696
FEDERAL REPORTER.
United States," for the recovery of damages as well as profits in a suit in equity. The reason for this distinction between subjects so nearly identical in their nature and origin is not apparent, but the statute has made it and the courts must observe it. The demurrer is sustained. NOTE. A. defendant cannot be compelled to make discoveries in answer to a bill which seeks to enforce penalties and forfeitures against him by means of such discoveries. Atwill v. Ferrett, 2 Blatchf. 39. The defendant cannot be compelled, under a subpoona duaes tecum, to produce his books and papers. and plates tope used in evidence for plaintiff. .J,oh'48on v. Donaldson, 18 Blatchf. 287: S. C. 3 FEIl. REP. 22. A motion to compel such testimony will not be granted in aid of an action for trespass for the violation of a copyright. AtwiU v. Ferrett, 2 Blatchf.39. The relief will only be to the extent of the part infringed. Story v. Holcombe, 4 McLean, 006. Thevarioris provisions of the law should be liberally construed to give effect to what may be considered the inherent right of the author to his worlc Myers v. Oallaghan; 5 FED. REP. 726. But equity will not;. at of the author, where be has made an assignment forever, restrain the assignee from selling after a renewal taken out by the author.. Paige v. Banks, 7 Blatchf. 152. Tbe right to a chart is violated only when another copies from the chart of him who has secured the copyright. Blunt v. Patten, 2 Paine, 397. Compare (Jray v. Russell, 1 Story, 11: Emerson v. Dames, 3 Story, 768. The pUblication of a map made from materials collected.while in the service of the government as draughtsman belongs to the government. Commonwealth v. Desilvan, 3 Phila.31. See Heine v. Appleton, 4 Blatchf. 125. Compiling maps ofa city of a particular design from public records into an atlas, and without taking out a copyright making several copies and selling them, and placing one copy in the handS of the city for public use, is a dedication to public use, (Rees v. Peltzer, 75 475:) but depositing one chart in the navy department does not make it public property. Blunt v. Patten, 2 Paine, 307. A single sheet containing diagrams is a subject of copyright; the form of the publication is immaterial, (Drury v. Ewing, 1 Bond, 540:) but an advertising card is not, See Eh1'et V. Pierce, 10 FEIl. REP. 553.-[ED.
.
BURTON
v.
STRATTON
and others. July 3,1882.)
(Oircuit Court, E. D. Michigan, 1. TRAnE-MARxs-MERE WORIIS.
Mere words may become valid trade-marks, when they are merely arbitrary, or are indicative of origin or ownership in the original proprietor. 2. BAME-WHEN PROTECTED. .
Words which have acquired a significance in the marks as expressive only of the name or quality of an article cannot be appropriated as a trade-mark. But
BURTON V. STRATTON.
697
if the primary object of the trade. mark be. to indicate origin or ownership, the mere fact that the article has obtained 8uch a wide sale that.the mark has also become indicative of quality, is not of itself sufficient to debar the owners of protection, or make it the common property of the trade. But if the name be suffered to come into general use withqut objection from the proprietor, it may become merely generic, or indicative of quality. 3. SAME-AN ApPURTENANCE-SALE OR ASSIGNMENT OF.
A trade-mark, indicative of origin or ownership in the proprletor of a certam business, may be sold or assigned by him as an appurtenance of such business, and the assignee may become entitled to the exclusive use of such mark, even as against such proprietor himself. Held, that the right to use the words" Twin Brothers," in connection with portraits of the twins, had been Iawfullyassigned to the plaintiif, and that he was entitled to an injunction against One of the twins who had set up a separate establishment, and was malting use of this trade-mark in manufacturing yeast.
