confirming the same. (The
fee for a transfer is fixed by article 16 at twenty francs.)
The same law prescribes the mode of making deposit for registry.
To the application duplicate copies of the mark and a stereotype
plate are appended, and other formalities are set forth. It also
contains provisions for damages for counterfeiting or usurping
marks, besides penalties of fine and imprisonment.
TURKEY.
A special regulation as to trade-marks, first promulgated in
1870, seems to be still in force. Registration is a condition
precedent to suit for infringement.
LAWS OF THE UNITED STATES RELATING TO THE
PROTECTION OF TRADE-MARKS.
AN ACT to punish the counterfeiting of Trade-Mark Goods and
the sale or dealing in of counterfeit Trade-Mark Goods. Ap-
proved August 14, 1876. (1 Supp. to Rev. Stats. 241.)
This may be found in condensed form, ante, § 371. It is pub-
lished in full in the edition of April, 1885, of the official publication
of “Patent Laws and Laws relating to the Registration of Trade-
Marks and Labels,” p. 27.
45
706 - APPENDIX.
AN ACT to authorize the Registration of Trade-Marks and pro-
tect the same. Approved March 3, 1881. (21 Stat. 502;
edition of April, 1885, of the official publication above men-
tioned, p. 29.)
See also ante, §§ 283, 309, 325, 330, 333, 334, 337, 348, 355,
357, 358, 361, and 365, with a commentary thereon.
For AN AMENDMENT to said Act, approved August 5, 1882, see
said official publication, p. 32.
' PROHIBITION upon the Importation of Simulated Watches, déc.,
sec. 2496, Rev. Stats., as amended by Act approved March 3,
1883. (22 Stat. 490; and ante, $ 368.)
/
I N D E X.
[References are to sections.]
A.
ABANDONMENT, (see Chapter XV.)
sometimes an affirmative defence, 674.
error in arguing from supposed analogies, 675, 676, 679.
of mark differs from that of other property, 675.
discarded symbol may be adopted by others, 677.
resumed by original proprietor, 677, 690.
when extinguishment of trade-mark, 678.
permitting others to use is not, 681.
patent cases do not furnish precedents, 679.
what amounts to, 680, 681.
giving necessary name to a product is, 220, 252.
intention is the criterion of, 498, 681, 686, 690.
mere lapse of time is not conclusive of, 681.
is a fact, and not a conclusion of positive law, 681.
must be established by the strongest proof, 681.
may arise by express declaration, or by conduct, 681.
non-resistance to registration by another, not fatal, 682.
what neglect operates as forfeiture, 681.
forbearance to sue is not abandonment, 685.
distinguished from neutralization of symbol, 686–689.
in one country is in law total abandonment, 689.
ABRAHAM, dealt in money current with merchants, 10.
ABSTRACT SYMBOL,
there is no property in an, 46, 52, 61, 66, 129, 301, 302, 384,450.
reasons why it cannot be transferred, 363, 379, 380.
“A. C. A.” case (Amoskeag Manuf. Co. v. Spear), 93, 94, 153–156.
ACCIDENTAL USE by others of same emblem, 383.
ACCOUNT IN EQUITY,
an accounting of profits required, 506, 507, 517.
not ordered where complainant negligent, 497.
innocent vendor of spurious goods not to keep, 471.
ACQUIESCENCE IN USE OF MARK,
may not amount to abandonment, 681.
defeats right to call for account in equity, 497.
708 INDEX.
[REFERENCES ARE To sRCTIONs.]
ACQUISITION OF TITLE to mark, 53.
by assignment, 57, 361-364.
ACTION AT LAW, as remedy for infringement, by statute, 346.
at common law, 356.
on the case for false representations in the Patent Office, 385.
for slander of a trade-mark, 473.
ACTS OF CONGRESS in relation to trade-marks, (see Chaps. VI., VII.)
that of July 8, 1870, considered, 26, 280 et seq.
August 14, 1876, to punish counterfeiting of marks, 26, 371.
March 3, 1881, providing for registration, 26, 282.
August 5, 1882, amendatory thereof, 366.
ADOPTION OF SYMBOL AS A TRADE—MARK,
is foundation of title, 45 et seq., 301, 324, 361-364.
by affixing to merchandise, 52, 54.
title of, instantly perfected, 52, 306.
avowal of intention to adopt is not adoption, 52.
registration is not adoption, 48–52, 379, 380.
must be in connection with a specific class of goods, 300 et seq.
propriety must be observed in, 602.
AFFIXING OF MARK TO MERCHANDISE,
what amounts to, 304, 305.
AGENT is civilly and criminally responsible, 58.
“AKRON ?’ case (Newman v. Alvord),
principle of that case applied, 182, 533.
ALDUS MANUTIUS, his mark for books, Dolphin and Anchor, 14.
ALIENAGE, no bar to protection, 21, 287, 288,689.
ALLEGATIONS in applications for registration, 576.
must be clear and distinct, 583 et seq.
not conclusive on Patent Office, 607.
ALLUSIVE DEVICES, standing for names, 198.
ALTERNATE FORMS, the doctrine of, 588, 606.
AMENDMENTS, of application papers, limited, 577, 578.
enlarging claim require supplemental oath, 578.
must not substitute other symbols, 578.
to be made on sheets separate from the original, 579.
AMERICAN CITIZEN, may commercially be a foreigner, 294, 297.
“AMERICAN SARDINES,” not a valid trade-mark, 134, 610.
AMERICAN WATCHES, etc., piracy on, 26, 369.
ANALOGUES OF THE TECHNICAL TRADE-MARK,
discrimination necessary, 83, 90, 100, 521.
trade-names, 91, 521.
labels, wrappers, advertisements, signs, 537, 538.
names on conveyances, 560, 561.
titles of publications, 546.
“ANATOLIA ’’ case (McAndrew v. Bassett), 184, 191.
“ANGOSTURA BITTERS ’’ case, 194.
ANIMATE PROPERTY, with owners’ marks, 16.
INDEX, º 709
[REFERENCES ARE To SECTIONs.]
ANTIQUITY of proprietary marks, 1, 2, 11.
APPEAL from Trade-Mark Fxaminer, 649.
to Supreme Court, without regard to amount involved, 337.
APPLICANT'S OWN NAME, merely, is not a trade-mark, 326.
use of, may be only a cover for fraud, 420, 420 a.
APPLICATION FOR REGISTRATION, (see Chapters WI., VII.)
preliminaries to, 565.
necessity for forms, 568.
substance more important than technical form, 569.
system of examination, 571.
Office may plead in abatement, 572.
papers serve purpose of declaration in an action, 573.
issue joined, and law questions argued, 575.
drawing and filing of application papers, 576.
limited power of amendment, 577, 578.
manner of making amendments, 579.
design of oath, 580.
prima facie title of applicant to his mark, 581.
essence of the mark to be presented, 582.
indefiniteness of description, 583–585.
breadth of claim, 586–590.
degree of specificness, 591, 596, 600.
hypothetical false models of application papers, 592–594.
mere descriptive terms not valid marks, 596, 600.
APPLICATION OF MARK TO MERCHANDISE,
is essential to title, 143, 304.
mode of making application, or affixing, 305.
“ARAMINGO MILLS’’ case (Colloday v. Baird), 186.
ARBITRARY SYMBOLISM, misconception as to nature of, 138.
ARMS, national, not valid trade-marks, 261.
of family may be essential features, 261.
ART, trade-mark not deemed a work of, 110.
ARTICLE, proper name of, not a trade-mark, 165–177.
injurious in itself, not protected, 350.
ARTIFICIAL PERSON may own trade-mark, 55, 317.
but not so unless a trader, 55.
“ASPHALTE DE SEYSSEL,” being geographical, not a mark, 598.
ASSAY MARKS in England, France, and Switzerland, 19.
ASSESSMENT OF DAMAGES, (see Chapter XI.)
direct and immediate consequences to be regarded, 504 et seq.
one cannot avail himself of his own neglect, 504, 510.
actual damages to be recovered, 503.
plaintiff not held to exact statement, 504.
plaintiff's loss, not defendant’s gain, the criterion, 504.
rule varies from that in patent cases, 515, 516.
accounting in equity for profits, 507, 517.
wrong-doer not allowed to be the judge, 504, 518.
710 INDEX.
[REFERENCES ARE To secTIONs.]
ASSIGNMENT, 57, 361-363.
AUSTRIAN registration law, 26, Appendix, p. 678.
AUSTRO-HUNGARIAN CONVENTION, Appendix, p. 673.
AUTOGRAPH, one's own may be a valid trade-mark, 87,204.
and so also a fac-simile thereof, 87,207.
B.
BADGE, as a proprietary mark, 5.
“BALM OF THOUSAND FLOWERS" case, 148,241, 243.
BANKRUPTCY, trade-mark included in assets. (See Chapter XII.)
BASS & CO.’S case, 448. º
the placing of genuine mark on genuine goods not piracy, 448.
BELGIUM, registration law of, Appendix, p. 680.
treaty and convention between the United States and, Appendix,
p. 674.
“BISMARCK,” a valid trade symbol, 68.
“BLANCHARD CHURN ?’ case discussed, 377.
BLASPHEMOUS ALLUSIONS condemned, 602.
BLENDING of trade-mark and other rights, 418.
unfair competition involves, 43, 44, 418.
“BLONDIN '’ protected as a pseudonym, 213.
“BLÜCHER,” a man's name to designate boots, 181.
BOOKS, trade-marks for, 14, 15.
protected as merchandise, not as literature, 116.
titles of, sometimes perfect trade-marks, 546 et seq.
“BORWICK'S BAKING POWDERS ’’ case, criminal, 452.
“BOUQUET’’ case, picture of bouquet and word “Bouquet’’ held to
conflict, 449, 661.
