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Co
AND IMPORTERS
Ij* SAN FRANCISCO- i^
UNIVERSITY
OF CALIFORNIA
LOS ANGELES
SCHOOL OF LAW
LIBRARY
/?
t
\ I/Im^ y
THE LAW
OF
UNFAIR TRADE
INCLUDING
TRADE-MARKS, TRADE SECRETS,
AND GOOD -WILL.
JAMES L. HOPKINS,
OF THE
San Fkancisco Bab.
CHICAGO:
CALLAGHAN w<t COMPANY,
1900.
Copyright, 1900,
BY
CAL.LAGHAN & COMPANY.
V
\
... ---'L-f
I'EESS
HoKNEK Printing Company
RocKFOED, 111.
This book is inscribed to
my friend,
ADOLPH L. PINCOFFS, J. U. D.,
of the Bar of the City of
New York.
■\^
CONTENTS.
CHAPTER I.
PREFATORY.
Section.
1. The need for leg-al restraint of unfair trade
2. Trade-mark defined
3. The earliest recog-nition of trade-marks
4. The evolution of the law of trade-marks
5. Trade-marks distinguished from patents and copyrights
6. The function of trade-marks
7. The nature of the right to a trade-mark .
8. The requisites of a valid trade-mark ....
9. The perpetual existence of trade-marks
10. The territorial limitation of the right to a trade-mark
11. The necessity of user
12. Trade-marks as subjects of sale, assignment or bequest
13. Unfair competition, generally
14. Historical — The origin of the law of unfair trade .
15. Unfair competition distinguished from trade-mark in
fringement ...<•••••
16. Trade slander and libel
Page.
4
6
7
7
8
9
10
10
11
12
23
24
27
33
CHAPTER II.
THE ACQUISITION OF A TRADE-MARK.
17. Who may acquire a trade-mark
18. User
19. Affixing the mark
20. Registration not a means of acquiring ....
21. Acquisition by assignment
22. Acquisition by an alien
23. Priority of appropriation
CHAPTER III.
WHAT CONSTITUTES A VALID TRADE-MARK.
24. The general rule
25. It must be truthful
26. A dishonest label will invalidate
27. The cases of false representation in connection with trade-
miirks
28. Manhattan Medicine Co. v. Wood
36
38
39
40
41
41
42
44
44
44
46
48
VI
CONTENTS.
30.
31.
32.
Section.
29. The similar cases — Assignment must be made public in
connection with the trade-mark, when
Unauthorized use of the words "patent" or "patented"
Use of such words where there has been a patent
Generic term, defined
33. Illustrations of generic, terms ....
34. Examples of valid trade-marks ....
35. Generic terms judicially defined
36. Necessary name of a product cannot be trade-mark
37. "Words taken from the dead languages
38. Words and phrases from modern foreign languages
39. Words become generic through use
40. The use of generic terms protected as against fraudulent
use b}' another ....
41. The test of "origin or ownership "
42. Geographical names
As employed by sole owner of a natural product and its
sole place of production
When geographical names will be protected as trade-marks
The cardinal principle .....
A false geographical name vitiates a trade-mark
47. The right to complain of unfair use of a geographical
name .....
When relief will be granted against fraudulent use of
geographical names .
Proper names as trade-marks
Names of celebrities
In general, of one's own name
Trade-names, so-called
Proper names
43.
44.
45.
46.
48.
49.
50.
51.
52.
53.
54. Corporate names as trade-marks
Page.
48
49
51
54
58
65
73
76
79
79
84
85
89
91
92
93
94
98
98
99
100
101
102
103
105
110
CHAPTER IV.
TRADE-MARK RIGHTS IN TITLES OF BOOKS
AND PERIODICALS.
55. Trade-mark in title of a book ......
56. Trade-mark in title of a periodical .....
115
117
CHAPTER V.
DOSS OF THE RIGHT TO A TRADE-MARK'S USE.
57. Laches 122
58. Laches and acquiescence distinguished .... 123
59. Acquiescence 123
60. Abandonment ......... 125
CONTENTS.
Vll
CHAPTER VI.
GOOD-WILL.
Section.
61. Defined . . .
62. In particular cases
63. As a subject of sale
64. Rights of vendor .
65. Partnership good-will
66. Remedies
Page.
132
132
137
142
147
149
CHAPTER VII.
TRADE SECRETS.
67. Introductory ....
68. Where equity will not interfere
69. Relief in equity
70. The right of privacy
153
154
155
160
71.
72.
73.
74.
75.
76.
79.
80.
81.
82.
83.
84,
85,
86.
87.
89.
90,
91.
92,
93,
nfringing mark
CHAPTER VIII.
INFRINGEMENT.
Of infringement generally ....
No trade-mark in form, size, material or color
The early adjudications
Infringement of color .
Infringement of size and form
Intent and scienter
Wha^t persons liable
The engraver or manufacturer of the
Counterfeiting trade-marks .
Imitation of trade-marks
Colorable imitation
The test of probability of deception
The rule of ordinary care on the part of the purchaser
Infringement must be on same class of goods .
The value of proof of fraudulent intent
The manner of establishing fraudulent intent .
Infringing by refilling trade-marked packages
Infringement by applying a manufacturer's trade-mark
to goods of his to which he does not intend its appli-
cation
Substitution
Infringement by dissimilar word or mark
Miscellaneous matters relating to infringement
The use of letters or numerals
The judicial test of infringement
166
166
168
169
172
176
178
178
180
180
181
181
183
186
188
189
190
191
192
193
201
202
206
Viii CONTENTS.
CHAPTER IX.
REGISTRATION.
Section. Page.
94. Introductory 210
95. The invalid registration acts 210
96. The power of congress to protect trade-marks . . . 211
97. The advantages of registration 212
CHAPTER X.
COURTS, PARTIES AND CAUSES.
98. Introductory 214
99. Jurisdiction of the United States circuit courts . . 214
100. Jurisdiction of the state courts 217
101. The elements whereon jurisdiction must be predicated . 218
102. The parties plaintiff 220
103. The parties defendant 221
104. Forms of action 225
CHAPTER XI.
STATUTORY ENACTMENTS.
105. The act of 1876 226
106. Section 3449, Revised Statutes of the United States . . 228
107. Criminal liability at common law 229
108. The penal statutes of the several states .... 230
CHAPTER XII.
ACTIONS AT LAW.
109. The form of action 233
110. The declaration 235
111. Defenses 239
112. Damages 241
CHAPTER XIII.
THE ACTION IN EQUITY,
113. The basis of equitable jurisdiction ..... 246
114. The bill in equity 248
115. The defenses in equity 252
116. The relief in equity 260
CHAPTER XIV.
MATTERS OF PRACTICE AND EVIDENCE.
117. Matters of which the courts will take judicial notice . 265
118. Expert evidence on the question of infringement . . 265
CONTENTS.
IX
Section. Page.
119. Exhibits 267
120. Discovery 268
121. Evidence of recognition by others of the plaintiff's right
to the mark ......... 269
122. Contempts 270
123. Affidavits 272
CHAPTER XV.
COSTS.
124. Generally
125. Avoiding- costs bj' submission
126. Submission to avoid costs must be complete
127. When costs refused successful defendant .
128. Miscellaneous matters ....
273
273
274
275
276
APPENDIX.
A. Trade-mark Rules of the Patent Office. Annotated . . 281
B. Trade-mark Provision of the Tariff Act of 1897. Anno-
tated 298
C. Trade-mark Act of July 8, 1870. Annotated ... 300
D. Label Registration Act of June 18, 1874. Annotated 312
E. Trade-mark Act of August 14, 1876. Annotated . . 319
F. Trade-mark Act of March 3, 1881. Annotated ... 323
G. Trade-mark Act of August 5, 1882, and War Department
Circulars 340
H. Bills of Complaint. Judicially Approved .... 343
I. Forms of Injunction — Interlocutory and Final Decrees . 365
J. Unofficial Trade-mark Classification. (Suggested by
Commissioner of Patents, January 1, 1897.) . . . 371
K. American and English Bibliography .... 373
L. International Arrangements ...... 374
TABLE OF CASES.
References are to pages.
Abemethy v. Hutchinson (3 L. J.
Ch. 214), 157.
Abbott V. Bakers' and Confec-
tioners' Tea Ass'n (W. N.
1871, p, 207), 183.
Adams V. Heisel (31 Fed. Rep. 279),
5, 167, 201, 213, 308, 327,330.
Addington v. Cullinane (28 Mo.
App. 238), 241, 242.
Adee v. Peck Bros. & Co. (37 Fed.
Rep. 209), 51, 85.
A. F. Pike Mfg-. Co. v. Cleveland
Stone Co. (35 Fed. Rep. 896),
99, 100.
Ainsworth v. Walmesley (L. R.
1 Eq. 518), 65, 100, 127, 186,
203, 206, 254, 257.
Air Brush Mfg-. Co. v. Thayer
(84 Fed. Rep. 640), 32, 186,
337.
Alaska Packers' Ass'n v. Alaska
Imp. Co. (60 Fed. Rep. 103),
15, 48, 239.
Albert v. Strange (2 DeG. & Sm.
652), 157.
Alden v. Gross (25 Mo. App. 123),
60, 267.
Alexander v. Morse (14 R. I. 153),
197.
Alexander Pirie & Sons v. Good-
all (L. R., 1891, 1 Ch. D.
35), 39.
Alff V. Radam(77 Texas, 530), 62.
Alleghany Fertilizer Co. v. Wood-
side (1 Hughes, 115), 58, 68,
79, 209.
AUegretti Chocolate Cream Co.
V. Keller (85 Fed. Rep. 643),
32, 106, 186,
Allen V. McCarthy (37 Minn. 349),
37, 309.
V. McKeen (1 Sumn. 276), 123.
Allen B. Wrisley Co. v. Geo. E.
Rouse Soap Co. (87 Fed.
Rep. 589), 171, 176.
American Book Co. v. Gates (35
Fed. Rep. 729), 34.
American Brewing Co. v. St.
Louis Brewing Co. (47 Mo.
App. 14), 171.
American Cereal Co. v. Pettijohn
Cereal Co. (76 Fed. Rep.
372), 106, 260.
American Fibre Chamois Co. v.
DeLee (67 Fed. Rep. 329),
69, 258.
American Grocerj' Co. v. Sloan
(68 Fed. Rep. 539), 71, 197.
American Solid Leather Button
Co. V. Anthony (15 R. I.
338), 204, 307.
American Tobacco Co. v. Guest
(L. R., 1892, 1 Ch. D. 630),
253, 276.
American Waltham Watch Co. v.
Sandman (96 Fed. Rep. 330),
94.
V. United States Watch Co.
(173 Mass. 85), 94.
Amoskeag Mfg. Co. v. Garner (1),
(55 Barb. 151), 84, 128, 177,
186, 328.
V. Garner (2), (54 How. Pr.
298), 255, 276.
V. Spear (2 Sandf., S, C.,599),
90, 124.
v. Trainor (101 U. S. 51), 2,
3, 5, 46, 205, 206.
And-Bar
TABLE OF CASES.
XI
References
Anderson v. Liebig's Extract of
Meat Co. (45 L. T. N. S.
757), 34, 62.
V. Rowland (18 Tex. Civ. App.
460), 152.
Anglo-Swiss Condensed Milk Co.
V. Metcalf (L. K. 31 Ch. U.
454), 193.
Anheuser-Busch Brewing Ass'n
V. Clarke (26 Fed. Rep. 410),
171, 201.
V. Fred Miller Brewing Co.
(87 Fed. Rep. 864), 32, 88,
100.
V. Piza (24 Fed. Rep. 149), 92,
100, 186, 201.
Appeal of Putnam Nail Co. (Cox,
Manual, No. 725), 273.
ApoUinaris Brunnen v. Somborn
(14Blatchf. 380), 195.
ApoUinaris Co. v. Brumler (Cox,
Manual, 429), 175.
V. Edwards (Seton, 4th ed.,
237), 66.
V. Herrfeldt (4 P. R. 478), 66,
195.
V. Moore (Cox, Manual, Case
No. 675), 66.
V. Norrish (33 L. T. N. S.
242), 36, 66.
V. Scherer (27 Fed. Rep. 18),
66, 222.
Armistead v. Blackwell (1 Off.
Gaz. 603), 17, 68, 307, 311.
Armstrong v. Bitner (71 Md. 118),
134, 146.
V, Kleinhaus (82 Ky. 303), 22,
127, 221.
Armstrong & Co. v. Savannah
Soap Works (61 Off. Gaz.
1018), 223.
Arthur v. Howard (19 Pa. Co. Ct.
81), 70.
Arundell v. Bell (52L. J.Ch.537),
136.
Atkinson v. Atkinson (85 L. T.
Jour. 229), 223, 257.
are to pages.
Atkinson v. John E. Doherty &
Co., (Mich., 80 N. W. Rep.
285), 164.
Atlantic Milling Co. v. Robinson
(20 Fed. Rep. 217), 13, 22,
67, 127, 221.
V. Rowland (27 Fed. Rep. 24),
263.
Atwater v. Castner (88 Fed. Rep.
642), 36, 63, 71, 98, 100.
Aubin V. Holt (2 K. & J. 66), 137.
Auten v. Boys (2 DeGex & Jones,
626), 135.
Avery v. Meikle (81 Ky. 75), 4, 192,
206, 246.
Ayer v. Hall (3 Brewst. 509), 145.
v. Rushton (7 Daly, 9), 59.
B.
Backus V. Taylor (84 Ind. 503),
148,
Bagby & Rivers Co. v. Rivers (87
Md. 400), 144, 148.
Bagley v. Peddie (16 N. Y. 469),
150.
Bailly v. Nashawannuck Mfg.
Co. (51 Off. Gaz. 970), 69.
Bain v, Munro (15 Scot. L. Rep.
260), 136.
Baker & Co. v. Baker (77 Fed.
Rep. 181), 106, 107, 109.
Baldwin v. Von Micheroux (25
N. Y. Supp. 857), 13, 160.
Ball v. Siegel (116 111. 137), 61,
167, 181, 185, 308.
Ball .& Socket Fastener Co. v.
Cohn (90 Fed. Rep. 664), 251.
Banks v. Gibson (34 Beavan, 566),
14, 16, 17, 18, 135.
Barber v. Connecticut Mutual
Life Ins. Co. (15 Fed. Rep.
312), 133.
Barlow v. Johnson (7 R. P. C
395), 71, 88, 194, 208.
Barnett v. Leuchars (13 L. T. N.
S. 495), 190.
Xll
TABLE OF CASES.
Bar-Bor
Barret v. Gomm (74 L. T, Jour-
nal, 388), 202, 258.
Barrows v. Pelsall (Seb. 530), 204.
V. Knight (6 R. I. 434), 72, 101,
246.
Barrj- v. Edmunds (116 U. S 550),
243.
Bass V. Dawber (19 L. T. N. S.
625), 273.
Bassettv. Percival (87 Mass. 345),
142.
Bass, Ratcliflf & Gretton v. Fei-
ji^enspan (96 Fed. Rep. 206),
8, 187, 200, 201, 256, 337.
V. Gug-genheimer (69 Fed. Rep.
271), 253, 274.
Batcheller v. Thomson(l), (86 Fed.
Rep. 630), 16, 22, 145.
V. Thomson (2), (93 Fed. Rep.
660), 52.
Battersby v. Collier (54 N. Y.
Supp, 363), 35.
Battle V. Finlay (1), (45 Fed. Rep.
796), 66.
V. Unlay (2), (50 Fed. Rep.
106), 9, 66, 215, 256.
Batty V. Hill (1 H. & M. 264), 63.
Beadleston & Woerz v. Cooke
Brew. Co. (20 CCA. 405), 61.
Beal V. Chase (31 Mich. 490), 146.
Beard v. Turner (13 L. T. N. S.
746), 79, 124, 202.
Bell V. Locke (8 Paige, 75), 25,
81, 118, 171.
Bell & Bogart Soap Co. v. Petro-
lia Mfg. Co. (54 N. Y. Supp.
663), 158, 159.
Benbow v. Low (L. R. 16 Ch. D.
93), 269.
Benedictus v. Sullivan (12 P. R.
25), 196.
Benkert v. Feder (34 Fed. Rep.
534), 250, 263, 264, 361, 365.
Bennett v. McKinley (65 Fed. Rep.
505), 61.
Benton v. "Ward (59 Fed. Rep.
411), 159.
References are to pages.
Bergamini v. Bastian (35 La.
Ann. 60), 142.
Berliner Brauerei Gesellschaft v.
Knight (W. N. 1883, p. 70),
73.
Bininger v. Clark (60 Barb, 113),
148.
Binninger v. Wattles (28 How.
Pr. 206), 63, 105.
Black V. Ehrich (44 Fed. Rep.
793), 60, 117.
Blackwell v. Armistead (3
Hughes, 163), 68, 196.
V. Crabb (36 L. J. Ch, 504),
202.
V. Dibrell (3 Hughes, 151), 68,
93, 97, 125.
V. Wright (73 N, C 310), 59,
68, 184.
Blakey V, Latham (85 L, T, Jour-
nal, 47), 54.
Blanchard v. Hill (2 Atk, 484), 6,
24,
Block V, Standard Distilling &
Distributing Co, (95 Fed,
Rep, 978), 32, 251,
Bloete V, Simon (19 Abb, N, C
88), 37. 309.
Blofield V, Payne (4 B & Ad. 410),
202, 234, 244, 257,
Bloss V. Bloomer (23 Barb, 604),
240,
Boardman v, Meriden Britannia
Co, (35 Conn, 402), 203, 205,
256,
Bolander v, Peterson (136 111. 215),
64,
Bond V, Milbourn (20 W. R. 197),
14.
Bondier v. Depatie (3 Dor ion, 233^,
204.
Boon V. Moss (70 N, Y. 465),
138.
Booth V. Jarrett (52 How. Pr. 169),
108, 126.
Borthwick v. Evening Post (L, R.
37 Ch, D, 449), 121.
Bos-But
TABLE OF CASES.
Xlll
References
Boston Diatite Co. v. Florence
Mfg. Co. (114 Mass. 69), 8,
165, 177.
Boynton v. Shaw Stocking- Co.
(146 Mass. 219), 35.
Bozon V. Farlow (1 Mer. 459),
137.
Bradbury v. Barden (35 Conn.
577), 137.
V. Beeton (39 Law J. Ch. 57),
120.
V. Dickens (27 Beav. 53), 17.
Bradford v. Peckham (9 R. I. 250),
143.
Braham v. Beachim (7 Ch. D. 848),
36.
V. Bustard (9 L. T. N. S. 199),
68, 79, 130, 166, 183.
Brandreth v. Lance (8 Paige, 24),
165.
Brass & Iron Works Co. v. Payne
(50 Ohio St. 115), 144,
147.
Braun & Co. v. Blackwell (19 Off.
Gaz. 481), 310.
Brennan v. Emerj'^-Bird-Thayer
Dry Goods Co. (99 Fed. Rep.
971), 64.
Brill V. Singer Mfg. Co. (41 Ohio
St. 127), 52, 167, 308.
Bristol V. Equitable Life Assur-
ance Society (132 N. Y. 264),
158.
Broadhurst v. Barlow (W. N. 1872,
p. 212), 83, 203, 206.
Brooklyn White Lead Co. v. Mas-
ury (25 Barb. 416), 92.
Brower v. Boulton (53 Fed. Rep.
389), 40, 212, 327.
Brown v. Doscher (147 N. Y. 647),
32, 167.
Brown Chemical Co. v. Meyer (1),
(31 Fed. Rep. 453), 88, 134.
V. Meyer (2), (139 U. S. 540),
15, 61, 103, 105, 107.
V. Sterns (37 Fed. Rep. 360).
61.
are to pages.
Browne v. Freeman (1), (12 W. R.
305), 84, 126.
V. Freeman (2), (Cox, Manual,
424), 33, 59.
Bryson v. Whitehead (1 S. & S.
74), 135, 155.
Bucklandv. Rice (40 Ohio St. 526),
47.
Buck's Stove & Range Co. v.
Kiechle (76 Fed. Rep. 758),
170, 357.
Buerk v. Imhaeuser (Fed. Cas.
No. 2107a), 272.
Bunn V. Guy (4 East, 190), 136.
Bulloch, Lade & Co. v. Gray (19
Jour. Juris. 218), 62, 92.
Bullock V. Chapman (2 DeG. &
Sm. 211), 33.
Burckardt v. Burckardt (1), (36
Ohio St. 261), 149.
V. Burckardt (2), (47 Ohio St.
474), 150.
Burfield v. Rouch(31 Beav.241) 139.
Burgess v. Burgess (3 DeG. M. &
G. 896), 92, 103, 105, 106.
V. Hately (26 Beav. 249), 258,
273, 275.
V. Hills (26 Beav. 244), 177,
196, 273, 275.
Burke v. Cassin (45 Cal. 467), 64.
Burkhardt v. Burkhardt Co. (4
Ohio N. P. 358), 14, 16, 21.
Burnett v. Hahn (88 Fed. Rep.
694), 250, 259.
V. Leuchars (13 L. T. N. S.
495), 274.
V. Phalon (9 Bos. 192), 67, 77,
196.
Burt V. Smith (71 Fed. Rep. 161),
171, 175, 200, 206, 215, 216.
Burton v. Stratton (12 Fed. Rep.
696), 13, 47, 52, 73, 85, 92,
129, 206.
Bury V. Bedford (4 DeG. J. & S.
352), 16, 19, 21.
Butler V. Burleson (16 Vt. 176),
137.
XIV
TABLE OF CASES.
Bya-Cha
Bcferences ar
Byam v. Bullard (1 Curt. 100),
267.
Byass v. Sullivan (21 How. Pr.
SO), 269.
Cady V. Schultz (19 R. I. 193), 3,
64.
Cahn V. Gottschalk (2 N. Y. Supp.
13), 62, 100, 197.
V. Hoffman House (28 N. Y.
Supp. 388), 62.
California Fig SjTup Co. v. Im-
proved Fig- Syrup Co. (51
Fed. Rep. 296), 59, 223.
V. Putnam (66 Fed. Rep. 50),
59.
V. Stearns (1), (67 Fed. Rep,
1008), 47, 59.
V. Stearns (2), (73 Fed. Rep.
812), 47, 59.
V. Worden (95 Fed. Rep. 132),
46, 59.
Campbell Printing Press Co. v,
Manhattan R. R. Co. (49
Fed. Rep. 930), 262.
Candee v. Deere (54 111. 439), 62,
92, 104, 167.
Canham v. Jones (2 V. & B. 218),
153.
Carbolic Soap Co. v. Thompson
(25 Fed. Rep. 625), 59, 171,
223.
Carmichael v. Latimer (11 R. I.
395), 15, 92, 105, 127, 221.
Carnrick v. Morson (L. J. N. of
C, 1877, p. 71), 70, 197.
Carroll v. Ertheiler (1 Fed. Rep.
688), 70, 187, 255, 256,
258.
Carrington v. Libby (14 Blatch.
128), 307.
Carson v. Ury (39 Fed. Rep. 777),
29, 38, 180, 352.
•e to pages.
Cartier v. Carlile (31 Beav. 292),
177, 204, 206.
V. May (Cox, Manual, Case
No. 200), 204, 271.
v. Westhead (Seb. 199), 204.
Caruncho v. Stephenson (25 Sol.
J. 929), 80.
Carver v. Bowker (Seb. 581), 203.
v. Pinto Leite (L. R. 7 Ch. D.
90), 203, 224.
Cassidy v. Metcalf (1 Mo. App.
593), 143, 145.
Caswell V. Davis (58 N. Y. 223),
60, 77.
Cave V. Myers (Seton,4th ed.,238),
53, 122, 189.
Cellular Clothing Co. v. Maxton
(L. R., 1899, A. C. 326), 59,
88, 270.
Celluloid Mfg. Co. v. Cellonite
Mfg. Co. (32 Fed. Rep. 94), 67,
111,113,129,196,254, 257, 261.
V. Read (47 Fed. Rep. 712), 67,
254, 255, 266.
Centaur Co. v. Heinsfurter (84
Fed. Rep. 955), 52.
V. Hughes Bros. Mfg. Co. (91
Fed. Rep. 901), 52, 59, 86.
V. Killenberger (87 Fed, Rep.
725), 51, 86, 258.
V. Marshall (97Fed. Rep.785),
52.
V. Neathery (91 Fed. Rep. 891),
52, 59, 86.
V. Robinson (91 Fed. Rep. 889),
46, 52, 59, 86.
C. F. Simmons Med. Co. v, Mans-
field Drug Co. (93 Tenn. 84),
177.
V. Simmons (81 Fed. Rep. 163),
32, 171.
Chadwick v. Covell (151 Mass.
190), 13.
Champlin v. Stoddart (30 Hun,
300), 153.
Chappel v. Davidson (2 K. & J.
123), 182, 273.
Cha-Cof
TABLE OF CASES.
XV
References
Charles E. Hires Co. v. Con-
sumers' Co. (100 Fed. Rep.
809), 167, 175, 189, 261,
264.
Chase v. Mays (121 Mass. 343),
323.
Chattanooga Med. Co. v. Thed-
ford (1), (49 Fed. Rep. 949),
20.
V. Thedford (2), (58 Fed. Rep.
347), 20.
Cheavin v. Walker (L. R. 5 Ch.
D. 850), 51.
Chissum v. Dewes (5 Russ. 29),
135.
Chittenden v. Witbeck (50 Mich.
401), 140.
Choynski v. Cohen (39 Cal. 501),
58.
Christy v. Murphy (12 How. Pr.
77), 104, 109, 124.
Chubb V. Griffiths (35 Beav. 127),
256, 273.
Church & Dwig-ht Co. v. Russ (99
Fed. Rep. 276), 24, 32, 178,
188.
Churton v. Douglas (Johns.
174), 13, 14, 21, 110, 132,
141.
Cigarmakers' Protective Union
V. Conhaim (40 Minn. 243),
3,37.
V. Lindner (3 Ohio St. 244),
37.
City of Carlsbad v. Kutnow (1),
(68 Fed. Rep. 794), 93, 260,
269.
V. Kutnow (2), (71 Fed. Rep.
167), 36, 97.
V. Schultz (78 Fed. Rep. 469),
93, 97, 106, 109.
V. Thackeray (57 Fed. Rep.
18), 100.
Clark V. Clark (25 Barb. 76), 105,
106.
V. Freeman (11 Beavan, 112),
33, 252.
are to pages.
Clark V. German Mutual Ins. Co.
(7 Mo. App. 71), 15.
V. Leach (32 Beav. 14), 14.
Clark Thread Co. v. Armitage (74
Fed. Rep. 936), 108.
Clayton v. Stone (2 Paine, 382),
119.
Clemens v. Eelford (14 Fed. Rep.
728), 115, 120, 308.
Clement v. Maddick (1 Giff. 98),
117, 120.
Cleveland Stone Co. v. Wallace
(52 Fed. Rep. 431), 171,
256.
Clinton Metallic Paint Co. v.
New York Metallic Paint
Co. (50 N. Y. Supp. 437),
62, 92.
Close V. Flesher (59 N. Y. S.
Rep. 283), 144.
Clotworthy v. Schepp (42 Fed
Rep. 62), 47, 63, 71, 200.
Coats V. Chad wick (L. R., 1894,
1 Ch. D. 347), 270.
V. Holbrook (2 Sandf. Ch.
586), 10, 41, 182, 223, 256,
258, 273, 275.
V. Merrick Thread Co. (1),
(36 Fed. Rep. 324), 52,
171.
V. Merrick Thread Co. (2),
(149 U. S. 562), 103, 181,
207.
V. Piatt (17 Leg. Int. 213),
105,
Cochrane V. Macnish(L. R., 1896,
A. C. 225), 67.
Cocks V. Chandler (L. R. 11 Eq.
447), 86, 252.
Coe V. Bradley (9 OiY. Gaz. 541),
23, 196.
Coffeen v.Brunton (1), (4 McLean,
516\ 41, 67, 244, 369.
V. Brunton (2), (5 McLean,
256), 184, 202, 257.
Coffman v. Castner (87 Fed. Rep.
457), 36, 63, 71, 92, 98.
XVI
TABLE OF CASES.
Col-Cut
Beferences ar
Colgan v.Danheiser (35 Fed. Rep.
150), 64.
Colgate V. Compagnie Francaise
(23 Fed. Rep. 82), 268.
Collins V. Reynolds Card Mfg. Co.
(7 Abb. N. C. 17), 204.
Collins Co. V. Brown (3 K. & J.
423), 10, 42.
V. Oliver Ames & Sons (18
Fed. Rep. 561), 187, 255, 263.
V. Cowen (3 K. & J. 428), 10,
42.
V. Reeves (28 L. J. Ch. 56),
10, 42.
V. Walker (7 W. R. 222), 10,
42, 273, 275.
Collins Chem. Co. v. Capitol City
Mfg. Co. (42 Fed. Rep. 64),
255, 265.
Collinsplatt v. Finlayson (88 Fed.
Rep. 693), 94, 95, 168, 186,
208, 250.
Colley V. Hart (7 R. P. C. 101), 33.
Colman v. Crump (70 N. Y. 573),
177, 179, 186, 257.
Colton v. Thomas (2 Brew^s. 308),
368.
Columbia Mill Co. v. Alcorn (1),
(40 Fed. Rep. 676), 266.
V. Alcorn (2), (150 U. S. 460),
38, 42, 90, 96.
Commercial Advertiser Ass'n v.
Haynes (49 N. Y.Supp. 938),
120.
Compagnie Lafermev. Hendrick,
(Seb. 512), 273.
Compania General de Tobacos v.
Rehder (5 R. P. C. 61), 182.
Comstock V. White (18 Howr. Pr.
421), 70, 105, 153, 259.
Condy v. Mitchell (37 L. T. N. S.
268), 16, 153.
Congress & Empire Spring Co.
V. High Rock Congress
Spring Co. (57 Barb, 526),
14, 36, 67, 93.
Connell v. Reed (128 Mass. 477), 47.
e to pages.
Conrad v. Brewing Co. (8 Mo. App.
277), 244.
Consolidated Fruit Jar Co. v.
Dorflinger (Fed. Cas. No.
3129), 49.
V. Thomas (Cox, 665), 122.
Continental Ins. Co. v. Continen-
tal Fire Ass'n (96 Fed. Rep.
846-848), 59, 113.
Cook v. Starkweather (13 Abb. Pr.
N. S. 392), 257, 266, 307.
Cooper V. Hood (26 Beav. 293), 13,
139.
Cope v. Evans (L. R. 18 Eq.l38),
80, 266.
Corbin v. Gould (133 U. S. 308), 64.
Corliss v. E. W. Walker Co. (1),
(57 Fed. Rep. 434), 164.
v. E. W. Walker Co. (2), (64
Fed. Rep. 280), 165.
Corwin v. Daly (7 Bos. 222), 12, 59.
Cory v. Gertcken (2 Madd. 49),
273.
Costello V. Eddy (12 N. Y. Supp.
236), 134, 143, 144.
Cotton V. Gillard (44 L. J. Ch.
90), 11, 13, 16, 70.
Cottrell V. Babcock Mfg. Co. (54
Conn. 138), 142, 144.
Crawshay v. Thompson (4 M. &
G. 357), 176, 184, 204, 237.
Croft V. Day (7 Beavan, 84), 18,
26, 102, 221.
V. Day (2), (Cox, Manual, No.
77), 271.
Crutwell V. Lye (17 Ves. 344),
30, 132, 135, 142.
Cuervo v. Jacob Henkell Co. (50
Fed. Rep. 471), 179, 257.
v. Landauer (63 Fed. Rep.
1003), 259.
Curtis V. Bryan (2 Daly, 212), 47,
83, 259.
V. Gokey (68 N. Y. 300), 135.
v. Pape (5 R. P. C. 146), 88.
Cutter V. Gudebrod Bros. Co.
(55 N. Y. Supp. 298), 202.
Dad-Dix
TABLE OF CASES.
XVll
D.
Dadirrian v. Theodorian (37 N.
Y. Supp. 611\ 82.
V. Yacubian (1), (72 Fed. Rep.
1010), 62.
V. Yacubian (2), (90 Fed. Rep.
812), 82.
V. Yacubian (3), (98 Fed. Rep.
872-876), 44.
Dakin v. Williams (17 Wendell,
447), 150.