In Equity. This was a. bill in equity to enjoin the use of So trade-mark. The bill set forth that the plaintiff had, for a long time, made a certain yeast, put up in wrappers and labels, specimens of which were attached to his bill; that since 1877 he had claimed the words, devices, ngures, and arrangements shown by said lahei as a trade-mark, especially employing the figures of two heads in an oval setting, and the words "Twin Brothers Improved Dry Hop Yeast," and "Twin Broth· ers" in connection with the yeast as a trade-mark; that the defend. ant Stratton and his brother Thomas J. Stratton were the two men represented by the two figures; that they originated the yeast, and were the original owners of the trade-mark; that defendant Jackson B. Stratton, before 1867, made and sold this yeast under the name of "Twin Brothers Improved Dry Hop Yeast" in the state of Ohio. and in 1867 complainant and said defendant Stratton formed a partnership and made and sold this yeast; that late in the year 1867 complainant bought out from said Stratton his interest in the partnership and trade-mark, paying therefor $4,000; but he oontinued to employ Stratton, under various agreements, until the year 1877, in the man· ufacture of this yeast; that in 1869 he purchased from Thomas J. Stratton the factory theretofore leased from him, and his interest in the trade-mark, and had since continued to use the same, with the wrappers and labels, and particularly the term "Twin Brothers Yeast," in connection with the bust figures shown . both separately from upon the wrappers; that at the time of his purchase from the defend. ant the yeast was not extensively know'n, and the demand therefc;r was not larRe, but that since said purchase the business has been greatly extended and the demand for the yeast is now large and can· stant; that defendant Stratton and others were making a spurious
698
FEDERAL; ll,EPORTER.
article and seIling the same as I'Twin Brothers Dry Hop Yeast;" and using wrappers' and labels like those of the plaintiff; that the spurious article is a fraud upon ,the public, who purchase it believing it to be the genuine Twin Brothers yeast made by the plaintiff. Prayer: That the defendants be enjoined from imitating the label, and from selling any yeast made by them, or any other person than the plaintiff, ItS and for the "Twin' Brothers" yeltst, and in using the name of Twin Brothers in any way, shape, or form in oonnection sale of yeast. ' with The defendants claimed an ahaol:t;J.te right to use the words "Twin Brothers Yeast,!'in so far as they oonstituted the, original trade-mark of Stratton Brothers, on the ground that Stratton never sold his interest in such trade-mark to complainant; that a court of equity will not pri>'tect pla.intiff in the use of his trade-mark, a.lthoughhe bought it of Stratton, beca.use in using it he represents totbe public that was the;'Originator, and that it indioates an origin in himself, when such is not the truth; that Twin Brothers is a name of a compound made under S,tratton's discovery ; and that the defendants or a.ny other person malting the genuine article may sell it under its proper name. They deny 'the oharge that the yeast by them is a spurious article, and,l;laim that it is the genuine original compound discovered"by defen,c)ant Stratton, and substantially;the, same as madeby the complainant. O. F. Burton and Alfred Russell, for plaintiff. H. O. Wisnet', for defendant. , BROWN, D. J. We think there is a decided preponderance of testi· mony in favor of the plaintiff's theory that at the time his partnership with the defendant Stratton'was dissolved he purchased not only his interest in the business, but also his moiety of the trade-mark. Indeed, the defendant seems to have had very little else of any value to sell. had put but a thousand dollars into the venture. Defendant had contributed nothing but his attention and skill. The partnership lasted but eight or nine months, and the business was very limited. They would get a little meal and make a small quantity of yeast; then they would shut up the factory and go out and sell it, get a little more meal, and start again. After conducting the business in this way about six months the demands of their credo itors became so urgent that plaintiff was obliged to advance $300 more to lJontinue it. Soon after, an investigation of the books showed their affairs to be in such a precarious condition that defendant Stratton wanted to go out of the business, and the plaintiff bought
BURTON V.