“BOVILENE * and “ BOVINA ’’ case, 397.
BRAND, as a mark of ownership, 5.
BRAZIL, agreement between the United States and, Appendix, p. 674.
registration law of, Appendix, p. 681.
BREACH OF FAITH, in disclosing secret process, 562.
BREADTH OF CLAIM,
most likely to be founded in simplicity, 586–588.
mistake, by claiming too much, 588, 590.
“BRICK POMEROY,” a valid personal designation, 214.
BRITISH “MERCHANDISE MARKS ACT * of 1862, 85, 102.
“BROSELEY 2’ PIPE case, 17.
“BROUGHAM,” a man’s name to designate a carriage, 181.
“BURGESS' ESSENCE OF ANCHOVY SAUCE,” not valid, 432.
BUSINESS; names protected. (See Chapter XII.)
names and styles, in signs and labels, 521 et seq. $
place of, must be stated in application for registration, 296.
use of mark for unlawful, defeats remedy, 348 et seq.
BUYERS OF GOODS, falsely marked, suit by, 63.
INDEX. 711
[REFERENCES ARE To SECTIONS.]
C.
“CABLE-STITCHED KID GLOWES,” merely descriptive, 134.
“CABLE-TWIST TOBACCO'” case, discussed and rejected, 167–175.
CAESAR, JULIUS, the first to stamp his image on coin, 9.
“CALCULATED TO DECEIVE,” oath that mark is not, 309, 328.
“CALENDAR WATCH* rejected, as merely descriptive, 376.
CALIFORNIA, definition of trade-mark, in Political Code of, 164.
CANADA, trade-mark, law of, Appendix, p. 682.
timber-marks, 16, note.
“CARTE BLANCHE,” champagne-wine case, 438.
CARTHUSIAN MONKS' trade-mark suits, 407-410, 582.
CASE, action on the. (See ACTION AT LAw.)
CA VEAT emptor, 11, 64, and venditor, 64.
“CENTENNIAL,” trade-mark interference, 340, 638.
CERTIFICATE, of officer to affidavit, 314.
of Commissioner of Patents, to be evidence, 330.
of registration, is not a patent, 340.
CERTIFICATE OF REGISTRY, 330, 331.
CHARACTERISTICS, essential, of a trade-mark, 143.
“CHARIVARI,” French journal case, 551.
“CHARTER OAK,” a valid trade-mark for stoves, 148, 150.
“CHARTREUSE * has all essential elements of trade-mark, 410, 582.
CHATTEL, history of word, 3.
“CHEMICAL PAINT’’ case considered, 251, 259.
CHEMICAL PRODUCTS, name of, not a valid mark, 166.
CHINESE, antiquity of their trade-marks, 13, 215.
perfect system of marking goods, 42.
imitation of marks in England, 232.
citizen of the United States held to be commercially Chinese,
294.
“CHINESE LINIMENT' case (Coffeen v. Brunton), 460, 462, 538.
“CHIROPLAST,” inventor of, lost a good trade-mark in name, 601.
“CHLORODYNE ** held not to be a valid mark, 252.
CHRISTIAN NAME, law recognizes but one, 196.
CIPHER, as a distinctive sign or mark, 87, 262.
CIRCULATING MEDIUM, its origin, originally cattle, then coin, 9.
CITIZENSHIP, not necessary to entitle to registration, 297–299.
yet must be divulged in application, 283.
CITIZENS OF THE SAME STATE, suits between, under Act of 1881,
358.
CLAIMANT does not register mark, but a copy thereof, 382.
“CLASS OF GOODS,” restricted meaning of phrase, 66–70, 300.
protection given only in connection with, 66–70, 300, 450, 590.
particular description of goods must be alleged, 300.
definition of “class'' sometimes strained to do justice, 66, 67.
712 INDEX,
IREFERENCEs ARE To SECTIONs.]
“CLEAN HANDS,” (see “DEFENCEs,” Chapter X.)
indispensable to complainant in equity, 71, 348-354, 474 et seq.
inconsistent with unlawful business, 475.
with laches in lying by, without suit, 497.
with deceit of the public, 475, 476, 478, 479.
as to manufacturer, 474.
as to place of manufacture, 71,481–483.
as to intrinsic excellence, 485–488.
by misuse of another's name, 474.
as to quack medicines, 491.
as to origin, 488, 491.
a lack of, not necessarily indicated by harmless statement, 492.
by fictitious name of manufacturer, 490, 495.
“COCOAINE’’ case (Burnett v. Phalom), 237–239, 450, 612.
COINER of new word may use same as trade-mark, 219.
COINS, marks on, 9, 10, 27.
COLOR, as an essential element of a trade-mark, 263-267, 585, 603.
one color may neutralize another, 264, 585.
must be definite and certain, if essential, 266 et seq., 585.
an important circumstance in infringement case, 267, 413.
as means of deceiving the public, 268.
independent of form, cannot be a trade-mark, 138, 269–272.
as national proprietary signs, 74.
uncertainty in describing, 585.
COLORABLE infringements, 385 et seq.
COLORABLE WARIATION exemplified, 33, 385 et seq.
no fixed rule as to, 33.
COLTON DENTAL ASSOCIATION, sign case, 540.
COMBINATION, improper application of patent theory, 368.
COMITY OF NATIONS, 21, 22, 286 et seq.
demands the protection of all commercial rights, 21, 22.
courtesy due to all friendly strangers, 21.
disregarded at times by France, 23.
COMMERCE and trade-marks of equal antiquity, 2.
required its hieroglyphics, 12.
COMMERCE AND MANUFACTURE, twin-sisters, 78.
COMMERCIAL CHARACTER,
imparted by residence in foreign country, 295, 297 et seq.
COMMERCIAL SIGNATURE, a trade-mark is one's, 130, 280.
and should be valid all over the world, 260, 689.
COMMISSIONER OF PATENTS,
to make regulation for registration of marks, 308.
not to receive or record marks not lawful, 325.
nor merely the name of the applicant, 325.
nor a mark improperly claimed, 325.
to issue certificate of registration, 330.
to prescribe regulations, and forms for transfer, 361.
INDEX. 713
[REFERENCES ARE To SRCTIONs.]
COMMISSIONER OF PATENTS, - continued.
strictly to follow statutes in ministerial acts, 329.
has not power to cancel certificates, 624.
may place two parties on same footing, 624.
COMMON-LAW REMEDIES FOR INFRINGEMENT, (see Actron.)
not affected by Act of March 3, 1881, 357 et seq.
“COMPAGNIE DES PROPRIETAIRES DE WIGNOBLES,” 599.
COMPULSORY testimony, 639.
CONCESSION of priority of adoption, how made, 634.
CONFEDERATE STATES’ notes counterfeited, 76.
CONFIDENCE indispensable to social compact, 580.
is the object of applicant’s oath, 580.
“CONFORMATEUR DU TAILLEUR,” sign infringement, 535.
CONGRESS, provision to protect American watch-makers, 74, 369.
marks on foreign manufactures, 369.
act of, in relation to registration of trade-marks, 283–366.
does not pretend to create trade-marks, 317.
has authority to legislate on trade-marks, 281.
“CONGRESS WATER '' trade-mark case, 146 et seq., 598.
CONSTITUTION, power conferred on Congress by, 109,281.
CONTEMPT of witness before Patent Office, how punished, 639.
CONVENTION, meaning of term as used, explained, 286.
“CONVEYANCE COMPANY " case (name of coach), 413.
COPIES, ten fac-similes of mark to be filed, 304.
of testimony, printed preferred, 641.
COPYRIGHT cannot protect a trade-mark, 109–112.
not analogous to trade-mark, 112.
protects book as work of intellect, not as mere merchandise, 117.
difference from a trade-mark or a patent, 109, 129.
CORPORATION, protected in use of lawful mark, 309, 317-323.
entitled to trade-mark only as a trader, 55, 317–320.
meaning of term “corporation ” sometimes misunderstood, 323.
oath to be made by officer of, 309.
who is such officer, 323.
mere name of, not a trade-mark for itself, 321, 322.
COSTS in infringement cases, 469, 471, 472.
COUNSEL, selection of, before Patent Office, 566, 567.
COUNTERFEITING,
consists, generally, in actual affixing of false mark, 337, 343, 344.
may consist in applying mark to mere box or envelope, 440.
may sometimes be complete without actual use, 456.
workman not allowed to plead his own good faith, 456.
he is guilty who causes act to be done, 341,441.
“CRAYONS POLYGRADES" case (Faber v. Faber), 421.
“CREME D’ARGENT,” as applied to a chemical product, 236.
CRIMINAL LAW, Act of August 14, 1876, 371, 381.
and the Civil Act of March 3, 1881, in effect one, 372.
see list of penal statutes of States, 452 note.
714 INDEX,
[REFERENCES ARE To secTIONs.]
CRIMINAL PROSECUTION for simulating mark, 371,452.
“CROWN SEIXO WINE’’ case, 405, 406.
“CUNDURANGO OINTMENT, C.O.,” rejected, as descriptive, 276.
D.
DAMAGES, (see Chapter XI.)
statutory provision for, in case of infringement, 337
of fraudulent registration, 355 et seq.
depends upon substantial loss to plaintiff, 343 et seq., 499, 504.
upon actual affixing of mark to goods, 337, 500.
sometimes given without proof of specific injury, 501.
no fixed and certain rule for measuring, 502.
compensatory, should be given, 503, 507.
special, are not presumed, 43, 504, 509. *
must be proved, not based upon mere conjecture, 505.
intent is a prominent element in fixing, 508.
amount of, not dependent on defendant's profits, 507.
plaintiff’s negligence may defeat claim to, 510.
difficulty in fixing amount in trade-mark case, 512–515.
patent and copyright cases no standard, 513, 516.
exemplary, when allowed, 519, 520.
wrong-doer not allowed to apportion his wrong, 518.
a threat to injure is not ground for, 500.
mere possible injury no ground for, 500.