Daugherty v. Van Nostrand (1
Hoff. Ch., N. Y., 68), 140.
Dausmann & Drummond To-
bacco Co. V. Rufifner (15 OflF.
Gaz. 559), 168.
Davies v. Hodgson (25 Beav. 177),
135.
Davis V. Davis (27 Fed. Rep. 490),
5, 167, 261, 308, 330.
V. Kendall (2 R. I. 566), 71,
153, 180.
V. Kennedy (13 Grant, Up.
Can. Ch. 523), 42, 71.
V. Stribolt (72 Fed. Rep. 1010),
82.
Davey v. Davey (50 N. Y. Supp.
161), 34.
Day V. Woodworth (13 How. 363),
238, 243.
V. New finglaud Car Spring
Co. (3 Blatchf. 154), 272.
Dawes v, Davies (Seb. 426), 183.
Dawson v. Beeson (L. R. 24 Ch.
D. 504), 147.
Dayton v. Wilkes (17 How. Pr.
516), 133, 142.
Dean v. Emerson (102 Mass. 480),
134.
Decker v. Decker (52 How. Pr.
218), 105, 240, 301.
Deering Harvester Co. v. Whit-
man & Barnes Mfg. Co.
(91 Fed. Rep. 376), 8, 90.
De Florez v. Raynolds (14 Blatchf.
505), 267.
B
References are to pages.
De Kuyper v. Witteman (23 Fed.
Rep. 871), 179, 180, 251.
v. Witteman (23 Fed. Rep,
871), 251.
Delaware & Hudson Canal Co.
v. Clark (13 Wall. 311),
55, 62, 97.
DeLong v. UeLong Hook & Eye
Co. (74 Off. Gaz. 809), 107.
Del Valle v. Mayer (Setou, 4th
ed., 236), 224.
Deuce V. Brand (W. N., 1881, p.
31), 278.
V. Mason (41 L. T. N. S.
573). 14.
Dennison Mfg. Co. v. Thomas
Mfg. Co. (94 Fed. Rep.
651), 1, 8, 28, 65, 205.
Dent V. Turpin (30 L. J. Ch. 495),
16, 30.
Denver Railway v. Harris (122
U. S. 597), 243.
Derby Dry Plate Co. v. Pollard
(2 Times, L. R. 276), 196.
Derringer v. Plate (29 Cal. 292),
3, 8, 10, 43, 68.
Devlin v. Devlin (69 N. Y. 212),
117, 270, 271, 277.
Dewitt V. Mathey (Ky), (35 S.W..
Rep. 1113), 127.
Diamond Match Co. v. Roeber
(106 N. Y. 473), 143.
Dicks V. Yates (L. R. 18 Ch, D.
76-88), 119.
Dickson v. McMaster (18 Ir. Jur.
202), 14, 221.
Dixon V. Fawcus (3 Ell. & Ell.
537), 180, 182, 277.
V. Jackson (2 Scot. L. Rep.
188), 72.
Dixon Crucible Co. v. Benham (4
Fed. Rep. 527), 208.
V. Guggenheim (7 Phila. 408;
2 Brewst. 321; 3 Am. L. T.
288; Cox, 559; Seb. 331), 11.
V. Guggenheim (3 Am. L. T..
228), 11, 47, 127.
XVlll
TABLE OF CASES.
Dob-Est
References are to pages.
Dobell V. Stevens (3 B. & C. 623),
151.
Dover Stamping Co. v. Fellows
(163 Mass. 191), 52, 175.
Dowling- V. Livingstone (Mich.),
(66 N. W. Rep. 225), 35.
Draper v. Skerrett (94 Fed. Rep.
912), 32.
Dr. David Kennedy Corp. v. Ken-
nedy (55 N. Y. Supp. 917),
110.
Dreydoppel v. Young (14 Phil a.
226), 58.
Drummond v. Tinsley (52 Mo.
App. 10), 189, 219, 265.
V. Randle, (114 111. 412), 105.
Du Boulay v. Du Boulay (L. R.
2 P. C. 430, 441), 102.
Ducat V. Chicago (10 Wall. 410),
236.
Duden v. Maloy (63 Fed. Rep. 183),
149.
Duke V. Green (16 Off. Gaz. 1094),
303, 310, 330.
Dunbar v. Glenn (42 Wis. 118),
36, 66, 92.
Duwel V. Bohmer (14 Off. Gaz.
270), 305.
Duryea v. National Starch Mfg.
Co. (45 U. S. App. 649), 106.
Dwight V. Hamilton (113 Mass.
175), 137, 145.
E.
Earl of Lytton v. Devey (54 L. J.
Ch. 293), 157.
Eastman Co. v, Reichenbach (20
N. Y. Supp. 110), 153, 155,
156.
Edelsten v. Edelsten (1 DeG. J.
& S. 185), 65, 177, 182, 188,
189, 202, 234, 237, 257, 273.
V. Vick (11 Hare, 78), 53.
Edmonds v. Benbow (Seton, 3d
ed., 905), 120.
Edwards v. Dennis (30 Ch. D.
454), 38.
Eggers V. Hink (63 Cal. 445), 63,
91, 92.
Einstein v. Sawhill (65 Off. Gaz.
1918), 40, 212, 217, 331, 336.
Electro-Silicon Co. v. Hazard (29
Hun, 369), 68, 77.
V. Trask (59 How. Pr. 189),
77, 196.
Elgin Nat'l Watch Co. v. Illinois
Watch Co. (88 Fed. Rep.
487), 98, 189.
Elliott's Appeal (60 Pa. St. 161),
135, 140.
Ellis V. Zeilen (42 Ga. 91), 259.
El Modello Cigar Co. v. Gato (25
Fla. 886), 250.
Empire Typesetting Machine Co.
V. Linotype Co. (79 L. T.
N. S. 8), 34.
England v. New York Pub. Co.
(8 Daly, 375),' 102.
Eno V. Dunn (L. R. 15 A. C. 252),
187, 254.
Enoch Morgan's Sons Co. v. Elder
(Cox, Manual, 714), 258.
V. Hunkele (16 Off Gaz. 1092),
262.
V. Troxell (89 N. Y. 292). 167,
175.
V. Wendover (43 Fed. Rep.
420), 72, 192.
Erlinger v.Bouceau(51 111.94),265.
Erwin v. Hayden (Texas), (43 S.
W. Rep. 610), 151.
Estcourt V. The Estcourt Hop
Essence Co. (31 L. T. N. S.
567), 47.
Estes V. Leslie (1), (27 Fed. Rep.
22), 67, 121.
V. Leslie (2), (29 Fed. Rep. 91),
67, 121, 196.
V. Williams (21 Fed. Rep. 189),
9, 14.
• V. Worthington (1), (22 Fed.
Rep. 822), 123, 260.
Est-Ex parte
TABLE OF CASES.
XIX
References
Estes V. Worth ington (2), (30 Fed.
Rep. 465), 223.
V. Worthington (3), (31 Fed.
Rep. 154), 67, 121.
Evans v. Smallcombe (L. R. 3
H. L. 249), 123.
V. Von Laer (32 Fed. Rep.
153), 62, 92, 180, 190.
Exchange Bank v. Wichita Cat-
tle Co. (61 P^ed. Rep. 190),
268.
Ex parte Adam Roth Gro. Co.
(62 Off. Gaz. 315), 329, 332.
Adriance, Piatt & Co. (20
Off. Gaz. 1820), 333.
Alden (15 Off. Gaz. 389), 306.
American Lead Pencil Co.
(61 Off. Gaz. 151), 336.
Anti-Adulteration League
(86 Fed. Rep. 1803), 324.
Bassett (55 Off. Gaz. 997), 323.
Bloch & Co. (40 Off. Gaz. 443),
306, 332, 343.
Brigham (20 Off. Gaz. 891),
64, 301.
Bronson Co. (87 Off. Gaz.
1782), 325.
Buffalo-Pitts Co. (89 Off. Gaz.
2069), 325, 326, 333, 339.
Butler (87 Off. Gaz. 1781), 71.
Caire (15 Off. Gaz. 248), 199.
Capitol City Dairy Co. (83
Off. Gaz. 295), 63.
Cigar Makers' Association
(16 Off. Gaz. 958), 309.
C. G. Hainline & Co. (58 Off.
Gaz. 947), 313,
Clark- Jewell-Wells Co. (83
Off. Gaz. 915), 329, 372.
Claire (15 Off. Gaz. 248), 308
Coats (16 Off. Gaz. 544), 308.
Cohn (1), (16 Off. Gaz. 680),
64, 306.
Cohn (2), (16 Off. Gaz. 680),
306.
Consolidated Fruit Jar Co.
(16 Off. Gaz. 679), 303, 308.
are to pages.
Ex parte Coon (58 Off. Gaz. 946),
332, 334.
Creedmore Cartridge Co. (56
Off. Gaz. 1333), 333.
Davids & Co. (16 Off. Gaz. 94),
301, 305, 306, 309.
Dawes & Fanning (1 Off.
Gaz. 27), 307.
Diamond Laboratory Co. (43
MSS. D.), 313.
Egyptian Cigarette Co. (85
Off. Gaz. 1905), 70.
Eldredge Co. (55 Off. Gaz.
1278), 313.
Fairchild (21 Off. Gaz. 789),
308.
Farnum & Co. (18 Off. Gaz.
412), 93, 307.
F. H. Gilson Co. (83 Off. Gaz.
1992), 324.
Foley & Co. (87 Off. Gaz.
1957), 68, 196.
Foss (2 DeG. & J. 230), 16, 72.
Frieberg & Workum (20 Off.
Gaz. 1164), 333.
Gale Mfg. Co. (85 Off. Gaz.
1907), 340.
George B. Hurd & Co. (59 Off.
Gaz. 1763), 334.
Grand Rapids School Furni-
ture Co. (87 Off. Gaz. 1957),
72.
Grove (67 Off. Gaz. 1447), 333.
Halliday Bros. (16 Off. Gaz.
500), 307.
Hampden Watch Co. (81 Off.
Gaz. 1282), 71.
Hendley (72 Off. Gaz. 1654),
335.
H. J. Heinz Co. (62 Off. Gaz.
1064), 313.
Hudson (55 Off. Gaz. 1401), 330.
Indiana Bicycle Co. (72 Off.
Gaz. 654), 73.
J. D. Richards & Sons (54
MSS. D. 425), 329.
King (46 Off. Gaz. 119), 305.
XX
TABLE OF CASES.
Ex parte
References are to
Ex parte Kinney (72 OfiF. Gaz.
1349). 72, 329, 332.
Kipling ^24 Off. Gaz. 899),
333.
Kirker, Greer & Co. (Ltd.),
(37 MSS. D. 392), 331.
Knapp (16 Off. Gaz. 318), 307.
Langdon (61 Off. Gaz. 286),
301, 323.
Lawrence (44 L. T. N. S.98),
13. 220.
Lazarus, Schwarz & Lipper
(64 Off. Gaz. 1396), 329, 332.
Lee & Shepard (24 Off. Gaz.
1271), 333.
Lorenz(89 Off. Gaz. 2067), 71.
Lyon, Dupuy & Co. (28 Off.
Gaz. 191), 300, 333.
Lutz (33 Off. Gaz. 1389), 301.
Mahn (82 Off. Gaz. 1210), 315.
Marsching- & Co. (15 Off.
Gaz. 294), 307.
Martin (89 Off. Gaz. 2258),
47, 333.
McCabe (46 Fed. Rep. 363),
265.
Mclnnerney (85 Off. Gaz.
149), 165.
Moodie (28 Off. Gaz. 1271),
302.
Muir (87 Off. Giiz. 357). 329.
Olive Wheel Co. (84 Off. Gaz.
1871), 63.
Oliver (18 Off. Gaz. 923), 92.
Orcupp & Son (8 Off. Gaz.
276), 313.
Pace, Talbott & Co. (16 Off.
Gaz. 909), 306.
Palmer (58 Off. Gaz. 383),
306, 313.
Parker (13 Off. G^iz. 323), 313.
Pearson Tobacco Co. (85 Off.
Gaz. 287), 47, 63.
Peper (16 Off. Gaz. 678), 309.
Punnett (L. K. 16 Ch. D. 226),
140.
Rail (85 Off. Gaz. 453), 63.
Ex
pages.
parte Roasted Cereals Co. (57
MSS. D. 455), 323.
Roy (54 Off. Gaz. 1267), 323,
330.
Ruckstuhl (56 Off. Gaz. 927),
313.
Safety Powder Co. (16 Off.
Gaz. 136), 63, 306.
Schmachtenberg Bros. (51
MSS. D. 204), 332.
Schollenberger (96 U. S. 369),
236.
Schumacher & Ettlinger (1),
(19 Off. Gaz. 791), 301, 302.
Schumacher & Ettlinger (2),
(22 Off. Gaz. 1291), 301, 302.
Smith (1), (16 Off. Gaz. 679),
308.
Smith (2), (16 Off. Gaz. 679),
306.
Smith (3), (16 Off. Gaz. 764).
305.
Spinner (35 MSS. D. 15), 323.
Standard Fashion Co. (89 Off.
Gaz. 189), 329.
Stokes (64 Off. Gaz. 437), 64,
306.
Strasburger & Co. (20 Off.
Gaz. 155), 64, 301, 310, 332,
333, 334.
Sullivan & Burke (16 Off.
Gaz. 765), 306.
Thaddeus Davids & Co. (16
Off. Gaz. 94), 313.
Thompson, Derby & Co. (16
Off. Gaz. 137), 64, 306.
Tietgens & Robertson (87 Off.
Gaz. 2117), 334.
United States Playing Card
Co. (82 Off. Gaz. 1209), 73,
314, 315.
Velvril Co. (84 Off. Gaz. 807),
324.
Waeferling (16 Off. Gaz. 764),
301, 306.
Weil (83 Off. Gaz. 1802), 65,
335.
Ex parte-Fow
TABLE OF CASES.
ZXl
References
Ex parte Weisert Bros. (16 Off.
Gay.. 680), 308.
Wiesel(36 0flt. Gaz. 689), 302.
Wolf (80 Off. Gaz. 1271), 333.
W. Simpson & Sons (10 Off.
Gaz. 334), 313.
Yale & Towne Mfg". Co. (81
Off. Gaz. 801), 65.
Young (Seb. 537), 16, 204.
Zwack & Co. (73 Off. Gaz.
1855), 326, 380.
F.
Faber v. D'Utassey (11 Abb. Pr.
N. S. 399), 189.
V. Faber (49 Barb. 357), 68,
105.
V. Hovey (Codd. Dig. 79), 72.
Fairbanks v. Jacobus (14 Blatchf.
337), 51, 60, 85, 167.
Falkinburg v. Lucy (35 Cal. 52),
91.
Farben-fabriken T. M. K. (7 R.
P. C. 439), 64.
Farina v. Cathery (L. J. N. C.
1867, p. 134), 223.
V. Silverlock (1 K. & J. 509),
179, 219.
Farmers' Loan & Trust Co. v.
Farmers' Loan & Trust
Co. of Kansas (1 N. Y.
Supp. 44), 111, 121.
Farr v. Pearce (3 Madd. 74), 137.
Featherstonaugh v. Fenwick (17
Ves. 298), 134.
Fader v. Benkert (76 Fed. Rep.
613), 370.
V. Brudo (5 Ohio N. P. 275),
70.
Fennessy v. Day (55 L. T. N. S.
161), 245, 258, 275.
V. Rabbits (56 L. T. 138), 263.
Ferguson v. Davol Mills (2
Brewst. 314), 4.
Fetridge v. Merchant (4 Abb, Pr.
156), 47, 66.
are to pages.
Fetridge v. Wells (4 Abb. Pr. 144),
47, 58, 91.
Fischer v. Blank (138 N. Y. 244),
58, 83, 171.
Field V. Lewis (Seaton, 4th ed.,
237), 258, 273.
Filkins v. Blackman (13 Blatchf.
440), 14, 19, 20, 21, 145.
Filley v. Child (16 Blatchf. 376),
52, 67.
V. Fassett (44 Mo. 173), 67,
68, 166, 177, 183, 257, 265.
Finger v. Hahn (42 N. J. Eq. 597),
146.
Fish Bros. Wagon Co. v. Fish
Bros. Mfg. Co. (1), (87 Fed.
Rep. 201), 21, 221.
V. Fish Bros. Mfg. Co. (2), (95
Fed. Rep. 457), 6.
V. LaBelle Wagon Works (82
Wis. 546), 21.
Fisher & Co. v. The ApoUinaris
Co. (L. R. 10 Ch. D. 297),
33.
Fisk V. Mahler (54 Fed. Rep. 528),
262.
Flavel V. Harrison (10 Hare, 467),
47, 50.
Fleischmann v. Schuckmann (62
How. Pr. 92), 256.
V. Starkey (25 Fed. Rep. 127),
167, 171.
Fleming v. Newton (L. R. 1 H.
L. C. 363), 33.
FoUet V. Jeff reyes (1 Sim. N. S. 1),
154.
Ford V. Foster (L. R. 7 Ch. D.
611), 47, 49, 68, 79, 129, 130,
257.
Foster v. Blood Balm Co. (77 Ga.
216), 66, 206.
V. Webster Piano Co. (13 N.
Y. Supp. 338), 106.
Fotheringham v. Express Co. (36
Fed. Rep. 252), 243.
Fowle V. Spear (7 Pa. L. J. 176),
73.
XXll
TABLE OF CASES.
Fra-Glo
References are to pages.
Fralich v. Despar (165 Pa. St.
24), 155.
Franck v. Frank Chicory Co. (95
Fed. Rep. 818), 172.
Frank V. Sleeper (150 Mass. 583),
15, 205, 206.
Frankau v. Pope (11 Cape of Good
Hope, 209), 206.
Frazer v. Frazer Lubricating- Co.
(121 111. 147), 14, 107, 145.
French v. Alter & Julian Co. (74
Fed. Rep. 788), 261.
Frese v. Bachof (14 Blatchf. 432),
61, 259.
Frohman v. Miller (29 N. Y. S.
1109), 67.
Frost V. Rindskopf (42 Fed. Rep.
408), 199.
Ft. Stanwix Canning Co. v. Wm.
McKinley Canning Co. (63
N. Y. S. 704), 198.
Fuller V. HuflF (99 Fed. Rep. 439),
61.
Full wood V. Full wood (1), (W. N.,
1873, p. 93), 189.
Fulton V. Sellers (4 Brewst. 42),
14, 15, 48, 66, 104.
Funke v. Dreyfus (34 La. Ann.
80), 66.
G.
Gabriel v. Sicilian Asphalt Co.
(52 N. Y. Supp. 722), 92.
Gage V. Canada Publ. Co. (11
Can. Sup. Ct. 306), 18, 66,
107, 256.
Gage-Downs Co. v. Coit (39 Fed.
Rep. 492), 99.
V. Featherbone Corset Co.
(83 Fed. Rep. 213), 67.
Gail V. Wackerbarth (28 Fed.
Rep. 286), 171, 265.
Gaily V. Colts' Patent Fire Arms
Mfg. Co. (30 Fed. Rep. 118),
52.
Gardner V. Bailey (Seb. 365), 198.
Garrett v, T. H. Garrett & Co.
(78 Fed. Rep. 472), 107, 108,
114, 201, 258.
Garretson v. Clark (111 U. S.
120), 263.
Gartside v. Outram (3 Jur. N. S.
39), 154.
Gee V. Pritchard (2 Swanst. 402),
33.
George v. Smith (52 Fed. Rep.
830), 43, 68, 186, 188, 257.
Geron v. Gartner (47 Fed. Rep.
467), 205.
G. G. White Co. v. Miller (50 Fed.
Rep. 277), 8, 67, 197.
Giblett V. Read (9 Mod. 459), 18,
72, 221.
Gilka . V. Mihalovitch (50 Fed.
Rep. 427), 122.
Gillis V. Hall (1), (2 Brewst. 342),
368.
V. Hall (2), (3 Brewst. 509),
104, 107.
Gillott V. Esterbrook (47 Barb.
455), 124, 128, 206, 257,
369.
V. Kettle (3 Duer, 624), 192,
204, 206, 257.
Gilman v. Dwight (13 Gray, 356),
137.
V. Hunnewell (122 Mass. 139),
6, 59, 102, 105, 175, 185.
Ginter v. Kinney Tobacco Co. (12
Fed. Rep. 782), 47, 64,
Giron v. Gartner (47 Fed. Rep.
467), 206.
Glen Cove Mfg. Co. v. Ludeman
(23 Blatchf. 46), 197, 212,
215, 240, 249, 256, 301, 338.
Glen & Hall Mfg. Co. v. Hall (61
N. Y. 226), 127, 204.
Glendon Iron Co. v. Uhler (75
Pa. St. 467), 60, 92.
Glenny v. Smith, (2 Drew. & Sm.
476), 177.
Glotin V. Oswald (65 Fed. Rep.
151), 215, 237.
God-Hay
TABLE OF CASES.
XXlll
References are to pages.
Godillot V. American Grocery Co.
(71 Fed. Kep. 873), 206.
V. Hazard (1), (44 N. Y. Super.
Ct. 427), 3, 38.
V. Hazard (2), (81 N.Y.263),61.
Goldstein v. Whelan (62 Fed.
Kep. 124), 71, 216, 261, 272.
Goodfellow V. Prince (L. R. 35
Ch. D. 9), 210.
Goodlet V. Railroad (122 U. S.
391), 236.
Goodman v. Bohls (3 Tex. Civ.
App. 183), 88.
V. Henderson (58 Ga. 567,)
135.
V, Meriden Britannia Co. (50
Conn. 139), 13.
Goodyear Co. v. Goodyear Rub-
ber Co. (128 U. S. 598-602),
25, 29, 112.
Goodyear Rubber Co. v. Day (22
Fed. Rep. 44), 52, 113, 261.
V. Goodyear 's Rubber Mfg. Co.
(21 Fed. Rep. 276), 110.
GorhamCo. v. White(14Wall. 511),
266.
Gorham Mfg. Co. v. Emery-Bird-
Thayer Dry Goods Co. (92
Fed. Rep. 774), 255, 258, 270.
Gouraud v. Trust (3 Hun, 627),
69, 190.
Gout V. Aleploglu (6 Beav. 69), 83.
Graham v. Plate (40 Cal. 593),
244, 263.
Gravel Roofers' Exch. v. Turn-
bull (64 Ofle. Gaz. 441), 220.
Gravely v. Gravely (42 Fed. Rep.
265), 212, 215, 237, 249, 339.
Gray v. Taper-Sleeve Pulley
Works (16 Fed. Rep. 436),
217, 256.
Green V. Rooke(W. N., 1872, p. 49),
60.
Greene v. Woodhouse (38 Off. Gaz.
1891), 86.
Grillon v. Guenin (W. N., 1877,
p. 14), 73, 80.
Grow v. Seligman (47 Mich. 647),
110.
Guinness v. Heap (Seb. 617), 197.
V. Ullmer (10 L. T. 127), 166,.
179, 183.
Hagen v. Beth (118 Cal. 330), 261.
Haggv. Darley(47 L. J. Ch.S67),,
155.
Hall V. Barrows (4 DeG. J. &
S. 150), 6, 39, 66, 101, 127,
135, 139, 184, 186, 204, 206,
257.
V. Hall (20 Beavan, 139), 134,
139.
Halsey v. Brotherhood (45 L. T.
N. S. 640), 34,
Hammond v. Brunker (9 R. P. C.
301), 16, 130.
v. Douglas (5 Ves. 539), 135.
Handford v. Westcott (16 Ofif.Gaz.
1181), 69 310, 336.
Hanna v. Andrews (50 la. 462),
137, 142.
Hardy v. Cutter (3 Off. Gaz. 468),
63, 105, 184.
Hargraves v. Smith (Seb. 338),
237.
Harper v. Pearson (3 L. T. N. S.
547), 221.
Harrington v. Libby (14 Blatchf.
128), 167.
Harrison v. Taylor (11 Jur. N. S.
408), 177.
Hart v. Colley (7 R. P. C. 93),
186.
Hastings v. Cunningham (39 Cal.
137), 265.
Hatchard v. Mege (L. R. 18 Q.
B. D. 771), 35, 221.
Hawley v. Donnelley (8 Paige,
415), 272.
Hay & Todd Mfg. Co. v. Querns
Bros. (86 Off. Gaz. 1323), 3,
330.
XXIV
TABLE OF CASES.
Haz-Hor
Beferences
Hazard v. Caswell (57 How. Pr.
1), 204.
Heizzopulo V. Kaufmann (23 Sol.
J. 819), 210.
Heath v. Wright (3 Wall. Jr. 1),
46, 70.
Hecht V. Porter (9 Pac. C. L. J.
569), 70, 186, 255.
Hegeman v. Hegeman (8 Daly, 1),
14, 16.
V. O 'Byrne (9 Daly, 264), 256,
257.
Heinisch's Sons Co. v. Boker (86
Fed. Rep. 765), 108.
Helmbold v. H. T. Helmbold Mfg.
Co. (S3 How. Pr. 453), 48,
61.
Hennessy v. Braunschweiger &
Co. (89 Fed. Rep. 664), 9, 40,
131, 212, 215, 249, 323, 327,
338, 339.
V. Budde (82 Fed. Rep. 541),
270, 277.
V. Herrmann (89 Fed. Rep.
669), 178, 215, 216, 237, 251.
338, 358.
V. Hogan (6 W. W. & A'B.
Eq. 225), 191, 257.
V. Kennet(Seb. 556), 252, 257.
V. Wheeler (69 N. Y. 271), 47,
259.
V. White (6 W. W. & A'B.
Eq. 216), 191, 257.
V. Wilmerding-Loewe Co.
(103 Fed. Rep. 90), 250, 264.
Herbert v. Dupaty (42 La. Ann.
343), 134, 143.
Hier v. Abrahams (82 N. Y. 519),
71, 198, 219, 256.
Higgins V. Keuffel (140 U. S.428),
313, 315.
Higgins Co. v. Higgins Soap Co.
(144 N. Y. 462), 107, 108.
Hildreth v. McDonald (164 Mass.
16), 175.
V. Sparks Mfg. Co. (99 Fed.
Rep. 484), 179, 224, 264.
are to pages.
Hill V. Lockwood (32 Fed. Rep.
389), 36, 82, 97, 222.
Hilson Co. V. Foster (80 Fed. Rep.
896), 27.
Hine v. Hart (10 Jur. 106), 68, 83.
Hinrichs v. Berndes (Cox, Man-
ual, 594), 33.
Hipgrave v. Case (L. R. 28 Ch. D.
356), 152.
Hiram Holt Co. v. Wadsworth (41
Fed. Rep. 34), 52, 70, 197.
Hiram Walker & Sons v. Mikolas
(79 Fed. Rep. 955), 100.
Hires V. Hires (6 Pa. Dis. R.285),
171.
Hirsch v. Jonas (L. R. 3 Ch. D.
584), 37.
Hirst V. Denham (L. R. 14 Eq.
542), 70, 72.
Hitchcock V. Coker (6 Ad. & E.
428-454), 138.
Hobbs V. Francais (19 How. Pr.
567), 47.
Hoff V. Tarrant & Co. (71 Fed.
Rep. 163), 14.
Hogg V. Kirby (8 Ves. 215), 117.
Hohner v. Gratz(l), (50 Fed. Rep.
369), 260, 269.
V. Gratz (2), (52 Fed. Rep.
871), 107.
Hollis V. Shaffer (38 Kas.492), 143.
Holloway v. Holloway (13 Beav.
209), 102, 106, 259.
Holmes, Booth & Haydens v.
Holmes, Booth & Atwood
Mfg. Co. (37 Conn. 278), 106,
110, 177.
Holt V. Menendez (128 U. S. 514),
80, 126, 255.
Hoosier Drill Co. v. Ingels (14
Off. Gaz. 785), 301, 310.
Hondayer, Matter of (150 N. Y.
37), 138.
Hopkins v. Hitchcock (14 C. B.
N. S. 65), 204, 206.
Hornbostel v. Kinney (110 N. Y.
94), 72.
Hor-Jam
TABLE OP CASES.
XXV
Beferences are to pages.
Horton Mfff. Co. v. Horton Mfg-.
Co. (18 Fed. Rep. 816), 15,
147, 148.
Hostetter v. Adams (10 Fed. Rep.
838), 59, 171, 175, 201, 208,
209.
V. Anderson (1 W. W. & A'B.
Eq. 7), 190, 202.
V. Becker (73 Fed. Rep. 297),
197.
V. Bower (74 Fed. Rep. 235),
191, 267.
V. Brueggeman-Reinart Dis-
tilling Co. (46 Fed. Rep.
188), 190, 191.
v.Comerford (97Fed.Rep.S8S),
191, 267.
V. E. G. Lyons Co. (99 Fed.
Rep. 734), 256.
V. Fries (17 Fed. Rep. 620),
4, 190, 191.
V. Sommers (84 Fed. Rep. 333),
191.
V. Von Vorst (62 Fed. Rep. 600),
275.
V. Vowinkle (Fed. Cas. No.
6714), 197, 263, 267.
Hovenden v. Lloyd (18 W. R. 1132),
18.
Howard v. Taylor (90 Ala. 241),
134, 150.
Howe V. Howe Sewing Machine
Co. (50 Barb. 236), 104.
V. McKernan (30 Beavan, 547),
42, 268, 269.
V. Searing (10 Abb. Pr. 264),
14, 142.
Hoxie V. Chaney (143 Mass. 592),
15, 47, 65, 110, 138, 142.
Hoyt V. Holly (39 Conn. 326), 137.
V. Hoyt (143 Pa. St. 623), 3, 7.
V. J. T. Lovett Co. (71 Fed.
Rep. 173), 60.
Hubbard v. Miller (27 Mich. 15),
146.
Hubbuck V. Wilkinson (C. A.),
(L. R. 1898, 12 y. B. 86), 35.
Hudson V. Osborne (39 L. J. Ch.
79), 16, 127, 134.
Humphreys' Specific Med. Co. v.
Wenz(14 Fed. Rep. 250), 23,
61, 197, 203.
Hunt V. Maniere (34 Beav. 157),
224.
Hutchinson v. Blumberg (51 Fed.
Rep. 829), 72, 259, 275.
V. Covert (51 Fed. Rep. 829),
72, 198.
Hyman v. Solis Cigar Co. (4 Colo.
App. 475), 42, 475.
I.
Illinois Watch Case Co. v. Elgin
Nat. Watch Co. (94 Fed. Rep.
667), 32, 59, 212, 217, 323.
Improved Fig Syrup Co. v Cali-
fornia Fig Syrup Co. (54
Fed. Rep. 175), 59, 256.
India Rubber Co. v. Rubber Comb
■ Co. (45 N. Y. Super. Ct. R.
258), 107, 204.
Indurated Fibre Co. v. Amoskeag
Fibre Co. (37 Fed. Rep. 695),
61, 77.
Ingram v. Stiff (5 Jur. N. S.947),
120.
Insurance Oil Tank Co. v. Scott
(33 La. Ann. 946), 36, 70.
Investor Pub. Co. v. Dobinson (1),
(72 Fed. Rep. 603), 110, 111.
V. Dobinson (2), (82 Fed. Rep.
56), 32, 105, 121.
Iowa Seed Co. v. Dorr (70 la.
481), 106, 135.
Jacoby & Co. v. Lopez & Co. (23
Off. Gaz. 342), 310, 337.
Jaeger's Sanitary W. S. Co. v.
Le Boutilier (47 Hun, 524),
12.
James v. James (L. R. 13 Eq.
421), 62, 107, 153, 252.
XXVI
TABLE OF CASES.
Jar-Lac
References
J arcs Underwear Co. v. Fleece
Underwear Co. (60 Fed.
Rep. 622), 61. 225.
Jay V. Ladler (6 R. P. C. 136),
88, 186.
Jerome v. Johnson (59 N. Y.
Supp. 859), 194.
Jennings v. Johnson (37 Fed.
Rep. 364), 14, 88.
J. G. Mattingly Co. v. Mattingly
(96 Ky. 430), 14.
Johnson & Johnson v. Bauer &
Black (82 Fed. Rep. 662),
171, 193, 195, 267.
Johnston v. Orr-Ewing (7 App.
Cas. 219), 7, 27.
John Batt & C9. v. Dunnett (L.
R. 1899, A. C. 428), 12.
Joseph Banigan Rubber Co. v.