690
his interest and paid him $4,000. At .the time of'the saJe' there appears to have been no stock on hand"and the factory had been shut down for some six weeks. Under these circumstances it seems to us quite improbable that they could have made ten or twelve thousand dollars in nine months, or that there could have been debts due the firm to the amount of $8,000. Add to this the·testimony of several witnesses who swear that defendant stated 'to them repeatedly, and in· a regretful,manner, that he had sold his interest in the trade. mark, and had nothing else to sell to the plaintiff, and his subsequent conduct after he left plaintiff's employ in commencing to sell under the name of the "Standard Yeast," we can entertain but little doubt oHhe fact, notwithstanding the agreement was not in writing. The principal question involved in this case is'whether the words "Twin Brothers" are a trade-mark of such a !3haracter as entitles the plaintiff to be protected in his monopoly of them. The point is certainly not free from difficulty. 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. The following propositions, however, may be considered as settled: 1. That a court of equ{ty will enjoin unlawful competition in trade by means of a simulated label, or of the appropriation of a name i as where the defendant appropriates the name of a hotel conducted by the plaintiff, or imitates his label upon preparations. Howard v. Henriques, 3 Sandf. 725, (Irving House Case;) Woodward v. Lazar, 21 Cal. 448, (What-Cheer House Case;) Howe v. Searing, 10 Abb. Pro 264, (Howe's Bakery Case;) McGardel v. Peck, 28 How. Pro 120, (MeCardel House Case;) Williams V. Johnson, 2 Bosw.1, (Genuine Yankee Soap Case;) Day v. Croft, (2 Beav. 488, (Day et Martin Blacking Case;) Davis V. Kendall, 2 R. 1. 566, (Pain-Killer Case;)" Meriden Britannia CO. V. Parker, 39 Conn. 450. The ground of interference in this class of cases is fraud; that is, the attempt to palm off the goods of the defendant as the goods of the plaintiff. 2. A court of equity will not protect a person in the exclusive use of a word which expresses a falsehood; as, if the article bears the word "patented" when in fact it is not patented, or exhibits an untruth as to the place of manufacture or composition of the article. Leather Cloth CO. V. American Leather Cloth Co. 11 H. of L. 531; Brown, Trade-Marks, § 72; Flavel v. Harrison, 10 Hare, 467; Pa.rtridge V. Menck, 2 Barb. Ch. 101; Pidding v. How, 8 Simons, 471, (Howqua Mixture Case;) Palmer V. Harris, 60 Pa. 156, wherein the trade-mark indicated that certain cigars were made in Havana, when
700
FEPERAL REPORTER.
in fact they were made in New York; Fetridge v. Wells, 13 How. Pl'. 885, (Balm of Thous.and Flowers Oase;) Phalon v. Wright, 5 Phila. 464, (Night-Blooming Oer-eus Oase;) Oocks v. Ohandler, L. R. 11 Eq. 446, (Reading Sauce Oase;) Oonwell v. Reed, 128 Mass. 477, (East Indian Remedy Oase.) 3. That no one can extend his monopoly of a patented trade-mark. By the expiration of the patent the public acquires the right not only to make and sell the article, but to make and sell it. under the name used by the patentee. Singer Manufg 00. v. Stimage, 6 FED. REP. 279; In re Richardson, 8 O. G. 120; Tucker Manuj'g 00. v. Boyington, 9.0. G. 455. 4. A person cannot, by means of a trade-mark, monopolize the name of the place where the article is manufactured. Oanal 00. v. Clark. 13 Wall. 311, (Lackawartna Coal Case;) Brooklyn White Lead 00. v. Masury, 25 Barb; 416; Nor the ordinary numerals or letters. Manufg 00. v. Trainer, 101 U. S. 51; A. O. A. Case; Am. Manuj"g 00. v. Spear, 2 Sandf. 599; Avery v. Meikle, 23 Alb. Law. J. 443. This proposition. however, has been disputed. See Gillott v. Estabrook, 48 N. Y., (The 303 Case;) Boardman v. Meriden Britannia 00. 85 402. Nor can a person monopolize a name expressive of the character or composition of an article. Oaswell v. Davis! 35 N. Y. 281, (Ferro-Phosphorated Elixir oj Oalisaya Bark Case.) 5. So where the words used are expressive only of the na.me or quality of the article, and have acquired that significance in the marl{et. Am. Manuj'g 00. v. Spea'r, 2 Sandi. 599; Mamif'g 00. v. 101 U. S. 51; Stokes v. Landgrajf,l.'l,Batb. 608; Oorwin v. Daly, 7 Bosw.. 222, (Olub House Gin Oase;) Ferguson v. Davol Mills, 2 Brewster, 314; Ohoynski v. Oohen. 39 Cal. 501, (Antiquarian Book Store Oase;) Phalon v. Wright, 5 Phila. 464; Singleton v. Bolton, 3 Doug. 293, (Oase of Dr. Johnson's Yellow Ointment;) Thomson v. Winchester, 19 Pick. 214, (Thomsonian 2\fedicine Case;) Benninger v. Wattles, 24 How. Pro 204, (Old London Dock Gin Oase ;) Raggett V. Friedlater, L. R. 17 Eq. 29, (The Nourishing Stout Oase.) In order that mere words may be upheld as a trade-mark they must be merely arbitrary, or they must indicate the origin or ownership of the article or fabric to. which they are affixed. Am. Manufg 00. V. Spear. 2 Sandt 597; Oanal 00. V. Olark, 13 Wall. 322; kinburg V. Lucy, 35 Cal. 52; Brown, Trade-Marks, § 216; Durham Tobacco Oase, 3 Hughes, 157; Wotherspoon v. Ourrie, lJ. R. 5 E. & 1. App. 508, (The Glenfield Starch Oase;) Ford v. Fuster, L. R. 7 Ch. App. 611, (Eureka Shirt Oase ,') Hier v. Abrahams, 82 N. Y. 519,
