524
FEDERAL REPORTER.
the diet; and the bill filed against him prayed that the aefendants deliver to the plaintiff, to be destroyed, the plates and the documents printed. the.refrom. The court decreed according to the prayer of the bill. 'In this country the common injunction against making, vending, or using tIle infringing article has generally been found ample to protect the owner of a patent-right; and it is not desirable to put in motion any of the e4 traordinary machinery of the court to attain ends which its simple and familiar process is fully adequate to accomplish. If it appeared that the defendant had mala fide aud clandestinely set about to appropriate theinvention patented, or if it appeared probable from his conduct in the past that he would attempt to use the infringing art:cle in the future,. or even if there were any peculiar circumstances to inclicate that the infringing telephonic instruments could be readily used Surreptitiously to the injury of the complainant, the exceptional decree sought might be granted. As nothing of this kind appears, the complainant mUl/t be content with the remedy given to ordinary suitors. The application savors of oppression.
RUMFORD CHEMICAL WORKS V. MUTH
et aZ.
(Oircuit Oourt, D. Maryland. July 9,1888.) 1. TRADE-MARKS-WHAT WILL BE PRoTEcTED-"AcID PHOSPHATE.-
Upon a bill for injunction to restrain the use of a trade-mark claimed by complainant in the name, "Acid Phosphate," applied to a medicinal preparation, held, tl;lat the proofs showed that the name was not meaningless and arbitrary. but with reasonable exactness described the characteristics and qualities of the preparation for the purpose for which it was intended to be used, and that, being thus descriptive, it could not be exclusively appropriated by complainant as its trade-mark. 1
It appearing that tho defendants did not make use of any deceptive imitation of complainant's labels and packages, but properly distinguished their preparation from complainant's, and sold it as their own, the injunction was refused. (SlIllabul by the Court.)
2.
8AME..,...!NJUNCTION.
Cong1'eitsSp'ring Case, 45 N. Y. 300; Selchow v. Baker, 93 N. Y. 59; Manufaatu1'ing Co; v.Manufacturing 00.,32 Fed. Rep. 94; Benedictine Case, 36 . Alb. Law J. 364; .Lockman v. Reilly. 95 N. Y. 65; Smith v. Sixbury, 25 Hun, 232; Roberts v. Sheldon. 8 Bist.!. 398; Elect1"o-SiliconOo. v. Hazard, 29 Hun, 369; Brewing Co.· 8 Mo. App. 277 j Lee v. Haley, 21 Law T. (N. s.) 1 See Oahn y. Gottschalk. 2 N. Y. Supp, 13; Burton v. Stratton. 12 Fed. Rep. 696, and note; Schneider v. Williams, (N. J.) 14 Atl. Rep. 812.
In Equity. Bill for injunction to restrain the use of the trade-mark, "Acid Phosphate." Rowland Cox and Francis P. Stevens; for complainant, cited. Wotherspoon v. Currie, L. R.5 H. L. 508; Hie1" v. Abrahams, 82 N. Y. 519;
RUMFORD CHEMICAl. WORKS fl. MUTH.
525
546; Edleston v. Vick, IS Jur. 7; Kidd v. JOhnB01i, 100 U: S. 617; ElectroSilicon Co. v. Levy, 59 How. Pro 459; Sawyer v. Horn, 1 Fed. Rep. 24, arid cases cited; Avery V. Meikle, 81 Ky. 81, and cases cited; Moxie Nerve Food Case, 32 Fed. Rep. 205: Bides V. Leslie, 27 Fed. Rep. 22. Daniel &: Dallam, E. Hinkley, George H. Lathrop, and F'J'ede:rick H. Betts, for defendant, Canal CO. V. Clark, 13 Wall. 323, 327; Manufacturing CO. Y. Manufacturing Co., 32 Fed. Rpp.98; Battery Co. v. Electric Co., 23 Fed. Rep, 277; Burton V. Stmtton, 12 Fed. Rep. 696; "Ferro-Phosphorated Elixir of Calisaya Bark," Caswell v. .Davis, 58 N. Y. 223; "Paraffin Oil," Young V. Macrae, 9 JUl'. (N. S.) 322; "Leibig'sExtract of Meat," Meat CO. V. HanbU1'y, 17 Law T. (N. S.) 298; "Dessicated Codfish," Town v. Stetson, 3 Daly, 53; "Night Blooming Cereus," Phalonv. Wright, Arner. Trade,.Mark Cas. 307,308; Medicine CO. V. Wood, 108 U. S. 224,225,2 Sup. Ct. Rep. 436; Fetridge V. Wells, 13 How. Pro 385; Ginter V. Tobacco Co., 12 Fed. Hep; 782; Manufacturing v. 6 Fed. Rep. 279; Manufacturing Co. v. Lar.yen, 8 Biss. 151; Machine CO. V. Frame,21 Blatchf. 431; Battery CO. V. Electric Co., 23 Fed. Rep. 276. MORRIS, J. It appears from the testimony that in chemistry the product obtained by partly neutralizing phosphoric acid with a base is called an acid phosphate of that base, as acid phosphate of lime, acid phosphate of potassium, acid phosphate of magnesium or sodium or zinc or strychnine.· There are therefore very many acid phosphates, and the words "acid phosphate" alone suggests an indefinite and incomplete idea, unless, hy the context or use or a8jlociatiol1: there is suggested to the mind the base which must be present as a constituent of every phosphate. 