Bloomingdale (89 Fed. Rep.
1670), 65, 336.
Joseph Dixon Crucible Co. v. Ben-
ham (4 Fed. Rep. 527), 265.
Joseph V, Macowsky (96 Cal. 518),
47.
Josselyn v. Swezey (15 Off. Gaz.
702), 310.
Julian V. Hoosier Drill Co. (75
Ind. 408), 69, 128.
Jurgenson v. Alexander (24 How.
Pr. 269), 273, 369.
K.
Kaiserbrauerei v. Baltz Brewing
Co. (71 Fed. Rep. 695), 61,
70.
Kann v. Diamond Steel Co. (89
Fed. Rep. 706), 177, 193, 195,
199, 202.
Keasbey v. Brooklyn Chemical
Works (142 N. Y. 467), 66,
78.
Kelly V. Byles (40 L. T. 623), 63.
Kenney v. Allen (1 Hughes, 106),
203
Kenny v. Gillet (70 Md. 574), 47.
are to pages.
Kerry v. Toupin (60 Fed. Rep.
272), 72, 171, 175.
Kidd V. Horry (28 Fed. Rep. 773),
165.
V. Johnson (100 U. S. 617), 11,
19, 41, 110, 127, 135, 220.
Kidd & Co. V. Mills, Johnson &
Co. (5 Off. Gaz. 337), 71, 220.
Kinahan v. Bolton (15 Ir. Ch. 75),
204, 206, 218.
V. Kinahan (15 Ir. Ch. 75), 177.
Kinney v. Allen (1 Hughes, 106),
76, 307.
V. Basch (Seb. 542), 23, 72,
203, 206.
Kinney Tob. Co. v. Mailer (53
Hun, 340), 72.
Kirkpatrick v. Pope Mfg. Co. (61
Fed. Rep. 46), 268.
Klotz V. Hecht (73 Fed. Rep. 822),
32, 99.
Knoedler v. Boussod (47 Fed. Rep.
465), 133, 135, 142, 144.
V. Glaenzer (55 Fed. Rep.
895), 133, 135, 141, 142, 144.
Knott V. Morgan (2 Keen. 213), 31.
Knox V. Columbia Liberty Iron
Co. (42 Fed. Rep. 378), 265.
Kohler v. Sanders (122 N. Y. 65),
61.
Kohler Mfg. Co. v. Beeshore (59
Fed. Rep. 572), 12, 131, 154,
200, 213, 329.
Krauss v. Jos. R. Peebles' Sons
Co. (58 Fed. Rep. 584), 45,
191, 192, 257.
Kroppf v.Furst (94 Fed. Rep. 150),
32.
Lacroix v. Escobal (37 La. Ann.
533), 302, 331.
La Croix v. May (15 Fed. Rep.
236), 40, 338.
V. Sarrazzin(15 Fed. Rep. 489),
265.
Laf-Lev
TABLE OF CASES.
XXVll
References
Lafayette Ins. Co. v. French (18
How. 404), 236.
Laird v. Wilder (2 Bush, Ky.,
131), 47.
Lamb v. Evans (L. R. 1892, 3 Ch,
462), 157.
Lament v. Leedy (88 Fed. Rep.
72), 59, 250.
Lamploug-h v. Balmer (W. N.,
1867, p. 293), 49.
Landreth v. Landreth (22 Fed.
Rep. 41). 105, 107, 171.
Lane v. Smythe (46 N. J. Eq.
443-454), 133.
Lare v. Harper & Bros. (86 Fed.
Rep. 481), 261, 272.
LaRepubliqueFrancaise V.Sara-
toga Vichy Springs Co.
(99 Fed. Rep. 773), 269.
V. Schult/. (1), (57 Fed. Rep.
37), 6, 93.
V. Schultz (2), (94 Fed. Rep.
500), 32.
V. Schultz (3), (102 Fed. Rep.
153), 122.
Larrabee v. Lewfis (67 Ga. 561),
4, 64.
Lashus V, Chamberlain (6 Utah,
385), 135, 150.
Lauferty v. Wheeler (11 Abb. N.
C. 220), 54, 65.
Lautz Bros. & Co. v. Schultz (9
Off. Gaz. 791), 309.
Laverne v. Hooper (Ind. L. R. 8
Mad. 149), 125, 222.
Lawrence v. Times Printing Co.
(90 Fed. Rep. 24), 152.
Lawrence Mfg. Co. v. Lowell (129
Mass. 325), 203, 205.
V. Tennessee Mfg. Co. (138
U. S. 537), 8, 26, 29, 32, 56,
102, 129, 177, 178, 240.
Lawson v. Bank of London (18
C. B. 84), 237.
Lazenby v. White (41 L. J. Ch.
354), 61, 128, 129.
are to pages.
Lea V. Deakin (11 Biss. 23), 65,
92, 129.
V. Miller (Seb. 513), 65, 129.
V. Wolff (15 Abb. Pr. N. S. 1),
65, 92, 100, 256.
Leahy v. Glover (10 R. P. C. 141),
257, 267.
Leather Cloth Case (11 H. L. C.
523), 2, 6, 11, 13, 18, 27, 47,
50, 100, 127, 183, 246.
Leather Cloth Co. v. Hirschfield
(1), (1 N. R. 551), S3.
v. Hirschfield (2), (1 H. & M.
295), 268.
v. Lorsont(L.R.9Eq. 345),49.
Leclancha Battery Co. v. West-
ern Electric Co. (1), (21 Fed.
Rep. 538), 260, 261, 272.
v. Western Electric Co. (2),
(23 Fed. Rep. 276), 78.
Lee V. Haley (22 L. T. N. S. 251),
23, 122, 189, 256.
V. Haley (5 Ch. App. Cas.
155), 120.
Lehigh Valley Coal Co. v. Ham-
blen (23 Fed. Rep. 225), 113.
Leidersdorf v. Flint (1), (8 Biss.
327), 211, 300.
V. Flint (2), (50 Wis. 401), 245.
Lemoine v. Cauton (2 E. D. Smith,
343), 10, 41, 128, 245.
Leonard v. Wells (L. R. 26 Ch.
D. 288), 73.
V. White's Golden Lubrica-
tor Co. (38 Fed. Rep. 922,
73), 256.
LePageCo. v. Russia Cement Co.
(51 Fed. Rep. 941), 14, 239,
244, 245.
Lever v. Goodwin (4 R. P. C. 492,
506), 88.
V. Bedingfield (80 L. T. N. S.
100), 31, 88.
Lever Bros. (Ltd.) v. Pasfield
(88 Fed. Rep. 484), 72, 199,
267.
XXVlll
TABLE OF CASES.
Lev-Man
Beferences
Levy V. Waitt (1), (56 Fed. Rep.
1016). 12, 37, 66.
V. Waitt (2), (61 Fed. Rep.
1008), 7, 12, 39.
V. Walker (L. R 10 Ch. D.
463), 14.
Lewis V. Chapman (3 Beavan,
133), 84.
V. Klapproth (11 Vict. L. R.
(E) 214), 240.
V.Lang-don (7 Sim. 421), 14, 148.
L. H. Harris Drug- Co. v. Stucky
(46 Fed. Rep. 624), 8, 59,
323, 328, 332.
Lichtenstein v. Goldsmith (37
Fed. Rep. 359), 68.
Liebig-'s Extract Co. v. Hanbury
(17 L. T. N. S. 298), 62, 129.
Liggett & Myers Tobacco Co. v.
Fiuzer (128 U. S. 182), 201.
V. Hynes (20 Fed. Rep. 883),
8, 72, 167, 177, 193, 209, 265,
307.
V. Sam Reid Tob. Co. (104
Mo. 53), 72, 189, 246.
Lilieuthal v. Drucklieb (84 Fed.
Rep. 918), 152.
Linde v. Bensel (22 Hun, 29 N.
Y. Sup. Ct. 601), 219.
Linoleum Mfg. Co. v. Nairn (7 Ch.
Div. 834), 52, 62, 76, 102.
Lippincott v. Hubbard (28 Pitts.
L. J. 303), 14, 16.
Listman Mill Co. v. Wm. List-
man Mill Co. (88 Wis. 334),
14, 71.
Little V. Gallus (38 N. Y. Supp.
487), 154, 155, 159.
V. Kellam(100Fed. Rep. 353),
198.
Littlejohn v. Mulligan (3 New
Zealand Rep. 446), 264.
Llewellyn v. Rutherford (L. R,
10 C. P. 456), 140.
Lockwofjd V. Bostwick (2 Daly,
521), 66, 196.
are to pages.
Longman v. Tripp (2 Bos. & P.
N. R. 67), 16.
v. Winchester (16 Ves. 269),
117.
Lord Byron v. Johnston (2 Mar.
29), 31.
Lorillard Co. v. Peper (86 Fed.
Rep. 956), 202.
Lorillard v. Pride (28 Fed. Rep.
434), 52, 167, 327, 329.
v. Wight (15 Fed. Rep. 383),
167, 171, 307.
Low V. Fels {3>5 Fed. Rep. 361),
262.
V. Hart (90 N. Y. 457), 223.
Lowell Mfg. Co. v. Larned (Cox,
Manual, No. 428), 38, 308.
Lucker v. Phoenix Assurance Co.
(67 Fed. Rep. 18), 268.
Lux v. Haggin (68 Cal. 255-269),
123.
Luyties v. HoUender (1), (21 Fed.
Rep. 281), 211, 212, 237, 249.
V. Hollender (2), (30 Fed. Rep.
632), 61, 215, 216, 339.
Lyman v. Burns (47 Off. Gaz. 660),
71.
Lysney v. Selby (2 Ld. Raym.
1118), 151.
M.
Macdonaldv. Richardson (1 GifiF.
81), 135.
Mandeville v. Harmon (42 N. J.
Eq. 185), 137.
Manhattan Med. Co. v. Wood (1),
(Fed. Cas. No. 9026; 4 Cliff.
461), 9.
V. Wood (2), (108 U. S. 218), 15,
46, 48, 73, 98, 129, 167, 209.
Manitowoc Mfg. Co. v. Dickerman
(57 Off. Gaz. 1721), 42, 335,
337.
Manitowoc Pea-Packing Co. v.
William Numsen & Sons
(93 Fed. Rep. 196), 100.
Man-Met
TABLE OF CASES.
XXIX
lieferences
Manufacturiiifi^ Co. v. Simpson (54
Conn. 527). 107.
V. Trainer (101 U. S. 51), 182.
Marcovitch v. Bramble, Wilkins
& Co. (Cox, Manual, No.
595), 270.
Marcus Ward & Co. v. Ward (1).
(15 N. Y. Supp. 913), 105.
V. Ward (2), (40 N. Y. S. Rep.
792), 144.
Market Co. v. Hoffman (101 U. S.
112). 216.
Marks v. Jaffa (26 N. Y. Supp.
908), 163.
Marsh v. Billings (7 Cush. 322),
189, 244.
V. Warren (14 Blatchf. 263),
313, 315.
Marshall v, Hawkins (4 N. Z.
L. R. Sup. Ct. 59), 181.
V. Pinkham (52 Wis. 572), 62,
129, 240.
V. Ross (L. R. 8 Eq. 651), 54,
198.
Martha Washing-ton Creamery
Buttered Flour Co. v. Mar-
tien (44 Fed. Rep. 473), 259.
Martin v. Murphy (129 Ind. 464),
137, 150.
V. Wright (6 Sim. 297), 33.
Massam v. Cattle Food Co. (L. R.
14 Ch. D. 748), 13.
Matthews v. Murchinson (17 Fed.
Rep. 760), 123.
Matsell V. Flannagan (2 Abb. Pr.
N. S. 459), 119, 121.
Mayer v. Flanagan (12 Tex. Civ.
App. 405), 14.
Maxwell v. Hogg (L. R. 2 Ch.
307), 43, 252.
McAndrews v. Bassett (4 De G. J.
& S. 380), 11, 39, 65, 273,
275.
McCall V. Theal (28 Grant Up.
Can. Ch. 48), 58.
McCann v. Anthonj-^ (21 Mo. App.
83), 171, 201, 219, 258.
are to p'ujes.
McCardel v. Peck (28 How. Pr.
120). 124.
McCord V. Williams (96 Pa. St.
78), 14n.
McElwee v. Blackwell (15 Off.
Gaz. 658). 301, 304, 311.
McGowan v. McGowan (22 Ohio
St. 370), 142, 147, 148.
McLean v. Fleming (96 U. S.
245), 2, 14, 16, 26, 31, 105,
107, 111. 122, 177, 183, 246,
249, 256, 262, 273, 277.
McVeagh V. Valencia Cigar Fac-
tory (32 Off. Gaz. 1124), 13.
McVey v. Brendel (144 Pa. St.
235), 37.
Mehichrino v. Melachrino Cigar-
ette Co. (4 R. P. C. 215),
103, 108, 130, 258.
Mellesch v. Keen (28 Beavan,
453), 150.
Mellin v. White(L. R.,1895, A. C.
154), 35.
Meneely v. Meneely (62 N. Y.427),
102, 105.
Menendez v. Holt (128 U. S. 514),
12, 14, 20, 37, 69, 70, 124, 138,
177, 256.
Meriden Britannia Co. v. Parker
(39 Conn. 454), 47. 258.
Merriam v. Famous Shoe and
Clothing Co. (47 Fed. Rep.
410), 58, 117.
V. Holloway Pub. Co. (43 Fed.
Rep. 450), 117.
V. Texas Siftings Pub. Co.
(49 Fed. Rep. 944), 65, 117.
Merry v.Hoopes(lll N.Y.420),14.
Merryweather v. Moore (L. R.
1892, 2 Ch. D. 518), 156, 157.
Messer v. The Fadettes(168 Mass.
140), 109.
Messerole v. Tynberg (36 How.
Pr. 14), 6, 66. 101.
Metropolitan Bank v. St. Louis
Dispatch Co. (1), (36 Fed.
Rep. 722-724), 133.
XXX
TABLE OF CASES.
Met-Mye
References are to pages.
Metropolitan Bank v. St. Louis
Dispatch Co. (2), (149 U. S.
436), 132, 138.
Metsler v. Wood (L. R. 8 Ch. D.
606), 259.
Meyer v. Bull Medicine Co. (58
Fed. Rep. 884), 88, 107.
Miller v. Beck (Iowa), (72 N. W.
Rep. 553), 151.
V. Keeler (9 Pa. Co. Ct. R.
274), 137.
Milling-ton v. Fox (3 My. & Cr.
338), 177, 189, 204, 274.
Milwaukee R. R. Co. v. Arms (91
U. S. 487), 243.
Mississippi & Mo. R. R. Co. v.
Ward (2 Black, 485), 216.
Missouri Pacific Railway
V. Humes (115 U. S. 512),
243.
Mitchell V. Henry (L. R. 15 Ch.
D. 181), 266.
V. Read (84 N. Y. 556), 150.
Moet V. Clybonn (Seb. 533), 204.
V. Cousten (33 Beav. 578), 189,
275.
V. Pickering (L. R. 8 Ch. D.
372), 204, 206, 224, 276.
Monroe Cattle Co. v. Becker (147
U. S. 47), 328.
Monson v. Boehm (L. R. 26 Ch. D.
398^06), 125.
Montgomerie v. Donald (Ct. Sess.
Cas. 4th Ser. 11, 506), 65.
Montgomery v. Thompson (1891,
App. Cas. 217), 102.
Moorman v. Hoge (2 Sawy. 78),
8, 167, 240, 301, 307, 328
Morgan v. McAdam (36 L. J. Ch.
228), 47, 50, 54.
V. Rogers (19 Fed. Rep. 596),
13, 14, 138.
V. Schuyler (79 N. Y. 490),
144, 148.
Morgan Envelope Co. v. Walton
(1), (82 Fed. Rep. 469), 193,
199.
Morgan Envelope Co. v. Walton
(2), (86 Fed. Rep. 605), 88,
92.
Morgan Sons Co. v. Troxell (Cox,
Manual, 674), 192.
Morison v. Moat (21 L. J. Ch. 248),
155, 157.
Morris v. Moss (25 L. J. Ch. 194),
135.
Morrison v. Case (9 Blatchf. 548),
72, 309, 332.
v. Salmon (2 Man. & G. 385),
176.
Morse v. Worrell (10 Phila. 168),
71.
Morse Machine Co. v. Morse (103
Mass. 73), 153.
Mossier v. Jacobs (65 111. App.
571), 72, 198.
Motley V. Downman (3 My. & Cr.
1), 176, 204, 221.
Moxie Nerve Food Co. v. Baum-
bach(32Fed. Rep. 205), 175,
198, 259.
v. Beach (33 Fed. Rep. 248),
179, 261, 269.
Mullins V. People (23 How. Pr.
289), 231.
Mumm V. Kirk (40 Fed. Rep. 589),
32.
Munro v. Smith (13 N. Y. Supp.
708), 182, 185, 193.
v. Tousey (129 N. Y. 38), 185.
Munsey v. Butterfield (133 Mass.
492), 134.
Murray v. Engraving Co. (28 N.
Y. Supp. 271), 163.
Musselman & Clarkson's Appeal
(62 Pa. St. 81), 135.
Myers v. Baker (3 H. & N. 802),
176.
v. Cunningham (44 Fed. Rep.
349), 234.
v. Kalamazoo Buggy Co. (54
Mich. 215), 109, 144.
V. Theller (38 Fed. Rep. 607),
171, 191.
Nat-Orr
TABLE OF CASES.
XXXI
lieferences ar
N.
National Biscuit Co. v. Baker (95
Fed. Rep. 135), 2, 73, 199,
208, 209.
National Gum & Mica Co. v.
Braendly (51 N. Y. Supp 93),
160.
Native Guano Co, v. Sewage
Manure Co. (8 P. R. 125), 62.
Neilson v. Betts (L. R. 5 H. L. R.
1), 245.
Nerve Food Co. v. Baumbach (32
Fed. Rep 205), 86.
Neva Stearine Co. v. Mow^ling (9
Vict. L. R. 98), 129.
Newark Coal Co. v. Spangler (54
N. J. Eq. 354), 106.
Newby v. Railroad Co. (Deady,
609), 110.
New Home Sewing Machine Co.
V. Bloomingdale (59 Fed.
Rep. 284), 69, 197.
Newman v. Alvord (49 Barb. 588),
10, 23, 56, 97, 99.
v. Pinto (4 R. P. C. 508), 47,
258, 275.
New York Asbestos Mfg. Co. v.
Amber Asbestos Air-cell
Covering Co. (99 Fed. Rep.
85), 260, 261, 272.
New York Cement Co. v. Coplay
Cement Co. (1), (44 Fed. Rep.
277), 63.
V. Coplay Cement Co. (2), (45
Fed. Rep. 212), 17, 63, 97,
221.
Nichols V. Kimpton (3 Times L.
R. 674), 273.
Nixey v. Roffey (W. N., 1870,
p. 227), 49, 51.
N. K. Fairbank Co. v. Central
Lard Co. (64 Fed. Rep. 133),
67, 130, 196, 256.
V. Luckel, King »& Cake Soap
Co. (1), (88 Fed. Rep. 694),
32, 69, 185, 207.
•e to pages.
N. K. Fairbank Co. v. Luckel,
King & Cake Soap Co. (2),
(102 Fed. Rep. 327), 196.
V. R. W. Bell Mfg. Co. (77
Fed. Rep. 869), 171, 186, 369.
Noel V. Ellis (89 Fed. Rep. 978),
64, 199.
Noera v. Williams Mfg. Co. (158
Mass. 110), 175.
Northcuttv. Turney (101 Ky. 314),
36, 66, 93, 97, 220.
North Eastern Awl Co. v. Marl-
borough Awl Co. (168 Mass.
147; 60 Am. St. Rep. 373), 2.
Nunn V. D 'Albuquerque (34 Beav.
595), 274.
Nuthall V. Vining (28 W. R. 330),
167, 172.
o.
Oakes v.Tonsmierre (49 Fed. Rep.
447), 13, 262.
Oakey v. Dalton (L. R. 35 Ch. D.
700), 221.
Ohio & Miss. Ry. Co. v. Press
Pub. Co. (48 Fed. Rep. 206),
34.
Oldham v. James (13 Ir. Ch. 393),
240.
Olin v. Bate (98 111. 53), 102.
Onondaga Co. Milk Association
V. Wall (17 Hun, 494), 143.
Opinion of Attorney General (47
Oflf. Gaz. 397), 380.
Oppermann v. Waterman (94
Wis. 583), 196.
O'Rourke v. Central City Soap
Co. (26 Fed. Rep. 576), 43,
66, 251.
Orrv. Diaper (L. R. 4 Ch. D. 92),
224, 268.
Orr-Ewing v. ChooneeloU Mul-
lick (Cor. 150), 42.
V. Grant, Smith & Co. (2
Hyde, 185), 42.
V. Johnson ^7 A. C. 219), 182,
194.
XXXll
TABLE OF CASES.
Orr-Pin
References are to pages.
Orr-Ewing- & Co. v. Grant (2
Hj-de, 185), 177.
Osgood V. Allen (1 Holmes, 185),
56, 91, 183.
V. Rockwood (11 Blatch. 310),
69, 255, 305, 311.
Palmer v. Harris (60 Pa. St. 156),
47, 69, 257.
Parker v. Hulme (1 Fisher, 44),
242.
Parkland Hill Blue Lick Water
Co. V. Hawkins (95 Ky.502),
66.
Partlett v. Gug-g-enlieimer (67 Md.
542), 47, 197, 257.
Parsons v. Hay ward (31 Beavan,
199), 134, 140.
Partlo V. Todd (17 Can. S. C.
. R. 196), 79.
Partridge V. Menck (2 Sandf. Ch.
R. 622), 46, 90, 257.
Paton V. Majors (46 Fed. Rep.
210), 268.
Paul V. Barrows (4 De G. J. & S.
150), 206.
V. Virginia (8 Wall. 168), 236.
Peabody V. Norfolk (98Mass. 452),
153, 155, 156.
Peltz V. Eichele (62 Mo. 171, 180),
149.
Pence v. Langdon (99 U. S. 578,
581), 123.
Pennsylvania Co. v. Railroad Co.
(118 U. S. 290), 236.
Pennsylvania Salt Mfg. Co. v.
Meyers (79 Fed. Rep. 87),
72.
People V. Fisher (57 N. Y. Sup.
Ct. 552), 37, 309.
V. Molins (10 N. Y. Supp.
130), 15.
V. Roberts (159 N. Y. 70), 138.
Pepper v. Labrot (8 Fed. Rep. 29),
13, 14, 127, 201.
Perceval v. Phipps (2 Ves. & B.
19), 157.
Perkins v. Heert (158 N. Y. 306),
230.
Perks V. Hall (W. N., 1881, p. Ill),
258.
Perry v. Truefit (6 Beav. 66), 6,
26, 46, 71.
Peterson v. Humphrey (4 Abb. Pr.
394), 14, 147.
Petrol i a Mfg. Co. v. Bell & Bo-
gart Soap Co. (97 Fed. Rep.
781), 21, 67.
Phalon V. Wriglit (5 Phila. 464),
47, 60, 258.
Phelan v. Collender (13 N. Y.
Sup. Ct. 244), 14.
Philadelphia Nov. Co. v. Blakes-
ley Nov. Co. (40 Fed. Rep.
588), 171.
Philadelphia R. R. Co. v. Quig-
ley (62 U. S. (21 How.) 213),
243.
Pickett v. Green (120 Ind. 584),
137.
Pidding v. How (8 Sim. 477), 46,
69.
Pierce v. Franks (IS L. J. Ch.
122), 273.
V. Fuller (8 Mass. 228), 134.
v. Guittard (68 Cal. 68, 71),
29.
Pike Mfg. Co. v. Cleveland Stone
Co. (35 Fed. Rep. 896), 69,
70, 130, 195, 199, 219.
Pilmore v. Hood (5 Bing. N. C.
97), 151.
Pillsbury v.Pillsbury-Washburn
Flour Mills Co., (64 Fed.
Rep. 841), 15, 49, 102, 182,
208, 209.
Pillsbury-Washburn Co. v. Eagle
(86 Fed. Rep. 608), 93, 95,
99, 220.
Pinto V. Badman (8 R. P. C. 181,
Cartmell, 270), 11, 80.
V. Trott (8 P. R. 173), 1%.
Pis- Ram
TABLE OF CASES.
XXXIU
References are to paqes.
Piso Co. V. Voight (4 Ohio N. P.
347), 47, 239.
Pittsburg- Crushed Steel Co. v.
Diamond Steel Co. (85 Fed.
Rep. 637), 131, 200, 213.
Plant Seed Co. v. Michel Plant
& SeedCo.(23Mo.App.579),
108.
P. Lorillard Co. v. Peper (86 Fed.
Rep. 956), 266.
Pollen V. LeRoy (30 N. Y. 549),
267.
Pollard V. Photographic Co. (40
C. D., Eng., 345), 157.
Pousardin v. Peto (33 Beav. 642),
224.
Popham V. Cole (66 N. Y. 69),
185.
V. Wilcox (66 N. Y. 69), 63,
183, 266, 306.
Porter v. Gorman (65 Ga. 11), 133,
142.
Portuondo v. Monne (28 Fed. Rep.
16), 181, 261.
Potter V. Commissioners of Inland
Revenue (10 Ex. 147), 135.
Potter Drug & Chem. Co. v. Mil-
ler (75 Fed. Rep. 656), 67,
195.
Powell V. Birmingham Vinegar
Brewery Co. (L. R. 1894,
3 Ch. D. 449), 88.
Pratt's Appeal (117 Pa. St. 401),
19, 92.
Pratt's Mfg. Co. v. Astral Re-
fining Co. (27 Fed. Rep.
492), 58.
Press Pub. Co. v. Monroe (73
Fed. Rep. 252), 243.
Price V. Goodall (L. R. 1891, 1
Ch. D. 35), 3.
Price Baking Powder Co. v.
Fyfe (45 Fed. Rep. 799), 67,
86, 262.
Prince's Metallic Paint Co. v.
Carbon Metallic Paint Co.
(Seb. 573), 105.
C
Prince's Metallic Paint Co. v.
Prince Mfg. Co. (1), (53
Fed. Rep. 493), 212, 215,
237, 339.
V. Prince Mfg. Co. (2), (57
Fed. Rep. 938), 124.
Prince Mfg. Co. v. Prince's Me-
tallic Paint Co. (15 N. Y.
Supp. 249), 14, 22.
Probasco v. Bou3'on (1 Mo. App.
241), 12, 145.
Proctor V. McBride (Fed. Cas.
No. 11,441), 197.
Procter & Gamble Co. v. Globe
Refining Co. (92 Fed. Rep.
357), 171, 197, 201, 202, 207.
Prudential Assurance Co. v.
Knott (L. R. 10 Ch. D. 142),
33.
Putnam Nail Co. v. Ausable
Horsenail Co. (53 Fed. Rep.
390), 32.
V. Bennett (43 Fed. Rep. 800),
177, 255, 329.
R.
Radam v. Destroyer Co. (81
Texas, 122), 266.
Radde v. Norman (L. R. 14 Eq.
348), 36 197.
Raggett V. Findlater (L. R. 17 Eq.
29), 62.
Rahtjen's American Composition
Co. V. Holzappel's Compo-
sition Co. (101 Fed. Rep.
257), 52.
Railroad Co. v. Harris (12 Wall.
65), 236.
Ralli V. Fleming (Ind. L. R. 3
Calc. 417), 203.
Ralph V. Taylor (L. R. 25 Ch. D.
194), 52.
Rammelsberg v. Mitchell (29 Ohio
St. 22), 149.
Ramsden v. D3'son (L. R. 1 H.
L. 129), 123.
XXXIV
TABLE OF CASES.
Ran-Re
References are to
Ransom v. Ball (7 N. Y. Supp.
238), 46.
V. Mayor (1 Fisher, 252), 242.
Ransome v. Bentall (3 L. J. Ch.
161), 184, 204, 206.
V. Graham (51 L. J. Ch. 897),
53, 204,
Rawlinson v. Brainard & Arm-
strong Co. (59 N. Y. Supp.
880), 69, 200.
Rawson v. Pratt (91 Ind. 9), 150.
Raymond v. Royal Baking Pow-
der Co. (85 Fed. Rep. 231),
72.
Re Adriance, Piatt & Co. (Comm.
Decis., 1881, p. 52), 329.
American Lubricating Oil
Co. (9 Off. Gaz. 687), 308.
American Sardine Co. (3 Off.
Gaz. 495) 307, 332.
American Saw Co. (58 Off.
Gaz. 521), 334.
Ames (23 Off. Gaz. 344), 332.
Arbenz (L. R. 35 Ch. D. 248),
129.
Armstrong & Co. (26 MSS.
D. 260), 330.
Atkins Filter Co. (3 P. R.
164), 63.
Barker's Trade-mark (53 L.
T. N. S. 23), 194.
Barrows (L. R. 5 Ch. D. 353),
204, 206.
Baschiera's Trade-mark (33
S. J. 469), 193.
Blakeslee & Co. (Comm. De-
cis., 1871, 284), 309.
Block & Co. (14 Off. Gaz. 235) ,
303, 309.
Boehm & Co. (8 Off. Gaz. 319),
302, 329.
Bogardus (5 MSS. D. 2), 332.
Bole Bros. (12 Off. Gaz. 939),
307.
Bovril (L. R. 1896, 2 Ch. D.
600), 66.
Bowe (50 MSS. D. 168), 332.
Re
pages.
Brandreth (Seb. 626), 63.
Brand Stove Co. (62 Off. Gaz.
588), 306.
Brigham (Comm. Decis. 1881,
p. 38), 306.
Brook (26 W. R. 791), 204.
Bush & Co. (10 Off. Gaz. 164),
67, 308.
California Fig Syrup Co. (L.
R. 40 Ch. D. 620), 375.
Chetwood (165 U. S.443), 271.
Chichester Chemical Co. (52
Off. Gaz. 1061), 332.
Christiansen (3 R. P. C. 54),
182, 266.
Coggin, Kidder & Co. (11 Off.
Gaz.), 1109, 308.
Consolidated Fruit Jar Co.
(14 Off. Gaz. 269), 306, 308.
Cornwall (1), (12 Off. Gaz.
312;, 68, 308, 334.
Cornwall (2), (12 Off. Gaz.
312), 307.
Dibble Mfg. Co. (18 MSS. D.
428), 329.
Dick & Co. (9 Off. Gaz. 538),
64, 309.
Dole Bros. (12 Off. Gaz. 939),
308.
Eagle Pencil Co. (10 Off.
Gaz. 981), 205, 307.
Edinburgh Correspondent
Newspaper (Ct. of Sess.
Cas. 1st ser. 1, new ed., 407,
n.),120.
Fairchild (21 Off. Gaz. 789),
333.
Farina (44 L. T. N. S. 99),
18, 122.
Farnum & Co. (Comm. De-
cis., 1880, p. 155), 329.
Finlayson, Bousfield & Co.
(61 Off. Gaz. 152), 331.
Fitzpatrick, Davis & Co.
(18 MSS. D. 278), 329.
Francis & Mallon (Comm.
Decis. 1871, p. 283), 307.
Re
TABLE OF CASES.
XXXV
References are to
Re Godillot (6 Off. Gaz. 641),
301.
Goodyear Rubber Co. (11 Off.
Gaz. 1062), 306.
Gorden (12 Off. Gaz. 517),
307.
Green (8 Off. Gaz. 729), 69.
Grossmith (60 L. T. N. S.
612), 68, 125.
Grove (67 Off. Gaz. 1447),
307, 332.
Hall (13 Off. Gaz. 229), 129,
306.
Hankinson (8 Off. Gaz. 89),
301, 302.
Hanson's Trade-mark (5 R.
P. C. 130), 172.
Heaton's Trade-mark (L. R.
27 Ch. D. 570), 47.
Hendley (72 Off. Gaz. 1654),
334.
Hauthaway (1), (Comm.
Decis. 1871, p. 97), 306.
Hauthaway (2), (Comm.
Decis. 1871, p. 284), 306.
Horsburg-h (53 L. J. Ch. 237),
64, 181.
Imbs (10 Off. Gaz. 463), 308.
India Rubber CombCo.(8 Off.
Gaz. 905), 306, 308, 309, 329.
Jelley, Son & Jones (51 L. J.
Ch. 639), 186, 266.