(Pride Tobacco Case;) McAndrew v. Bassett, 10 Jur. (N. S.) 550; S. O. 12 Week·. R. 777, (Anatoleo Case;) Lee v. Haley, L. R. 5 Ch. 155, (Grimes Coal Co. Case;) Seixo v, Provezende, L. R. 1 Oh. 192, (Seixo Wine Case;) Braham v. Bustard, 1 Hem. & M. 447, (Excelsior Soap Cale.) There are cases which appear to differ from those above cited, but we think most if not all of them, can be distinguished from them. The defendant takes the ground in this case that the words "Twin Brothers Yeast" is a generic name, and indicates, not thl'l origin or ownership of .the article, but its specific quality, and that it has acquired in the market a reputation under that name. This defence appears to be somewhat of an after-thought, and it is doubtful whether it is properly before the court, since no allusion is made to it in the answer, and it was not until the case had been at issue. a year and the proofs taken that defendant made an affidavit to the effect that "Twin Brothers Yeast" was the generic name of a specific article of merchandise, and that he was the only person who ever was or ever could be able to manufacture it. The defence, too, seems to be some· what inconsistent with the previous testimony. Upon being called as.a witness Stratton swore that he made a discovery of a yeast compound, and that he did not get it patf:lnted because he considered it of more value to him as a secret than as a patent. He had imparted the the secret to the employes of the plaintiff. He had also imparted it to the Judds, who manufactured "Judd Bros." yeast according to his formula; that he had also imparted the secret to one Hopper, who made the same yeast under the name of the "National Yeast;" that while a member of the firm of A. G. Smith & Co. he .manufactured and sold the same yeast under the name o.f the "Standard" yeast; and that he manufactured the same yeast for a firm in Toledo, who sell it under the name of the "Lion Brand." The difficulty is in distinguishing cases where the property has acquired a generic name, as indicating the qnalityof the article rather than its origin or ownership. One would say at once that Congress Water was an example of a generic name, since it is universally known by that name in the market; and yet the conrt of appeals in New York sustained it as a trade-mark, apparently upon the ground that complainants were the exclusive owners of the spring known as the Congress Spring, and that the right to use the name was passed as appurtenant to the property. The only satisfactory rule we have been able to gather from the authorities is that in each case it is a matter for the court to determine, not alone from the mark itself.
702
but from the testimony, whether the words have become so well known as to stand in the public eye as denoting the character and quality of the article and not its origin or ownership. Thus, if it should appear that the article had been manufactured and sold by a number of dealers under a particular name, this would be decisive that the plaintiff had no right to the exclusive use of that name. Most if not all of these generic names were at first of the origin, but finally, by constant use, ceased to subserve that purpose and have become indicative of. the quality. An example of this is "Fowler's Solution of Arsenic," which clearly indicates origin, but the article is nevertheless put up by druggists all over the country, and this name has become public property. We think that most if not all the cases upon this subject, when carefully examined will be found to have turned upon the extent to which the name is used, rather than upon the name itself; Thus, in the A. G. A. Case, 101 U. S. 51, it was said by the court that it was cleM', from the history of the adoption of the letters as narrated by the complainant and the device itself, that they were only intended to represent the highest quality of ticking manufactured by the plaintiff, and not its origin. It appeared that other letters were used to indicate inferior grades of the same article. In Stokes v. Landgraff, 17 Barb. 608, it appeared it was a practice of manufacturers of glass to designate the several qualities by names. similar to those used by the parties to the action, and not by words or figures, in terms expressing the qualities. In Corwin v. Daly, '7 Bosw. 222, it appeared that the words "Club House" had been applied to articles of merchandise, including gin of a special quality, for a number of years. See, also, Ferguson v. Davol Mills, 2 Brewster, 314; Thomson v. 19 Pick. 214; Wollfe v. Goulard, 18 How. Pro 64, (Scheidam Schnapps Case.) But if the primary object of the trade-mark be to indicate the origin or ownership, the mere fact that the article has obtained such a wide sale that the mark has also become indicative of quality is not of itself sufficient to debar the owner of protection or make it the common property of the trade. To hold otherwise would be to deprive the owner of the use of his trade-mark just at the time when it had become most valuable to him and stood most in need of protection. But if the same be suffered to come into general use without objection from the original proprietor, it becomes merely generic, or indicative of quality. Applying these principles to the case under consideration, it is pertinent to observe that no such defence is set up in either of the