DAMNUM absque injuria, 384,420, 431,499, 500.
DANGER in superficially reading Trade-Mark Law, 279 et seq.
“DAY & MARTIN’S BLACKING” case, 423.
“DEAD RED BALL ** as a mark for a base-ball, 585.
DECEIT, protection of public from, 30, 36–39, 309, 328.
DECEIVE, “ calculated to,” mark must not be, 328.
Patent Office will judge for itself on this point, 329, 352, 580 et seq.
DECLARATION, under oath, of exclusive right to use of mark, 309 et seq.
to be made by person, or officer of corporation, 309.
strictness of verification of, 313.
of interference, in what cases, 622, 633, 638.
DEFENCES, (see Chapter X.)
that complainant has been guilty of deceit. (See CLEAN HANDs.)
of bad faith in lying by, 497.
of negligence, 510.
to bill for injunction in the “Durham Tobacco'" case, 660.
no defence that spurious goods are equal to genuine, 344, 496, 505.
that plaintiff's advertisements are exaggerated, 492.
that manufacturer's name is fictitious, 494, 495.
that complainant delayed, when delay necessary, 498.
may be either affirmative or negative, 474.
false statement in foreign language no defence, 481.
INDEX. 715
[REFERENCES ARE To SECTIONs.]
DEFINITION AND NATURE of a trade-mark. (See Chapter III.)
necessity for, 1,80, 136.
English, French, German, etc. definitions, 85, 87, 102.
of the term “owner,” Act of March 3, 1881, 284.
“interference,” 621.
“laisser tomber dans la domaine public,” 681.
DEMARCATION,
line of, between trade-marks and analogues, 186.
“DEMOCRATIC REPUBLICAN NEW ERA’’ case, 550.
DENMARK, registration law of, Appendix, p. 683.
DEPOSIT of mark, not necessary to acqurie and conserve title, 48
et seq.
DESCRIPTION of mark must be filed with application, 303.
of color in application, 585.
DESIGN, is not the question, but adoption is, 54, 661.
patent for, explained, 111.
if patented, cannot be registered as a trade-mark, 113.
DEVICE for trade-mark is a matter of fancy, 87, 102.
propriety must govern, 602.
DICTA not authorities, 82, 84, 99, 391.
DILIGENCE, “race of,” not inquired into, in registration, 384, 661.
DISAGREEMENT of judicial minds, 149, 658–660.
DISCOVERY, usually an equitable remedy, 469 et seq.
under Judiciary Act of 1789, in actions at law, 470.
in aid of forfeiture, not favored in equity, 470.
DISSOLUTION OF PARTNERSHIP, in absence of stipulation, each
can use old firm-name, 524 et seq.
DOMICILE, (see Chapter VI.)
owner, in United States, may register mark, 283.
term commented on, and explained, 292–295.
an essential allegation, in certain applications, 291, 591.
forensic, 294.
national and commercial, may not be identical, 294 et seq.
and residence not convertible terms, 299.
DURATION of trade-mark, life unlimited, 109, 143, 333.
“DURHAM?” may or may not be a geographical name, 192.
interference case, three opinions, 658–660.
opinion of Examiner, 658.
Commissioner, 659.
Judge Rives, 660.
E.
“EAU DE LA FLORIDE,”
infringed by “Eau de la Fluoride,” 397, 450, 612.
“EDGERLINE * (from Edgerley, the owner), a valid mark, 217.
EGYPTIANS, ancient, sign-boards of, emblem, &c., 6.
ELECTION of remedies, 506.
716 INDEX.
[REFERENCES ARE To SECTIONs.]
EMBLEMS OF OWNERSHIP, (see TRADE-MARKs.)
coeval with birth of traffic, 2.
had origin in general ignorance of reading language, 3.
as signs of ancient Egyptians, Greeks, Romans, 6.
used in all ages, among all races of men, 11.
of old-time booksellers and printers, 14, 15, 116.
pipe-makers in England, 17.
goldsmiths in England, 19.
variety of, 87.
nondescript vignettes, groups of flowers and fruits, not legal, 89.
comprehensiveness of British Act of 1862, 102.
“ENGLISH EMBASSY CHEMIST,” shop-sign case, 529.
ENGLISH ROYAL ARMS, as water-marks upon paper, 7.
“ENGLISH'S BROOMS’’ case considered and criticised, 162, 163,597.
EQUALITY in value of spurious with genuine goods, no defence, 344,
496, 505.
EQUITY, (see CLEAN HANDs; PROTECTION.)
acts only when legal title is clear, 31, 462.
ESSENTIAL CHARACTERISTICS of a trade-mark, 143.
ESTIMATING DAMAGES. (See Chapter XI.)
ESTOPPEL by reason of previous declarations, 627, 631.
“ETHIOPIAN ?’ trade-mark case, 612.
EVIDENCE,
of false use of unessential elements may be important, 33, 132.
fraudulent intent deduced from slight circumstances, 268, 387 et seq.
sources of, before the Patent Office, 645.
certificate of registration to be, 330.
registry, prima facie, of title, 337 et seq.
EXAGGERATED STATEMENTS, in advertisements, not conclusive
evidence of fraud, 492.
EXAMINATION of application for registration of mark. (See Chapter
XIII.)
EXAMINER OF TRADE-MARKS, judicial functions of, 574.
EXAMPLES OF TRADE-MARKS, (see Chapter W.)
autograph may be a valid mark, 204.
or fac-simile of signature, 207,211.
pseudonyms may be valid marks, 213, 214, 217, 218.
fancy names of men, 216.
names of products, 236 et seq.
words, 33, 273–275.
letters of the alphabet, 234 et seq.
devices, including name, 246—248.
from heraldry, 260.
in which color is essential, 263–270.
monograms, ciphers, etc., 262.
necessary name of one's exclusive product, 251.
picture of public building, 258.
national arms combined with other things, 261.
INDEX. 717
[REFERENCES ARE To sRCTIONs.]
EXCLUSIVE USE of symbol the foundation of title, 143, 309, 324.
cannot be claimed of a mere geographical name, 182–185.
of designations of trades or occupations, 161.
of necessary name of thing, 164.
of one's surname, 202, 423.
EXTINGUISHMENT of trade-mark. (See ABANDONMENT.)
“EXTRACT OF NIGHT-BLOOMING CEREUS,” a deception, 484.
F.
FABRIKZEICHEN, the German equivalent of “trade-mark,” 85.
FAC-SIMILES, ten to be filed except in case of drawings, 304.
must be attested by oath of applicant, 283.
of autographs are valid trade-marks, 87,207.
definition of term “fac-simile,” 304.
FALSEHOOD, in mark cuts off right to protection. (See CLEAN
HANDs.)
FALSE models of application papers, 592–594.
FAMILY NAMES, considered, 196, 197.
FANCY NAMES, judicially approved. (See 33, 547 et seq.)
“AINsworth,” thread, 199; “Alderney,” oleomargarine, 71;
“American Sterling,” silver, 352; “Anatolia,” licorice, 66,
191; “Annihilator,” medicine, 273; “Apollinaris Water,” min-
eral water, 191; “Arctic,” soda-apparatus, 273.
“BELL of Moscow,” wine, 89; “Benedictine (La),” liqueur, 137;
“Bethesda,” mineral water, 191; “Bismarck,” cement, paper
collars, 68; “Blood Searcher,” medicine, 135; “Bockar's Stomach
Bitters,” medicine, 135; “Bouquet,” hams, 449, 661; “Brown
Dick,” tobacco, 218.
“CAF# PES Gourm ETs,” coffee, 236; “Carte Blanche,” cham-
pagne wine, 438; “Cashmere Bouquet,” toilet soap, 273; “Cen-
tennial,” clothing, alcoholic spirits, 68, 340, 613, 638; “Cham-
pion,” flour, 150; “Charbon Agglomerée,” charcoal, 221; “Char-
ter Oak,” eooking-stoves, 148; “Chartreuse,” liqueur, 408, 582;
“Chinese,” liniment, 243, 538; “Climax,” stoves, 150; “ Coco-
aine,” cocoanut oil, 150, 237, 397, 450 ; “Congress Water,”
natural product, 146; “Crème d’Argent,” a chemical product,
236; “Crystal,” castor-oil, 274.
“DAMASCUS BLADE,” scythes, 249; “Daniel,” bridle bits, etc.,
826; “Daylight,” oil, 274; “Deer Tongue,” tobacco, 273;
“Diamond,” soap, 273; “Dolly Warden,” fancy paper, 218;
“Dublin,” soap, 191; “Durham,” smoking-tobacco, 658.
“EAU DE LA FLORIDE,” toilet preparation, 397; “Eau de toilette
de Lubin,” toilet-water, 135; “Electro-Silicon,” polishing com-
pound, 71,220; “Empire,” stoves, 150; “Ethiopian,” stockings,
150, 612; “Eureka,” fertilizer, shirts, 68, 219; “Everlasting,”
pills, 273; “Excelsior,” stoves, 150.
“FALSTAFF,” cigars, 218.
718 INDEX.
[REFERENCEs ARE To secTIONS.]
FANCY NAMES, judicially approved, - continued.
“GAslight,” illuminating oil, 274; “German,” soap, 191; “Glen-
field,” starch, 136; “Gold Dust,” whiskey, 273; “Grande Char-
treuse,” liqueur, 407; “Gulliver,” cigars, 218.
“HARVEST WICTOR,” harvesting-machine, 275; “Heliotype,” prints,
66; “Hoosier,” agricultural implement, 191; “Hunyadi-Janos,”
mineral water, 191.