J. Marsching &. Co. (15 Off.
Gaz. 294), 334.
Johnson (2 Off. Gaz. 315), 63.
Jones (53 L. T. 1), 17.
Jordan (49 Fed. Rep. 238),
265.
Kampfe Bros. (58 MSS. D.
306), 329.
Kane & Co. (9 Off. Gaz. 105),
167, 307.
Kimball (11 Off. Gaz. 1109),
303, 330.
Knight (38 MSS. D. 341), 329.
Kuhn & Co.'s Trade-mark
(53 L. J. Ch. 238), 273.
Re
pages.
La Society Anonyme des Ver-
reries de I'Etoile (10 R. P.
C. 436), 193.
Lawrence (10 Off. Gaz. 163),
306.
Lisner (13 Off. Gaz. 455), 302,
329.
Maigen's Application (28 W.
R. 759), 69.
Manny & Co. (17 MSS. D.
155), 329.
Manske & Co. (64 Off. Gaz.
858), 326.
Maw, Son & Thompson (22
MSS. D. 403), 329.
Meyerstein (7 R. P. C. 114),
64.
Mitchell (L. R. 7 Ch. D. 36),
204.
Park (12 Off. Gaz. 2), 309.
Parker (13 Off. Gaz. 323), 300,
307.
Pierce (23 MSS. D. 16), 329.
Porter Blanchard's Sons
(Comm. Decis. 1871, p. 97),
306, 307.
Pratt & Farmer (10 Off. Gaz.
866), 309.
Proctor, Jr. (51 Off. Gaz. 1785),
333.
Rabone (Sob. 642), 186.
Rader & Co. (Comm. Decis.
1878, p. 67), 306, 309.
Railton (25 MSS. D. 321), 332.
Randell's Estate (8 N. Y.
Supp. 652), 144.
Rankinson (8 Off. Gaz. 89),
330.
Richardson (3 Off. Gaz. 120),
63, 306, 307.
Roach (10 Off. Gaz. 333), 306.
Roberts (1), (Comm. Decis.
1871, p. 113), 306.
Roberts (2), (Comm. Decis.
1871, p. 100), 306.
Roberts (3), (Comm. Decis.
1871, p. 101), 306.
XXXVl
TABLE OF CASES.
Re-Rob
Beferences ar
Re Rohland (10 Off. Gaz. 980),
68, 307.
Rothschild (7 Off. Gaz. 220),
301, 331.
Rowe & Post (9 Off. Gaz.
496), 306.
Rubber Clothing Co. (10 Off.
Gaz. Ill), 308.
Schmidt (53 MSS. D. 7), 326.
Simpson & Sons (16 Off. Gaz.
333), 301.
Snook (2 Hilt. 566), 102.
Speer's Trade-mark (4 R. P.
C. 521), 193.
Swezy (62 How. Pr. 215), 16.
Thayer (54 Off. Gaz. 957), 331.
Thewlis & Blakey's Trade-
mark (10 R. P. C. 369),
195, 199.
Thomas (14 Off. Gaz. 821),
305, 309.
Tolle (2 Off. Gaz. 415), 305,
307.
Vidvard & Sheehan (8 Off.
Gaz. 143), 301, 304.
Volta Belt Co. (8 Off. Gaz.
144), 303, 329.
Warburg & Co. (13 Off. Gaz.
44), 307.
Watson (16 MSS. D. 467),
330.
Weaver (10 Off. Gaz. 1), 309,
332.
Wellcome (L. R. 32 Ch. D.
213), 13, 21.
Whitaker(Newton'sDig.l30),
167.
Whiteley (43 L. T. N. S. 627),
186.
Worthington's Trade-mark
(L. R. 14 Ch. D. 8), 172, 194,
266.
Read v. Richardson (45 L. T. N.
S. 54), 54, 194, 267.
Reddaway & Co. v. Bentham
Hemp Spinning Co.(9R.P.
C. 503), 87, 182.
■e to pages.
Reddaway & Co. v. Banham (L.
R. 1896, A. C. 199), 24, 88.
Redgrave v. Hurd (L. R. 20 Ch.
D. 1), 152.
Reed v. West (47 Tex. 240), 123.
Reeder v. Brodt (6 Ohio Dec. 248),
65, 218.
Reeves v. Denicke (12 Abb. Pr.
N. S. 92), 14, 141.
Regina v. Closs (D. & B. 460),
229.
V. Dundas (6 Cox, 380), 229.
V. Gray (Seb. 183), 229.
V. Smith (D. & B. 566), 229.
V. Sutter (10 Cox, 577), 229.
Reinhart v. Spaulding (49 L. J.
Ch. 57), 69.
Republic of Peru v. Reeves (40
N. Y. Sup. Ct. 316), 222.
Renter's Telegram Co. v. Byron
(43 L. J. Ch. 661), 158.
Reynolds v. Bullock (47 L. J.
Ch. 773), 139.
R. Heinisch's Sons Co. v. Boker
(86 Fed. Rep. 765), 30, 100.
Richards v. Butcher (L. R. 1891,
2 Ch. D. 522), 59.
V. Peacock (33 N. J. Eq. 606),
146.
Richardson & Boynton Co. v.
Richardson & Morgan Co.
(8 N. Y. Supp. 53), 121.
Richards v. Hunt (65 Ga. 342),
148.
Richmond Nervine Co. v. Rich-
mond (159 U. S. 293), 15.
Richter v. Anchor Remedy Co.
(52 Fed. Rep. 455), 11, 42,
213.
Richter v. Reynolds (8 C. C. A.
220), 11, 12, 131, 213, 329.
Rilletv. earlier (61 Barb.435),69,
83.
Rivero V. Norris (Seton, 4th ed.,
236), 224.
Roberts v. Sheldon (8 Biss. 398),
71, 198, 223.
Rob-Sch
TABLE OF CASES.
XXXVll
References
Robertson v. Berry (50 Md. 591),
115, 175.
V. Quidding-ton (28 Bcavan,
529), 138.
Robinson v. Finlay (L. R. 9 Ch.
D. 487), 17, 38, 129, 203.
Rodgers v. Novvill (1), (6 Hare,
325), 105, 176, 237, 273.
V. Nowill (2), (Cox, Manual,
No. 115), 270, 271.
V. Philp (1 Off. Gaz. 29), 240.
V. Rodgers (31 L. T. N. S.
285), 189.
Rogers v. Rogers (53 Conn. 121),
102, 107.
V. Taintor (97 Mass. 291), 16,
17, 105.
Rogers Co. v. Wm. Rogers Mfg.
Co. (70 Fed. Rep. 1017),
107.
Rogers Mfg. Co. v. Rogers &
Spurr Mfg. Co. (11 Fed.
Rep. 495), 107, 108, 258.
Rolt V. Bulmer (Seb. 614), 139.
Ropes V. Upton (125 Mass. 258),
150.
Rose V. Henley (47 L. J. Ch. 577),
190.
V. Henly (Seb. 551), 202.
V. Loftus (47 L. J. Ch. 576),
189, 190, 202, 219, 275.
Rosing V. Atkinson (27 Sol. J.
534), 68.
Rowland v. Mitchell (L. R. 1897,
1 Ch. D. 71), 2.
Rowley v. Houghton (2 Brewst.
303), 69.
Royal Baking Powder Co. v.
Davis (26 Fed. Rep. 293),
171, 175.
V. Raj'mond (70 Fed. Rep.
376), 2, 72, 98, 125, 126.
V. Royal Chemical Co. (Price
& Steuart, 1), 367.
Roy Watch Case Co. v. Camm-
Roy Watch Case Co. (50 N.
Y. Supp. 979), 198.
are to pages.
Ruhstrat v. People (185 111. 133),
230.
Rumford Chem. Works v. Muth
(35 Fed. Rep. 524), 58, 77.
Russia Cement Co. v. LePage
(147 Mass. 206), 15, 103, 107,
110, 138, 256.
Ryder v. Holt (128 U. S. 525), 212,
215, 237, 249, 339.
s.
Salomon v. Hertz (40 N. J. Eq.
400), 154, 155.
Sanitas Co. v. Condy (4 P. R.
195), 198.
Santa Fe Electric Co. v. Hitch-
cock (New Mex., 50 Pac.
Rep. 332), 139.
Samuel v. Berger (24 Barb. 163),
240.
Sawyer Crystal Blue Co. v. Hub-
bard (32 Fed. Rep. 388),
180, 190, 201.
Sawyer V. Horn(l Fed, Rep. 24),
26, 167, 176, 202, 263, 308.
V. Kellogg (1), (7 Fed. Rep.
721), 52, 108, 175, 198, 209,
223, 258.
V. Kellogg (2), (9 Fed. Rep.
601), 125, 223, 258, 262, 263,
273.
Sarrazin v. W. R. Irby Cigar Co.
(93 Fed. Rep. 624), 7, 9, 14,
16, 40, 70, 213, 327.
Saxby v. Easterbrook (Cox, Man-
ual, 606), 33.
Saxlehner v. Apollinaris Co. (L.
R. 1897, 1 Ch. D. 893), 277.
V. Eisner & Mendelson Co.
(1), (88 Fed. Rep. 61), 131,
193, 276.
V. Eisner & Mendelson Co.
(2), (91 Fed. Rep. 536), 11,
22, 128, 131.
Schendle v. Silver (70 N. Y. Sup.
Ct. 330), 198.
XXXVlll
TABLE OF CASES,
Sch-Sim
Beferences
Scheuer v. Muller (74 Fed. Rep.
225), 29, 99.
Schmalz v. Wooley (57 N. J. Eq.
303), 231.
Schmidt v. Brieg(100 Cal. 672), 63.
V. Crystal Soda Water Co.
(35 Pac. Rep. 855), 63.
v.Haake(35 Pac.Rep.855),63.
V. Liberty Soda Works Co.
(35 Pac. Rep. 856), 63.
V. McEwen (35 Pac. Rep.
854), 63.
V. Steinke (35 Pac. Rep. 856),
63.
Schneider v. Williams (44 N. J.
Eq. 391), 37, 43, 246, 309.
Schrauder v. Beresford & Co.
(Browne, 661), 41.
Schumacher v.Marble(3 Mackey,
32), 314.
V. Schvvenke (1), (26 Fed. Rep.
816), 212, 215, 237, 240, 249,
301, 339.
V. Schwenke (2), (36 Off. Gaz,
457), 338.
Schumacher & Ettlinger v. Wog-
ram (35 Fed. Rep. 210), 302.
Schuyler v. Curtis (1), (19 N. Y.
Supp. 264), 160.
V. Curtis (2), (24 N. Y. Supp.
509), 162.
V. Curtis (3), (64 Hun, 594),
162.
V. Curtis (4), (147 N. Y. 434),
163.
Schwarz v. Superior Court (111
Cal. 106), 271.
Schweitzer v. Atkins (37 L. J. Ch.
847), 196.
Scott V. Mackintosh (1 V. & B.
503), 134, 146.
V. Rowland (20 W. R. 208),
14, 134.
V. Standard Oil Co. (106 Ala.
475), 60.
Seabury v. Grosvenor (53 How.
Pr. 192), 47, 338.
are to pages.
Seely v. Fisher (11 Sim. 581), 33.
Seixo V. Provezende (L. R. 1 Ch.
D. 192), 93, 183, 193, 201.
Selchow V. Baker (93 N. Y. 59),
72, 129.
Seltzer v. Powell (8 Phila. 296),
72.
Sen-Sen Co. v. Britten (L. R. 1899,
1 Ch. D. 692), 51.
Shackle v. Baker (14 Ves. 468),
135.
S. Hernsheim Bros. & Co. (Ltd.)
V. J. H. Hargrave & Son
(81 Off. Gaz. 503), 335.
Shaver v. Shaver (54 la. 208), 3,
39, 107, 246, 257.
Shaw V. Pilling (175 Pa. St. 78),
177, 245, 267.
Shaw Stocking Co. v. Mack (12
Fed. Rep. 707), 4, 72, 198,
201, 205.
Sheppard v. Stuart (13 Phila. 117),
42, 68, 79, 131.
Sherwood v. Andrews (5 Am. L.
R. N. S. 588), 14, 15, 48, 61,
129.
v. Horton, Cato & Co. (84 Off.
Gaz. 2018), 40, 212.
Shipvsrright v. Clements (19 W. R.
599), 13, 14, 15, 127, 139.
Shrimpton v. Laight (18 Beav.
164), 184.
Siegert V. Abbott (1), (61 Md. 276),
15, 47, 48, 239.
V. Abbott (2), (79 N. Y. Sup.
Ct. 243), 58, 83.
V. Abbott (4), (72 Hun, 243), 239,
331.
V. Ehlers (Seb. 432), 83, 223.
V. Findlater (L. R. 7 Ch. D.
801), 58, 153, 223.
V. Lawrence (11 Vict. L. R.
47), 223, 258.
Simmons Hardware Co. v. Waibel
(47 N. W. Rep. 814), 158.
Simmons Med. Co. v. Simmons
(81 Fed. Rep. 163), 156.
Sim-Sou
TABLE OF CASES.
XXXIX
Beferences
Simpson v. Wright (1), (15 OflF.
Gaz. 248), 310.
V. WrifTht (2), (IS Off. Gaz.
293), 305.
Singer Mfg. Co. v. Bent (163 U. S.
205), 51, 76, 103.
V. Brill (Cox, Manual, 672),
85.
V. June Mfg. Co. (163 U. S.
169), 51, 52, 64, 76, 103, 107.
V. Kimball & Morton (Ct. Sess.
Cas. 3rd ser. XI, 267), 42.
V. Larsen (8 Hiss. 151), 52,
103.
V. Loog(L. R. 18 Ch. D. 412),
85, 177, 201, 219, 234, 237.
V. Riley (11 Fed. Rep. 706),
52.
V. Stanage (6 Fed. Rep. 279),
51.
V. Wilson (L. R. 2 Ch. D.
434), 38, 175, 177, 185, 235.
Singleton v. Bolton (3 Doug. 293).
18, 30, 176.
Skinner v. Oakes (10 Mo. App.
45), 12, 13, 23, 110.
Slazenger v. Feltham (6 R. P. C.
531), 176, 195.
Sleepy Eye Milling Co. v. C. F.
Blanke Tea & Coffee Co.
(85 Oflf. Gaz. 1905), 40, 70,
212.
Small V. Sanders (118 Ind. 105),
217.
Smalley v. Greene (52 la. 241),
137.
Smith V. Adams (6 Paige, 435),
84.
V. Carron Co. (13 P. R. 108),
199.
V. Everett (27 Beavan, 446),
134.
V. Fair (14 Ont. Rep. 729), 13.
V. Imus (32 Alb. L. J. 455),
13, 92, 206.
V. Mason (W. R. 1875, p. 62),
71.
are to pages.
Smith V. Reynolds (10 Blatchf.
100), 255, 302, 303, 305.
V. Sixbury (25 Hun, 232), 71,
77.
V. Walker (37 Mich. 456), 92.
V. Woodruff (48 Barb. 438), 47,
72.
Smith & Davis Mfg. Co. v. Smith
(89 Fed. Rep. 486), 203.
Snodgrass v. Wells (11 Mo. App.
590), 9, 14.
Snowden v. Noah (Hopkins' Ch.
347), 1, 24, 72, 118, 121.
Snyder Mfg. Co. v. Snyder (54
Ohio St. 86), 147.
Social Register Ass'n v. Howard
(60 Fed. Rep. 270), 120.
Societe Anonyme v. Baxter (14
Blatchf. 261), 186.
V. Western Distilling Co. (1),
(43 Fed. Rep. 416), 66, 83.
V. Western Distilling Co. (2),
(46 Fed. Rep. 921), 264.
Societe, etc. de la Benedictine v.
Micalovitch (36 Alb. L. J.
364), 302, 331.
Society of Accountants v. Corpo-
ration of Accountants (20
Scot. Sess. Cas., 4th ser.,
750), 220.
Sohier V. Johnson (111 Mass. 238),
13, 19.
Sohl V. Geisendorf (1 Wilson,
Ind., 60), 126, 204.
Solis Cigar Co. v. Pozo (16 Colo.
388), 15, 80.
Somerville v. Schembri (L. R. 12
App. Cas. 453), 257.
Sorg V. Welsh (16 Off. Gaz. 910),
73, 301, 302.
South Carolina v. Seymour (153
U. S. 353), 212, 323.
Southern v. How (Popham, 144),
6, 24.
Southern White Lead Co. v. Cary
(25 Fed. Rep. 125), 99, 100,
198.
xi
TABLE OF CASES.
Sou-Tar
References are to pages.
Southern White Lead Co. v, Coit
(39 Fed. Rep. 492), 100.
Specific Med. Co. v. Wenz (14 Fed.
Rep. 250), 4.
Sperry v. Percival Milling Co.
(81 Cal. 252), 171, 175, 196,
266.
Spice V. James (Seb. 46), 136.
Spieker v. Lash (102 Cal. 38-45),
61, 110.
Spier V, Lambdin (45 Ga. 319),
143.
Spratt V. Jeffery (10 B. & C. 249),
135.
Stachelberg v. Ponce (1), (23 Fed.
Rep. 430), 48, 70, 240.
V. Ponce (2), (128 U. S. 686),
62, 181, 337.
Standinger v. Standinger(19Leg.
Int. 85), 104.
Starey v. Chilworth Gunpowder
Co. (L. R. 24 Q. B. D. 90),
45.
State V. Bishop (128 Mo. 373), 38.
V. Gibbs (56 Mo. 133), 10, 41.
V. Mason (Oregon), (38 Pac.
Rep. 130), 34.
V. McGrath (92 Mo. 357), 111.
State of Pennsylvania v. Wheel-
ing & Belmont Bridge Co.
(59 U. S. 421), 228.
Steinthal v. Samson (Seb. 546),
79.
Steinway v. Henshaw (5 P. R. 77),
199.
Stephens v, DeConto (4 Abb. Pr.
N. S. 47), 70, 119, 121.
V. Peel (16 L.T.N.S. 145),199.
Sterling Remedy Co. v. Eureka
Mfg. Co. (1), (70 Fed. Rep.
704), 32, 71.
V. Eureka Mfg. Co. (2), (80
Fed. Rep. 105), 66, 200.
Sternberger v. Thalheimer (3 Off.
Gaz. 120), 67, 304.
Stewart v. Einstein (64 Off. Gaz.
1533), 221.
Stewart v. Smithson (1 Hilt. 119),
50, 53.
St. Louis Stamping Co. v. Piper
(33 N. Y. Supp. 443), 60.
Stokes V. Allen (9 N. Y. Supp.
846), 73.
V. Landgraff (17 Barb. 608),
59.
Stonebraker v. Stonebraker (33
Md. 252), 106.
Stoughton V. Woodard (39 Fed.
Rep. 902), 67.
Strasser v. Moonelis (108 N. Y.
611), 37, 309.
Stuart V. F. G. Stewart Co. (91
Fed. Rep. 243), 107, 108,
139, 199, 208.
Stuart & Co. v. Scottish Val de
Travers Paving Co. (Ct.
Sess. Cas.,4th ser.,13,1), 60.
Swift V. Dey (4 Robertson, 611),
185, 271.
V. Peters (11 Off. Gaz. 1110),
310.
Sykes v. Sykes (3 B. & Cr. 541),
50, 176, 219.
Symington v. Footman (56 L. T.
N. S. 696), 60.
Symonds v. Greene (28 Fed. Rep,
834), 68, 214, 216, 237, 261,
269, 338.
Symonds v. Jones (82 Me. 302),
14.
Taendsticksfabriks Aktiebolaget
Vulcan V. Myers (139 N.Y.
364), 73, 192, 258.
Talbot V. Webley (3 R. P. C. 276),
66.
Talcott V. Moore (6 Hun, 106), 121,
275.
Tarrant & Co. v. Hoff (1), (71 Fed.
Rep. 163), 46.
V. Hoff (2), (76 Fed. Rep. 959),
14, 106, 109.
Tay-Uni
TABLE OF CASES.
xli
References are to pages.
Taylor v. Ashton (11 M. & W. 402),
176.
V. Bemis (4 Biss. 406), 9, 13.
V. Carpenter (1), (3 Story,458),
10, 71, 122, 257, 346.
V. Carpenter (2), (2 W. & M.
1), 10, 122, 124, 126, 202, 238,
241.
V. Carpenter (3), (2 Sandf. Ch.
603), 7, 10, 41, 184, 202, 244,
256.
V. Gillies (59 N. Y. 331), 60.
V. Taylor (L. R. 2 Eq. 290),
106, 181, 208.
Territory v. Guyott (9 Mont. 46),
325.
Tetlow V. Tappan (85 Fed. Rep.
774), 38, 42, 72, 128.
The Collins Co. v. Oliver Ames
& Son Corporation (18 Fed.
Rep. 561), 278.
The Fair v. Jose Morales & Co.
(82 111. App. 499), 11.
Thedford Medicine Co. v. Curry
(96 Ga. 89), 218.
Thompson v. Andrus (73 Mich.
551), 134.
V. Mackinnon (2 Steph. Dig-.
726), 14.
V. Montgomery (1891, App.
Cas-. 217), 95.
Thompson & Co. v. Robertson (Ct.
Sess. Cas., 4th sen, XV,
880), 37.
Thomson v. Winchester (36
Mass. 214), 25, 64.
Thorley 's Cattle Food Co. v. Mas-
sam (42 L. T. N. S. 851),
33, 107.
Thornbury v. Bevill (1 Y. & C.
Ch. 554), 137.
Thornton v. Crowley (47 N. Y.
Super. Ct. 527), 181.
Thum Co. V. Tloczynski (114 Mich.
149), 155.
Thynne v. Shove (L. R. 1890, 45
Ch. D. 577), 14, 105,110,141.
D
Tode V. Gross (127 N. Y. 480), 150.
Towle V. Spear (7 Penn. L. J. 176),
46, 65.
Tonge V. Ward (21 L. T. N. S.
480), 199, 223, 257, 275.
Town V. Stetson (4 Abb. Pr. N.
S. 218), 59.
Tracy v. Banker (170 Mass. 266),
37, 230.
Trade-mark Cases (100 U. S. 82),
7, 8.
Trask Fish Co. v. Wooster (28
Mo. App. 408), 64.
Trego V. Hunt (65 L. J. Ch. 1),
142, 144.
Trisdorfer & Co. v. Estate of
Bassett (60 MSS. D., Sept.
1896), 43.
Tuck & Sons v. Priester (L. R.
19 Q. B. D. 629), 157.
Tucker Mfg.Co.v.Boyington(Fed.
Cas. No. 14229), 52, 64, 181.
Tuerk Power Co. v. Tuerk (36
N. Y. Supp. 384), 107.
Turner v. Major (3 Giflf. 442), 14,
134.
Turton & Sons, Ltd. v. Turton,
(L. R. 42 Ch. D. 128), 106.
Tussaud v. Tussaud (38 W. R.
440), 14, 107, 106.
Twentsche Stoom Bleekery Goor
V. Ellinger (26 W. R. 71),
223, 257, 258.
u.
Union Paper Collar Co. v. Met-
ropolitan Collar Co., Ltd.
(3 Daly, 171), 269.
United States v. Braun (39 Fed.
Rep. 775), 40, 213, 227, 322.
V. Campe (89 Fed. Rep. 697),
229.
V. Holliday (3 Wall. 407), 325.
V. Koch (40 Fed. Rep. 250),
227, 322.
V. Loeb(49 Fed. Rep. 636), 229.
xlii
TABLE OP CASES.
Uni-Wat
References are to pages.
United States v. Marble (22 Off.
Gaz. 1366), 302, 314.
V. National Lead Co. (75 Fed.
Rep. 94), 268.
V. 132 Packages of Spirituous
Liquors and Wines (76 Fed.
Rep. 364), 229.
V. Roche (1 McCrary, 385),
300, 311.
V. Seymour (66 Off. Gaz. 1167),
331, 334, 335.
V. Steffens (100 U. S. 82), 310.
Upmann v. Currey (29 Sol. J. 735),
224, 257.
V. Elkan (L. R. 12 Eq. 140),
223, 224, 274.
V. Forester (L. R. 24 Ch. D.
231), 182, 224, 253, 257, 258,
273.
Upper Assam Tea Co. v. Herbert
(7 R. P. C. 183), 194.
V.
Valentine v. Valentine (31 L. R.
Ir. 488), 277.
Van Beil v. Prescott (85 N. Y. 630),
63.
Van Camp Packing Co. v. Cruik-
shanks Bros. Co. (90 Fed.
Rep. 814), 167, 175, 261.
Van iDyke v. Jackson (1 E. D.
Smith, N. Y., 419), 149.
Van Horn v. Coogan (52 N. J. Eq.
380), 71, 88, 198.
Vickery v. Welsh (19 Pick. 523),
153.
Vitascope Co. v. United States
Phonograph Co. (83 Fed.
Rep. 30), 32, 73.
Vonderbank v. Schmitt (44 La.
Ann. 264), 144.
Von Mumm v. Frash (56 Fed. Rep.
830), 100, 171, 185, 266.
V. Kirk (40 Fed. Rep. 589),
171.
Von Mumm v. Witteman (1), (85
Fed. Rep. 966), 167, 175,
180.
V. Witteman (2), (91 Fed. Rep.
126), 167.
w.
W. A. Gains & Co. v. Leslie (54
N. Y. Supp. 421), 71, 198.
Walker v. Mikolas (79 Fed. Rep.
955), 196.
Wallach v. Hooper (Ind. L. R. 8
Mad. 149), 239.
V. Wigmore (87 Fed. Rep.
469), 220.
Wallis V. Wallis (4 Dr. 458), 258.
Walter Baker Co. v. Baker (1),
(77 Fed. Rep. 181), 196.
V. Baker (2), (87 Fed. Rep.
209), 256.
V. Sanders (80 Fed. Rep. 889),
23, 106, 109, 259, 270.
Walton V. Crowley (3 Blatchf. 440),
21, 41, 184.
Wamsutta Mills v. Allen (12
Phila. 535), 187, 199.
Ward V. Drat (Cox, Manual, 607),
33.
V. Robinson (L. R. 9 Ch. D.
487), 17, 129.
War field v. Booth (33 Md. 63),
137.
Waring v. Cox (1 Camp. 369), 7.
Warner v. Roehr (Fed. Cas. No.
17189 A, ) 238, 242, 343.
Warren v. Warren Thread Co.
(134 Mass. 247), 16.
Washburn v. National Wall
Paper Co. (81 Fed. Rep. 17),
134, 138.
Washburn & Moen Mfg. Co. v.
Freeman Wire Co. (41 Fed.
Rep. 410), 268.
Waterman v. Shipman (130 N. Y.
301), 52, 70.
Wat-Wil
TABLE OP CASES.
xliii
References
Watkins v. Landon (52 Minn. 389),
129, 153.
Watt V. O'Hanlon (4 P. R. 1),
63.
Waukesha Hyg-eia Min. Springs
Co. V. Hygeia Sparkling
Distilled Water Co. (63 Fed.
Rep. 438), 69, 327, 339.
Webster v. Webster (3 Swanst.
490), 14.
V. Williams (62 Ark. 101),
137.
Wedderburn v. Wedderburn (22
Beavan, 84), 134.
Weed V. Peterson (12 Abb. Pr.
N. S. 178), 14, 141, 189, 273,
275.
Weener v.Brayton (152 Mass.lOl),
2, 37, 246, 273.
Weinstock, Lubin & Co. v. Marks
(109 Cal. 529), 105, 197,
209.
Welch V. Knott (4 K. & J. 747),
190, 202.
Weldon v. Dick (L. R. 10 Ch. D.
247), 122.
Wellman & Dwire Tob. Co. v.
Ware Tob. Works (46 Fed.
Rep. 289), 64, 171.
Welz V. Rhodius (87 Ind. 1), 143.
Weston V. Hemmons (2 Vict. L.
R. Eq. 121), 155.
Weston V. Ketcham (1), (39 N.Y.
Super. Ct. 54), 11, 15, 220.
V. Ketcham (2), (51 How. Pr.
455), 11, 19.
Wartonv. Thurber (Cox, Manual,
663), 274.
Wheeler v. Johnston (3 L. R. Ir.
284), 36.
Wheeler & Wilson Mfg. Co. v.
Shakespear (39 L. J. Ch.
36), 52.
White V. Jones (1 Abb. Pr. N. S.
337), 142.
V. Wagar (1), (83 111. App.
592), 229, 231.
are to pages.
White V. Wagar (2), (185 111. 195),
229.
Whitney v. Robertson (124 U. S.
190), 326.
Whittaker v. Howe (3 Beavan,
383), 137.
Whittier v. Dietz (66 Cal. 78), 9,
218.
Wilcox & Gibbs S. M. Co. v. Mar-
ble (1 Mackey, 284), 314.
V. The Gibbens Frame (17
Fed. Rep. 623), 51, 167, 308.
Wilmer v. Thomas (74 Md. 485),
15.
Wilkinson v. Greeley (Fed. Cas.
No. 17,671), 267.
V. Griffith (8 R. P. C. 370),
185, 193.
Williams v. Adams (8 Biss. 452),
73.
V. Brooks (50 Conn. 478), 258,
266.
V. Farrand (88 Mich. 473),
134, 147.
V. Johnson (2 Bos. 1), 73, 107,
169, 258.
V. Osborne (13 L. T. N, S.
498), 258.
V. S pence (25 How. Pr. 366),
73.
V. Williams (3 Mer. 157), 154.
V. Wilson (4 Sandf. Ch. 379).
140.
Winn V. Gilmer (27 Fed. Rep.817),
328.
Winsor v. Clyde (9 Phila. 513),
222.
Witman v. Hubbell (30 Fed. Rep.
81), 216.
Witthaus V. Braun (44 Md. 303),
11, 13, 14, 138.
Wm. Rogers Mfg. Co. v. Rogers
& S. Mfg. Co. (11 Fed. Rep.
495), 38, 105, 110, 111.
V. R. W. Rogers Co. (73 Off.
Gaz. 970), 105, 107, 108.
V. Simpson (54 Conn. 527), 106.
xliv
TABLE OF CASES.
Wol-You
References are to pages
Wolfe V. Alsop (12 Vict. L. R. (E.),
421), 240.
V. Barnett (24 La. Ann, 97),
128, 258.
V. Burke (7 N. Y. Sup. Ct.
151), 47, 105.
V. Goulard (18 How. Pr. 64),
64, 92.
V. Hart (4 V. L. R. Eq. 125),
64.
V. Lang (13 V. L. R. 752), 64,
240.
Wood V. Burgess (L. R. 24 Q. B.
• D. 162), 232.
V. Butler (3 R. P. C. 81), 47.
V. Lambert (L. R. 32 Ch. D.
247), 2, 37, 130.
V. Sands (Seb. 467), 110.
Woodman v. United States (15 Ct.
of CI. 541), 300.
Woolf V. Woolf (43 Sol. J. 127),
273.
Wooster v. Kisch (26 Hun, 61),
150.
Wotherspoon v. Currie (L. R. 5
H. L. 508), 23, 69, 102, 177,
178.
V. Gray (Ct. Sess. Cas., 3d
ser., 2, 38), 64.
Wright V. Simpson (15 Off. Gaz.
968), 16, 17, 301, 311.
Yale Cigar Mfg. Co. v. Yale (30
Off. Gaz. 1183,) 37, 69, 301,
310, 311, 333, 335.
Young V. Jones (3 Hughes, 274),
15, 16.
V. Macrae (9 Jur. N. S. 322),
52, 63.
LAW OF UNFAIR TRADE.
CHAPTER I.
PREFATORY.
i? 1. The need of legal restraint of unfair trade. —
From the early days of commerce, probably from its be-
ginning', the keen rivalry of competing merchants has
led to the use of unfair and dishonest methods of divert-
ing" custom. With the growth of commerce has come a
corresponding increase of fraudulent competition and
its attendant evils. The English-speaking people were
slow to realize that some legal restraint should be im-
posed upon the dealer who seeks to secure patronage by
dressing his goods in a manner calculated to deceive the
public into a belief that they are the goods of another.
There are a few unimportant unfair trade cases in the
English reports of the eighteenth century; the first re-
ported American decision was rendered in 1825.^ The
law as it is administered by the courts of the United
States to-day is almost wholly the product of the last
half-century.