V. STRA<J:TON.
answers to the original bill, which was filed in December, 1880. In the answeJ: of Orange Judd it is expressly averred that he is manuhe manufacturing Judd Brothers yeast; that for a number of factured yeast for the complainant of precisely the same kind as he is now manufacturing, and which said complainant sold as Twin Brothers yeast. He admits thatb,eis selling to said JacksonB. Stratton and Asa Judd the yeast m.anufactured by this defendant, which, as before stated, is precisely the same kind of yeast he before manufactured for the plaintiff. He further avers that what Stratton and Asa Judd (his brother) do with said yeast this, defendant does not know froIQ.hearsay, but he denies that he.is.directly or indireQtly using the "Twi:n: Brothers" trade-mark, or any mark except that owned by himself, to-wit, the trade.mark of Judd Brothers; and further,that if. Stratton and Asa Judqare using complainant's tradeown responsibility and without any agency or mark, it is upon authority from him. He further, :in paragraph 6, says that he is now \ p.nd has been selling to large quantities of the .same kind of yeast which he been s,(llling said defendants Stratton and Asa Judd; that aU said yeast sold by him is sold under the name of "Judd Brothers Yeast." The testimony also shows, as h(lretofore stated, yeast and that the saIQ.e .yeast was sold under the name of of the Lion yeast. The first intimation we have,9f the claim now set up is contained in the affidavit of Jackson B. Stratton',filed in December, 1881. Ris original defence was that he did not sell his interest in the trademark. It is true that in several of the contracts entered into between the plaintiff and defendant Stratto11: the yeast is spoken of as the Twin Brothers yeast, and sometimes of the "kind and quality" known as Twin Brothers yeast ; and so it,was undoubtedly known, as between the parties themselves, as representing the yeast of the compound of which Stratton possessed the secret; but this is no answer to the fact that it was manufactured and held out to the public under different names, such as were most convenient for Stratton. Upon the whole, it does not seem to us that the words "Twin Brothers," under' tho testimony, can be considered as indicating to the public the quality of the yeast, though it certainly does indicate origin and ownership in the persons whose likenesses appear on the trade·mark. The 'question whether this trade.mark was such a one as could be the subject of assignment to the plaintiff, and lawfully used by him, is not free from difficulty. He was not one of .the Twin Brothers, nor are either of the heads in the oval figure representations of himself or of any
704
one now connected with him in business. But the cases are numer· ous in which it has been held that a party may lawfully assign and sell not only a trade-mark indicative of origin in himself, but even the right to use his own name in connection with a particular business. Several of these are cited in the recent opinion of Mr. Justice Matthews in the case of Pepper v. Labrot, 8 FED. REP. 29, in which the right to use the words "Old Oscar Pepper" were held to pass to an assignee in bankruptcy of the proprietor of a distillery and prem· ises,even as against such former proprietor himself, who had set up So separate establishment in another county. The comments of Justice Field in this connection in Kidd v. Johnson, 100 U. S.617, are decisive of the right of a party to sell a trade-mark used in connection with a certain business, though it be indicative of origin in himself. In the case under consideration it seems to me clear that the Strate tons could lawfully transfer to the complainant, in oonnection with , their sale to him of their interest in the business, the exclusive right to use their tra.de-mark. Whether such trade-mark could be assigned separate from the business to which it was appurtenant, or whether it would pass by a sale of the business alone, we are not called upon to decide. Complainant paid a valuable consideration for this trade. mark, and we think he should be protected by injunction in his right to use it. See Shaw ;,tooking Co. v. Mack, post,707, and note, 717.
NOTE.