“IRON-CLAD,” boots, 66; “I XL,” cutlery, axes, scythes, 69, 70.
“JOB,” cigarette paper, 212, 398.
“KING OF THE FIELD,” agricultural implements, 275.
“LA BENEDICTINE,” liqueur, 137; “La Cronica,” newspaper, 108;
“La Flor del Tropico,” cigars, 273; “Lamartine,” an elixir,
216; “La Normandi,” cigars, 672; “Leopold,” woollen cloths,
191; “Liverpool,” woollen cloths, 191; “Lone Jack,” smoking-
tobacco, 66, 218; “Lubin,” toilet perfumes, 135.
“MAGNETIC BALM,” medicine, 71; “Magnolia,” gin, whiskey,
68, 672; “Marieland,” whiskey, 193; “Medicated Mexican
Balm,” 243; “Meloroma,” beverage, 273; “Mineral Sperm,”
illuminating oil, 273; “Moniteur,” newspaper, 415; “Monti-
cello,” whiskey, 193; “Mount Carmel,” liqueur, 184, 191.
“NEW ERA,” newspaper, 105.
“OUR FRITz,” smoking-tobacco, 218.
“PAIN KILLER,” medicine, 273; “Papier Goudron,” cigarette
paper, 71, 135; “Papier hygienique,” cigarette paper, 135 ;
“Paragon,” umbrellas, 219; “Paul Jones,” whiskey, 218, 664;
“Perles d'Ether,” ether pills, 166,236, 383; “Phil Sheridan,”
tobacco, 218; “Poudre Brésilienne,” toilet article, 236.
“Queen of THE MEADow,” agricultural implement, 275.
“Rrp RAcER,” agricultural implement, 275; “Rip Van Winkle,”
whiskey, 218,613; “Roger Williams,” cotton cloth, 216; “Royal
Bats-wing,” corsets, 273.
“SAMson BºAce,” suspenders, 273; “Savon de Paris,” soap, 1853
“Serpent of Pharaoh,” chemical toy, 166; “ Siccatif brillant,”
paint dryer, 135; “Star of the West,” pump, 274, agricultural
implement, 275; “Star Shirt,” shirts, 606; “St. James,” ciga-
reties, 68; “Sunlight,” illuminating oil, 273; “Sunny South,”
stoves, 273. º e
“TIP Top,” agricultural implement, 275; “Trappestine,” liqueur,
236.
“ UNCLE Bob LEE,” tobacco, 218.
“WALLEY GEM,” piano-fortes, 273; “Veloutine,” toilet-powder,
135; “Vieille Montagne,” paints, 193.
“WATER WHITE,” refined petroleum, 274; “Western Dutch-
man,” agricultural implement, 275; “Wisconsin Wood-Chop-
per,” axes, 193.
“YANKEE,” shaving-soap, 125, 186, 191; “Young America.”
writing ink, 218.
“Zero,” water-cooler, 273.
INDEX. 719
[REFERENCES ARE To secTIONs.]
FANCY NAMES, judicially rejected, for being descriptive, deceptive, or
other cause. *
“ALBANY BEEF,” (slang term for sturgeon,) 89 a ; “ Allcock’s
Porous Plasters,” 134; “American Sardines,” 134, 352, 610;
“Anglo-Portugo,” (oysters,) 71; “Angostura,” (bitters,) 134,
194; “Antiquarian Book Store,” 161; “A. Richardson's Patent
Union Leather Splitting Machine,” 221, 611.
“ BALM OF THOUSAND FLOWERs,” 242, 488; “Beeswax Oil,”
164,276; “Bloom of Youth, or Liquid Pearl,” 71,475; “Braided
Fixed Stars,” 221.
“CABLE-stitchED KID GLovEs,” 133; “Cable Twist Tobacco,”
167; “Cachemere Milano” (etc.), 134; “Calendar Watch,” 276;
“ Charbon de Paris,” 220; “Charter Oak,” 221; “Chlorodine,”
134, 220, 252; “Club-House Gin,” 134; “Cough Remedy,”
134; “Crack-Proof,” 134, 597; “Croup Tincture,” 134; “Crys-
talline,” 89 a ; “Cundurango Ointment, C. O.,” 164; “Cylin-
der,” 157.
“DESICCATED Codfish,” 134; “Durham,” 184, 659.
“EGG MACARONI,” 134.
“FAILLANTINE,” 601; “Ferro-phosphorated Elixir of Calisaya
Bark,” 220; “French,” (paints,) 192.
“GALEN,” 157; “Geyser Spring,” 276; “Glendon,” (iron,) 134,
192; “Golden Ointment,” 134; “Gold Medal,” 133.
“HAMBURGER TRoPFEN,” 609; “Highly Concentrated Compound
Fluid Extract of Buchu,” 134; “Homoeopathic Medicines,”
89 a; “Howqua’s Mixture,” 478. ¥
“INVISIBLE,” 164; “Iron Stone,” 597.
“Johnson’s AMERICAN ANODYNE LINIMENT,” 133, 367.
“KATHAIRON,” 491.
“LACKAwan NA CoAL,” 134; “Lake,” 157; “La Maison de l’Alu-
minium,” 535; “Lawrence Fine Family Flannel,” 134.
“LIEBIG's ExtRACT OF MEAT,” 134; “Lieutenant James’ Horse
Blister,” 134; “Linoleum,” 220, 221; “Loch Katrine Whis-
key,” 192; “Lucilene,” 220, 252; “Lunch Milk Biscuits,”
276.
“MACAssAR OIL,” 134; “Masonic,” 89 a; “Meen Fun,” 485;
“Moline,” 134, 597; “Musical Note Paper,” 133.
“NEw MANNY HARVESTER,” 134; “New York,” 157; “Night-
Blooming Cereus,” 71, 134, 484; “Nourishing Stout,” 134, 597.
‘‘ OLD LONDON Dock GIN,” 134, 597.
“ PARAFFIN OIL,” 134; “Parchment Deed,” 276; “Parson’s Pur-
gative Pills, P. P. P.,” 134, 367; “Post-Office Directory,” 134;
“Prize Medal,” 133; “Propriétaires de Vignobles,” 599.
“RALEIGH,” 192; “Razor Steel,” 134; “Rye and Rock,” 134.
“Schied AM SCHNAPPs,” 134, 137, 596; “Singer,” 220a; “Sliced
Animals,” 134; “Snowflake,” 136, 174; “Straight-cut,” 184;
“Swing,” 89 a.
720 INDEX.
[REFERENCES ARE To SECTIONs.]
\
FANCY NAMES, judicially rejected,—continued.
“TASTELEss,” 134; “Trommer,” 220 b: “True-fit Shirts,” 133;
“Tucker Spring Bed,” 221.
“VIENNA,” 191; “Vineyard Proprietors,” 599.
“WATER or AYR STONE,” 532; “Wayne,” 157; “Wistar's Bal-
sam of Wild Cherry,” 491; “Wolfe’s Aromatic Schiedam
Schnapps,” 475; “Worcestershire,” 136, “Woven Wire Mat-
tress,” 277. *
FEDERAL TRADE-MARK LEGISLATION, (see Chaps. VI., VII.)
misconception as to power of Congress in, 278.
act of registration of 1870 discussed, 280.
Congress has authority to legislate on trade-marks, 281, 282.
FEE, payable on application for registration, 283.
is not a pledge or deposit, but an unconditional payment, 307.
cannot be reclaimed, unless paid by mistake, 307, 615, 616.
eredit for fee, or part of fee, heretofore paid, 334.
FEES of witnesses in interference cases, 639.
“FERRO-PHOSPHORATED ELIXIR OF CALISAYA BARK,”
as a new name, held not to be a valid trade-mark, 220.
FICTITIOUS NAME of manufacturer, innocent use of, 494.
FIRM, may register a trade-mark, 283, 316.
definition of the term “firm,” 316.
FIRM NAME on signs protected in equity. (See Chapter XII.)
by whom used, on dissolution, 524–527.
FOREIGN COMMERCE, law of March 3, 1881, 283, 285, 360.
FOREIGN COUNTRY, resident of,
upon what conditions allowed to register here, 283, 285.
deemed a citizen of that country commercially, 287, 297.
before whom to verify application, 312. '
FORENSIC DOMICILE, 294.
FORGERY at common law defined, (see Chapter IX.)
or counterfeiting of labels, etc., punished by local laws, 452.
of will, detected by means of water-mark, 7.
FORM, or peculiar disposition of letters, a valid personal sign, 87,165.
of natural object, given by chemical means, 166.
is implied in the use of the term “mark,” 269.
of a product cannot be a trade-mark, 89 b.
FOUNDATION of title to trade-mark, discussed generally, 45–57.
rests upon mere adoption and use, 46.
does not depend on statutory law, 47–51.
is in immutable law of nature, 1 et seq., 86.
FRANCE, trade-marks optional in, as a rule, 18.
trade-mark law of, Appendix, p. 686.
convention between the United States and, Appendix, p. 675.
FRAUD, committed in the use of one's own true name, 200, 388–890.
of the word “patent,” 72, 340.
in assigning use of one’s name, 363.
INDEX. 721
[REFERENCES ARE TO SECTIONs.]
FRAUD, -continued. *
committed in perversion of mark, 443–447.
not fraud for stranger to place genuine mark on genuine goods,
448.
to use another's symbol for different class, 450.
question of, judged of as between immediate parties, 38.
FRAUDULENT representations in Patent Office, action for, 355, 356.
intent precludes registration, 348 et seq., 592, 607, 612.
FRENCH definition of term “trade-mark,” 85.
G.
“ GAUNTLETT PIPES,” marks upon, 17.
“GAZETTE NATIONALE,” or “Moniteur Universel,” case, 415.