The purpose of this treatise is to discuss the law of
unfair trade in its broadest sense, including not only the
law of trademarks, but also the principles applicable
to the restraint of fraudulent competition in cases where
no trade-mark is involved. "The law of trade-marks is
but part of the law of unfair competition in trade. "^
'Snowden v. Noah, Hopkins' Ch. 347.
-Bradford, J., in Dennison Mfg. Co. v. Thomas Mfg. Co., 94 Fed.
Rep. 651-659.
1
2 LAW OF UNFAIR TRADE. [§ 2
§2. Trade-mark defined.^ — A trade-mark is a dis-
tinctive- name, word, mark, emblem, design, symbol or
Judicial definitions.— "A trade-mark may consist of a name, sym-
bol, letter, form or device, if adopted and used by a manufacturer
or merchant in order to designate the goods he manufactures or sells,
to distinguish the same from those manufactured or sold by another,
to the end that the goods may be known in the market as his, and
to enable him to secure such profits as result from his reputation for
skill, industry, and fidelity." Mr. Justice Clifford in McLean v.
Fleming, 96 U. S. 245-254, and in Amoskeag Mfg. Co. v. Trainer, 101
U. S. 51-60.
"A trade-mark, properly so called, may be described as a partic-
ular mark or symbol, used by a person for the purpose of denoting-
that the article to which it is affixed is sold or manufactured by
him or by his authority, or that he carries on business at a particular
place. " Lord Cran worth in Leather Cloth Co. v. American Leather
Cloth Co., 35 L. J. Ch. 61.
"A trade-mark is a mere notice, an arbitrary mark or sign put on
an artificial product, whereby any person interested in the informa-
tion may be assured as to the origin of said product." Showalter,
J., in Royal Baking Powder Co. v. Raymond, 70 Fed. Rep. 376-380.
' 'A trade-mark is a peculiar name or device, by which a person deal-
ing in an article designates it as of a peculiar kind, character or
quality, or as manufactured by or for him, or dealt in by him, and
of which he is entitled to the exclusive use." Devens, J., in Weener
V. Brayton, 152 Mass. 101, 102.
"It is a mode of designating goods as being the goods which have
been, in some way or other, dealt with by A. B., the person who
owns the trade-mark." Kay, J., in Re The Australian Wine Im-
porters, (Ltd.), L. R, 41 Ch. D. 278-281.
"Symbols or devices used by a manufacturer or merchant to dis-
tinguish the products, manufactures, or merchandise which he pro-
^By the word "distinctive," as used in our definition, is meant
that the mark must be something which "shall be capable of distin-
guishing the particular goods in relation to which it is to be used
from other goods of a like character belonging to other people."
Lord Chief Justice Russell, in Rowland v. Mitchell, L. R. (1897) 1
Ch. D. 71-74. Wood v. Lambert, L. R. 32 Ch. D. 247; 54 L.T. N. S.
314; 3 P. R. 81; (Court of Appeals) L. R. 32 Ch. D. 257; 55 L. J. Ch.
277; 54 L. T. N. S. 317; 3 P. R. 88; Re Perry Davis & Son, 58 L. T.
N. S. 695; 5 P. R. 333, and many similar English cases treat of the
word "distinctive" as used in the English Patents, Designs and
Trade-marks Act of 1883, section 64, sub-section 1, c. But the word
is used with the same significance by our own leading jurists, as
for example, by Justice Holmes, in North-Eastern Awl Co. v. Marl-
borough Awl Co., 168 Mass. 147; 60 Am. St. Rep. 373; and by Judge
Lacombe in National Biscuit Co. v. Baker, 95 Fed. Rep. 136. For this
reason the word is incorporated in the definition given in the text.
§3] PREFATORY. 3
device, used in lawful commerce to indicate or authen-
ticate the source from which has come, or through which
has passed, the chattel upon or to which it is affixed.^
duces, manufactures or sells, from that of others, are called and
known by the name of trade-marks. They are used in order that
such products, manufactures or merchandise may be known as be-
longing to the owner of the symbol or device, and that he may secure
the profits from its reputation or superiority." Mr. Justice Clifford
in Amoskeag Mfg. Co. v. Trainer, 101 U. S. 51-56.
"Any name, symbol, letter, figure or device adopted by the per-
sons manufacturing or selling goods, and used and put upon such
goods to distinguish them from those manufactured or sold by others,
and employed so often and for such a length of time, as to raise
the presumption that the public would know that it was used to indi-
cate ownership of the goods in the person manufacturing or selling
them, constitutes his trade-mark." Rhodes, J., in Derringer v.
Plate, 29 Cal. 292; Cox, 324.
"A trade-mark is a symbol arbitrarily selected by a manufacturer
or dealer, and attached to his wares to indicate that they are his
wares." Douglas, J., in Cady v. Schultz, 19 R. I. 193; 61 Am. St.
Rep. 763-765.
"It is a sign or mark by which the manufactured articles pro-
duced by one person, or firm, or maker are distinguishable from
those produced by rival manufacturers." Williams, J., in Hoyt v.
Hoyt, 143 Pa. St. 623; 24 Am. St. Rep. 575.
"A trade-mark consists of a word, mark or device adopted by a
manufacturer or vendor to distinguish his productions from other
productions of the same article." GilfiUan, C. J., in Cigarmakers'
Protective Union v. Conhaim, 40 Minn. 243; 12 Am. St. Rep. 726.
"A trade-mark is a name, sign, symbol, mark, brand, or device
of any kind, used to designate the goods manufactured or sold, or
the place of business of the manufacturer or dealer in such goods."
Beck, J., in Shaver v. Shaver, 54 Iowa, 208; Price & Steuart, 395.
"A trade-mark may consist of anything, marks, forms, symbols,
which designate the true origin or ownership of the article." Mo-
nell, J., in Godillot v. Hazard, 44 N. Y. Sup. Ct. 427.
"A trade-mark is . . . the name, symbol, figure, letter, form, or
device used by a manufacturer or merchant to designate the goods
he manufactures or sells, to distinguish them from those manufac-
tured or sold by another, to the end that they may be known in the
iThe mode in which the mark is affixed is immaterial. It may
be water-marked in translucent fabrics. Price v. Goodall, L. R.
(1891) 1 Ch. D. 35. It has been held to be a sufficient method of
affixing the mark, to use it in advertising, and to place a litho-
graphed fac-simile of it on a card, in a box containing a quantity of
the goods. Hay cS: Todd Mfg. Co. v. Querns Brothers, 86 Off. Gaz.
1323.
4 LAW OF UNFAIR TRADE. [§3
§3. Earliest recognition of trade-marks.— While
the reports of the first English trade-mark case are not
harmonious, it is probable that the report of Popham is
substantially correct. It is as follows: "An action upon
market as his, and to secure such profits as result from a reputation
for superior skill, industry or enterprise." Crawford, J., in Larra-
bee V. Lewis, 67 Ga. 562.
"A trade-mark is an arbitrary character or characters without
special meaning:, adopted by persons, firms or corporations for the
purpose of identifying the goods manufactured by them or of which
they have the sale." Marble, Commissioner, in Ex parte Frieberg,
20 Off. Gaz. 1164.
"Broadly defined, a trade-mark is a mark by which the wares of
the owner are known in trade. Its object is two-fold: First, to pro-
tect the party using it from competition with inferior articles; and
second, to protect the public from imposition. . . . Anything
which can serve to distinguish one man's productions from those of
another may be used. The trade-mark brands the goods as genuine,
just as the signature to a letter stamps it as authentic." Coxe, J., in
Shaw Stocking Co. v. Mack, 12 Fed. Rep. 707-710.
"A trade-mark is any proper mark by which goods and wares of
the owner or manufacturer are known in the trade. Courts of
equity have two objects in view in granting injunctions against
their imitation: 1. To secure to the individual adopting one the
profits of his skill, industry, and enterprise; (2) to protect the public
against fraud." Nixon, J., in Humphreys' Specific Med. Co. v.
Wenz, 14 Fed. Rep. 250-252.
"A trade-mark is a sign or symbol primarily confined exclusively
to the indication of the origin or ownership of the goods to which it
may be attached, and it may be composed of any name, device, line,
figure, mark, word, letter, numeral or combination or arrangement
of any or all of these, which will serve the sole purpose of a trade-
mark, and which no other person can adopt or use with equal truth. "
Hargis, J., in Avery v. Meikle, 81 Ky. 73.
"A trade-mark consists of a word, mark, or device adopted by a
manufacturer or vendor to distinguish his production from other pro-
ductions of the same article." Wallace, J., in Hostetter v. Fries,
17 Fed. Rep. 620-622.
"A trade-mark, as defined by Bouvier, is a sign, writing or ticket
put on manufactured goods, to distinguish them from others. It has,
by a commentator on trade-marks, been more fully explained as a
name, symbol, figure, letter, form, or device, adopted and used by a
manufacturer or merchant to designate the goods he manufactures
or sells, to distinguish them from the goods of another." Allison,
P. J., in Ferguson v. Davol Mills, 2 Brewst. 314.
"A trade-mark is some arbitrary or representative device attached
to or sold with merchandise and serving to designate the origin or
§3] PREFATORY. 5
the case was broug-ht into the common pleas b}' a clothier
that whereas he had j,^ained great reputation for liis mak-
ing of his cloth by reason of which he had g-reat utter-
ance to his great benefit and profit, and that he used to
manufacture of that merchandise." Carpenter, J., in Davis v.
Davis, 27 Fed. Rep. 490-491.
"What is a trade-mark? A 'mark' means to make a visible sign
upon something; to affix a significant mark to; to draw, cut, fasten,
brand; a token upon, indicating or intimating something; to affix an
indication to; to attach one's name or initials to. A trade-mark, there-
fore, consists of the use in trade of such a mark, placed upon goods
manufactured by a particular person and placed in market with
such rnarks, for sale and trade." Welker, J., in Adams v. Heisel,
31 Fed. Rep. 279-280.
"A trade-mark is properly defined by Upton (Upton's Trade-
marks, 9) as 'the name, symbol, figure, letter, form or device adopted
and used by a manufacturer or merchant, in order to designate the
goods that he manufactures or sells, and distinguish them from those
manufactured or sold by another, to the end that they may be known
in the market as his, and thus enable him to secure such profits as
result from a reputation for superior skill, industry or enterprise.'
The trade-mark must be used to indicate not the quality, but the
origin or ownership of the article to which it is attached. It may be
any sign, mark, symbol, word or words, which others have not an
equal riglit to employ for the same purpose." Earl, Commissioner
of Appeals, in Newman v. Alvord, 51 N. Y. 189-193.
"Every one is at liberty to affix to a product of his own manufac-
ture any symbol or device, not previously appropriated, which will
distinguish it from articles of the same general nature manufactured
or sold by others, and thus secure to himself the benefits of increased
sale by reason of any peculiar excellence he maj-^ have given to it.
The symbol or device thus becomes a sign to the public of the origin
of the goods to which it is attached, and an assurance that they are
the genuine article ot the original producer. In this way it often
proves to be of great value to the manufacturer in preventing the
substitution and sale of an inferior and different article for his prod-
ucts. It becomes his trade-mark, and the courts will protect him in
its exclusive use." Mr. Justice Field in Amoskeag Mfg. Co. v.
Trainer, 101 U. S. 51-53.
*' Trade-mark. — An arbitrary symbol affixed by a manufacturer or
merchant to a vendible commodity'. The principal 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 protect the purchaser as well as
the vendor. All countries protect the integrity of trade-marks, and
nearlv all civilized nations have treaties or conventions securing
6 LAW OF UNFAIR TRADE. [§ 4
set his mark to his cloth whereby it should be known to
be his cloth: and another clothier perceiving- it used
the same mark to his ill-made cloth on purpose to de-
ceive him, and it was resolved that the action did well
lie."i
§4. The evolution of the law of trade-marks. —
This decision, rendered in 1590, was the first legal rec-
ognition of trade-marks. The growth of that recognition
was very gradual, however, for as late as 1742 we find
Lord Hardwicke saying that he "knew no instance of
restraining one trader from making use of the same mark
with another,"-' although the learned chancellor takes,
judicial cog-nizance of the wide-spread use of trade-marks,
observing that "every particular trader had some par-
ticular mark or stamp." And a century later ^ Lord
Langdale said: "It does not seem to me that a man can
acquire property merely in a name or mark."
reciprocity of protection. The tests of a trade-mark are: 1. Uni-
versality; that is, commonly recognized as such. 2. Exclusiveness;
in the possession of the owner. 3. Individuality; must indicate
origin and ownership. 4. Must be for merchandise. 5. Must be
in a lawful business. 6. Must be distinct and invariable. " Knight's
Mechanical Dictionary, title "Trade-mark," p. 2609.
"Our word 'trade-mark' comprehends both the marque de fahrique
and marque de commerce of France. " Townsend,J.,in La Republique
Francaise v. Schultz, 57 Fed. Rep. 37-41.
^ Southern (or Southerne) v. How, 2 Popham, 144; Cro. Jac. 471;
2 Rolle, 28; Cox, 633; Seb. Dig. 1.
2Blanchard v. Hill, 2 Atk. 484; Cox, 633; Seb. Dig. 2. Mr. Sebastian
observes of this decision: "The decision seems in a great measure to
have been founded upon a dread of setting up a monopoly, the dis-
tinction between a trade-mark and a patent not being clearl}' present
to his lordship's mind." Sebastian, Trade-marks (4th ed.), p. 6.
31842. Perry v. Truefitt, 6 Beav. 66; 1 L. T. O. S. 384; Seb. 73?
Cox, 644-646. It is now clearly established that the right to a trade-
mark is a property right. Hall v. Barrows, 4 DeG. J. & S. 150;
33 L. J. Ch. 204; 10 Jur. N. S. 55; 9 L. T. N. S. 561; Cox, Manual,
Case No. 215. Opinion of Westbury, L. C, in Leather Cloth Co. v.
American Leather Cloth Co., 4 DeG. J. &. S. 141; Lord Cranworth,
in House of Lords, S. C, 11 H. L. C. 533; Lord Kingsdown, in House
of Lords, S. c, 11 H. L. C. 544; Messerole v. Tynberg, 4 Abb. Pr.
N. S. 410; 36 How, Pr. 14; Cox, 479; Gilman v. Hunnewell, 122 Mass.
139; Cox, Manual, Case No. 541; Fish Bros. Wagon Co. v. Fish Bros.
Mfg. Co., 95 Fed. Rep. 457-461.
§§5,6] PREFATOliY. 7
^ 5. Trade-marks distinguished from patents and
copyrights. — While trade-marks to a degree partake of
the nature of both patents and copyrights, and the three
have many g'overning' leg^al principles in common, there
are wide differences separating each from the others.
As stated by Mr. Justice Miller in Trade-mark Cases,^
"the ordinary trade-mark has no necessary relation to
invention or discovery. The trade-mark recog'nized by
the common law is g^enerally the growth of a consider-
able period of use, rather than a sudden invention. It is
often the result of accident rather than design, and when
under the act of congress it is sought to establish it by
registration, neither originality, invention, discovery,
science or art is in any way essential to the right con-
ferred by that act. If we should endeavor to classify it
under the head of writings of authors, the objections are
equally strong. In this, as in regard to inventions, orig-
inality is required. And while the word ivritings may be
liberally construed, as it has been, to include original
designs for engravings, prints, etc., it is only such as
are original, and are founded in the creative powers of
the mind." And in the House of Lords, in 1882, Lord
Blackburn said,'-^ "trade-marks have sometimes been
likened to letters patent and sometimes to copyrights,
from both of which they differ in many respects. And I
think, to borrow a phrase used by Lord EUenborough in
Waring v. Cox,^ with reference to a different branch of
the law, 'much confusion has arisen from similitudinary
reasoning on the subject.'"
S 6. Function.— The function of a trade-mark is to
convey to the purchaser knowledge of the origin, source,
ownership* or manufacture of the article to which it is
applied.^ As will be shown hereinafter, the trade-mark
nOO U. S. 82-94. See also Taylor v. Carpenter, 2 Sandf. Ch.
603; 11 Paig-e, 292; Cox, -45; Cox, Manual, Case No. 84; Levy v. Waitt,
21 U. S. App. 394; Hoyt v. Hoyt, 143 Pa. St. 623; 24 Am. St. Rep.
575; Sarrazin v. W. R. Irby Cig-ar Co., 93 Fed. Rep. 624-626.
^Johnston v. Orr Ewing, 7 App. Cas. 219-228.
^1 Camp. 369.
■"'The function of a trade-mark is to indicate to the public the ori-
gin, manufacture or ownership of articles to which it is applied, and
8 LAW OF UNFAIR TRADE. [§ 7
need neither indicate the manufacturer or the place of
the article's manufacture, but may indicate either the
natural product of the earth, or the handling- or selection
of the g-oods, or some labor that has been performed in
connection therewith. It serves solely to guide the pub-
lic to the goods it wants to buy, acting as a perpetual
means of identification and advertisement of goods of
repute.
§ 7. Nature of the right to a trade-mark. — The right
to a trade-mark is a ri^ht of property,^ which the state
may, in the exercise of its police power, protect by ap-
propriate penal legislation. This right of property is,
in the United States, treated as a common-law right, and
in no wise dependent upon written law for its inception.^
thereby secure to its owner all benefit resulting from his identifica-
tion by the public with the articles bearing- it. No person other than
the owner of a trade-mark has a right, without the consent of such
owner, to use the same on like articles, because by so doing lie would
in substance falsely represent to the public that his goods were of the
manufacture or selection of the owner of the trade-mark, and thereby
would or might deprive the latter of the profit he otherwise might
make by the sale of the goods which the purchaser intended to buy.
Where a trade-mark is infringed the essence of the wrong consists
in the sale of the goods of one manufacturer or vendor as those of
another, and it is on this ground that a court of equity protects trade-
marks. It is not necessary that a trade-mark should on its face
show the origin, manufacture or ownership of the articles to which it
is applied. It is sufficient that by association with such articles in
trade it has acquired with the public an understood reference to such
origin, etc." Bradford, J., in Dennison Mfg. Co. v. Thomas Mfg.
Co., 94 Fed. Rep. 651-656,
"The sign, symbol or mark may be purely fanciful, and convey no
information as to the name of the producer. But the essential thing
is that it shall be designed and used to indicate the origin of the arti-
cle and that all articles having the same mark come from a common
source. " Lurton, J., in Deering Harvester Co. v. Whitman & Barnes
Mfg. Co., 91 Fed. Rep. 376-380.
J Derringer v. Plate, 29 Cal. 292; 87 Amer. Dec. 170; R. Cox, 324;
Seb. 249; Bass, Ratcliflf & Gretton (Ltd.) v. Feigenspan, 96 Fed. Rep.
206-212; Boston Diatite Co. v. Florence Mfg. Co., 114 Mass. 69; Law-
rence Mfg. Co. V. Tennessee Mfg. Co., 138 U. S. 537-548; Liggett &
Myer Tobacco Co. v. Hynes, 20 Fed. Rep. 883; G. G. White Co. v.
Miller, 50 Fed. Rep. 277-279.
2 Trade-mark Cases, 100 U. S. 82; Derringer v. Plate, supra;
Moorman v. Hoge, 2 Sawyer, 78-85; L. H. Harris Drug Co. v, Stucky,
§8] PREFATORY. 9
Much legislation has taken place tendinj,^ to aid the
common-law remedies and allord more effective redress
ag-ainst trademark piracy, but with the solitary excep-
tion of California^ it has nowhere been held in the United
States that compliance with a statute is a prerequisite
to the acquisition of a trade-mark. The contrary rule
obtains in England; registration being necessary to en-
title the owner to sue for infringement "^ A peculiar
element of the trade-mark right is that it must be used
as an entirety.'* The owner of a trade-mark cannot con-
vey to others territorial rights to its use,^ and a part-
ners interest in the trade-marks owned by the partnership
cannot be levied upon by or subjected to the payment of
claims of his personal creditors.''
^S. Requisites of a valid trade-mark. — As seen in
our definition, a trade-mark must
(a) Be used in lawful commerce;
(b) Be in some way affixed to a subject of lawful com-
merce;
(c) Be distinctive, identifying the character of the arti-
cle to which it is so affixed.
As comprehensive and concise a statement of the requi-
sites of a valid trade-mark as can be found in the books
is as follows: "The trade-mark must be used to indicate
not the quality, but the origin or ownership of the article
to which it is attached. It may be any sign, mark, sym-
46 Fed. Rep. 624-626; Battle v. Fiiilay, 50 Fed. Rep. 106; Hennessy
V. Brauuschweig-er, 89 Fed. Rep. 664; Sarrazin v. W. R. Irby Cigar
Co., 93 Fed. Rep. 624-627.
' Whittier v. Dietz, 66 Cal. 78. The evil effect of this decision has
since been obviated by the enactment of the present section 3199 of
the Political Code of California, which provides that "any person
who has first adopted and used a trade-mark or name, whether
within or beyond the limits of this state, is its orig-inal owner."
-The Merchandise Marks Acts, 1887-1894 (50 and 51 Vict., c. 28).
•^Manhattan Med. Co. v. Wood, Fed. Case No. 9026; 4 Cliff. 461.
■^Snodgrass v. Wells, 11 Mo. App. 590. Per vontra, as to the title
of a periodical publication (not a technical trade-mark), see Estes v.
Williams, 21 Fed. Rep. 189.
" Taylor V. Bemis, 4 Biss. 406; Cox, Manual, 132; Fed. Case No.
13779.
10 LAW OF UNFAIR TRADE. [§§9,10
boL Avord or words, which others have not an equal right
to employ for the same purpose."^
These are fundamental conditions which are never
varied, and to which there can be no exception. There
are further conditions which we will examine in detail in
a subsequent chapter.
^ 9. Perpetual existence. — The life of a trade-mark
is as long- as its continuous use by the owner or his
assignees. It is only terminated by abandonment, which
we will deal with later. The act of 1881 provides (§ 5)
that a certificate of registry shall in the case of articles
manufactured in this country remain in force for thirty
years from its date, subject to renew^al for a like period
at any time during the six months prior to the expiration
of the term of thirty years; so that all protection and
benefit of that act will be lost by failure to renew within
the period stated. But congress was careful to provide
further (§ 11) that nothing in the act shall be construed
as unfavorably affecting a claim to a trade-mark after
the term of registration shall have expired.
§ 10. Territorial limitation. — Unlike a patent, a trade-
mark knows no territorial limitation. The courts of the
United States, and those of the several states, are open
to the owners of trade-marks of whatever citizenship or
nationality who may seek to protect their trade-marks
against piracy.'^ The act of congress of 1881 provided
for the registration of trade-marks owned by aliens
^Earl, Commissioner of Appeals, in Newman v. Alvord, 51 N. Y.
189-193.
2 State V. Gibbs, 56 Mo. 133; Taylor v. Carpenter (1), 3 Story, 458
Cox, 14 Seb. 78; Coats v. Holbrook, 2 Sandf. 586; Cox, 20; Seb. 79
Taylor V. Carpenter (2), 2 Wood. & M. 1; Cox, 32; 9 L. T. 514; Seb. 83
Taylor V. Carpenter (3), 2 Sandf. 603; 11 Paige, 292; Cox, 45; Seb. 84
Lemoine V. Ganton, 2 E. D. Smith, 343; Cox, 142; Seb. 125; Derringer
V. Plate, 29 Cal. 292; Cox, 324; Seb. 249; Collins Co. v. Brown, 3 K.
6 J. 423; 2 Jur. N. S. 929; 30 L. T. 62; Seb. 151; Collins Co. v.;
Cohen, 3 K. & J. 428; 3 Jur. N. S. 929; 29 L. T. 245; 30 L. T. 62
5 W. R. 676; Seb. 152; Collins Co. v. Reeves, 28 L.J. Ch.56; 4 Jur
N. S. 865; 33 L. T. 101; 6 W. R. 717; Seb. 164; Collins Co. v. Walker,.
7 W. R. 22; Seb. 171.
§11] PREFATORY. U
"located in any forei^m country or tribe, which, by
treaty, convention, or law, affords similar privilej^^es to
citizens of the United States. " ^ The acquisition of a valid
trade-mark in any place carries with it the right to use
the mark everywhere.-' This is subject to the exception
that a foreiji^ner doing business in his own country under
a trade-mark has no common-law right to that trade-
mark in the United States, as against a domestic firm
which had established business under a similar trade-
mark, adopted in good faith, before the alien had sold
any goods in this country.^
§ 11. The necessity of user. — There can, finally, be
no right in or to a trade-mark apart from its use. "The
mere sale of a trade-mark apart from the business in
which it has been used confers no right of ownership,
because no one can claim the right to sell his goods as
goods manufactured by another. To permit this to be
done would be a fraud upon the public."^ To quote from
a New York court, "There is no such thing as a trade-
mark ' in gross,' to use that term by analogy. It must be
'appendant' of some particular business in which it is
actually used upon, or in regard to, specific articles."^
It follows, therefore, that the owner of a trade-mark can-
lAct of 1881, sec. 1.
2 Except that an alien who abandons his trade-mark in this country
is not re-vested with the rig-ht to use it, by the force of subsequent
legislation in his own country. Saxlehner v. Eisner & Mendelson
Co. , 91 Fed. Rep. 536-539. And one who takes out a foreign patent on
the product known by the mark, will lose his trade-mark rights in
such foreign country on the expiration of such patent, without impair-
ing his right to the use of the mark in the United States. Rahtjen
Co. V. Holzappel Co. , 101 Fed. Rep. 257 ; reversing s. c. , 97 Fed. Rep 949.
SRichter v. Anchor Remedy Co., 52 Fed. Rep. 455; affirmed in
Richter v. Reynolds, 59 Fed. Rep. 577.
< Witthaus V. Braun, 44 Md. 303; 22 Amer. Rep. 44.
« Weston V. Ketch am (2), 51 How. Pr. 455; Seb. 487; Pinto v. Badman,
8 R. P. C. 181; Cartmell, 270; Dixon Crucible Co. v. Guggenheim, 7
Phila. 408; 2 Brewst. 321; 3 Am. L.T. 288; Cox, 559; Seb, 331; Cotton
V. Gillard, 44 L. J. C'h. 90; Seb. 447; McAndrew v. Bassett, 4 DeG.
J. & S. 380; 33 L. J. Ch. 566; 10 Jur. N. S. 550; 10 L.T. X. S. 442; 12
W. R, 777; 4 N. R. 123; Seb. 234; Kidd v. Johnston, 100 U. S. 617;
Weston V. Ketcham (1), 39 N. Y. 54; Leather Cloth Co. v. American
Leather Cloth Co., 4 DeG. J. & S. 137; 11 H. L. C. 523. The Fair v.
Jose Morales & Co., 82111. App. 499.
12 LAW OF UNFAIR TRADE. [§12
not sell territorial rights in a trade-mark to different
persons, so as to enable them to make and sell goods as
being made by liim.^ "It goes without saying that a
trade mark or trade-name can only be acquired by adop-
tion accompanied with actual use."^ The inventor of a
S37^stem of manufacturing garments, who has never en-
gaged in their actual manufacture and sale, has no trade-
mark right in a mark to be applied to such garments.^
A mere casual use, interrupted, or for a brief period,
will not suffice to establish a trade-mark right in the
mark;* there must be such a user, as to its length and
publicity, as will show an intention to adopt the mark
as a trade-mark for a specific article.^
§ 13. Trade-marks as subjects of sale, assigmnent
or bequest. — In the early adjudications the assignability
of trade-marks was not clearly established.*'
iSnodgrass v. Wells, 11 Mo. App. 590. But in another case the
assig-nment by the English publisher of "Chatterbox" of the right
to publish a "Chatterbox" in the United States was sustained.
Estes V. Williams, 21 Fed, Rep. 189. The name, being that of a
periodical publication, was not a technical trade-mark.
2Kathreiner's Malz Kaffee Fab. v. Pastor Kneipp Med. Co., 82 Fed.
Rep. 321-325, per Jenkins, J.
3 Jaeger's Sanitary W. S. Co. v. Le Boutillier, 47 Hun, 521. Thus
under the English statutes a registrant is not entitled to register a
mark for goods in which he does not deal and in which he does not
actually intend to deal. John Batt & Co. v. Dunnett, L. R. (1899)
A. C 428.
^Menendez v. Holt, 128 U. S. 514; Levy v. Waitt (1), 56 Fed. Rep.
1016; Levy v. Waitt (2), 61 Fed. Rep. 1008.
*Kohler Mfg. Co. v. Beeshore, 59 Fed. Rep. 572-576; Richter v.
Reynolds, 59 Fed. Rep. 577-579.
6 See Corwin v. Daly, 7 Bos. 222; Cox, 265, where the court says,
referring to a name used as a trade-mark: "The employer of it can
neither give any special right to another, nor abandon it to the com-
munity so as forever to take away the right of employing it to desig-
nate his wares." In another case it has been held that one can "so
sell his name as to deprive himself of the right to use it for his own
manufacture, and give the right to another." Probasco v. Bouyon,
1 Mo. App. 241. In a later case before the same court, however, the
court said: "We think the answer to this question depends upon
the effect which the use of the name, in each particular instance, is
shown to have upon the minds of the public," and concluded that if
the public would be led to believe the assignor was still manufactur-
ing the goods, when they were the manufacture of another, the trans-
action would be a fraud upon the public and the use of the assigned
§12] PREFATORY. 13
It can now be said, however, that trade-marks are
generally assignable during the life-time of the owner of
the mark, and capable of transmission at his death.
Indeed, this rule is the necessary and indispensable cor-
relative of the rule that trade-marks have perpetual
existence. But there is the necessary qualification that
with the trade-mark must go the good-will of the busi-
ness, the right to select or manufacture the article to
which the former owner has been in the habit of affixing
the trade-mark in use.^ Any other course would tend to
mislead the public. It is ])rovided by section 70 of the
English Patents, Designs and Trade- marks Act of 1883
that "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 the good-will." No corresponding
provision exists in the act of congress of 1881.
Inasmuch as there can be no title in a trade-mark apart
from the good- will of the business in which it is used, it
follows that, in an assignment of the business and good-
will of the owner of the mark, the title to the trade-
mark, without being specially mentioned, passes to the
name would not be protected. Skinner v. Oakes, 10 Mo. App. 45;
Cox, Manual, 680. This dictum was quoted with approval in Oakes
V. Tonsmierre, 4 Woods, 547; Price & Steuart, 817.
1 Atlantic Milling- Co. v. Robinson, 20 Fed. Rep. 217; Massam v.
Cattle Food Co., L. R. 14 Ch. D. 748; Ex parte Lawrence, 44 L. T.
N. S. 98; Seb. 630; Re Wellcome, L. R. 32 Ch. D. 213; Leather
Cloth Co. V. American Leather Cloth Co., 4 DeG. J. & S. 137; 33
L.J. Ch. 199; Seb. 223; Goodman v. Merideu Brittania Co., 50 Conn.
139; Witthaus v. Braun, 44 Md. 303; 22 Am. Rep. 44; Seb. 492;
Skinner v. Oakes, 10 Mo. App. 45; Taylor v. Bemis, 4 Biss. 406;
McVeagh v. Valencia Cig-ar Factory, 32 OflF. Gaz. 1124; Price &
Steuart, 970; Oakes v. Tonsmierre, 4 Woods, 547; Price & Steuart,
817; Baldwin v. Von Micheroux, 25 N. Y. Supp. 857; Morgan v.
Rogers, 19 Fed. Rep. 5%; 12 Oflf. Gaz. 1113; Smith v. Imus, 32 Alb.
L. J. 455; Cotton v. Gillard, 44 L. J. Ch. 90; Smith v. Fair, 14 Ont.
Rep. 729; Burton v. Stratton, 12 Fed. Rep. 696; Price & Steuart, 668;
Pepper v. Labrot, 8 Fed. Rep. 29; Chadwick v. Covell, 151 Mass. 190;
Cox, Manual, 716; Cooper v. Hood, 26Beav. 293; Churton v. Douglas,
Johns. 174; Shipwright v. Clements, 19 W. R. 599; Sohier v. John-
son, 111 Mass. 238.