'fhe complainant corporation, doing business in Providence, R. 1., about the year 1868, guided by thp. chemical knowledge and discoveries of Prof. Eben N. Horsford, and under his direction, began the manufacture for sale of a preparation to be as a medicine, condiment, or beverage, which was essentially an acid phosphate of lime, and to which it gave the name of "Horsford's Acid Phosphate," and by that name labeled, advertised, and sold it in large and increasing quantities. This preparation went into very general use; and as it was the first preparation ofthe kind thus popularized, and for a long time the only one known to the public; it came toibe usually called for, not as "Horsford's Acid Phosphale," but simply'as"Acid Phosphate." Parke, Davis & Co., manufacturing chemists of Detroit, Mich., began, in 1881, the manufacture and sale of a preparation of the same character after a formula used by Dr. William Peppler, of Philadelphia,very·simHar'to Horsford's, and which they called "Liquor Acidi Phosphorici," and which, by labels, circulars, and advertisements, they represented to be a scientific. substitute for "Horsford's Acid Phosphate." 1n1887; Parke, Davis & Co. changed the name and label of their preparation, and called and labeled it" Liquid Acid Phosphate," representing it to he the same. as their" Liquor Acidi Phosphorici," and a substitute for Horsford's Acid Phosphate, stating that it contained phosphoric acid in combinationwithcalcium, magnesium, iron, sodium, and potassium. In th<:lse circulars they say:
626
"FEDERAL nEFORTER.
II We have ' hitherto .'labeled this i preparatlon'Liquor Acidi Phosphorici,' adopting the name and following the formula of Dr. Wm. Peppler. of Philadelphia.The preparation has,' however, come to be so universally known as 'Acid Phosphate' that we have thought it best tt> adopt that name on our labels. "
There is .no question that the preparation had become so universally known by the na'rpe "Acid Phosphate" because it had been brought into public p9ticeby the complaiMnt's preparation, which was extensively used as an to digestion, ana ('.aIled for at soda-fountains as a tonic beverage by that name. The nominal defendants in this case are Messrs. Muth & Bro., of Baltimore, but it iE! the sale by them of the preparation made llnd advertised by,Parke, Daviq & Co., and labeled "Liquid Acid Phosphate," which is complained of, stnd it is they who are defending is no of 911Y misleading representation with regard to tnemanufacture or origin9t the goods ·soldby the defendant, and no ground for complaint of any defJeptive imitation of complainant's labels or Indeed, Parke, Davis & Co., in all respects except in the use of the name "Acid Phosphate," seek to give prominence to the fact that the article sold by defendants is made by them, and not by complainant, and that the formula is Romewhat different, and, as they claim,an improvement upon Prof. Hnrsford's. There is therefore entirely wanthlgthat .element of deception by imitative labels and false representations which moves the court t'J grunt restraining injunctions in many trade-mark cases. The sale qpestion for decision is whether or not the words "acid phosphate," as applied to complainant's preparation, are words of that class which the law will protect as a trade-mark. This narrow question of great importance to the cornplaiIltl,nt has been most thoroughly and ably presented by .oounsel, and it res(\Jves itself into a question of fact; for as to the prinoiples oflaw there is 110contost. The right of the complainants to protection in the trade-rnllrk daimed by them Bepends upon whether or not acid phosphate is '1,0 arbitrary name given by them to a preparation to which it had never before been applied,and not a descriptionof it; fof, if itis a reasonabl,Y sufficient description oUhe character, kind, and quality of the thing to which it has been applied, then it is a well-settled rule of law that, no one can make an exclusive appropriation ohuch auairie.. i, The p'mlse "acid phosphate" is common in chemistry, and constantly found in treatises and text-books. ltwas not invented by the complainlmtil' had been in use some 20 or 30 years before they made use of it. Any compound of any phosphoric acid with a. base may appropriately bfl :JaIled a phosphate; and. if there is presentso much icid that it agreaterqnnntity ofthe base, it is properly called an to distinguish it from a "basic phosphate," in which the basepreponderates,ora neutral phosphide, in which neither is of these terms being pertectly well known in chemistry. lids' Dot to be gainsai<:i that as a complete and exhaustive indication of fd.l' that the preparatic>n the phrase" acid phosphate" is inexact. It does not indi'J'lte that it is a solution; which it is,
.1'p!3re
WORKS
v.