GENERAL TYPE of objects cannot be exclusively appropriated, 89 d.
GENERIC TERMS,
cannot be trade-marks, 89 a, 134, 164, 167–177, 253.
men's names may become, 178, 181, 203.
fancy names of things may become, 252.
examples of rejected cases, 276, 277, 367, 368, 596 et seq.
GEOGRAPHICAL NAME, when not merely such, may be valid trade- s—
mark, 182, 184, 185, 191, 193.
when is a name merely such 192.
GERMAN definition of term “trade-mark,” 85.
GERMAN EMPIRE, registration law, Appendix, p. 688.
Convention between the United States and, Appendix, p. 676.
“GEYSER SPRING,” not a trade-mark, 276, 598.
“GOLDEN CROWN CIGARS’’ case (Palmer v. Harris), 481,483.
GOLDSMITHS' company mark, 18, 19.
hall mark, 19.
“GOLSH'S FRICTION MATCH* case (Partridge v. Menck), 35,256,
489.
GOODS “to be transported,” phrase discussed, 360.
GOOD–WILL, difficulty in defining accurately, 522.
may be sold, bequeathed, or become assets of an estate, 522.
sale of business is sale of, 522.
not applicable to professional business, 522.
not necessary to name in sale of business, 522.
on dissolution of partnership, 524.
name of firm important part of, 524–526.
when understood to be conveyed, 524.
as implied in the use of signs of houses, 525 et seq.
equity will protect name of inn, hotel, or other place of business,
528.
colorable imitation of name will be enjoined, 528 et seq.
false representations on signs, 531.
comprises attack on trade-mark, trade-name, etc. of rival, 536.
46
722 INDEX,
[REFERENCEs ARE To SECTIONs.]
GOOD–WILL, - continued.
labels, wrappers, and advertisements comprised in, 537, 538.
improper use of word “original” prohibited, 542, 543.
trade secrets protected, 545.
may be sold, 545.
GOVERNMENT FEE for registration, 307.
credit for fee, or part offee, heretofore paid, 307. *
“GRAND HôTEL DE LA PAIX,” case of unfair competition, 529.
“GRANDE CHARTREUSE,” trade-mark cases, 407-410, 582.
GREAT BRITAIN, declaration between the United States and, Appen-
dix, p. 676.
registration-law of 1883, Appendix, p. 691.
“GREAT LIGHTOE)NING INK ERASER" case, 600.
GREEKS, ancient, sign-boards of, 6.
had cattle for currency, 9.
GREEN BUSH, as vintner's sign, 6.
GREEN SEAL for bottles, held to be a valid trade-mark, 170.
GUILDS, in olden times maintained high character of goods, 74.
GUTENBERG, mark of himself and associates, 14.
H.
HAGGAI, seal of, found in exploration of Jerusalem, 8.
“HALL MARKS,” on gold and silver products, 18, 19.
“HALL'S VEGETABLE SICILIAN HAIR RENEWER” case, 425.
HAMILTON, Sir William, cited as to definition, etc., 82.
“HARDWARE,” too indefinite to describe a class of goods, 300.
HAREBOTTLE, a hare and a bottle as his rebus, 6.
HARMLESS UNTRUTH not regarded as fraudulent, 71.
“HARVESTERS,” a class of agricultural machines, 601.
HAYTIAN COIN, counterfeited, 76.
HENNESSY, JAMES, name used fifty-five years in commerce, rejected,
134.
HERALDRY, a science with system, classification, language, 5.
trade-marks frequently borrowed from mediaeval, 260.
caution to be observed in copying devices, 260.
colors of English, – blue, red, black, green, purple, 263.
HERCULANEUM, emblematic signs in, 6.
HEREDITARY DIGNITIES, seal importing, 5.
“HEROINE’’ trade-mark infringement case, 612.
HINDOOS, 1200 or 1300 years B. c., had merchandise marks, 11.
HISTORY of proprietary marks. (See Chapter I.)
“HOLLOWAY'S OINTMENT’’ case, similarity of names, 430.
HOMER mentions brass money as existing twelve centuries B. c., 9.
HOTEL, name of, not a trade-mark, 83, 90–92, 95–97.
A protected in equity court, 528, 529.
“HOTEL DE LA PAIX” case, unfair competition by signs, 529.
INDEX. 723
{REFERENCES ARE To SECTIONs.]
“HOWE'S BAKERY,” good-will case, sign of business, 98 et seq., 525.
“HOWQUA'S MIXTURE * case, 480.
“HUDSON G. WOLFE'S BELL SCHNAPPS ’’ case, 596.
I.
IDEM SONANS, 392, 527, 600, 661.
IGNORANT MISUSE of word “patent " not penal, 72, 340.
ILLOGICAL USE of term “trade-mark patent,” 340.
IMITATION in part, may be a colorable infringement, 33, 58, 388.
IMPOSITION on public, not ground for private action, 36, 37.
incidentally considered by court, 30, 43.
cause for refusing registration, 348 et seq.
INCORPORATED COMPANY may register trade-mark, 317-320.
INCREASED IMPORTANCE of trade-marks, 28.
INDEFINITENESS of allegation may defeat application, 303, 583 et seq.
INDIAN TRIBE, commerce with, 283, 285.
whether member of, can register, 285, 289.
INDICATION of origin or ownership, (see Chapter IV.)
is the office of trade-mark, 144 et seq.
of mere trade or occupation not a trade-mark, 161.
INDICTMENT for simulating marks. (See Chapter IX.)
INDIVIDUALITY an essential characteristic of trade-mark, 143.
INFRINGEMENT, (see Chapter VIII.)
frequently difficult to determine, 33.
exact similitude not essential to, 33, 228, 385.
actual physical resemblance not the only question, 385.
criterion of, the probability of deceiving purchasers, 43, 309, 328.
sufficient if ordinary purchasers are misled, 33.
principle on which prohibited, 34, 395.
wherein consists the wrong of, 42.
comparative quality of goods not necessary question, 35, 344, 401,
496, 505.
by what is it constituted, 385, 440.
fraudulent intent not essential to, 386.
by deceiving eye or ear, 449.
by colorable variations, 33, 388.
by using small words as instruments of fraud, 387.
by affixing mark to receptacle of unmarked goods, 440.
by misuse of genuine labels, 443–446.
genuine bottles, bags, etc., 443.
genuine parts of manufactures, 443.
minor details, 33, 388–391.
numerals, 226–230, 401, 446.
sometimes to use mark originated by one's self, 437.
in causing another to imitate mark, 441.
in making false labels to be affixed in foreign country, 400.
724 º INDEX.
[REFERENCES ARE To secTIONS.]
INFRINGEMENT, - continued.
but mere imitation of abstract symbol is not, 42.
discovery by analysis of unpatented secret is not, 562, 563.
nor using symbol on another class of goods, 66–70, 300, 450, 590.
INFRINGER, who is, 58.
may be the pirate himself, or innocent vendor, 58,468.
agent, 472.
INITIAL LETTERS may by accident become valid mark, 212, 398.
not sufficient for legal signature, 290.
INJUNCTION, (see REMEDIES, Chapter IX.)
against use of another's name, 527, 531, 539–541, 554, 556.
an old firm title, 525–527.
title of publication, 546–553, 557.
name of place of amusement, business, etc., 528.
INJURIA SINE DAMNO, 499.
“INJURIOUS in itself,” meaning of phrase in statute, 350.
INNOCENT VENDOR may be an infringer, 58.
not compelled to account, or pay costs, 471.
INSTANT PERFECTION of title to trade-mark, 52, 54.
INTENT, express or implied, an element in fixing damages, 508, 520.
INTENTION to adopt is not adoption, without use, 52–54, 384, 661.
INTERFERENCE, subject generally considered. (See Chapter XIV.)
when may be declared, 325, 622.
demands skilful management, 617-619.
practice in, modelled on equity practice, 617, 618.
defined to be an interlocutory proceeding, 621.
preliminary, first declared, 625.
object of, 626.
declaration and dissolution of, 688.
© judgment based on written concession of priority, 634.
grounds of, 325, 688.
access to testimony, 640.
printed copy of testimony, when required, 641.
postponement of taking testimony, or of hearing, 642.
information of opponent's case, 644.
sources of evidence, 645, 646.
hearing, rule as to, 648.
appeal from Examiner, 649, 658, 659.
decision of Commissioner final, 650, 651.
examples of actual trials and opinions, 658 et seq.
INTERNATIONAL CONFERENCE for protection of industrial prop-
erty, 22.
list of the nations taking part therein, 22, note.
INVARIABILITY is an essential attribute of a trade-mark, 148.
INVENTOR alone has right to apply word “original” to product, 542,
543.
IRREGULARITY in making oath, etc., fatal to protection, 818, 580.
INDEX. 725
[REFERENCES ARE To SECTIONs.]
“IRWING HOUSE * case (see Howard v. Henriques), 95, 96.
ITALY, declaration between the United States and, Appendix, p. 676.
registration law of, Appendix, p. 697.
“IXL,” instance of same symbol for different owners, 69, 70,450.
J.
JACOB'S CATTLE distinguished by their marks, 3.
JAPAN, EMPIRE OF, registration law of 1883, Appendix, p. 697.
JAPANESE MARKS pirated in England, 74.
“JOB,” originally formed of initials J. B. and lozenge, 398.
JODOCUS BADIUS, caution against pirate of book-mark, 14.
“JOHNSON'S AMERICAN ANODYNE LINIMENT' rejected, 133,
367.
JUDGMENT BY DEFAULT,
when defendant in action fails to make discovery, 470.
in interference case, 630.
based upon concession of priority, 634.
of commissioner in interference is final, 650, 651.