14 LAW OF UNFAIR TRADE. [§12
assig"nee.' It is not so clear, however, that the purchaser
acquires the rig-ht to use the name of the vendor, this
right being affirmed in some cases- and negatived in
others. '^ It would seem to be the law that a territorial
right to use a trade-mark cannot be assigned,* though in
the case of the name of a periodical publication the con-
trary rule has been announced.^
The fact of a trade-mark containing the name or
initials of a former owner of a business will not disen-
title an assignee of the business from its use, because the
proper name is treated as indicative of the business
rather than the present owner of the business.^ But the
1 Shipwright v. Clements, 19 W. R. 599; Seb. 350; Congress & Em-
pire Spring Co. v. High Rock Congress Spring Co., 57 Barb. 526
Cox, 599; 45 N. Y. 291; 10 Abb. Pr. N. S. 348; 6 Amer. Rep. 82
4 Am. L. T. 168; Cox, 624; Seb. 354; Witthaus v. Braun, 44 Md. 303
22 Amer. Rep. 44; Seb. 492; Morgan v. Rogers, 19 Fed. Rep. 596
26 Off. Gaz. 1113; Cox, Manual, 692; Merry v. Hoopes, 111 N.Y. 420
Churton v. Douglas, Johns. 174; Fulton v. Sellers, 4 Brewst. 42
Thompson v. Mackinnon, 2 Steph. Dig. 726; Lippincott v. Hubbard
28 Pitts. L, J. 303; Burkhardt v. Burkhardt Co., 4 Ohio N. P. 358
Listman Mill Co. v. Wm. Listman Mill Co., 88 Wis. 334; Prince
Mfg. Co. V. Prince's Metallic Paint Co., 39 N. Y. S. R. 488; Menen-
dez V. Holt, 128 U. S. 514; Hegeman v. Hegeman, 8 Daly, 1; Sarra-
zin V. W. R. Irby Cigar Co., 93 Fed. Rep. 624.
2Banks v. Gibson, 34 Beav. 566; Levy v. Walker, L. R. 10 Ch. D.
463; Webster v. Webster, 3 Swanst. 490; Clark v. Leach, 32 Beav.
14; Bond v. Milbourn, 20 W. R. 197; Tussaud v. Tussaud, 38 W. R-
440; Phelan v. Collender, 13 N. Y. Sup. Ct. 244; Hoflf v. Tarrant &
Co., 71 Fed. Rep. 163; affirmed in Tarrant & Co. v. Hoff, 76 Fed. Rep.
959; J. G. Mattingly Co. v. Mattingly, 96 Ky. 430.
^Scottv. Rowland, 20 W. R. 208; Lewis v. Langdon, 7 Sim. 421;
Turner v. Major, 3 Gifif. 442; Dence v. Mason, 41 L. T. N. S. 573;
Dickson v. McMaster, 18 Ir. Jur. 202; Reeves v. Denicke, 12 Abb. Pr.
N. S. 92; Howe v. Searing, 10 Abb. Pr. 264; Cox, 244; Petersen v.
Humphrey, 4 Abb. Pr. 394; Cox, 212; Thynne v. Shove, 89 L. T.
Jour. 84; Mayer v. Flanagan, 12 Tex. Civ. App. 405; Sherwood v.
Andrews, 5 Am. L. Reg. N. S. 588; Seb. 263.
^Snodgrass v. Wells, 11 Mo. App. 590.
"Estes v. Williams, 21 Fed. Rep. 189.
^Pepper v. Labrot, 8 Fed. Rep. 29; LePage Co. v. Russia Cement
Co., 51 Fed. Rep. 941; Jennings v. Johnson, 37 Fed. Rep. 364; Frazer
V. Frazer Lubricating Co., 121 111. 147; McLean v. Fleming, 96 U. S.
245; Symonds v. Jones, 82 Me. 302; 8 L. R. A. 570; Filkins v. Black-
man, 13 Blatchf. 440; Weed v. Peterson, 12 Abb. Pr. N. S. 178;
§12] PREFATORY. 15
courts of the United States are inclined to insist that
the public be notified of the chan<,re of ownership, and
this is now the safer rule/ particularly where the trade-
mark is a mark of special qualities, due to superior
material, processes, care and skill exercised by the
originator thereof, or the mark bearing his name "would,
or at least might, imply that his personal work or
supervision was employed in the manufacture; and in
such cases it would be a fraud upon the public if the
trade-mark should be used by other persons, and for this
reason such a trade-mark would be held to be unassign-
able. . . . But, on the other hand, the usages of
trade may be such that no such inference would natu-
rally be drawn from the use of a trade-mark which con-
tains a person's name, and that all that purchasers
would reasonably understand is that goods bearing the
trade-mark are of a certain standard, kind or quality, or
are made in a certain manner, or after a certain formula,
by persons who are carrying on the same . business that
formerly w^as carried on by the person whose name is on
the trade -mark. "'^ In the sale of a business, then, the
general rule is that the trade-marks connected with the
business will pass to the purchaser without being speci-
fied in the bill of sale,^ and in case of a general assignment
Young V. Jones, 3 Hughes, 274; Fulton v. Sellers, 4 Brewst. 42;
Weston V. Ketcham (1), 39 N. Y. 54; Clark v. Ins. Co., 7 Mo. App.
71; Frank v. Sleeper, 150 Mass. 583; Hoxie v. Chaney, 143 Mass.
592; Russia Cement Co. v. LePage, 147 Mass. 206; Brown Chemical
Co. V. Meyer, 139 U. S. 540. The fact that a trade-mark includes
the name and portrait of the first owner does not render it unassign-
able to another. Richmond Nervine Co. v. Richmond, 159 U. S.
293-302.
1 Manhattan Med. Co. v. Wood, 108 U. S. 218; Horton Mfg. Co. v.
Horton Mfg. Co., 18 Fed. Rep. 816; Alaska Packers' Ass'n v.
Alaska Imp. Co., 60 Fed. Rep. 103; Siegert v. Abbott (1), 61 Md.
276; Sherwood v. Andrews, 5 Am. L. Reg. N. S. 588; Seb. 263;
■Carmichael v. Latimer, 11 R. I. 395; Seb. 521; Pillsbury v. Pills-
bury-Washburn Flour Mills Co., 64 Fed. Rep. 841; 12 C. C. A. 432;
People V. Molins, 10 N. Y. Supp. 130.
2 Charles Allen, J., in Hoxie v. Chaney, 143 Mass. 592.
s Shipwright v. Clements, 19 W. R. 599; Wilmer v. Thomas, 74
Md. 485; 13 L. R. A. 380; Solis Cigar Co. v. Pozo, 16 Colo. 388; 25
Am. St. Rep. 279.
16 LAW OF UNFAIR TRADE. [§12'
or bankruptcy the trade-marks also pass, to inure to the
benefit of the creditors,^ The exception to each of these
rules arises where the trade-mark depends upon the
secret processes or individual skill of its owner for its
value.'
Trade-marks may, in connection with the good-will of
the business wherewith they are connected, be trans-
mitted by bequest.^ This naturally leads to the result
that several persons may by bequest (as they may upon
dissolution of copartnership) become possessed of the
right to use the same trade-mark. As where a decedent, a
watchmaker using" "Dent, London" as his trade-mark on
watches which he manufactured at three several shops in
London, bequeathed the business of two of these shops
to one person and the third shop to another. It appears
to have been held here that each legatee had a several
right to the use of the trade-mark.'^ While this decision
has been unfavorably criticised, an analogous ruling
has been made by Judge Hughes in the United States
Circuit Court for the Eastern District of Virginia. He
said, "Rights in trade-mark are analogous to rights in
the good-will of a partnership. In the absence of ex-
press stipulation at the time of dissolution, each partner
may go on and use the trade-mark of the firm."^ It is
^Heg-eman v. Heg-eman, 8 Daly, 1; Rogers v. Taintor, 97 Mass.
291; Warren v. Warren Thread Co., 134 Mass. 247; Hudson v. Os-
borne, 39 L. J. Ch. 79; Cotton v. Gillard, 44 L. J. Ch. 90; Ex parte
Foss, 2 DeG. & J. 230; Bury v. Bedford, 4 DeG. J. & S. 352; Ex
parte Young, Seb. 537; Longman v. Tripp, 2 Bos. & P. N. R. 67;
Hammond v. Brunker, 9 R. P. C. 301; Cartmell, 142; Lippincott v.
Hubbard, 28 Pitts. L. J. 303; Burkhardt v. Buckhardt Co., 4 Ohio
N. P. 358; Batchellor v. Thomas, 86 Fed. Rep. 630; Sarrazin v. W. R.
Irby Cigar Co., 93 Fed. Rep 624-626.
2 Re Swezey, 62 How. Pr. 215.
3 McLean v. Fleming, 96 U. S. 245.
^Dent V. Turpin, 2 J. & H. 139; 30 L. J. Ch. 495; 7 Jur. N. S. 673;
4 L. T. N. S. 673; 9 W. R. 548. Mr. Cox observes, "This case is to
be taken as of an exceptional character; it is not in accord with set-
tled principles." Cox, Manual, 196.
fi Young V. Jones, 3 Hughes, 274; Price & Steuart, 150. And to the
same effect, see Banks v. Gibson, 34 Beav. 566; 34 L. J. Ch. 591 ; 6 N. R.
373; 13 W. R. 1012; 11 Jur. N. S. 680; Seb. 248; Condy v. Mitchell,.
37L. T.N.S. 268; 37 L. T.N. S. 766; 26 W. R. 269; Seb. 561; Wright v.
§ 12] PREFATORY. 17
clear, however, that where a mark is a common design
for the purpose of a common adventure used by several
independent dealers or manufacturers in a joint enter-
prise, a mark belonging to neither individually, but rep-
resenting the enterprise of all concerned, for the pur-
poses of their joint adventure, the trade-mark can be used
only so long as all the parties remain interested in the
enterprise; when it terminates, the function and life of
the trade-mark also terminate.^ If the business and
good-will of a partnership are sold upon dissolution the
trade-mark goes with the other assets.'^ Another ques-
tion is presented where one partner retires from the firm.
If the retiring partner re-engages in business and con-
tinues to use the trade-mark, it has been held that that
fact, even if the mark is applied by him to a spuri-
ous article, is evidence of his intention to retain his
interest in the trademark.^ If upon dissolution one
partner takes the whole business by agreement, the
valuation of the retiring partner's interest must include-
Simpson, 15 Off. Gaz. 968; Price & Steuart, 165. In this connectiott
Mr. Justice Bradley said: "In holding- that it is necessary to the
validity of a trade-mark that the claimant of it must be entitled to an
exclusive rig-ht to it, or property in it, we do not mean to say that it
may not belong to more than one person, to be enjoyed jointly or
severally. Copartner*, upon a dissolution of partnership, may stipu-
late that each of them may use the trade-marks of the firm, and there
may be many other cases of joint and several ownership; but such
co-owners will together be entitled to the exclusive use of the trade-
mark, and perhaps each of them will be entitled to such exclusive use
as to all other persons except their associates in ownership." New
York Cement Co. v. Coplay Cement Co., 45 Fed. Rep. 212.
iRe Jones, 53 L. T. 1; Cartmell, 189; Robinson v. Finlay, and
Ward V. Robinson, L. R. 9 Ch. D. 487; 39 L. T. 398; 27 W. R. 294;
Cartmell, 295. These cases arose between merchants in Manchester
and corresponding- houses in Manilla and Rangoon. The trade-marks
were composite marks, containing crests, names of the individuals
written in Chinese characters, coats of arms, and other personal
indicia of tlie parties interested.
2Armistead v. Blackwell, 1 Ofif. Gaz. 603; Seb. 399; Rogers v.
Taintor, 97 Mass. 291; Seb. 283; Bradbury v. Dickens, 27 Beav. 53;
28 L. J. Ch. 667; 33 L. T. 54; Seb. 173; Banks v. Gibson, 34 Beav.
566; 11 Jur. N. S. 680, 34 L. J. Ch. 591; 13 W. R. 1012; 6 N. R. 273.
8 Wright V. Simpson, 15 Off. Gaz. 9f.8; Price & Steuart, 165.
18 LAW OF UNFAIR TRADE. [§12
his interest in the trade-marks of the partnership, which
pass with the good- will .^
Trade-marks upon the death of their owner pass with
his other personalty to his personal representatives. ^
There should, of course, be a conveyance of the deced-
ent's title by administration; and where, as in Hoven-
den V. Lloyd, there is no administration, and a relation
simply continues business and uses the trade-mark, he
probably acquires no title to the trade-mark thereby.
At all events, in that case, where the deceased's son so
used the trade-mark and subsequently sold his business
with its good-will to a third party, it was held that the
son had acquired no title capable of being transferred to
such third party.^ The supreme court of Pennsylvania,
however, has distinctly held that where a man's sons
continued to use his trade-mark after his death (there
having been no evidence of administration upon his
estate) and subsequently separated, each continuing in
business and using the trade-mark, they were entitled to
an injunction against a stranger imitating that trade-
mark, upon a bill in equity in which they joined as com-
plainants. The subject is not as fully discussed by the
court as it should have been. The language of Lord
Cranworth in Leather Cloth Co. v. American Leather Cloth
Co^ is quoted in the opinion, as follows: "Difficul-
ties, however, may arise where the trade-mark consists
merely of the name of the manufacturer. When he dies,
those who succeed him (grandchildren or married daugh-
ters, for instance), though they may not bear the same
name, yet ordinarily continue to use the original name as
a trade-mark, and they would be protected against any
1 Banks v. Gibson, 34 Beav. 566; 11 Jur. N. S. 680; 34 L. J. Ch. 591;
13 W. R. 1012; 6 N. R. 373; Seb. 248; Gage v. Canada Pub. Co.,
11 Can. S. C. R. 306; 6 Ont. Rep. 68; 11 Ont. App. 402.
^Croft V. Day, 7 Beav. 84; Re Farina, 44 L. T. N. S. 99; Giblett v.
Read, 9 Mod. 459.
•"'Hovenden v. Lloyd, 18 W. R. 1132; Seb. 337. There was substan-
tially the same state of facts and the same holding- in Singleton v.
Bolton, 3 Doug. 293; Cox, 634; Seb. 4.
niH. L. C. 523.
§12] PREFATORY. 19
infring'eraent of the exclusive right to that name. They
would be so protected, because accordinjif to the usage of
trade they would be understood as meaning no more by
the use of their grandfather's or father's name than that
they were carrying on the manufacture formerly carried
on by him." In the course of its opinion the Pennsylvania
court observes: "It was urged, however, that conced-
ing this symbol to have been a valid trade-mark in the
hands of Jesse Darlington (grandfather of complain-
ants), or even of Jared (his son), that upon the death of
the latter it ceased to be the property of any one, and
that its use by several members of the family of the lat-
ter destroyed its distinctive features and left it open to
the public to appropriate it. We cannot assent to this
proposition."^ It might be suggested that in cases of
this character (i. e., where no administration is had upon
the estate of a deceased owner of a trade-mark) its use
by relatives in a similar business is practically an adop-
tion de novo of the mark, left open to the world for appro-
priation by its owner's death.
Where the owner of a trade-mark takes partners into
the business in which it is employed, the title to the
trade-mark ordinarily is merged into the partnership
assets.'^ The supreme court of the United States has
apparently held to the contrary,-^ but the facts were that
the owner of the mark owned the premises in which the
iPaxon, J., in Pratt's Appeal, 117 Pa. St. 401-^12. "The reason
why a trade-mark may pass 'without administration,' as suggested
by Paxon, J., in Pratt's Appeal, 117 Pa. St. 401, seems to be that a
trade-mark can have no value except in connection with the business
to which it attaches; and as creditors are not usually in condition to
realize the value of the trade-mark, either by carrying- on the busi-
ness themselves or bj' selling to one who will, its chief element as an
asset is wanting. But it seems, also, that cases may arise in which
the trade-mark of a deceased testator or intestate is of value to cred-
itors, or a subject of contention among heirs, when administration
may become necessary." Woerner, Administration, 635, note 8.
-Weston v. Ketcham (2), 51 How. Pr. 455; Filkins v. Blackman, 13
Blatchf. 440-446; Sohier v. Johnson, 111 Mass. 238-242; Bury v. Bed-
ford. 4 DeG. J. & S, 352-371; Condy v. Mitchell, 37 L. T. N. S. 268.
^Kidd v. Johnson, 100 U. S. 617-619.
20 LAW OF UNFAIR TRADE. [ § 12
business was conducted, and took two of his clerks into
partnership. He did not convey the realty to the firm,
and upon dissolution there was correspondence between
him and the withdrawing partners which, in the lan-
guage of Mr. Justice Field, "discloses beyond question
their knowledge of the transfer and recognition of his
power to make it;" referring to his subsequent sale of
his business and his trade-mark to another. It would
seem from this decision, then, that the partner who
originally owns the mark may by agreement permit the
use of the trade-mark by the firm during its existence,
reserving the title to the trade-mark to himself in the
event of dissolution.
The federal supreme court has also held that when a
partner retires from a firm, assenting to or acquiescing
in the retention by the other partners of the old place of
business and the future conduct of the business by them
under the old name, the good-will (including the title to
the firm's trade-marks) remains with the latter as a mat-
ter of course.^
It is important to note, in considering the assignability
of trade-marks, the doctrine first announced by Judge
Shipman, that "The right to use a trade-mark cannot be
so enjoyed by an assignee that he shall have the right to
affix the mark to goods differing in character or species
from the article to which it was originally attached."^
And where the trade-mark involved the use of the as-
signor's name, it was said: "Where an individual parts
with a right to the use of his own name in any given
connection, the courts should not extend the contract by
which he does so beyond its necessary scope. It certainly
will not be held that a man has tied himself up so as to
prevent the use of his own name any further than the
clear terms of the agreement show his intention to do so."^
iMenendez v. Holt, 128 U. S. 514-522.
2Filkins v. Blackmail, 13 Blatchf. 440-444. This rule is again laid
down in Chattanooga Medicine Co. v. Thedford (1), 49 Fed. Rep. 949-
952; Chattanooga Medicine Co. v. Thedford (2), 58 Fed. Rep. 347.
^Newman, J., in Chattanooga Medicine Co. v. Thedford (2), 58
Fed. Rep. 347-349.
§ 12] PREFATORY. 21
One who has assig-ned either his trade-mark ' or trade-
name ■' will be enjoined from ajjain using- the mark or
name itself; if he makes such an assignment to a corpo-
ration with a reversion to him if the corporation ceases
to exist, he cannot make a valid assignment of the mark
to another during the life of the corporation/^
The assignee of a trade-mark does not, merely by vir-
tue of the assignment, obtain a right to enjoin infringers
of the mark. He must show that he has actually applied
it, commercially, to goods of the class for which it is
claimed as a trade-mark.*
While, as we have seen, a trade-mark is assignable
only in connection with the good-will of the business in
which it is used, it does not follow that both must be
conveyed by the same instrument or at the same time;
and under the English Patents, Trade-marks and Copy-
right Act of 1883 it has been held that the registration
of an assignment of a trade-mark need not be contem-
poraneous with the assignment of the good-will.'^ ' It is
possible that the originator of a manufacturing- business
and the person who .purchases that business may each
thereafter have a right to the limited use of the trade-
name and trade-mark used in connection with that busi-
ness.*^' Where such a state of facts arises, either the
vendor or purchaser can assign his right to the use of the
trade-name and trade-mark, and either will be enjoined
upon the application of the other from using the words
"only genuine" in connection with the name and mark.^
iBury V. Bedford, 4 DeG. J. & S. 352; Burkhardt v. Burkhardt
Co., 4 Ohio N. P. 358.
-Churton v. Douglas, Johnson (Eng.), 174.
3Petrolia Mfg. Co. v. Bell & Bogart Soap Co., 97 Fed. Rep. 781-
784.
* Walton V. Crowley, 3 Blatchf. 440-448; Filkins v. Blackman, 13
Blatchf. 440-445.
■Re Wellcome, L. R. 32 Ch. D. 213; 3 R. P. C. 76; 55 L. J. Ch.
542; 54 L. T. 493; 34 W. R. 453; Cartmell, 342.
«Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 546;
Fish Bros. Wagon Co. v. Fish Bros. Mfg. Co., 87 Fed. Rep. 201;
affirmed, 95 Fed. Rep. 457.
"Fisli Bros. Wagon Co. v. Fish Bros. Mfg. Co., 87 Fed. Rep. 203.
22 LAW OF UNFAIR TRADE. [§12
In a case where a trade-mark was used by a manufac-
turer in Eng-land and also by a firm in the United States
in which he was a partner, the use of the trade-mark
having- begun in both places about the same time, and it
having- become a distinctive mark, identifying the article
manufactured in the United States, the English manufac-
turer retired from the American house. Upon his subse-
quently attempting to use it in a separate business of the
same kind in this country, it was held that his successors
in the old firm had, upon his retirement, succeeded to the
exclusive rig-ht to use the trade-mark, as part of the
business, and he was enjoined from using the mark in
his new establishment in the United States.^ This case
is but a practical application of the doctrines we have
just considered, to an unusual state of facts.
Whenever the alien owner of a trade-mark has aban-
doned its use in the United States by neglecting to assert
his rights as ag-ainst infringers in this country, the public
has a right to use that mark, of which it will not be
divested by the operation of a law subsequently enacted
by the country of which the former owner is a citizen. ^
A trade mark applied to mineral paint produced from a
deposit on a particular piece of land will pass to a
purchaser of the land as an incident to the realty, ^ as
will a trade-mark applied to the water of a particular
spring,^ or the right to use words designating a partic-
ular building rather than the business conducted there-
in,-'^ or the right to use a mark which has come to desig-
nate the product of a mill or factory rather than of the
proprietor.^
In a case where the plaintiff had assigned the right to
use his trade-mark to the defendant for a term of years,
for a share of the profits of defendant's business, and
1 Batchellor v. Thompson, 86 Fed. Rep. 630,
^Saxlehner v. Eisner & Mendelson Co. (2), 91 Fed. Rep. 536.
sprince Mfg-. Co. v. Prince's Metallic Paint Co., IS N. Y. Supp.
249; Cox, Manual, 721.
<Hill V. Lockwood, 32 Fed. Rep. 389.
^Armstrong v. Kleinhaus, 82 Ky. 303.
^Atlantic Milling Co. v. Robinson, 20 Fed. Rep. 217.
§13] PREFATOUY. 23
during the term re-eng-aged in the use of the mark, in an
action by the plaintiff upon the contract it was held
that the phiintiff could recover the profits due him under
the contract, and the defendant was allowed damages
for the breach of the contract. The validity of the
assignment appears not to have been questioned.^
§13. Unfair competition. — In 1877, the American
writer, Mr. Charles E. Coddington, in his excellent digest
of trade-mark cases, remarked that "The interference
of courts of equity, instead of being founded upon the
theory of protection to the owner of trade-marks, is now
supported mainly to prevent frauds upon the public.'^ If
the use of any words, numerals or symbols is adopted
for the purpose of defrauding the public, the courts will
interfere to protect the public from such fraudulent
intent, even though the person asking the intervention
of the court may not have the exclusive right to the use
of these words, numerals or symbols."^ He added that
this rule was fully supported by four cases, two English
and two American, which he cited. ^ Since that time,
the recognition of the doctrine so expressed has grown
steadily and certainly, so that it now demands treatment
as a specific branch of the law, separate, apart from, but
including the narrower and strictly technical law of
trade-marks.-' "The tendency of the courts at the pres-
^Coe V. Bradley, 9 Off. Gaz. 541.
-The writer erred in ascribing- this as the only reason. The pre-
vention of fraud upon the person whose g-oods are pirated is equally
important and cogent. Humphrey's Specific Med. Co. v. Wenz, 14
Fed. Rep. 250; Skinner v. Oakes, 10 Mo. App. 45.
■■'Coddington, Digest, sec. 36.
n869. Lee v. Haley, 21 L. T. N. S. 546; 18 W. R. 181; L. R. 5 Ch.
155; 39 L. J. Ch. 284; 22 L. T, N. S. 251; 18 \V. R. 242; Seb. 325.
1872. Wotherspoon v. Currie. 22 L. T. N. S. 260; 18 W. R. 562;
42 L. J. Ch. 130; 23 L. T. N. S. 443; 18 W. R. 942; L. R. 5 H. L.
508; 42 L. J. Ch. 130; 27 L. T. N. S. 393; Seb. 329.
1872. Newman v. Alvord, 49 Barb. 588; 35 How. Pr. 108; Cox, 404;
51 N. Y. 189; 10 Am. Rep. 588; Seb. 282.
1877. Kinney v. Basch, Seb. 542.
*"The law of unfair competition is well settled. It is only the
application of that law to individual cases which requires discus-
sion." Lacombe, J., in Walter Baker & Co. v, Sanders, 80 Fed.
Rep. 889-891.
24 LAW OF UNFAIR TRADE. [§14
ent time seems to be to restrict the scope of the law
applicable to technical trade-marks, and to extend its
scope in cases of unfair competition."^
§ 14. Historical. — In 1742, in Blanchard v. Rill, a deci-
sion of no authority and of no particular use except to
illustrate the slow growth of the law of trade-marks,
Lord Hardwicke observed, referring to Southern v. How:^
"It was not the single act of making use of the mark
that was sufficient to maintain the action, but doing it
with a fraudulent design, to put off bad cloths by this
means, or to draw away business from the other clothier,"^
The chancellor so crudely expressed (but disapprovingly)
the first reported judicial reference to the law of unfair
competition. In 1896, Lord Chancellor Halsbury, ad-
dressing the House of Lords, said: "For myself, I believe
the principle of the law may be very plainly stated, and
that is, that nobody has any right to represent his goods
as the goods of somebody else. " * This sentence is a terse
statement of the fundamental maxim of unfair competi-
tion. The English courts have long recognized the rule,
and it may be found repeated in various phraseology by
all the English courts within whose jurisdiction trade-
mark and analogous cases have come.
It is more difficult to trace the growth of this doctrine
in the American decisions. Chancellor Sandford in 1825,
in an action concerning the right to the name of a peri-
odical, observed, "The injury for which redress is given
. . . results from the imposture practiced upon the
customers of an existing establishment, or upon the pub-
lic,"'^ so recognizing the rule which Mr. Coddington
failed to recognize.
Twelve years later, in Massachusetts, it was said that
"Imposition, falsehood and fraud, on the part of the de-
1 Baker, J., in Church & D wight Co. v. Russ, 99 Fed. Rep.
276-278.
2Southern v. How, Popham, 144; Cro. Jac. 471; 2 Rolle, 28;
Seb. 1.
"Blanchard v. Hill, 2 Atk. 484; Seb. 2.
^Reddaway v. Banham, L. R. (1896) Appeal Cases, 199-204.
•^Snowden v. Noah, Hopkins' Ch. R. 347; Cox, 1; Seb. 41.
§14] PREFATORY. 25
fendant, in passing- off his own medicines as those of the
plaintiff, would be a ground of action." ^
In 1.^40 Chancellor Walworth was presented with an
application for an injunction to restrain the use of the
words -'New Era" as the name of a newspaper, the com-
plainant being the proprietor of a rival periodical de-
nominated "Democratic Republican New Era." He de-
nied the application, and in the course of his opinion
said: "The allegation in the complainant's bill of com-
plaint is that the defendant has assumed the name of
the complainant's newspaper for the fraudulent purpose
of imposing upon the public, and supplanting him in the
good-will of his established paper, by simulatiag the
name and dress thereof; with the intent to cause it to be
understood, and believed by the community, that the
defendant's newspaper was the same as the complain-
ant's, and thereby to injure the circulation of the latter.
If this were in fact so, I should have no difficulty in mak-
ing this order absolute. For although the business of
publishing newspapers ought, in a free country, to be
always open to the most unlimited competition, fraud
and deception certainly are not essential to the most
perfect freedom of the press. ... As the names of
party newspapers, in these days, have no necessary con-
nection with the principles which they advocate, and are
manufactured as readily as the new names if not the new
principles of political parties, there could be very little
excuse for the editor of a newspaper who should adopt
.the precise name and dress of an old established paper,
which would be likely to interfere with the good-will of
the latter by actually deceiving its patrons."'^
Not until 1888 did the United States supreme court
give distinct recognition to the law of unfair competi-
tion,=^ and three years later Mr. Chief Justice Fuller an-
1 Thomson v. Winchester, 19 Pick. 214; Seb. 59.
2BeIl V. Locke, 8 Paige, 75; Cox, 11; Seb. 65.
^Goodyear India Rubber Glove Mfg. Co. V. Goodyear Rubber Co., 128
U. S. 598; Cox, Manual, 705. In this case Mr. Justice Field said (128
U. S. at p. 604), "The case at bar cannot be sustained as one to restrain
unfair trade. Relief in such cases is granted only where the defend-
26 LAW OF UNFAIR TRADE. [§14
nounced the doctrine clearly and unequivocally, in these
terms: "The jurisdiction to restrain the use of a trade-
mark rests upon the g-rounds of the plaintiff's property
in it, and of the defendant's unlawful use thereof. If
the absolute right belong-ed to plaintiff, then, if an in-
fring-ement were clearly shown, the fraudulent intent
would be inferred, and, if allowed to be rebutted in ex-
emption of damages, the further violation of the right
of property would nevertheless be restrained. It seems,
however, to be contended that plaintiff was entitled
at least to an injunction, upon the principles applicable
to cases analogous to trade-marks; that is to say, on the
ground of fraud on the public and on the plaintiff, perpe-
trated by defendant by intentionally and fraudulently
selling its goods as those of the plaintiff. Undoubtedly
an unfair and fraudulent competition against the busi-
ness of the plaintiff — conduct with the intent, on the
part of the defendant, to avail itself of the reputation of
the plaintiff to palm off its goods as plaintiff's — would,
in a proper case, constitute ground for relief."^
With this decision the doctrine of unfair competition
may be regarded as being finally established in the
United States; and as based not only on fraud on the
public, but on the plaintiff.^
ant, by his mark, signs, labels, or in other ways, represents to the
public that the g-oods sold by him are those manufactured or pro-
duced by the plaintiff, thus palming- off his goods for those of a
different manufacturer, to the injury of the plaintiff." Citing
McLean v. Fleming, 96 U. S, 245; Sawyer v. Horn, 4 Hughes, 239;
Perry v. Truefit, 6 Beavan, 66; Croft v. Day, 7 Beavan, 84.
Indeed, McLean v. Fleming may be properly regarded as the lirst
case in which the federal supreme court made any mention of the
doctrine. This sentence occurs in the opinion: "Nor is it necessary,
in order to give a right to an injunction, that a specific trade-mark
should be infringed; but it is sufficient that there was an attempt on
the part of the respondent to palm off his goods as the goods of the
complainant." McLean v. Fleming, 96 U. S. 245.
1 Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537; Cox,
Manual, 720.
2 "The law relating to this subject is well understood. No man
has a right to use names, symbols, signs or marks which are in-
tended, or calculated, to represent that his business is that of an-
§15] PREFATORY. 27
S 15. Unfair competition distinguished from trade-
mark infringement. — It can hardly be doubted that at
its inception the doctrine of unfair competition was de-
vised to protect the public, rather than to recog"nize any-
vested rig^ht in the complainant. He had adopted a geo-
other. No man should in this way be permitted to appropriate the
fruits of another's industry, or impose his goods upon the public by
inducing- it to believe that they are the goods of some one else. If A
presents his goods in such a way that a customer who is acquainted
with the goods of B and intends to purchase them is induced to take
the goods of A instead, believing them to be the goods of B, A is
guilty of a fraud which deceives the public and injures his competi-
tor. Where the goods of a manufacturer have become popular not
only because of their intrinsic worth, but also by reason of the in-
genious, attractive and persistent manner in which they have been
advertised, the good-will thus created is entitled to protection. The
money invested in advertising is as much a part of the business as
if invested in buildings, or machinery, and a rival in business has
no more right to use the one than the other,— no more right to use the
machinery by which the goods are placed on the market than the
machinery which originally created them. No one should be per-
mitted to step in at the eleventh hour and appropriate advantages
resulting from years of toil on the part of another."
"The action is based upon deception, unfairness and fraud, and
when these are established the court should not hesitate to act.