TRADE-MARK. A trade-mark may consist of a wotd, expression, devIce, or mark adopted as such, but not words belonging to the general public, which describe truly a known product.(a) A compound word coined by a person is entitled to protection, as .. electro-silicon." (b) Property may be acquired in the use of the translation of 8 foreign word,(c) as "conserves alimentaires," with the coat of arms of the city of Paris j(d) or the word" Bismarck," used to designate a particular style of goods;(e) or II Bethesda," adopted to indicate origin or ownership j(f) or the word" Eureka j"(g) but words or phrases in common use(h) cannot be appropriated as a trade mark, as II desiccated codfish ;"(i) as "snow-flake," applied to bread and crackers j(j) "straight cut," "curly cut," (a) Helmbold 1'. Helmbold Manuf'g Co. 63 How. Pro 463. (b) Electro.Silicon Co. v. Trask, 59 How. Pr. 189; Same v. Levy, Jd. 469; or" ferro-phosphor_ stad," CasweH v. Davis, 35 How. Pr. 76. (c) Rillett v. Carller, 61 Barb. 435. (d) Godillot v. Hazard, 44 N. Y. Super. 427. (.) Messerole v. Tynberg, 4 Abb. Pro (N. S.) 410. (I) Dunbar v. Glenn, 42 Wis. 118. (K) Allegheny Fertll. Co. '1'. Woodside, 1 HngheR, 115. (II) Town v. Stetson, 3 Daly, 63; Choynskl 1'. Cohens,39 Cal. 501; Caswell v. Davis, 6S N. Y. 223; Burke v. Cassin, 45 Cal. 467; Marshall 1'. Pinkham, 52 Wi9. 572. (i) Town v. Stetson, 3 Daly, 53; S. C. 6 Abb. Pro (N. S.) 218. (i) Larabee v. Lewis, 25 Alb. L. J. 203.
705
"short cut," as applied to cigarettes j(k) or "cherry pectoral ;"(l) or "iron clad" applied to boots; or .. gold medal"(1n) or "C!ub House," applied to gin to indicate quality.(n) So words commonly used in any language cannot be specially appropriated, as "schnapps," used to designate gin.(o) The appropriation and use for many years of the word ., royal" as a trade-mark is entitled to protection ;(p) so of .. Old London Dock Gin," in connection with a certain style of bottle and label ;(q) so of "'l'he Heroine" stamped on the glass j(r) so of " Magnetic Balm" upon a manufactured medicine ;(8) and so of "Keystone Line," acquired by many years' possession.(t) The exclusive right to the use of the word" Durham" recognized.(u) The use of a word tending to deceivt' the public cannot be toleratedj(v) and equity will not protect a person in the use of a false or deceptive trade-mark;(w) nor where the party is attempting to deceive the public.(x) A fraudulent and deceptive trade-mark is not to be protected by injunction j yet that it bears a fictitious name does not affect the owner's right where it is not used with a fraudulent intent.(y) Names and devices adapted to point out the true source and origin of a manufactured article may be adopted as a trade-mark(z) if it is used to designate origin or ownership, but never when used to designate the article itself,(a) unless it may be a product of nature, such as mineral water obtained from a spring, as "congress water" and "congress spring water."(b) The name of a place where a particular business is carried on will not be protected from invasion;(c) so "Mammoth Wardrobe" as the designation of a place will not be protected.(d) The name of an inventor, discoverer, or manufacturer may be employed as part of a trade-mark, as "Dr. J. M. Lindsey's Improved Blood Searcher,"(e) ., Dr. J. Blackman's Genuine Healing Balsam,"(f) the "Roger William Long Cloth."(.q) A person may use his own name for a trade-mark unless it leads to deceiving thepublic;(h) but to entitle him to protection his right to its use must be exclusive, and not a name which others may employ with as much truth as he who uses it.(i) The mere name of a person does not form a proper subject for a trade-mark, (1<) Ginter v. Kinney Tobacco Co. 12 Fed. Rep pO,f.
(I) Ayer v. Rnshton. 7 Daly, 9. (m) Hecht v. Porter, 6 Pac. C. L. J. &69. (n) Taylor v. Gillies, &9 N. Y. 331. (0) Wolfe v. Goulard, 18 How. Pr.64. (P) Royal B. P. Co. v. Sherrlll, 59 How. Pr.t7. (q) Blninger v. Wattles, 28 How. Pro 206. (r) ROWley V. Houghtou, 2 Brew.t. 303. (.) Smith v. Sixbury, 25 Hnu, 232. See Connell
v. Reed, 128 Mass. 477. (f) Wiusor v. Clyde, 9 Phila. 513. (u) Blackwell V. Dibrell, 3 Hughes, 151. (to) Ginter v. Kinney Tobacco Co. 12 ,O,f.