MUTH.
while a proper acid phosphate is ltaolid it is dissolved. It not indicate the character of the acid, auli it does not indica\ewhat base or bases have beep used. But .this criticism is true of most words or phrases in common use. "Fresh. bread "is one ofthe commonest phrases. and yet it does not indicate with precision whether the bread is. made of wheat or rye, of bolted or unbolted flour, whether or not it contains salt, or with what character of yeast it is made. In fact, it means a somewhat different thing in .every community in which it is used,as travelers are apt to find out. The true test, it appears to me, must be not whether the words nre exha\1;Stively descriptive of the articledesignllted, but whether in themselveS, and as they are commonly used by those who understand their meaning, they arC!! reasonably indicative and descriptive of the thing intended. If they are thus reasonably descriptive, and not arbitrary, they cannot be appropriated from use, and become the exclusive .property of anyone. This rule is clearly explained and applied by Judge FOLGER, speaking for the court of appe$ ·of New York in the case of Oaswell v. Davia, 58 N. Y.223. He says: "Noril!Jthe question whether the name used asia trade-mark will convey an exact notion of how to compound an article, so that one reading it wUl be able.to a like article. If the necesllary effect 1& to inform the reader pr hearer of the general characteri!ltics and composition of the thing, it is a name which play ,be used with equal.truth ,by any one who has made and offers for sale a thing compounded of the same ingredients, and who desires to express to the public the same facts.· Nor does the coupling together, in a new combination, (]fwords which before that had -been used apart, and had entered _into the common scientific vocabulary; give a l'ightto the exclusive use of such combination, where it ts of origin, maker, use, and ownership alQne, but also of quality other, charactel'jstics." In the case then before the New York court of appeals, the plaintiffs, qaswell l ¥Ack & Co., had prepart::d amedicine to'which' they bad given ,the Calisaya Ba;rk." The plain.tiffs werelba first to invent and use .the comb4\ed word "ferro-phosphoratedI'I and gave it to the preparation to distinguish it as the preparation made by themselves, and also to announce that there was iron and 'phospnorus in it. This it waS decided they cOllldnot do to theexdu· sion of other ,persons; for although the combined word was their own invention, and did, as their trade-mark, indicate the origin and maker of the article, it did more, and, bywords which were of common signifi. cance, it indicated that iron and phosphorus were combined with the calisaya bark, and therefore it could not be protected as a. .trade-mark. This ·case only applies the recognized ruling in many other cases. It seems impossible to maintain that the words "acid phosphate n are not, in this sense, descriptive words, indicative of the composition and characteristics of Horsford's preparation. There is evidence what has heretofore been done by the complainant and by Horsford himself which tends strongly to support this conclusion. The complainant's trademark, as originally registered in the United States patent-office in the ,year 18.n, states that the complainant" has adl)pted for its use trade-
528 ,
marK Jor acid phosphate, (a chemical preparation used for various purposes;) T.he trade-mark consists essentially of the word-symbol' HorsJord,' which is used in conjunction with the name of the article to which it is applied, and in the form,namely, 'Horsford's Acid Phosphate,' as shown with the accompanying fac simile. * * * The particular goods to which this trade-mark' is appropriated is acid phosphate." Subsequently; about eight years later, and after the beginning of the difficulty which has led to this litigation, the :complainants registered, in 1885, their trade-mark as simply, "Acid Phosphate j" and they then described the article to which it was applied, in general terms, as a medicinal preparation for disorders of the digesti ve organs and nervous system, and a:condiment and ingredient for a beverage. It seems to me that when, in the specification of the firstregistration, the complainant declared that Hs trade-mark was the word "Horsford," and then, in compliance with the act of congress requiring tbat they should state "the class of merchandise and the Ii>al.'ticular description of goods comprised in such class. by 'IV hich the trad&-mark has been or is intended to be appropriated;" it stated simply that the particular goods was acid phosphate, they 'coriceded that acid phosphate was a descriptive name sufficiently describing, not