Fraud should be clearly proved; it should not be inferred from
remote and trivial similarities. Judicial paternalism should be
avoided; there should be no officious meddling b}' the court with the
petty details of trade; but, on the other hand, its process should be
promptly used to prevent an honest business from being destroyed
or invaded by dishonest means." Coxe, J., in Hilson Co. v. Foster,
80 Fed. Rep. 896-897.
"The fundamental rule is that one man has no right to put off his
goods for sale as the goods of a rival trader; and he cannot, there-
fore (in the language of Lord Langdale in the case of Perry v. Truefit,
6 Beavan, 66-73), '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 manufacture of another person.' " Lord
Kingsdown in Leather Cloth Co. (Ltd.) v. American Leather Cloth
Co. (Ltd ), 11 H. L. C. 358; followed in Johnston v. Orr-Ewing,
7 App. Cas. 219-229.
"The gradual but progressive judicial development of the doctrine
of unfair competition in trade has shed lustre on that branch of our
jurisprudence as an embodiment, to a marked degree, of the prin-
ciples of high business morality, involving the nicest discrimination
between those things which may, and those which may not, be done
"28 LAW OF UNFAIR TRADE. [§15
graphical name, a generic term, or words otlierwise jpub-
lici juris, to designate his wares. Perhaps he had no de-
vice, symbol or mark whatsoever, but relied upon the
shape, form or color of his packages. He had, at all
events, none of those methods of distinguishing his goods
from those of other merchants which the law recognizes
as a right of property and denominates "trade-mark."
Yet his goods had a fixed quality and were sought for by
the public. When his competitor endeavored to palm off
other goods as his upon the public, the chancellor would
say as Lord Langdale said: "My decision does not de-
pend on any peculiar or exclusive right the plaintiffs
have to use the name of Day & Martin, but upon the fact
in the course of honorable rivalry in business. This doctrine rests
on the broad proposition that equity will not permit any one to palm
off his goods on the public as those of another. The law of trade-
marks is only one branch of the doctrine. But while the law of
trade-marks is but part of the law of unfair competition in trade,
yet when the two are viewed in contradistinction to each other an
essential difference is to be observed. The infringement of trade-
marks is the violation by one person of an exclusive right of another
person to the use of a word, mark or symbol. Unfair competition in
trade, as distinguished from infringement of trade-marks, does not
involve the violation of any exclusive right to the use of a word, mark
or symbol. The word may be purely generic or descriptive, and the
mark or symbol indicative only of style, size, shape or quality, and
as such open to public use 'like the adjectives of the language,'
yet there may be unfair competition in trade by an improper use of
such word, mark or symbol. Two rivals in business competing with
each other in the same line of goods may have an equal right to use
the same words, marks or symbols on similar articles produced or
sold by them respectively, yet if such words, marks or symbols were
used by one of them before the other and by association have come to
indicate to the public that the goods to which they are applied are of
the production of the former, the latter will not be permitted, with
intent to mislead the public, to use such words, marks or symbols in
such a manner, by trade dress or otherwise, as to deceive or be ca-
pable of deceiving the public as to the origin, manufacture or owner-
ship of the articles to which they are applied; and the latter may be
required, when using such words, marks or symbols, to place on
articles of his own production or the packages in which they are
usually sold something clearly denoting the origin, manufacture or
ownership of such articles, or negativing any idea that they were
produced or sold by the former." Bradford, J., in Dennison Mfg.
Co. V. Thomas Mfg. Co., 94 Fed. Rep. 651-659.
§15] PREFATORY. 29"
of the defendant usin','- those names in connection with
certain circumstances, and in a manner calculated to mis-
lead the public, and to enable the defendant to obtain, at
the expense of Day's estate, a benefit for himself, to
which he is not in fair and honest dealing entitled."*
The true theory of unfair competition has not always
been as clearly stated by the courts as it should be. One
line of decisions bases this doctrine and the right to in-
junctive relief upon the protection of the public from
fraud. On the other hand. Judge Thayer has stated that
relief is granted "To restrain the defendants from per-
petrating a fraud which injures the complainant's busi-
ness, and occasions him a pecuniary loss."'^
It is very clear that equity intervenes in the protection
from fraud of both the complainant whose business is or
may be injured by the unfair and fraudulent competition,
and the public who are the consumers of his merchandise.*
In a sense it is not exact to separate the doctrines of
trade-mark infringement and unfair competition.* The
underlying doctrine is the same — the control of fraud,
great or petty, by the intervention of equity; and yet,
without a clear understanding of the doctrines of unfair
competition, it is impossible to read intelligently the
trade-name cases which have so long been treated either
as being "trade-mark" cases, or cases "analogous to"
trade-mark cases. We have discussed elsewhere the use
of proper names as trade-marks, and from an examina-
tion of the cases the careful student will conclude that
proper names are not trade-marks, and that there should
not be such a thing as a technical trade-name. A name
which is not a trademark is not entitled to protection as
a trade-mark. It is only entitled to protection when it
'Croft V. Day, 7 Beav. 84; Seb. 76.
2 Carson v. Ury, 39 Fed. Rep. 777; Cox, Manual, 709; following
Goodyear India Rubber Glove Mfg-. Co. v. Goodyear Rubber Co., 128
U. S. 598; Cox, Manual, 705. And to the same effect see Pierce v.
Guittard, 68 Cal. 68-71.
"'Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537.
■•See note to Scheuer v. Muller, 20 C. C. A. 165.
:30 LAW OF UNFAIR TRADE. [§15
is fraudulently used by another. Thus, in the case of
"Dent, London,"^ which we have before referred to. Dent
is a proper name and London a geographical word. They
are entitled to protection against fraudulent use, but only
for the same reasons and in the same sense that the size,
shape, color and design of labels or packages are entitled
to protection against such fraudulent use. This is true
of many cases which have been decided by the courts as
trade-mark cases.
The fact is that there has always existed the will-
ingness of equity to keep the zeal of competing traders
within the bounds of fairness.^ In the very early case
of Singleton v. Bolton, where both parties made and
sold a compound which they styled "Dr. Johnson's
Yellow Ointment," Lord Mansfield said: "If the defend-
ant had sold a medicine of his own under the plaintiff's
name or mark, that would be a fraud for which an action
would lie. But here both the plaintiff and defendant
use the name of the original inventor, and no evidence
was given of the defendant having sold it as if prepared
by the plaintiff. "^ So that even at the early date of the
rendition of that opinion (1783) the remedy for unfair
competition would have been applied upon a proper state
of facts; i. e., if the defendant had sold his goods as the
goods of the plaintiff.
In 1810 Lord Eldon said: "There can be no doubt that
this court would interpose against that sort of fraud
which has been attempted by setting up the same trade
in the same place, under the same sign or name, the
party giving himself out as the same person."* It was
iDentv. Turpin, 30 L. J. Ch. 495; Seb. 196; Ante, p. 16.
- This branch of the law is a most interesting illustration of the
unlimited adaptability of equity to cope with fraud in every form.
Judge Townsend has accurately observed that "A court of equity
keeps pace with the rapid strides of the sharp competitors for the
prize of public favor, and insists that it shall be won only by fair
trade." R. Heinisch's Sons Co. v. Boker, 86 Fed. Rep. 765-768.
"Singleton v. Bolton, 3 Doug. 293; Cox, 624; Seb. 4.
^Cruttwell v. Lye, 17 Ves. 335; 1 Rose, 123; Seb. 17.
§15] PREFATORY. 31
by analogous reasoning that the same learned judge, six
years later, enjoined the piracy of Lord Byron's name,
applied to poems not of his composition. ^
In 1836 Lord Langdale enjoined a defendant from using
omnibuses painted like the plaintiff's, and driven and
managed by servants dressed in livery like that of the
plaintitt"'s servants.'''
So that the doctrine was old when Mr. Justice Clifford
said from the bench of the federal supreme court, "Nor is
it necessary, in order to give a right to an injunction,
that a specific trade-mark should be infringed; but it is
sufficient that the court is satisfied that there was an
attempt on the part of the respondent to palm off his
goods as the goods of the complainant "^
The whole question of fairness in trade is peculiarly
within the province of equitable jurisdiction; trade-mark
infringement is but one form of unfair competition. Un-
fair competition is the equivalent term for the "passing
off'" of the English^ and the "concurrence deloyale " of
the French decisions.*'
It must be borne in mind, however, that there is this
practical distinction between the issues in cases of tech-
nical trade-mark infringement and cases of unfair com-
petition where no technical trade-mark is involved: the
court is to be guided to its conclusions not by reference
to any arbitrary, fanciful and distinctive device to which
the plaintiff has a property right. But it is for him to
determine, in the light of all the facts, whether or not an
unfair competition has been instituted by the respondent.
Judge Kirkpatrick, in referring to this question, has said:
"Recognizing the principle, I am of the opinion that the
similarity (of the competing articles) which will warrant
the interference of the court must be determined by the
^Lord Byron v. Johnston, 2 Mer. 29; Seb. 23.
2Knott V. Morgan. 2 Keen. 213; Seb. 57.
■■'McLean v. Fleming-, 96 U. S. 245.
^Lever Bros. (Ltd.) v. Bedingfield, 80 L. T. 100.
'■^Pouillet, Marques de Fabrique et de la Concurrence Deloyale
(4th ed.), sees. 459 et seq.
32 LAW OF UNFAIR TRADE. [§15*
circumstance of each case."'^ While fraud is presumed
from the wrongful use of a trade-mark it must be proven,,
directly or by inference, in all cases of unfair competition
which do not involve a technical trade-mark.^
This rule is exemplified by reference to the cases cited
in the foot-note, where such comparisons have been made-
by the courts, resulting in a finding that the competition
of the respondent was fair,^ and others where the facts
have led the court to the contrary conclusion/
With the exception of this feature, the same general
rules of law and procedure prevail in this class of cases
as obtain in proceedings to restrain trade-mark infringe-
ment. Thus, an injunction to restrain an unfair compe-
tition has been expressly denied upon the ground that
the complainant was guilty of laches and acquiescence.^
Federal jurisdiction in cases of unfair competition must
of course be predicated upon the general rules fixing the
jurisdiction of the federal courts, so that those courts
cannot entertain such an action arising between citizens
of the same state except in so far as the respondent's-
wrongful act affects commerce with foreign nations or
the Indian tribes.*'
iKroppf V. Furst, 94 Fed. Rep. 150.
^Church & Dwight Co. v. Russ, 99 Fed. Rep. 276-279. "The de-
ceitful representation or perfidious dealing must be made out or be-
clearly inferable from the circumstances. " Mr. Chief Justice Fuller^
in Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537-551.
"Kroppf V. Furst, 94 Fed. Rep. 150; Putnam Nail Co. v. Ausable
Horsenail Co., 53 Fed. Rep. 390; Sterling Remedy Co. v. Eureka
Mfg. Co., 70 Fed. Rep. 704; N. K. Fairbank Co. v. Luckel, King &
Cake Soap Co., 88 Fed. Rep. 694; Klotz v. Hecht, 73 Fed. Rep. 822;
Investor Pub. Co. v. Dobinson, 82 Fed. Rep. 56; C. F. Simmons Med.
Co. V. Simmons, 81 Fed. Rep. 162; La Republique Francaise v. Schultz,
94 Fed. Rep. .500; Vitascope Co. v. United States Phonograph Co.,
83 Fed. Rep. 30; Brown v. Doscher, 147 N. Y. 647; Mumm v. Kirk,
40 Fed. Rep. 589.
^Draper V. Skerrett, 94 Fed. Rep. 912; Anheuser-Busch Brewing
Ass'n V. Fred Miller Brewing Co., 87 Fed. Rep. 864; Block v. Stand-
ard Distilling Co., 95 Fed. Rep. 978; Allegretti Chocolate Cream Co.
V. Keller, 85 Fed. Rep. 643.
^La Republique Francaise v. Schultz, 94 Fed. Rep. 500, 501.
^Illinois Watch Case Co. v. Elgin Nat. Watch Co., 94 Fed. Rep.
667-672. And see Air-Brush Mfg. Co. v. Thayer, 84 Fed. Rep. 640^
§ 16] PREFATORY. 33
§ 16. Trade slander and libel. — The question whether
equity will enjoin competintj traders from i)ublishing"
libelous or slanderous matter concerninfj their competi-
tors' business has been frequently presented to the courts.
In an early case Lord Eldon said: "The publication of a.
libel is a crime, and I have no jurisdiction to prevent the
commission of crimes, except, of course, such cases as
belong,'' to the protection of infants, where a dealing- with
an infant may amount to a crime, — an exception arising
from that peculiar jurisdiction of this court.'" ^ How far
this doctrine — which extended to all forms of libel — has
been modified by the federal courts of the United States
is an involved question, the discussion of which would
not be relevant in this book.
But at an early date Lord Cottenham, in refusing- to
enjoin libelous statements uttered of the plaintiff's
literary work, said that the proper remedy lay in an
action at law."^ And the English courts have subse-
quently held that where matter has been held libelous
in an action at law, the repetition of the libel would be
enjoined in equity.^ In one case where the court refused
to enjoin a defendant from circulating an advertisement
among the jjlaintiff's customers which charged the plaint-
iff with infringing his trade-marks, the court intimated
that the injunction might have been granted if malice had
been shown. ^ It may now be regarded, however, as the
^Gee V. Pritchard, 2 Swanst. 402. To the same effect see (refusing
an injunction against the exhibition of a painting- falsely purporting
to be a copy of a picture by the plaintitf) Martin v. Wright, 6 Sim.
297; refusing to enjoin a publication by defendant of a statement dis-
paraging the plaintiff's literary work, Seely v. Fisher, 11 Sim. 581;
10 L. J. Ch. N. S. 274. And see Clark v. Freeman, 11 Beavan, 112;
Fleming v. Newton, L. R. 1 H. L. C. 363; Bullock v. Chapman, 2
DeG. & Sm. 211; Browne v. Freeman (2), Cox, Manual, 424; Pru-
dential Assurance Co. v. Knott, L. R. 10 Ch. D. 142; Fisher & Co. v.
The Apollinaris Co., I>. R. 10 Ch. D. 297-299; Ward v. Drat, Cox,
Manual, 607.
2 Seely v. Fisher, 11 Sim. 581; 10 L. J. Ch. N. S. 274.
"Saxby v. Easterbrook, Cox, Manual, 606; Hinrichs v. Berndes,
Cox, Manual, 594; Thornley's Cattle Food Co. v. Massam, L. R. 46
L. J. Ch. 713.
^Colley V. Hart, 7 R. P. C. 101.
3
34 LAW OF UNFAIR TRADE. [§16
settled law in Eng-land that "the court will interfere by-
injunction where statements are made with reference to
the infringement of a patent, or the invasion of a trade-
mark and the like, if it is proved to the satisfaction of
the court that these statements are untrue." ^
The same doctrine would seem to obtain in this country.
It is libelous to publish of a dealer in school books that
he deals in "antiquated books" and books which are
' ' disgraceful trash. " •^ And it has been held libelous per se
to publish of another dealer of the same name (Davey)
"that an unscrupulous grocer of the same name, in the
immediate vicinity, advertises 'Davey's teas and coffees,'
with a view to deceive the public, and may sell an in-
ferior article. " ^ Judge Lacombe has laid down the broad
proposition that "every legal occupation from which
pecuniary benefit may be derived creates such special
susceptibility to injury by language charging unfitness
or improper conduct of such occupation that such lan-
guage is actionable, without proof of special damage."*
It is the necessary corollary of this rule that a dis-
paraging statement concerning the goods sold by another,
whether under a trade-mark or not, must be of a charac-
ter to charge him with business incapacity or improper
conduct of his business before it can come within the class
of matter that is slanderous or libelous per se. For if the
words used apply to the plaintiff's merchandise in such a
manner as to constitute an imputation of his improper
conduct in or want of capacity for his business, they
will be libelous or slanderous per se.^
iChitty, J., in Anderson v. Liebig's Extract of Meat Co., 45 L. T.
N. S. 757-758; and to the same effect, Halsey v. Brotherhood, 45 D. T.
N. S. 640; Empire Typesetting- Machine Co. v. Linotype Co., 79
L. T. N. S. 8.
2 American Book Co. v. Gates, 85 Fed. Rep. 729-734.
•'' Davey v. Davey, 50 N. Y. Supp. 161.
^Ohio & Miss. Ry. Co. v. Press Pub. Co., 48 Fed. Rep. 206.
^So where in a criminal prosecution under the Oregon Code the
words applied to the property of the prosecuting witness in such a
manner as to expose him to hatred, contempt or ridicule, they were
held to be a libel upon him. State v. Mason (Oregon), 38 Pac. Rep.
130.
§ 16] PREFATORY. 35
The truth is always a defense in actions of this charac-
ter. Thus where the plaintiff had boug^ht the goods in
question from the defendant and advertised them for
sale, the publication of an advertisement by the defend-
ant that read as follows: "An opinion of Shawknit
hose should not be formed from the navy blue stockings
advertised as first quality by (plaintiff), since we sold
(plaintiff) some lots which were damag^ed in the dye-
house," was held not libelous, in the absence of a show-
ing of its untruth.^ And a wide latitude is allowed in
criticism of chattels where the facts are not misstated.
So it is not libelous to attack the theories advanced in
a book even with sarcasm and ridicule, if there is no mis-
representation of what is set forth in the book;^ and a
criticism of one of the pictures of an artist stating that
it is not good of its kind is not libelous, where it does
not attack him in his professional character generally.'^
So, it has been held in England that no action will lie
against a defendant trader for stating falsely and mali-
ciously that his goods are superior to those of the plaint-
iff, even though the plaintiff suffers special damage there-
from,* and no false statement directly disparaging the
plaintift"'s goods is actionable in the absence of proof of
special damage.^
Where an alleged libel consisted of a charge that the
plaintiff" had no right to use a certain trade-mark, it was
held to be a slander of title and not a libel upon the
plaintiff; that the burden was upon the plaintiff to prove
malice, falsity and special damage, and that the cause of
action survived the plaintiff's death.^
'Boynton v. Shaw Stocking Co., 146 Mass. 219; 15 N. E. Rep. 507.
2 Bowling- V. Livingstone, 108 Mich. 321; 66 N. W. Rep. 225.
^Battersby v. Collier, 54 N. Y. Supp. 363.
^Hubbuck V. Wilkinson (C. A.), L. R. (1898) 1 Q. B. 86.
*Mellin v. White, L. R. (1895) A. C. 154.
^Hatchard v. Mege, L. R. 18 Q. B. D. 771-775.
CHAPTER II.
THE ACQUISITION OF A TRADE-MARK.
§ 17. Who may acquire. — Generally speaking, any
person 1 capable of holding title to personal property
may acquire the right to a trade-mark. In practice, by
far the greater portion of all trade-marks are held by
manufacturers. There are, however, many persons, not
manufacturers, who use trade-marks as a means of iden-
tifying the subject-matter of their commerce. First
among these, in their natural order, are those who apply
geographical names as trade-marks, to the natural prod-
ucts of the earth. This may be done, of course, only by
the owner of its sole place of production,^ as, if the prod-
uct were accessible to others, there could be no exclusive
right to a trade-mark, except to identify the person who
handled the product on its way to the consumer.
This leads us to the second, and larger, class of those
i"A corporation is entitled to have its trade-mark as well as a
private individual, and may sue for its infringement." Fenner, J.,
in Insurance Oil Tank Co. v. Scott, 33 La. Ann. 946
2 Congress & Empire Spring Co. v. High Rock Congress Spring
Co., 45 N. Y. 291-302; 10 Abb. Pr. N. S. 348; 6 Am. Rep. 82; 57
Barb. 526; Cox, 599; Dunbar v. Glenn, 42 Wis. 118; Seb. 529;
Wheeler v. Johnstoa, 3 L. R. Ir. 284; Apollinaris Co. v. Norrish, 3S
L. T. N. S. 242; Radde v. Norman, L. R. 14 Eq. 348; Braham v.
Beachim, 7 Ch. D. 848; 47 L. J. Ch. 348; 38 L. T. N. S. 640; 26 W. R.
654; Seb. 589; Hill v. Lockwood, 32 Fed. Rep. 389; City of Carlsbad
V. Schultz, 78 Fed. Rep. 469; City of Carlsbad v. Kutnow, 71 Fed.
Rep. 167; affirming 68 Fed. Rep. 794; Northcutt v. Turney, 101 Ky.
314; 41 S. W. Rep. 21.
It has been held that wher« a locality has taken its name from the
use of a word used as a trade-mark for coal mined by the owner of
part of the locality, he will still be entitled to the exclusive use
of the word as a trade-mark, as against others mining in the locality
which has so derived its name. Atwater v. Castner, 88 Fed. Rep.
642. But the contrary has been held in Coffman v. Castner, 87 Fed.
Rep. 457.
36
§17] THE ACQUISITION OF A TRADE-MARK. 37
who can acquire trademark rights, though they are not
manufacturers. Many mercantile houses who merely se-
lect merchandise, use trade-marks upon the goods they
so select, and the.se are valid, because, in the language
of Mr. Chief Justice Fuller, the marks so used are equiva-
lent to a certificate that the goods so marked are the
genuine article which has been determined by the select-
ors to possess a certain degree of excellence, evidencing
that the skill, knowledge and judgment of the selectors
have been exercised in ascertaining that the particular
goods so marked are possessed of a merit rendered defi-
nite by their examination and of a uniformity rendered
certain by their selection. ^ Slightly analogous to this
class of cases are those where the members of a trades
union adopt a label to be used by the workmen who com-
pose the union, upon the goods manufactured by them.
In a number of cases their right to the protection of this
label, as a trade-mark, has been denied,- while in others
the right is affirmed.^
iMenendez v. Holt. 128 U. S. 514-520; Levy v. Waitt (1), 56 Fed.
Rep. 1016; Levy v. Waitt (2), 61 Fed. Rep. 1008; Hirsch v. Jonas, L. R.
3 Ch. D. 584-586; Re Australian "Wine Importers (Ltd.), 41 Ch. D.
278-281; Thompson & Co. v. Robertson, Ct. Sess. Cas. (4th ser.)XV,
880; 25 Scot. L. Rep. 649; Yale Cigar Mfg. Co. v. Yale, 30 Off. Gaz.
1183; Wood v. Lambert. L. R. 32 Ch. D. 247.
-Ex parte Cigar Makers' Ass'n, 16 Off. Gaz. 958; Schneider v.
Williams, 44 N. J. Eq. 391; Cigar Makers' Union v. Conhaim, 40
Minn. 726 (the last case by a divided court, three denying the right
of trade-mark and two affirming it); McVey v. Brendel, 144 Pa. St.
235; Cox, Manual, Case No. 730; Weener v. Brayton, 152 Mass. 101;
Cox, Manual, Case No. 712.
"Allen v. McCarthy, 37 Minn. 349, affirming the decision of the
lower court by an equally divided bench; Bloete v. Simon, 19
Abb. N. C. 88; People v. Fisher, 57 N. Y. Sup. Ct. 552; Cigar Mak-
ers' Protective Union v. Lindner, 3 Ohio St. Dec. 244; Strasser v.
Moonelis, 108 N. Y. 611; Tracy v. Banker, 170 Mass. 266. In Car-
son V. Ury, Judge Thayer remarks: "It is no doubt true that the
union label does not answer to the definition ordinarily given of a
technical trade-mark, because it does not indicate with any degree
of certainty by what particular person or firm the cigars to which it
may be affixed were manufactured, or serve to distinguish the goods
of one cigar manufacturer from the goods of another manufacturer,
38 LAW OF UNFAIR TRADE. [§18
Importers^ or exporters'- may have trade-marks to
identify the goods passinj]^ through their hands, and it
has been held that a bleacher who finishes goods manu-
factured by another has a right to a trade-mark aj)plied
to goods so treated by him.^
§ 18. User. — There can be no right in a trade-mark
until it has been used. Under the English act^ an appli-
cation for registration of a trade-mark is deemed to be
equivalent to public use of the trade-mark. But even
this is merely to supply a constructive instead of the
actual user required at common law,^ and the general
rule is not affected by that statute.*' The exclusive right
to the use of a trade-mark is acquired only by priority of
appropriation. The claimant of a trade-mark must have
been the first to use or employ the same on like articles
of production.^ A single instance of user, with accom-
panying circumstances evidencing an intent to continue
that use, is sufficient to establish the right to a trade-
and because the complainant appears to have no vendible interest in
the label, but merely a right to use it on cigars of his own make,
so long and only so long as he remains a member of the union. In
each of these respects the label lacks the characteristics of a valid
trade-mark." In the case at bar, the complainant being a manufac-
turer of cigars, he was granted equitable relief on the ground of un-
fair competition. Carson v. Ury, 39 Fed. Rep. 777; Cox, Manual,
Case No. 709. As to criminal prosecution for infringement of union
label see State v. Bishop, 128 Mo. 373.
iGodillot V. Hazard, 44 N. Y. Super. Ct. 427.
2Robinson v. Finlay, L. R. 9 Ch. D. 487.
8Re Sykes, 43 L. T. N. S. 626.
*Sec. 75, Patents, Designs and Trade-mark Act, 1883, amended
1888, 51 and 52 Vict., c. 50; Re Hudson's Trade-mark, 3 R. P. C.
155; 32 Ch. D. 311; 55 L. J. Ch. 531; 55 L. T. 228; 32 W. R. 616;
Cartmell, 168; Edwards v. Dennis, 30 Ch. D. 454.
* Under the act of 1870 it was held that registration was equivalent
to public use of a trade-mark. Re Dutcher Temple Co., Comr. Dec.
1871, p. 248. See sections 7 and 11 of the Act of 1881; Wm. Rogers
Mfg. Co. V. Rogers & S. Mfg. Co., 11 Fed. Rep. 495.
''Singer Manufacturing Co. v. Wilson, 2 Ch. D. 434-440; Lowell
Mfg. Co. V. Larned, Cox, Manual, No. 428.
^Columbia Mill Co. v. Alcorn, 150 U. S. 460; Tetlow v. Tappan,.
85 Fed. Rep. 774; Hyman v. Solis Cigar Co., 4 Colo. App. 475.
§19] THE ACQUISITION OF A TRADE-MARK. 39
mark; there is no requirement that the use shall continue
for any prescribed or definite length of time.^
§ 19. Affixing the mark. — As stated in our definition,
the mark must be afl&xed to the subject it serves to
identify. "It may be either affixed to, or impressed
upon, the g'oods themselves by means of a stamp or an
adhesive label, or it may be made to accompany the
goods by being impressed or made to adhere to an envel-
ope or case containing the goods. "■^ It has been held in
England that a trade-mark may be water-marked,'* and a
measuring stick with an octagonal head, used as a core
for rolls of carpet, has been held to be of itself a valid
trade-mark.^ The question of the mode of affixing is
purely practical, and one package, parcel or bottle of
merchandise may bear a number of trade-marks. A very
large percentage of the liquors imported into the United
States from Europe bear not only the trade-mark of the
producer, but also that of the bottler; and in many cases
another trade-mark, that of the capsule manufacturer, is
to be found impressed in the metallic capsule. In like
manner a complicated machine may bear many trade-
marks, indicating the manufacturers of the wheels, axles,
oil-cups, bearings, etc., and the machine as a whole bear
the comprehensive trade-mark of the maker who has se-
lected these several parts and assembled them.
iShaver v. Shaver, 54 Iowa, 208; 37 Am. Rep. 194; Hall v. Barrows,
32 L. J. Ch. 548; Seb. 215.
The length of time required to establish the right of trade-mark: — "The
interference of a court of equity cannot depend on the length of time
the manufacturer has used the trade-mark." Romilly, M. R., in
Hall V. Barrows, 32 L. J. Ch. 548.
The right exists "the moment the article goes into the market so
stamped." Westbury, L. C, in McAndrew v. Bassett, 4 DeG. J.
& S. 380-386.
The right dates from the time when the actual occupation of the
market with goods bearing the mark began. Levy v. Waitt (C. C. A.),
61 Fed. Rep. 1008-1011.
2 Sir G. Jessel, M. R., in Singer Mfg. Co. v. Wilson, supra.
3 Alexander Pirie & Sons v. Goodall, L. R. (1891) 1 Ch. D. 35-41;
holding a water-mark to be a "brand" within the meaning of sec. 64,
subsec. 2 (c) of the Patents. Designs and Trade-marks Act, 1883.
^Lowell Mfg.Co.v. Larned, Cox, Manual, No. 428; Fed. Case No. 8570.
40 LAW OF UNFAIR TRADE. [§20
§ 20. Registration not a means of acquiring.— With
the solitary exception of the California case of Whittierv.
Dietz,^ it has nowhere been held in the United States that
the right to a trade-mark is created by registration. ^
Section 1 of the act of 1881 provides that owners of
trade-marks used in commerce may obtain registration
of such trade-marks by complying with the requirements
stipulated in the act. The applicant must show that he,
and no one else, has a right to use the mark; that he is
actually using it in commerce with foreign nations or
with Indian tribes; and that it is not too similar to the
registered or known mark of another.^ So that registra-
tion under the act of congress is in no sense a means of
acquiring the right to a trade-mark;* and indeed the ac-
tual application of the trade-mark in commerce is so
essential a prerequisite to registration under the act,
that as between two applicants for registration of the
same mark, one of whom had in fact used his mark in
trade, while the other had the assignment of the mark,
acquired by transfer from its inventor, but had never
166 Cal. 78. This decision led to the enactment of the present sec-
tion 3199 of the Political Code of California (March 12, 1885), provid-
ing Jhat "Any person who has first adopted and used a trade-mark
or name, whether within or beyond the limits of this state, is its
original owner."
2 The recording of a name as a trade-mark cannot give it the quality
of a trade-mark, if it was not theretofore a valid trade-mark. Oakes
V. St. Louis Candy Co., 146 Mo. 391; 48 S. W. Rep. 467.
3 Ex parte Leon Dupuy & Co., 28 Off. Gaz. 191.
^"Property in trade-marks does not derive its existence from an
act of congress." La Croix v. May, 15 Fed. Rep. 236.
"Registration under the act of 1881 is of but little, if any, value,
except for the purpose of creating a permanent record of the date of
adoption and use of the trade-mark, or in cases where it is necessary
to give jurisdiction to the United States courts." Hawley, J., in
Hennessy v. Braunschweiger & Co., 89 Fed. Rep. 665-668; quoted and
followed in Sleepy Eye Milling Co. v. C. F. Blanke Tea and Coffee
Co., 85 Off. Gaz. 1905. It does not create a trade-mark. United
States v. Braun, 39 Fed. Rep. 775; Sarrazin v. W. R. Irby Cigar Co.,
93 Fed. Rep. 624-627; Brower v. Boulton, 53 Fed. Rep. 389, 390;
Brower v. Boulton (2), 58 Fed. Rep. 888-890; Einstein v. Sawhill, 65
Off. Gaz. 1918; Sherwood v. Horton, Cato &. Co., 84 Off. Gaz. 2018;
La Croix v. May, IS Fed. Rep. 236.
§§21,22] THE ACQUISITION OF A TRADE-MARK. 41
actually applied it, the commissioner of patents held
that the actual prior use determined the rig-ht to the
mark.i But registration under the laws of the United
States and under the laws of several of the states, while
creating- no new rig-hts, confers remedies and special
protection to the owner of a trade-mark which we will
examine in another chapter.
§21. Acquisition by assignment.— The assignment
of trade-marks is a subject of some difficulty and is dis-
cussed elsewhere in this book. It is sufficient in this
connection to say that trademark rights are generally
assignable, that quality being indispensable to the strik-
ing characteristic of perpetual existence possessed by
trade-marks, and that a proper assignment conveys to
the assignee all the property rights in and to the trade-
mark possessed by his assignor.'-^ By section 12 of the
act of 1881 the commissioner of patents was authorized
to make rules and regulations and prescribe forms for
the transfer of the right to use trade-marks and for re-
cording such transfers in his office. We need note at
this time only the general restriction on the assignability
of trade-marks — that they cannot be assigned save in
connection with the good- will of the business with which
they are identified.^
^22. Acquisition by an alien.— In 1844 Chancellor
Walworth announced that in the interposition of equity
for the protection of trade-mark rights "there is no dif-
ference between citizens and aliens."* This is also the
'Schrauder v. Beresford & Co., Browne, Trade-marks, 661.
2 Walton V. Crowley, 3 Blatch. 440; Cox, 166.
3 Field, J., in Kidd v. Johnson, 100 U. S, 617-620.
< Taylor v. Carpenter (3), 11 Paige Ch., 292-296; 3 Story, 458; 2
Wood. & M. 1 ; Cox, 45. This is the general rule in the United States.
Lacroix v. May, 15 Fed. Rep. 236; Lemoine v. Ganton, 2 E. D.