Rep.
(w) Hennessy v. Wheeler, 51 How. Pr.457; Sea. bury Y. Grosvenor, 53 How. Pr.192; Helmboldv. Helmbold Manuf'g Co. Id. 453; Laird v. Wilder, II Bnsh, 13l. (,..) Palmer v. Harris, 60 Pa. 8t. 156. See Dixoll Crucible CO. Y. Guggenhelm,2 Brewst. 321.
(11) Dale v. Smithson, 12 Abb. Pro 237; Stewart v. Smithson, 1 Hilt. 119. (s) Filley v. Fassett. 44 Mo. 168. See Ferguson v. Dayol Mill., 2 Brewst. 314; Dixon Crucible Co. v. Guggenheim, (0;) Fetridge v. Wells, 4 Abb. Pr. 114; nlarshall v. Pinkham, 52 Wis. 5U. (6) Congress, etc., Spring Co. v. High rock, etc., Sp"ng Co. 45 N. 'li. 291. (c) Glen, etc., Mannf'g Co. v. Hall. 61 N. Y. 226. See Newman v. Alvord, 49 Barb. &881 Pep_ per v. Labrot, 8 Fed. Rep. 29. (4) Gray v. Koch, 21\1ich. N. P. 119. (e) Fulton V. Sellers·.4 Hrewst.42. (f) Filkins v. Blackman, 13 Blatchf. 440. (8) Barrows v. Knight, 6 R. I. 434. (h) England V. N. Y. Pnblishlng Co. 8 Daly, 375. (t) Canal Co. v. Clark, 13 Wall. 311; Meneeley V.l\Ieneeley, 62 N. Y. 427.
v.12,no.8-45
706
FEDERAL REPORTER
although it appears that such name, by association with a certain lineof goods, has come to be applied as a name or title to such goods.(j) A manufacturer may label his goods with his own name or that of his mill, if no fraudulent purpose is intended.(k) So a corporation name may be protected,(l) and a trade name of a firm will be protected( m) and may be assigned to a successor, who has the Same right of protection(n) and the right to itsexciusive use.(o) The proprietary right to the name of a newspaper will be protected, (p) as "The American Grocer ,'''(q) but the mere assimulation of the name, unless clearly calculated to deceive, woul!! not be a violation.(r) Geographical names are not generally capable of specific appropriation,(s) as "Lackawanna Coal," "Sel'anton Coal," uPittsonCoal,"(t) "Woreestershire Sance!'(u) Soof the name of the town or cityj(v) but where the name of the village has been used by a manufactory for a number of years as a trade-mark it will be protected as against new-comers.(w) Although there is no property in a trade-mark as a mere abstract right, a property therein will pass by assignment or operation of law.(x) Where a trade-mark is used to designate the place where and the person by whom the goods are made, the right passes to the purchaser on a transfer of the business j but the mere sale of a trade-mark, apart from the article to which it is affixed, confers lio right of ownership.(y) Where a firm made an assignment for the benefit of creditors of "all property and effects of every nature and description," the good-will of the business and the right to the use of the firm name and the trade-marks passed to the purchaser from the assignees.(z) A trade name of a firm is property, which may be assigned to a successor, who thereby obtains the same right to protection in its use as the original firmj(a) but whether a trade-mark will pass under a general assignment, qurere.(b) A sale of the spring carries to the purchaser the right to the use of tht1. trademark for the water of such spring.(c) The transfer of wood cuts of a trademark for a specific purpose gives no right to the trade-mark after suoh pur· pose is accomplished j(d) but an absolute assignment of a trade-mark gives the the right to exclusive use.