JUDICIAL OFFICERS,
sometimes confound technical terms, 43, 90 et seq., 98, 108, 222.
disagreements of, in conclusions, 65, 149, 244.
JURAT, valid although not dated, 314.
“JUSTINUS ET FLORUS,” of Bernard Hector, caution in, against
piracy of trade-mark for book, 14.
K.
“K” within two concentric circles, decision examined, 149.
“KATHAIRON” case (Heath v. Wright), 491.
KNIGHTS TEMPLARS' renowned banner Beauseant, 263.
L.
LABELS,
not technical trade-marks, but mere vehicles for them, 83, 133,155.
mere analogues of trade-mark, 81, 537.
and wrappers, connecting link between good-will and trade-mark
property, 537.
made instruments of fraud, 538, 541–544.
cannot be copyrighted, 109.
LACHES, what not deemed, as when one is seeking evidence, 498.
bad faith in plaintiff to lie by for a long time, 497.
as applied to question of abandonment, 684, 685.
“LA CIVETTE’” sign-infringement case, 534.
“LACKAWANNA COAL” case (Canal Co. v. Clark), 144, 189, 598.
726 INDEX.
[REFERENCES ARE To secTIONs.]
LACK OF TRUTH, debars from protection, 71. (See CLEAN HANDs.)
but that is where fraud is a predicate, 71.
intention to deceive not always inferred from untrue statements,
475.
“LA CRONICA ’’ newspaper case, 550.
“LA FLOR DEL TROPICO,” a valid trade-mark for cigars, 273.
“LAMARTINE,” valid as fanciful denomination, 216.
LANGUAGE of trade-marks easily read, 3. \
of heraldry speaks forth in many trade-marks, 5.
“LA PRESSE’’ infringed by “La Presse libre,” 416.
LATIN merchants, distinctive signs of trade, 6.
language, in Middle Ages, effect of, on men’s names, 197, 213.
“LA VALENTINE CEMENT * not a valid mark, 190.
“LAWFUL TRADE—MARK,” as used in Act of March 3, 1881, 367,368.
LAWS OF WARIOUS COUNTRIES. (See Appendix.)
LEGAL DEPOSIT of marks simply declarative, not attributive, 48–51,
379, 380.
LEGISLATION, on subject of trade-marks in various nations, 26.
of the United States, 26. (See Chapters WI. and VII.)
“LES OISEAUX DE PROIE,” a publication case, 552.
LETTERS, initial, as marks for painters, designers, sculptors, etc., 15,234.
for fabrics of gold and silver in England, 19.
sometimes designations of products, 87.
LIBELS cannot be valid marks, 602.
LIMITATION OF PROTECTION, under Act of March 3, 1881,
generally is fixed at thirty years, 333. 4
when goods manufactured abroad, may expire at any time, 333.
“LIST OF HOUNDS” not exclusive property, 559.
LIVY OF ALDUS, of 1518, piracy of trade-mark, 14.
“LOCATION ?’ of business of owner must be alleged, 283.
defined under law of March 3, 1881, 296.
“LONDON CONVEYANCE COMPANY,” name on coach, 560.
“LONDON DISPENSARY” case, shop-sign, 529.
“LONE JACK,” a valid trade-mark of fancy, 66, 218.
infringement case, 66.
LUTHER represented by symbol of a swan, 6.
LYDIANS, inventors of gold and silver coin, 9.
M.
“ MACASSAR OIL’’ case, in France, 23.
“MAGNOLIA ’’ a valid trade-mark for alcoholic liquors, 68, 672.
MANDAMUS, proceedings to enforce Label, etc. Act, 881.
MANUFACTURER,
has right generally to place his name on his products, 420.
may use his name as instrument of fraud, 420 a, et seq.
of quack medicines not entitled to invoke aid of equity, 475.
INDEX. 727
[REFERENCES ARE To secTIONs.]
MANUFACTURER, - continued.
unlawfully engaged, or deceiving public, etc., refused protection,
348 et seq.
MANUFACTURING AND TRADING CORPORATIONS, the only
kind of corporations that can have trade-marks, 317–320.
“MARIELAND” held not to be merely geographical, 193.
MARKS, generally. (See TRADE-MARK.)
upon animate property, 8, 16.
registration of swan-marks in England, 16.
seals, the most sacred proprietary marks, 4.
of sovereign upon coin, a guaranty of genuineness, 76.
of trade, etc., property under law of nations, 22.
assuming increased importance, 28.
may resemble each other and essentially differ, 33.
of workmen in quarries of Solomon's temple, 8.
on ancient bricks, tiles, pottery, 8, 13.
“MARK TWAIN,” as a trade-mark, 548, note.
MARQUE DE FABRIQUE ET DE COMMERCE of France,
Belgium, etc., means same as “trade-mark” in English, 85.
MASONIC SYMBOLS,
not calculated by their nature to serve as trade-marks, 367.
impossible to divest them of ordinary signification, 867.
liable to misinterpretation, and to deceive public, 367.
MAXIMS cited:
Boni judicisest ampliare jurisdictionem, 67.
Caveat emptor, 11, 64. Caveat venditor, 64.
Contra non valentem agere non currit prescriptio, 686.
Debitum et contractus sunt nullius loci, 22.
1)e minimis non curat lex, 499.
Ex turpi causa non oritur actio, 71.
Ex turpi contractu non oritur actio, 349.
In pari delicto, potiorest conditio defendentis, 349.
Jus et fraus nunquam cohabitant, 685.
Lex non cogit ad impossibilia, 362.
Lex semper dabit remedium, 345.
Non nostrum tantas componere, 491.
NoScitur a sociis, 132, 332.
Potiorest conditio defendentis, 495.
Quifacit per alium, facit per se, 628.
Quod ab initio non valet in tractu temporis non convalescit, 225.
Sic utere tuo ut alienum non laedas, 420.
Ubi jus, ibi remedium, 345.
Vigilantibus, non dormientibus leges subveniunt, 64.
“MAYOLINE,” (from Mayo, the owner,) a valid mark, 217.
MEANING OF PHRASES AND TERMS,
“lawful trade-mark,” 367, 368.
“merely the name of the applicant,” 325, 326.
“origin or ownership,” indication of, 144 et seq.
728 INDEX.
[REFERENCES ARE To SECTIONS.]
MEANING OF PHRASES AND TERMS, -continued.
publici juris, 676.
registrant, 325, note.
“unfair competition in business,” 43.
“word-symbol,” 89 a. &
MEASURE OF DAMAGES FOR INFRINGEMENT, (see Chap. XI.)
nominal damages, at least, always given, 501 et seq.
“MEDICATED MEXICAN BALM' case (Perry v. Truefitt), 243,
479.
“MEEN FUN” case (Hobbs v. Français), 485.
MELANCHTHON, change of surname into Greek, 213.
MERCHANDISE,
definition of term as used in Registration Acts, 139–142, 300.
books protected by trade-mark merely as, 116, 117.
natural products protected as such, 147.
symbol not a trade-mark unless affixed to, 143.
class must be specified, 300.
MICHAEL ANGELO signed paintings by monogram, 262.
“MINERAL SPERM'' as fancy name for illuminating-oil, 273.
“MINNIE, DEAR MINNIE * case, name of song, 55.
MISCONCEPTION as to nature of arbitrary symbolism, 138.
as to power of Congress, 278 et seq.
MISREPRESENTATIONS. (See CLEAN HANDs; PROTECTION.)
MODE of affixing mark to be stated in application, 305.
MODELS of vicious application papers, 592–594.
“MOLINE PLOUGH’’ case, qualifying marks, 597.
MONEY paid as fee, when returnable, 615, 616.
“MONITEUR '' of Paris, newspaper infringement, 415.
MONKS OF BORDEAUX marked wine as mineral water, 77.
MONKS OF LA GRANDE CHARTREUSE, suits for infringe-
ments of their trade-marks, 407–410, 582.
MONOGRAMS, used as marks for many centuries, 15, 262.
Dictionnaire des Monogrammes, Marques, etc., 15.
“MONTICELLO’’ not merely a geographical name, 193.
MORALITY must be inviolate in mark, 64, 348 et seq., 602.
“MORISON'S UNIVERSAL MEDICINE * case, 429, 562.
“MORSE'S INDIAN ROOT PILLS,” 563.
“MOUNT CARMEL’’ held not to be merely geographical, 184.
“MRS. MARPLE'S SALVE * case, 246.
“MUSICAL NOTE PAPER'' not a trade-mark, 133.
N.
NAME, what is a, 196.
of person, firm, etc., not a trade-mark, 195, 202.
of fancy, of famous living or dead person, 216,426.
a country may be a valid trade-mark, 184, 193.
product solely made or sold by inventor of name, 251.
INDEX. 729
[REFERENCES ARE To sRCTIONs.]
NAME, - continued.
of fancy, of books, 116, 547-549, 553.
a song, “Minnie,” 557.
to be a valid mark must not be generic. (See Chapter III.)
of a man may lose all personality, 178, 181, 220 a, 496.
cannot be assigned as a mark for another, 57, 420 a, 435.
sometimes illegal for himself, in trade, 420, 420 a.
frequently changed in Middle Ages, 213.
of applicants to be written in full, 290.
may generally be attached to goods, bona fide, 420 a, 421, 427.
fraud may be inferred from usurping another's, 396.
one's name sometimes usurped without redress, 393, 556.
of old commercial house protected, 524 et seq. (See Chapter XII.)
of a trader or firm protected, 524 et seq.
of firm, on dissolution of partnership, 524 et seq.
of coach, or other conveyance, 560 et seq.
but if necessary cannot be protected, 166, 220.
of a machine or product, patent expired, 221.
NATIONAL bonds and bills, colored threads in paper, 7, 74.
arms, not susceptible of private use as marks, 261.
flags blended with other objects to catch eye, 265.
comity regarded by the courts, 287, 288.