adass of goods, but a particular description of goods. There also that Prot Horsfordconsidered the term phosis descriptive of the essential characteristics of the preparation for the uses for \Yhich he designed it. There was granted to him, March 10, 1868, patent No. 75;272, for "improved manufacture of acid phosphates to be used in food." In his specification he says: "My invention consists in the useo! acid phosphate of ltme, magnesia, or alkali as a condiment in liquid form; either by itself or as a s'ubstitute for Vinegar, or a,n ingredient in a bevel(age or or for other culinary or san,itary purpollell,:WlJere it is desirable to employ an a,Gid in liquid form. The importance of pllosphates to the animal, economy, to be supplied through :flood, has long been recognized. I have found the advantage to the health of using the liquidmonabasic acid phosphate. when employed in aid of digestion and assimilation. to beof the 'most marked !character. .. ... .. The acid phos,phate I employ is generally a compound of one atom of lime with one atom of phosphoric acid, with a, small addition of, tree phosphoric acid, and is prepared as fpllows. to He then desCribes tile process of preparation, and adda: "The acid :phosphate of 'lime may be su bstantially replaced by the corresponding COlIJpQundsofmagnesia and polassa or soda. produced by the wellknown chemical methods. " His claim is for "the manufacture of liquid acid phosphate of lime for use as a condiment or article of diet or ingredient to be employed in beverageaor {ood, 'substantially as and for the purposes herein set forth." ; It seems: to me that it is fairly to be inferred from this specification of Prof. HorMoI'd, and iUs distinctly stated in other portions of the evidence, that the particular base used in obtaining the phosphate to oe used in this preparation is not deemed of substantial importance. It would appear that it is the phosphdri'C' acid, presented to the stomach in taat form in, which Jt isfound inan.acid phosphate which has been .
tI. THE TIVERTON.
529
dissolved, which is supposed to have the therapeutic effect attributed to the preparation. In describing this medicine, therefore, it was not essential to mention the base of the phosphate, for that is not important, but the substantially important description was given when it was stated to be a liquid acid phosphate. It seems to me, therefore. tbat in view of the statements contained in the original registration of the trade-mark and in patent No. 75,732, the complainant can hardly be heard to say that the words "acid phosphate" were then regarded as arbitrary and meaningless, and notns intentionally descriptive of what was considered to be the essential characterh;tics of the preparation. While a court of equity should regard with disfavor, and seek to remedy, invasions of proper tracie-marks, and to rebuke all unfair dealing by which the goodwill earned by one trader is unlawfully pirated by another, care must be exercised that protection is not granted to the appropriation of descriptive names in such manner that a perpetual monopoly is created in the article described. in favor of those who have no exclusive right to manufacture it. Canal Co. v. Clark, 13 Wall. 311. The counsel for defendants have also submitted an argument based upon the right, after a patent has expired, which anyone has, to use the name which the inventor has given to a new patented article, and by which it has become generally known. Complainant, however, insists that the defense is not raised by the answer, and that there is no testimony to show that complainant's preparation was made under the patent No. 75,272, granted to Horsford. 1 have not found it necessary to consider or pass upon this question, resting my decision upon the inherent objection to the words themselves, which prevents their lawful appropriation as a trade-mark. There being no deceptive similarity in defendants' labels and packages, and nothing complained of except the use of the words" acid phosphate." in my judgment, the bill must be dismissed.
DEVINE tI. THE
(DiBtrict Court, E. D. New York.
June
1888.)
ADMIRALTY-I'RACTICE-TRIAL-NON-PRODUCTION OF EVIDENCE.
Claimant laying stress upon the presumption arising from the fact that the hatch·cover; which libelant asserted had broken under his weight, and which the proofs showed was in his possession, had not been produced on the trial, it was held, that the case should be kept lIpen. with liberty to libelant to producein court the hatch-cover in question. and with liberty to both sides to take further evidence regarding the same.
In ,A.dmiralty. Noah Tebbetts, for libelant. lReported by Edward G. Benedict, Esq., of the New York bar.
v.35F.no.7-34