(e)-[ED. (J) Ex parte Fairchild, 21 O. G. 789. See Mar· ·hall v. Pinkham, 62 Wis. 672. (k) Amo.keag Manuf'g Co. v. Garner, 64 How. Pr.297; GiIlott v.Esterbrook,48 N. Y.374; Shaver .... Shaver, 64 Iowa, 208. (I) Gillott v. Esterbrook, 48 N. Y. 374. (m) Carmichael v. Latimer, 11 R. I. 395. (n) Howard v. Park,21 Hun, 618; Congress, etc., Spring Co. v. High Rock, etc., Co. 10 Abb. Pro (N. S.) 348. (0) BlackweU v DibreU, 3 Hoghes, 151. (P) MatseU v. Flanagan, 2 Abb. Pro (N. S.) 4691 Stephens v. De Conto, 4 Abb. Pro (N. S.) 47; BeU v. Locke, 6 Paige, 76. (q) Am. Grocer v,Grocer Pob. Co. 26 Hun, 398. (r) Stephens v. De Conto, 7 Robt. 343; 4 Abb. Pro (N. S.) 47; Marshall T. Pinkham, lIIJ WIl. 672. (.) Lea v. WoIr. 46 How. Pro 157; Canal Co ..... Clark, 13 WaU. 311. (t) Canal Co. v. Clark, 13 WaU. 311. (u) Lea v. Wolf, 13 Abb. Pro (N. S.) 391. (,,) Glendon Iron Co. v. Uhler, 76 Pa. St. 467· (to) Newman v. Alvord, 61 N. Y. 139. (II) Dixon Craclble CO. V. Guggenheim, 2 Brewst.321. (y) Wltthans V. Mattfeldt, 44 Md. 303. ("') Hegeman v. Hegeman, 8 Daly, 1. (a) Howard V. Park, 21 Hun, 618. (b) Ml1llken v. Williams. 26 Hon. 24. (c) Congress, etc., Spring Co. v. High Rock, etc., Co. 10 Abb. Pro (N. S.) 348. (d) Lockwood V. Bostwick, 2 Daly, 621. (.) BlackweU v. DibreU, 3 Hughes, 161.
BHA W s'rOCKING co.
MA.CK.
707
SHAW STOCKING
CO.
tI.
MA.OK and another.
(Oircuit Oourt, J.tr. D. New York. June, 1882.) 1. TRADE-MARK DEFINED-OBJECT AND PuRPOSES OJ!'.
A trade-mark is a mark by which the wares of the owner are known in trade; its object being-Fir8t, to protect the party using it from competition with inferior manufactures; and, 8econa, to protect the pUblic from imposition. 2. BUIE-OF WlIAT HAY CONSIST. The trade-mark -may consist of a toKen, Jetter, sign, or seal. :N amee, ciphers, monograms, pictures, and figures may be used, and numerals united. 3. SAlIE-NmmRALB-INFRINGEMENT. Where numerals constituted one of the most prominent features in plaintiff's design, and the same numerals were used in a similar design by defendants, such use, when adopted to designate the same kind of articles, is calculated to aid in deceiving the public, and is an infringement of plaintiff's trade-mark. 4. SAME-SIMILITUDE. It is enough that such similitude exists as would lead an ordinary purchaser to suppose that he was buying the genuine article and not the imitation; and it is not necessary that the resemblance should be such as would mislead an expert, or such as would not be easily detected if the oril!'inal and spurious were seen together. Ii. Bum-RIGHT TO USE OF TRADE-}URlC. The right to a trade-mark is a right depending on use; and where complainant had used certain numerals long enough to convey to anyone versed in the
nomenclature of the trade a precise understanding of what goods were intended, when such numerals were used alone, disconnected from any extrinsic information, its right to their exclusive use as a trade-mark must be upheld. 6. SAME-PROTECTION BY INJUNCTION.
An injunction will be granted to restrain the defendants from using the numerals appropriated by plaintiff, to designate the same kind of goods sold by the defendants and not made by the plaintiff, and from using on their labels a word printed in script, with a flourish underneath, in imitation of a word used by the plaintiff on its labels.
Miller Fincke, for complainant. John L. 8. Roberts, of counsel. Tlwmas Wilkinson, for defendants. E. Countryman, of counsel. COXE, D. J. The Shaw Stocking Company is alleged to be a corporation engaged in the manufacture and sale of hosiery at Lowell, Massachusetts. Its goods differ in some important respects from the productions of other manufacturers, and have by virtue of their inherent worth acquired a wide-spread reputation and popularity. The complainant, with perhaps a pardonable assurance, insists that these goods possess many excellent and novel qualities and characteristics hitherto unknown or unapplied. It is not disputed, however, that in some respects the assertion is well founded. The defendants ap..