NATIONALITY, commercial, may differ from political, 297.
“NATIONAL POLICE GAZETTE’’ case (Matsell v. Flanagan), 550.
NATURAL LAW, foundation of trade-mark rights, 1, 46–51.
NEGLIGENCE. (See LACHEs.)
NEOLOGISM, coiner of, may have title thereto, 219 et seq.
NETHERLANDS, THE, trade-mark law of, Appendix, p. 700.
“NEW ERA ’’ omnium gatherum case, 590.
NEWSPAPER NAME, as trade-mark, discussed, 103–115, 415–417.
“NIGHT-BLOOMING CEREUS,” not a valid mark, 484.
NINEWEH, ancient, bricks with marks, 8.
NOMS DE PLUME, 213.
NONDESCRIPT picture, vignette, etc., not valid marks, 89.
NON-RESIDENT CITIZEN regarded as a foreigner, 294.
NORWAY, trade-mark law of, Appendix, p. 701.
NOTARY PUBLIC, may administer oath to applicant, 312.
must in all cases affix official seal, 312.
certificate of, to affidavit, how made, 314.
NUMERALS, merely, not legal trade-marks, 225–233.
use of, as an element, 442.
O.
OATH, or its equivalent, required of applicant for registration, 309 et seq.
design of, is confidence, 580.
perverted by applicant or solicitor, 580.
730 INDEX.
[REFERENCEs ARE To seCTIONs.]
OFFENCES, against morality or good faith, defeat remedy, 348 et seq.
against public policy in any wise, 349.
in fraudulently procuring registration, 353.
affixing “patent * or equivalent term, 72.
OFFICER OF CORPORATION, to make oath, 309.
mere director is not such officer, 323.
“OLD LONDON DOCK GIN ?” not a valid mark, 597.
“OLD MOORE FAMILY PICTORIAL ALMANAC’’ case, 257, 549.
OPINIONS, contrariety of, 136, 658–660.
“ORIGINAL,” or equivalent term, may be enjoined, 542 et seq.
proprietor takes precedence independent of registration, 47, 50, 357.
ORIGIN OR OWNERSHIP, indication of, (see Chapter IV.)
a phrase not always understood, 2, 144, 145.
what may be deemed such indication, 145, 147.
particular maker need not be indicated, 144.
simple name of article may be, 146–148, 150–152.
essential characteristic of trade-mark, 143.
name originally geographical may suffice, 184 et seq., 191, 193.
“OU, the old man who lives in solitude,” old Chinese mark, 215.
“OWNER'' of trade-mark may register, 283.
definition of term, 284, 565, note.
OWNERS, there may be many of a mark, 604.
P.
“PAIN KILLER” (Perry Davis') case, 273, 563.
“PAPIER CREME DE RIZ,” held to be valid mark, 224.
PARTNERSHIP, (see Chapter XII.)
º title to trade-marks on dissolution of, 57.
“PATENT,” or “patented,” untrue use of term, 72.
may sometimes be used when patent expired, 72, 73.
penalty of misuse of, 340, note.
cannot be applied to trade-mark, 340.
PATENT CASES,
do not furnish rule for trade-mark cases, 518–515, 676, 679.
PATENT OFFICE OF THE UNITED STATES,
place of deposit of foreign marks, 332, note.
registration, under Act of March 3, 1881, 283.
does not grant a “patent ’’ for trade-mark, 340.
“PAUL JONES’ may be a valid trade-mark, 218, 664.
“PAYSON'S INDELIBLE INK’’ case, curious, 271.
“PEARLS OF ETHER,” a valid fanciful mark, 166, 236.
PECULIARITY OF PACKAGE not per se a trade-mark, 137.
PENAL STATUTES OF STATES, 451.
PENALTIES, for infringement of mark, Act of 1876, 58, note, 370, 371.
Act of March, 1881, 337 et seq., 355 et seq.
for fraudulent representations, or registry, 355 et seq.
INDEX. 781
[REFERENCES ARE To SECTIONs.]
PENALTIES, - continued.
by indictment at common or local law, 451 et seq.
under treaties and conventions. (See Appendix.)
laws of various countries. (See Appendix.)
PERSONALITY, a man's name may lose all. (See NAME.)
PERVERSION of mark by transference to spurious goods, 443–447.
misapplication may turn genuine to counterfeit, 443.
by adulterating goods, 448.
by filling casks, etc. with inferior articles, 443.
by uniting false to genuine parts, 443–447.
“PESSENDEDE” was not decided to be a trade-mark, 222 et seq.
“PETIT JOURNAL ** newspaper case, 417.
“PHARAOH'S SERPENTS’’ case, 166, note.
“PHARMACIE DE L'AMBASSADE D’ANGLETERRE,” sign, 529.
PHRASES explained. (See MEANING OF PHRASEs AND TERMs.)
“PICTORIAL ALMANAC * case, 257.
PICTURE, as a trade-mark, 255–259.
PIRACY ON TRADE-MARKS, (see INFRINGEMENT: REMEDIEs.)
may be committed by part-imitation, 33, 385 et seq.
is sometimes a trade, 5.
“POLICE GAZETTE * case, 550.
POMPEII, ancient, commercial signs in, 6.
PRACTICE IN THE PATENT OFFICE, (see Chapter XIII.)
interference cases exemplified, 652–671.
PRELIMINARY INTERFERENCE,
detailed sworn statement required, 625.
PRELIMINARY STATEMENT serves as a pleading, 627.
when open to inspection of adversary, 629.
adjudication upon preliminary statement, 630.
not evidence for party filing it, 631.
PRIMA FACIE right to mark by registry, 338, 339.
right of applicant, 581.
PRINTED COPIES of testimony, 641.
PRINTED PUBLICATIONS,
books protected by trade-marks, 14, 15.
as merchandise, not literature, 116.
by titles as trade-marks, 546 et seq.
newspaper headings may be valid trade-marks, 103–115, 558.
infringed by part-imitation, 415 et seq.
name of song may be protected, 557.
PRINTS OR LABELS, Act of June, 1874, discussed, 381.
no claim of Act to constitutionality, 381.
meaning of words “prints,” “labels,” etc., 382.
proceedings on mandamus under said Act, 381.
PRIORITY OF ADOPTION,
as ground of title, 45 et seq., 301, 324, 361-364.
concession of, on interference, 634.
732 INDEX.
[REFERENCES ARE To SRCTIONs.]
PROCURING REGISTRY of mark by fraud, penalty for, 355.
PROPERTY IN A TRADE-MARK. (See TRADE-MARK.)
PROPRIETARY MARKS, (see EMBLEMs; MARKs; TRADE-MARKs.)
not to be confounded with technical trade-marks, 16, note.
PROTECTION OF TRADE-MARK PROPERTY, (see Chapter II.)
right to, 20, 60, 62, 63.
growth of law of, 20.
foreigners have the same right to, as citizens, 21.
general widening of moral sense, 22–24.
grounds of, 30, 36, 74, 392, 393.
mere imposition on public does not entitle to, 30, 31.
is ground for consideration, 30.
harmless untruth does not defeat right to, 71.
& te Q.
QUACK MEDICINES discountenanced, 475 et seq.
QUALITY, mere indication of, not a trade-mark, 29.
of spurious goods not necessarily an element in suit, 35, 344, 401,
496, 505.
may properly be suggested in a trade-mark, 135.
QUARRY-MARKS in ruins of Solomon’s Temple, 8.
QUASI TRADE—MARKS. (See Chapter XII.)
R.
“RACE OF DILIGENCE,” not applicable to registration, 384, 661.
RAPHELENGIUS, bookseller at Leyden, trade-mark, 15.
“RAZOR STEEL’’ not a valid trade-mark for cutlery, 164.
“READING SAUCE’’ label case, 542, 543.
REBUSES as symbols of men, 5.
RECIPROCITY in protection of trade-marks, 287, 288.
REGISTRANT, definition of term, 325, note.
REGISTRATION, does not create title to a trade-mark, 48–51, 379, 380.
by whom and how obtained, 283.
why limited to marks used in foreign commerce, 285.
depends on lawful use, 325.
refused when mark calculated to deceive, 828.
prima facie evidence of ownership, 338, 389.
when renewable, 833.
is not the grant of a patent, 340.
of fraudulent marks, 348 et seq.
common-law rights are not impaired by, 357–359.
in Department of the Treasury for certain purposes, 369.
advantages of federal, 373.
effect of, 374.
a prerequisite to judicial redress in most countries, 131, note.
INDEX. 733
[REFERENCES ARE To SECTIONs.]
REGISTRATION, - continued.
of prints or labels for articles of manufacture, 381.
in Europe has not a retroactive effect, 689.
of prints or labels, Act of June 18, 1874, 381.
REGULATIONS, Commissioner of Patents to prescribe, 308.
REISSUE, after surrender, 614.
REMEDIES, -LAW AND EQUITY, (see Chapter IX.)
may be threefold, 451.
at law, 452–461.
by criminal prosecution, 452–455.
action on the case for deceit, 457–461.
in equity, 462–468.
discovery, account, and costs, 469-472.
injured party has his election of, 506.
REMEDY, a figurative expression, 345. -
at common law, 346.
denied in unlawful business, etc., 348–352.
“REVALENTA ARABICA,” infringement on “Ervalenta-Warton,”
439.
“REVERE HOUSE * coach case, 458.
“RICHARDSON'S PATENT LEATHER SPLITTING MACHINE,”
not a trade-mark, 611.
RIGHTS ANALOGOUS TO THOSE OF TRADE—MARKS, (see
Chapter XII.)
several species of incorporeal property, 521.
“RIP WAN WINKLE * a valid trade-mark, 218, 613.
RODGERS’ CUTLERY spuriously imitated, 74,428,684.
“ROGER WILLIAMS’’ a valid trade-mark of fancy, 216,426.
ROMANS, ancient, signs and trade-emblems, 6.
coined money 578 years B. C., 9.
“ROSEBAUME,” (from Rose, the owner,) a valid mark, 217.
ROUMANIA, trade-mark law of, Appendix, p. 701.
“ROYAL VICTORIA ’’ a valid trade-mark, 216.
RUSSIAN EMPIRE, treaty between the United States and, Appendix,
p. 677.
trade-mark law of, Appendix, p. 702.
S.
“SCHENCK WATER–PROOF TAGS,” etc., not a valid mark, 133.
“SCHIEDAM SCHNAPPS ’’ case, 596.
SEALS of ownership coeval with traffic, 2.
most sacred of proprietary marks, 4, 5.
SECRET PROCESS, breach of faith in divulging, 562 et seq.
SERBIA, treaty between the United States and, Appendix, p. 677.
“SERPENT’’ not a trade-mark for artificial serpent, 166.
“SERPENT OF PHARAOH" case, 166.
734 INDEX.
[REFERENCEs ARE To secTIONS.]
SIGNATURE, as authenticating mark, 1 et seq.
a trade-mark is one's commercial signature, 130.
itself as a trade-mark, 204–206.
fac-simile of, as a trade-mark, 207-211.
SIGN-BOARDS, ancient, 6.
are not trade-marks, 96–101, 535.
are protected by courts of equity. (See Chapter XII.)
“SIMMONS' GENUINE LIVER MEDICINE * case, 418.
SINCERITY, an essential requisite of mark, 71, 143,242, 348 et seq.
“SINGER,” not a trade-mark for sewing-machines, 220 a.
SIR JAMES CLARK’S name usurped with impunity, 393, 555, 556.
SLANDER OF TRADE-MARK PROPERTY, 473.
by selling inferior goods bearing genuine mark, 473,
or using mark for false illustration, 473,
or by making false oral statements, 473.
SMECTYMNU-US, initials of five men's names, 118.
“SNOW-FLAKE STARCH,” not valid because descriptive, 174.
SONG, name of, protected as quasi mark, 557.
SPAIN, convention between the United States and, Appendix, p. 678.
SPECIAL DAMAGES,
not recoverable unless pleaded. (See Chapter XI.)
SPECIFICATION OF APPLICANT FOR REGISTRATION,
considerable degree of accuracy required, 565 et seq.
must be written in the English language, 570.
essence of mark must be evolved on papers, 587, 588.
indefiniteness defeats protection, 583–591.
breadth of claim, how best attained, 586–589.
simplicity and breadth go together, 587.
too great breadth defeats object, 586–589.
degree of specificness required, 591 et seq.
difficulty in describing colors, 585.
rules of propriety in selecting emblems, 602,
allegations true in letter false in spirit, 607.
but one class of merchandise in certificate, 66–70, 300, 450, 590.
hypothetical cases analyzed, 592–594.
amendment, how made, 577 et seq.
requiring supplemental oath, 578.
“SPIEGELMACHERS,” assumed name of early printers, 14.
the speculum their symbol, 14.
“STONEBRAKER'S MEDICINES,” etc. case, 435 et seq.
STYLE, or peculiarity of package, not per se a trade-mark, 187,
SUGGESTION OF QUALITY, a valid trade-mark may contain, 135.
SURNAME, subject considered, 196, 213.
dispensed with, or changed at pleasure, 196.
translated into foreign tongue, 196, 197.
SURRENDER and reissue, 614.
SWAN-MARKS, 16.
INDEX, 735
[REFERENCEs ARE To sections.]
SWEDEN, trade-mark law of, Appendix, p. 703.
“SWEET OPOPANAX OF MEXICO" case, 493.
SWITZERLAND, registration law of, Appendix, p. 704.
law of, for marking gold and silver manufactures, 19.
SYMBOLS of ownership. (See MARKs; TRADE-MARK.)
T.
TECHNICAL MARK, (see TRADE-MARK.)
must be distinguished from its analogues, 80 et seq., 130–133.
TERMS EXPLAINED. (See MEANING of PHRASEs AND TERMs.)
“THOMBSONIAN MEDICINE’’ case, 459.
TICKETS OR LABELS to be sold are merchandise, not marks, 141, 142.
TIMBER—MARKS, 16, note.
TRADE—MARK, optional in this and some European countries, 18.
old as commerce itself, 26.
must identify and distinguish article to which affixed, 29.
foundation of title to, 45–47, 384.
registration does not give title to, 48–51, 340, 376.
time required for perfection of title, 52, 129.
who may acquire, 53–57.
may be acquired by assignment, 57.
not to be confounded with analogues, 83, 90, 93—100, 521 et seq.
of what it may consist, 87, 398.
must be well defined and certain, 89, 127.
word-symbol as, 89 a, 219.
on books, 116–118.
on printed publications (titles of), 547, 558.
a picture may be a, 258, 259.
may be valid although suggestive of quality, 135, 249-251.
line of demarcation difficult to draw, 136.
mere form of vendible commodity not a, 89b, 137.
style or peculiarity of package is not per sea, 137.
general type of objects cannot be a, 89 d, .254.
label, notice, or advertisement cannot be a, 133.
color cannot be a, 138, 269.
may be an essential element, 263–267, 603.
indication of quality not a, 156–160.
designation of trade or occupation cannot be a, 161.
necessary name of product cannot be a, 166–171, 220,
essential characteristics of, 143. *
fac-simile of signature may be a, 172.
pseudonym may be a, 213–215.
fancy name of man may be a, 216–218.
product may be a, 236-244.
family crest or arms may be essential element of a, 260.
monogram and cipher may be a, 262.
736 INDEX.
[REFERENCES ARE To seCTIONS.]
TRADE-MARK, - continued.
colored threads in woven goods may be a, 268,603.
one's own name merely cannot be a, 326.
fac-similes must be furnished for registration, 304.
title not defeated by accidental prior use of emblem, 383.
no power in Congress to grant a, 568.
right of user exclusive in its nature, 324.
blended with other rights, 418.
with unfair competition, 43, 44, 418, 473.
TRADE—NAME, as contradistinguished from trade-mark, 91.
is properly allied to good-will, 91.
may be of men, of places, of vehicles, 91.
TRANSFER OF A TRADE—MARK, (see AssignMENT.)
Commissioner of Patents to make regulations for, 361.
at common law, 361, 362.
as affected by law of domicile, 295. -
TREATIES, CONVENTIONS, etc., on trade-marks, 283, 286, 288.
list of nations with whom we have, 283, note.
definition of terms, 286–288.
TRICKS OF TRADE, not always guarded against, 448.
TURKEY, trade-mark law of, Appendix, p. 705.
Dſ.
UNFAIR COMPETITION IN BUSINESS, 43, 89 c.
principles of, discussed, 43, 44.
examples of, 137,223, 224, 392–396, 521.
by truthful signs of ex-employees, 582.
by untruthful suggestions on signs, 529, 531.
by usurping name of rival's commerce, 533.
shop-sign, 534.
º industrial product, 535.
UNITED STATES, trade-mark laws of, Appendix, p. 705.
UNTRUTH, (see CLEAN HANDs.)
in use of word “patented,” or its equivalent, 72.
as to place of manufacture, 483, 487.
name of manufacturer, 489.
fictitious name of manufacturer may be innocent, 494 et seq.
harmless, is not deemed fraudulent, 71.
USE OF PROPRIETARY MARKS, (see TRADE-MARK.)
by ancients, 1–13.
lawful business essential to. (See ABSTRACT SYMBOL.)
V.
“WALLEE D'AURE,” a mere geographical name, 187.
“WEGETABLE SICILIAN HAIR RENEWER'' case, 425.
INDEX. 737
[REFERENCES ARE to sections.]
WENDIBLE COMMODITY, only object of trade-mark, 54, 66–70, 129,
130, 300 et seq., 680.
VENETIAN PRINTERS’ MARKS, 14, 15.
“WIBRATORS,” a class of agricultural machines, 601.
WINTNERS’ SYMBOL, a green bush, 6.
W.
WATER—MARK on paper detects forgery, 7.
WECHELENSES’ marks on publications, 15.
WEDGWOOD’S reliance on trade-marks, 29.
family name, as mark, for centuries, 216.
“WHAT CHEER HOUSE * case, 92.
“WILLOW SPRING ICE * merely descriptive, 247.
“WINSLOW's (MRs.) SOOTHING SYRUP’’ case, 201, 426.
“WISTAR’S BALSAM OF WILD CHERRY” case, 491.
“WORD–SYMBOL ** as trade-mark, 89 a.
term defined, 89 a, note.
examples of, 33, 219.
WORDS AS TRADE-MARKS,
must be specific and distinctive in meaning, 29.
indicating character, kind, or quality, not appropriable, 29.
WOSTENHOLM & SON'S “I X L’’ case, 69, 70,450.
WRAPPERS as quasi trade-marks, 537 et seq.
WRONG—DOER cannot qualify his own wrong, 518.
restraint of. (See REMEDIES.)
WRONGFUL INTENT, inquiry into, in fixing damages, 508.
X.
“X” formed of two fishes crossed, as mark for fish, 250.
“X,” “XX,” “XXX,” mere indications of degree, not trade-marks,
162, 163, 597.
“xXx,” registered for bottled lager beer, 597, note.
Y.
“YANKEE SOAP’’ case, 119–125.
“YELLOW MOSS CHEWING-TOBACCO,” not descriptive, 173.
“YOUNG AMERICAN,” a valid trade-mark for ink, 218.
Z.
“ZERO,” a valid mark for water-coolers, 273.
47
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