Smith, 343; Cox, 142; Coats v. Holbrook, 2 Sandf. Ch, 586; Cox, 20;
Coffeen v Brunton, 4 McLean, 516; Cox, 82; and under a criminal
act against counterfeiting trade-marks, a conviction was sustained
by the Missouri supreme court where the defendant counterfeited the
mark of an English manufacturer. State v. Gibbs, 56 Mo. 133.
42 LAW OF UNFAIR TRADE. [§23
rule in Eng-land.^ Scotland,- Canada,^ and India." But it
has been held that a foreig-ner has no common-law right
to a trade-mark in the United States as against a citizen
who has adopted a similar mark, in good faith, before the
alien has sold any goods in this country.^
g 23. Priority of appropriation. — In order to acquire
a trade-mark, its claimant must be its first appropriator,
as we have seen; for, as said by Finletter, J., "in no
other way can a mark or device indicate ' true origin or
ownership.""' Indeed, Bouvier has defined the right of
trade-mark in these terms: "The right of trade-mark is
said to be best termed an exclusive right arising from
first use;"^ and it has been said by the United States
supreme court that "The exclusive right to the use of a
mark or device claimed as a trade-mark is founded on
priority of appropriation; that is to say, the claimant of
a trade-mark must have been the first to use or employ
the same on like articles of production."^ There must
necessarily be such a use as qualifies the mark as an in-
dication of the origin and ownership of the goods to
which it is applied. If the same mark had been in prior
use by another at the same place or another locality near
enough to start a similar right, the second user could
have no trade-mark right to it.^ "In order that the
claimant of the trade-mark may primarily acquire the
1 Collins Co. V. Cowen, 3 K. & J. 428; Collins Co. v. Brown, 3 K. «&
J. 423; Collins Co. v. Walker, 7 W. R. 222; Collins Co. v. Reeves,
28 L. J. Ch. 56; Howe v. McKernan, 30 Beav. 547.
2 Singer Mfg. Co. v. Kimball & Morton, Ct. Sess. Cas. (3d ser) XI,
267.
3 Davis V. Kennedy, 13 Grant, Up. Can. Ch. 523.
^Orr-Ewingv. ChooneeloU Mullick, Cor. 150; Orr-Ewing v. Grant,
Smith & Co., 2 Hyde, 185.
^Richter v. Anchor Remedy Co., 52 Fed. Rep. 455.
esheppard v. Stuart, 13 Phil. 117; Price & Steuart, 193-200.
^Bouvier, Diet., title "Trade-marks."
^Columbia Mill Co. v. Alcorn, 150 U. S. 460, See also Manitowoc
Mfg. Co. V. Dickerman, 57 Off. Gaz. 1721.
'•Tetlow V. Tappan, 85 Fed. Rep. 774; Hyman v. Solis Cigar Co.,,
4 Colo. App. 475.
§23] THE ACQUISITION OF A TRADE-MARK. 43
right of property in it, it must have been originally
adopted and used by him — that is, the assumed name
or designation must not be one that was then in actual
use by others; and such adoption and use confer upon
him the right of property in the trade-mark." ^ A trade-
mark having no necessary relation to invention or dis-
covery,'-' it is the party who first actually uses a mark,
and not the one who first thought of or designed it, that
is entitled to protection in its use as a trade-mark.'* A
mere declaration of intention to use a certain mark in
the future does not create a right to its use as a trade-
mark, for such right can only originate with the actual
use of the mark in commerce. ■• And it has been held in
England, by Lord Justice Cairns, that there can be no
right of trade-mark until the goods bearing the mark are
actually upon the market, and that it cannot be pro-
tected before that time, even though the goods to
which it is to be applied are in the course of manufac-
ture, and the claimants of the mark have made expendi-
tures in advertising it.^ The right to the mark must
relate back to its first use. One cannot unlawfully appro-
priate a trade-mark belonging to another, and subse-
quently acquire a good title thereto by the abandonment
thereof by the first proprietor.^
1 Derringer v. Plate, 29 Cal. 292; Cox, 324.
2 Trade-mark Cases, 100 U. S. 82.
3Georg-e v. Smith, 52 Fed. Rep. 830; Trisdorfer & Co. v. Estate of
Bassett, 60 MSS. D. Sept. 1896.
<Schneiderv. Williams, 44 N. J. Eq. 391; 14 Atl. Rep. 812; 44 Off.
Gaz. 1400.
^Maxwell v. Hogg, L. R. 2 Ch. 307; 36 L. J. Ch. 433; 16 L.T.N.S.
130; Seb. 264.
60'Rourke v. Central City Soap Co., 26 Fed. Rep. 576-578.
CHAPTER III.
WHAT CONSTITUTES A VALID TRADE-MARK.
§ 24. The general rule. — Having' seen in the preced-
ing" chapters something of the general requisites of a
valid trade-mark, we now approach the subject of the
more exact tests to be applied in determining its valid-
ity. It is the general rule that a mark must be truthful
and unobjectionable on the ground of being a generic
term.
§25. It must be truthful. — This rule is apparently-
simple, yet it has given rise to much discussion and some
apparent conflicts in the decisions. Honest competition
is the requirement of the chancellor, and he is just as
ready to dismiss the bill of a complainant whose trade-
mark is calculated to deceive the public into a belief
that his goods are something other than they actually are,
as he is to enjoin the defendant where he has infringed an
honest trade-mark. The modern law of unfair trade is a
perfect superstructure of ethical principles, founded upon
the basis of all ethics — honesty. In no class of cases is
the rule that he who comes into a court of equity must
do so with clean hands more rigidly applied.^ It is not
material whether the words or symbols used as trade-
mark contain the deceptive or untruthful statement.
Indeed the dishonest matter is usually foreign to the
mark itself, and contained in other matter used in adver-
tising or describing' the g"oods sold under the mark.
§26. A dishonest label -will invalidate. — We find
that where a distiller mixed nearly thirty-six per cent, of
other whiskies with his own brand, and sold the blend
under a label formerly used upon whisky of his own dis-
tillation, with cautions to avoid imitations and asserting
that the mixture was "bottled at the distillery ware-
iDadirrian V. Yacubian, 98 Fed. Rep. 872-876.
44
§ 26] WHAT CONSTITUTES A VALID TRADE-MARK. 45
house and is warranted perfectly pure and unadulter-
ated," an injunction was refused because of this misrep-
resentation. This decision, whose tendency is more far-
reaching than that of Manhattan Medicine Co. v. Wood,^
seems on the readinjj: of the facts to impose a hardship
on the owners of the mark, Jas. E. Pepper & Co. The
interest of the complainant was derived under a con-
tract with that firm giving him the entire control of their
trade in bottled whisky. The proof showed that up to
and including the year 1891 the Pepper Company bottled
nothing under the gold trade label partially described
above used by them but "Old Pepper" whisky distilled
by them, but that after November, 1891, the demand
for the distillery bottling became so great that they
could not supply it wnth the output of their own distil-
lery and therefore bought other whiskies shown to be
more expensive, older and made by the same formula as
their own, and blended these whiskies with their own,
and bottled the resulting blend under the same label and
trade-mark. Here, if ever, one would think equity would
relax its rule, and, as the public had not suffered by the
complainant's acts, would continue to protect the trade-
mark. But the learned court thus tersely applies the
principles: "Pepper offers as an excuse for bottling a
mixture that the demand for his goods had so increased
that he could not supply it with Pepper whisky. What
was this demand for ? Plainly for pure and unadulter-
ated Pepper whisky, bottled at the distillery. If this
could not be honestly supplied, then it could not be sup-
plied at all in such a way as to keep the business within
the protection of a court of equity. Relief is refused to
Pepper and his privies because of his misrepresentations
to the public."- Thus is emphasized the statement of
Mr. Justice Field that the protection of equity is ex-
tended to the owner of a trade-mark "not only as a mat-
1108 U. S. 218.
2Krauss v. Jos, R. Peebles' Sons Co., 58 Fed. Rep. 584-596. An Eng-
lish case resembling- this as to the facts is Starey v. Chilworth Gun-
powder Co., L. R. 24 Q. B. D. 90.
-46 LAW OF UNFAIR TRADE. [§27
ter of justice to him, but to prevent imposition upon the
public."^ There are a number of cases in which the mis-
representation has been held to be so slight and imma-
terial as not to disentitle the complainant to relief.^
Thus, a claim by the manufacturer of a patent medicine
that it permanently overcomes habitual constipation,
will not, even if untrue, disentitle the plaintiff from relief
in equity, the court taking- judicial notice of the fact
that the effect of any medicine for constipation is largely
dependent upon the constitution and habits of the per-
son treated.^
g 27. The cases of false representation in connec-
tion with trade-marks. — In 1837 the English High
Court of Chancery in Pidding v. Hoiu, announced that
it could not interfere in behalf of a plaintiff who had
"thought fit to mix up that which may be true with that
which is false" in his labels and advertisements.* The
Court of Appeals of New York in a similar case in 1848,
by Gardiner, J., observed laconically, "The privilege of
deceiving the public, even for their own benefit, is not a
legitimate subject of commerce; and at all events, if the
maxim that he who asks equity must come with pure
hands is not altogether obsolete, the complainant has
no right to invoke the extraordinary jurisdiction of a
court of chancery in favor of such a monopoly."'^ Prior
to this, an injunction was refused where the mark in
question was applied by the complainant to a "quack"
medicine.*^ "Balm of Thousand Flowers," the name of a
cosmetic, being deceptive, its infringement by a defend-
1 Manhattan Medicine Co. v. Wood, 108 U. S. 218-223; citing Amos-
keag Manufacturing Co. v. Trainer, 101 U. S. 51.
2 Tarrant & Co. v. HoflF, 71 Fed. Rep. 163; affirmed, 76 Fed. Rep.
959; Centaur Co. v. Robinson, 91 Fed. Rep. 889; Ransom v. Ball, 7
N. Y. Supp. 238.
3 California Fig Syrup Co. v. Worden, 95 Fed. Rep. 132-134.
^Pidding v. How, 8 Sim. 477; Cox, 640; followed in Perry v. Truefit,
6 Beav. 66; Cox, 644.
•'Partridge v. Menck, 2 Sandf. Ch. R. 622; 2 Barb. Ch. R. 101; 1
How. App. Cas. 558; Cox, 72.
•■'Towle V. Spear, 7 Penn. L. J. 176; Cox, 67; followed in Heath v.
Wright, 3 Wall. Jr., 1; Cox, 154.
§27] WHAT CONSTITUTES A VALID TRADE-MARK. 47
ant assuming the name "Balm of Ten Thousand Flowers"
was not enjoined/ although the same mark was held
valid and the rule announced that "the public should
be left to its own guardianship" in Fetridge v. Merchants
But the doctrine generally is that of Pidding v. How.^
For the reasons we have been considering in this chap-
ter, the patent office has refused to admit to registration
as a trade-mark for powdered soap "the picture of a bag
having the open end thereof closed by a tie, "the commis-
sioner holding that such a mark was necessarily deceptive
or descriptive, and in either event not a valid trade-mark.*
> Fetridge v. Wells, 4 Abb, Pr. 144; 13 How. Pr. 385; Cox, 180.
24 Abb. Pr. 156; Cox, 194.
'■Su'pra, 8 Sim. 477; Cox, 640. The rule is conceded, announced or
followed in Hobbs v. Francais, 19 How. Pr. 567; Cox, 287; Phalon
V. Wright, 5 Phila. 464; Cox, 307; Smith v. Woodruff, 48 Barb. 438;
Cox, 373; Curtis v. Bryan, 2 Daly, 212; 36 How. Pr. 33; Cox, 434;
Palmer v. Harris, 60 Pa. St. 156; 8 Am. L. Reg. N. S. 137; Cox, 523;
Dixon Crucible Co. v. Guggenheim, 3 Am. Law T. 228; 2 Brewster,
321; Cox, 559; Leather Cloth Co. v. American Leather Cloth Co., 11
Jar. N. S. 513; Cox, 688; 11 H. L. C. 543; Flavel v. Harrison, 10
Hare, 467; Morgan v. McAdam, 36 L. J. Ch. 228; Ford v. Foster,
L. R. 7 Ch. D. 611; 41 L. J. Ch. 682; Re Saunion &. Co., Cox, Man-
ual, No. 625; Estcourt v. The Estcourt Hop Essence Co., 31 L. T.
N. S. 567; L. R. 10 Ch. D. 276; 44 L. J. Ch. 223; 32 L. T. N. S.
80; 23 W. R. 213; Joseph v. Macowsky, 96 Cal. 518; Meriden Bri-
tannia Co. V. Parker, 39 Conn. 454-460; Laird v. W^ilder, 2 Bush
(Ky.), 131; 15 Am. Rep. 707; Connell v. Reed, 128 Mass. 477; 35
Am. Rep. 299; Wolfe v. Burke, 7 N. Y. Sup. Ct. 151; 56 N. Y. 115;
2 Off. Gaz. 441; Seabury v. Grosvenor, 53 How. Pr. 192; 14 Off. Gaz.
679; Hennessy v. Wheeler, 69 N. Y. 271; Piso Co. v. Voight, 4 Ohio
N. P. 347; California Syrup of Figs Co. v. Stearns (1), 67 Fed. Rep.
1008; Wood v. Butler, 3 R. P. C. 81; L. R. 32 Ch. D. 247; 55 L. J.
Ch. 377; 54 L. T. 314; Cartmell, 349; Re Heaton's Trade-mark, L. R.
27 Ch. D. 570; 53 L. J. Ch. 959; 51 L. T. 220; 32 W. R. 951; Cart-
mell, 160; Newman v. Pinto, 4 R. P. C. 508; 57 L. T. 31; Cartmell,
242; Kenny v. Gillet, 70 Md. 574; Siegert v. Abbott (1), 61 Md. 276;
Parlett v. Guggenheimer, 67 Md. 542; Palmer v. Harris, 60 Pa. St.
156; Hoxie v, Cheney, 143 Mass. 592; Clotworthy v. Schepp, 42 Fed.
Rep. 62; California Syrup of Figs Co. v. Stearns (2), 73 Fed. Rep.
812; Buckland v. Rice, 40 Ohio St. 526; Burton v. Stratton, 12 Fed.
Rep. 696-699; Ginter v. Kinney Tobacco Co., 12 Fed. Rep. 782.
<Ex parte Martin, 89 Off. Gaz. 2259. "A word to be used as a
trade-mark must obviously be meaningless as applied to the goods,
so as to be neither descriptive nor deceptive. " Buell, Commissioner,
in Ex parte Pearson Tobacco Co., 85 Off. Gaz. 287.
48 LAW OF UNFAIR TRADE. [ §§ 28, 29
§ 28. Manhattan Medicine Co. v. Wood. — This de-
cision, the language of whose opinion has been more
often cited in support of the proposition under consider-
ation than any other, was based on this statement of
facts. The complainant derived all its trade rights in
and to a proprietary medicine styled " Atwood's Genuine
Physical Jaundice Bitters" from its original manufac-
turer, Moses Atwood, who lived at Georgetown, Massa-
chusetts, and manufactured it there. The court saysr
"It is not honest to state that a medicine is manufac-
tured by Moses Atwood, of Georgetown, Massachusetts,
when it is manufactured by the Manhattan Medicine
Company, in the city of New York."^ On these facts
the protection of their mark was refused complainants.
§ 29. The similar cases — Assignment must be made
public in conjunction with the trade-mark, when. —
Following Manhattan Medicine Go. v. Wood, the Court of
Appeals of Maryland held^ that where the label used by
the manufacturers of Angostura Bitters did not disclose
the death of Dr. J. G. B. Siegert, their originator, that
the label was not truthful and its infringement would
not be enjoined. And the same rule has been applied
as against one continuing to use the name of a prede-
cessor in business, whose label does not announce the
change.'^ The rule in this regard is held by McKenna,
J., to be that where a trade-mark is a mark of special
qualities, due to superior material, processes, skill and
care exercised by the originator thereof, an assignee of
the business who continues to use labels which contain
the false statement that the goods are being prepared by
the originator is not entitled to equitable relief against
an infringer.^
1 Manhattan Medicine Co. v. Wood, 108 U. S. 218.
^Seig-ertv. Abbott (1), 61 Md. 276. The same doctrine is followed
in Sherwood V. Andrews, 5 Am. L. Reg. N. S. 588; Seb. 263; Stachel-
berg V. Ponce, 23 Fed. Rep. 430; Price & Steuart, 967.
SHelmbold v. H. T. Helmbold Mfg. Co., 53 How. Pr. 453.
■* Alaska Packers' Association v. Alaska Imp. Co., 60 Fed. Rep.
103. The supreme court of Pennsylvania has held the contrary, say-
ing that an assignee is entitled to relief, even though he has not
designated himself as assignee in making use of the mark. Fulton
§ 30] WHAT CONSTITUTES A VALID TRADE-MARK. 49
§ 30. Unauthorized use of words "patent" or "pat-
ented."— The use of the words "patent'" or ••patented,"
in connection with or as part of a trade-mark, where the
article identified by the mark is in fact not covered by-
letters patent, has given rise to many interesting- de-
cisions. All of these matters of untruthful representa-
tion are to be tested by the question of whether or not
they are direct, or "purely collateral" misrepresenta-
tions.' Where the letters patent of the United States
covering an alleged improvement in jars had been de-
clared invalid by judicial decision, but the manufacturer
continued to designate the jars "Mason's Patent" jars,
it was held that the fact deprived the manufacturer of
equitable relief against an infringement.'- In England
a plaintiff used on his label the words "Royal letters
patent," and supported the use of the words by showing
that for many years he had paid the stamp duty on "pat-
ent medicines," and was only using the labels remaining
on hand at the time he discovered his medicines did
not belong to that class. He was denied an injunction
against an infringer of his label. ^
The reason for the particular disfavor with which
equity regards this class of cases is that, by using words
indicating that an article is patented where it is not, the
owner of the mark is seeking to obtain the benefits of a
V. Sellers, 4 Brewst. 42. The tendency of the later rulings is to
uphold the use of the mark by the assignee, except where his failure
to disclose the fact of the assignment is equivalent to misrepresenta-
tion and falsehood. See Pillsbury v. Flour-mills Co., 64 Fed. Rep.
841-850.
^Ford V. Foster, L. R. 7 Ch. D. 611; 27 L. T. N. S. 220; 20 W. R.
311; Cox, Manual, 384. In this case the false use of the word "pat-
entee," used by the complainant in advertisements, was held to be a
collateral misrepresentation which did not disentitle him to a remedy
in equity against an infringer.
-Consolidated Fruit Jar Co. v. Dorflinger, Fed. Case No. 3129; 6
Fed. Cas. 339; 2 Am. Law T. Rep. N, S. 511; Cox, Manual, 444.
The same rule is announced in England in 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; Cox, Manual, Case No. 324; Nixey v. Roffey, W. N.
1870, p. 227; Cox, Manual, Case No. 343.
■'Lamplough v. Balmer, W. N. 1867, p. 293.
4
50 LAW OF UNFAIR TRADE. [§30
monopoly, where he has none. As stated by Vice-Chan-
cellor Wood, in Morgan V. McAdam:^ "All those who are
induced to buy these crucibles thus described as 'Patent
Plumbago Crucibles' are to a certain extent deceived,
because they are led to believe that the article is pro-
tected by a patent, and thus may be induced to purchase
it from the plaintiff under the belief that there is a pat-
ent, and that the plaintiffs, or at least some limited num-
ber of persons, are the only persons authorized to sell it;
and further, they are led to believe that if they should
be minded to set up any manufactory of the same kind
for themselves, they would be unable to do so in conse-
quence of the plaintiffs being the possessors, either by
way of license or ownership, of a patent preventing the
world at large from imitating the article which is sold
by them under this particular designation."
And although in another English case- a plaintiff was
held entitled to recover in an action at law in a case of
this kind, where his father had held a patent held to be
invalid (as in Consolidated Fruit Jar Co. v. Dorflinger, siqwa,
where the contrary rule is announced), the rule is gener-
ally that, where no valid patent has ever existed, the use
of words indicating the contrary will debar the plaint-
iff from relief in equity.^
But where there has been a valid patent upon the sub-
ject-matter of the trade-mark, different issues arise.
In England it has been held that the fact that a plaint-
iff put a mark upon his goods with the addition of the
words "trade-mark," when his mark was not registered,
did not amount to such a misrepresentation as to deprive
him of the right to an injunction, because the use of the
136 L. J. Ch. 228; Cox, Manual, Case No. 267. Other arguments
are used by the same judge in Flavel v. Harrison, 10 Hare, 467;
22 L. J. Ch. 866; 17 Jur. 368; 1 W. R. 213; Cox, Manual, Case No.
116.
2Sykes v. Sykes, 3 B. & Cr. 541.
■'Leather Cloth Co. v. American Leather Cloth Co., 11 Jur. N. S.
513; Cox, 688; 11 H. L. C. 543; Cox, Manual, Case No. 223. See, per
contra, Stewart v. Smithson, 1 Hilt. 119; Cox, 175. This case can-
not be regarded as of authority.
§31] WHAT CONSTITUTES A VALID TRADE-MARK. 51
words "trademark" did not necessarily carry with it
the implication that the mark liad been registered.'
i:<31. Use of such word or a trade-mark where
there has been a patent. — In Cheavin v. Walker,'- Jessel,
M. R., observes with regard to the effect of the use of
the word "patent" by the plaintiff: "The question was
fully discussed in the case in the House of Lords, Leather
Cloth Co. V. American Leather Cloth Co., 11 H. L. C. 543,^
and I have nothing to add to what was there said. No
doubt a man may use the word 'patent' so as to deceive
no one. It may be used so as to mean that which was a
patent, but is not so now. In other words, you may
state in so many words, or by implication, that the arti-
cle is manufactured in accordance with a patent which
has expired. But if you suggest that it is protected by
an existing patent, you cannot obtain the protection of
that representation as a trade-mark. Protection only
extends to the time allowed by the statute for the pat-
ent, and if the court were afterwards to protect the use
of the word as a trade-mark, it would be in fact extend-
ing the time for protection given by the statute. It is
therefore impossible to allow a man who has once had
the protection of a patent to obtain a further protection
by using the name of his patent as a trade-mark."^
"But, further, no man can claim a trade-mark in a
falsehood. It is a falsehood to represent that the patent
is still subsisting."
iSen Sen Co. v. Britten, L. R. (1899) 1 Ch. D. 692.
2L. R. 5 Ch. D. 850; 46 L. J. Ch. 686; 36 L. T. 938; Cartmell, 92;
Seb. 528. See also Nixey v. Rofifey, W. N. 1870, p. 227; Seb. 343.
^Ante, j5 30.
■*The rule is well settled that (after the patent has expired) there
is no trade-mark in the name applied to a patented article during
the life of a patent, to distinguish it as a patented article from others
of a like nature. Fairbanks v. Jacobus, 14 Blatchf. 337; Singer
Mfg. Co. V. Stanage, 6 Fed. Rep. 279; Adee v. Peck Bros. & Co., 37
Fed. Rep. 209; Singer Mfg. Co. v. June, 163 U. S. 169; Wilcox &
Gibbs S. M. Co. v. The Gibbens Frame, 17 Fed. Rep. 623; Singer
Mfg. Co. V. Bent, 163 U. S. 205; Centaur Co. v. Killenberger, 87 Fed.
Rep. 725; Singer Mfg. Co. v. Larsen, 8 Biss. 151; Burton v. Stratton,
12 Fed. Rep. 696-700; Goodyear Rubber Co. v. Day, 22 Fed. Rep. 44;
52 LAW OF UNFAIR TRADE. [ § 31
And Kekewich, J., said, in Re Adams' Trade-marks:'^
"The word 'patent' means not necessarily that there is
now current a patent of protection, but that the article
in question is one of those articles which had the merits
of utility and novelty, and therefore received the protec-
tion of the crown by letters patent."'
There are other decisions, however, not so clear as to
facts, and apparently not in harmony with Gheavin v.
Singer Mfg. Co. v. Riley, 11 Fed. Rep. 706; Wheeler & Wilson Mfg.
Co. V. Shakespear, 39 L. J. Ch. 36; Tucker Mfg. Co. v. Boyington,
Fed. Cas. No. 14229; 9 Off. Gaz. 455; Filley v. Child, 16 Blatchf. 376;
Ralph V. Taylor, L. R. 25 Ch. D. 194; Linoleum Mfg. Co. v. Nairn,
7 Ch. D. 834; Young v. Macrae, 9 Jur. N. S. 322; Re Palmer's
Trade-mark, 24 Ch. D, 504; Re Leonard & Ellis' Trade-mark, 26
Ch. D. 288; Singer Mfg. Co. v. June, 41 Fed. Rep. 208; Brill v. Singer
Mfg. Co., 41 Ohio St. 127; 52 Am. Rep. 74; Hiram Holt Co. v. Wads-
worth, 41 Fed. Rep. 34; Coats v. Merrick Thread Co., 36 Fed. Rep.
324; Centaur Co. v. Heinsfurter, 84 Fed. Rep. 955; 28 C. C. A. 581;
Lorillard v. Pride, 28 Fed. Rep. 434; Gaily v. Colt's Patent Fire
Arms Mfg. Co., 30 Fed. Rep. 118; Dover Stamping Co. v. Fellows,
163 Mass. 191; 47 Am. St. Rep. 448; Centaur Co. v. Robinson, 91 Fed.
Rep. 889; Centaur Co. v. Neathery, 91 Fed. Rep. 891; Centaur Co. v.
Hughes Bros. Mfg. Co., 91 Fed. Rep. 901; Centaur Co. v. Marshall,
97 Fed. Rep. 785. (Although the name may remain a valid trade-mark
in another country where the article was not patented. Rahtjen Co.
V. Holzappel Co., 101 Fed. Rep. 257; reversing s. c, 97 Fed. Rep. 949.
But this rule does not apply when the use of the trade-mark ante-
dates the patent. Batchellor v. Thomson, 93 Fed. Rep. 660-665.
But where some special word, device, or symbol is added to the
general name of the article covered by the patent, it is possible that
a trade-mark right may exist in the combination of the word and the
device or symbol, notwithstanding the patent. Dover Stamping Co.
V. Fellows, 163 Mass. 191; 47 Am. St. Rep. 448; Waterman v. Ship-
man, 130 N. Y, 301; reversing same case, 8 N. Y. Supp. 814.
One who adopts a trade-mark for an article, and also applies un-
successfully for a patent upon that article, has a valid subsisting
right to the trade-mark when his application for the patent is re-
jected. "His failure to establish his patent (which would have cov-
ered all his rights) ought not to preclude him from falling back on
his right to the trade-mark." Bradley, Circuit Justice, in Sawyer
V. Kellogg, 7 Fed. Rep. 720-723.
But there may be a valid trade-mark upon a patented article dur-
ing the life of the patent, and if the patent is reissued the trade-mark
will be valid during the life of the reissued patent. Hiram Holt Co.
v. Wadsworth, 41 Fed. Rep. 34.
J 9 R.P.C.174; 66 L.T.610; Cartmell, 43.
,§31] WHAT CONSTITUTES A VALID TRADE-MARK. 53
Walker, siqrra. Five years after that case, Bacon, V. C,
in a case where the plaintiffs had stamped the word
"patent" on plowshares manufactured by them after
their patent had expired, said "(they) make their shares
according- to the invention in the expired patent, as
everybody else may; but to sugg^est that they have in
any manner claimed anything- under or in respect to that
patent, and that they have done this fraudulently and to
deceive the public, is merely desperate, and opposed to
the truth of the case."^ Yet it does not appear in the
report wherein this differed from the use of the word
" patent" as criticised in Cheavin v. Walker. In another
case-^ Vice-Chancellor Wood said: "It does not follow,
because upon the expiration of the patent the article and
its known description become known to all, that there-
fore all would become entitled to use the label by which
the patentees had been accustomed to disting-uish their
g-oods." This he held in regard to a label used on pack-
ages of pins marked "Taylor & Co.'s Patent Solid-
headed Pins;" the manufacturer continuing to use the
label after the expiration of his patent. The conclusion
•of the learned Vice-Chancellor was that "The public
may have acquired confidence in that particular label,
■and that confidence may have given a value to it which
Ihe patentees may be entitled to have after the expira-
tion of their patent."
In another case it was held that where plaintiffs
labeled their thread "Patent Thread," they would not
be denied relief against an infringer, because the word
'•patent" by long usage had come to denote the char-
iRansome v. Graham, 51 L. J. Ch. 897; 47 L. T. 218; Cartmell,
279. Same rule in Stewart v. Smithson, 1 Hilt. 119; Cox, 175;
Leather Cloth Co. v. Hirschfeld, 1 N. R. 551; Cox, Manual, Case
No. 214. And even where no letters patent have ever issued, but the
•exclusive right of manufacture of baskets has been secured by regis-
tration of their design. Cave v. Myers, Seton (5th ed.), 539; Cox, Man-
ual, Case No. 304.
-Edelsten v. Vick, 11 Hare, 73; 1 Eq. Rep. 413; 18 Jur.7; Cox, Man-
ual, Case No. 119.
54 LAW OF UNFAIR TRADE. [§32
acter of the thread, and did not imply the existence of
any patent.^
Of course the holder of letters patent may describe
himself as ' ' patentee " and his goods as ' ' patented " even
where he doubts the validity of the patent, and its valid-
ity has been questioned by others.- And it has been held
in New York that one who applies for letters patent is
not disentitled from relief against an infringer by reason
of his describing the goods as "patented" after his ap-
plication had been filed, but before the issuance of let-
ters patent.^ Where the plaintiffs used their label bear-
ing the words "specially registered trade-mark" after
application, but before registration, the English Court of
Appeals granted an interlocutory injunction against an
infringer, but expressly said in their opinion that they
refrained from finally deciding the question whether that
misrepresentation prima facie destroyed plaintiffs' right
to protection.*
It will be seen, therefore, that the cases discussed in
this and the next preceding section are for the greater
part English, and their reasoning is rather confused.
The surest conclusion to be reached by an examination
of the cases in this section is that of Lord Kingsdown, in
Morgan v. McAdam:^ "Of course it would be better, and
those who are inclined to act with scrupulous honesty
would take care, to put the date of their patent, which
would obviate all difficulty, upon the articles which they
designate as patented.'
§32. Generic term, defined. — By "generic term''
(Latin, genus, gener; French, genre) is meant a term which
may not be appropriated as a trade-mark because it is.
too general and comprehensive in its meaning to become
^Marshall v. Ross, L. R. 8 Eq. 651; 39 L. J. Ch. 225; 21 L. T,
N. S. 260; 17 W. R. 1086; Cox, Manual, Case No. 316.
^Blakey v. Latham, 85 L. T. (Journal), 47.
3Lauferty v. Wheeler, 16 How. Pr. 488; 11 Daly, 194.
<Read v. Richardson, 45 L. T. 54; Cartmell, 281.
«36 L. J. Ch. 228; Cox, Manual, No. 267.
§32] WHAT CONSTITUTES A VALID TRADE-MARK. 55
the monopoly of an individual in application to merchan-
dise. The word in its proper sio^nification includes the
use of geographical names, proper names, and descrip-
tive words, used in commerce. It is a matter of regret
that the courts have not defined these several phrases
in their relations to each other, but such is the fact.
The correctness of the author's definition is clearly es-
tablished by analysis of the three classes of words and
the reasons why they are not sustained as trade marks.
We will examine them in their order.
(a) Geographical names. — Mr. Justice Strong has said, " It
must be considered as a sound doctrine that no one can
apply the name of a district or country to a well-known
article of commerce, and obtain thereby such an exclu-
sive right to the application as to prevent others inhab-
iting the district, or dealing in similar articles coming
from the district, from truthfully using the same desig-
nation."^ In our further examination of the use of geo-
graphical names in trade, we will find that they are
never properly sustained as technical trade-marks except
where they are used by one who is the sole owner of the
entire locality to which the name is applied. In such a
case the geographical name has ceased to be generic,
because one person has the sole and exclusive right of
trade or manufacture in the locality. Thus the author
reasons that geographical names are ordinarily generic,
and whenever they are held not to be valid trade-marks
it is because they are generic.
(6) Proper names. — The eminent English barrister, Mr.
Sebastian, has said in his work on trade-marks that "a
name is in its very nature generic, and is properly ap-
plied to designate, not one individual in the world, but,
it may be, many thousands, to all of whom it is equally
appropriate. "■-
(f) Descriptive words have always been understood to
come within the category of generic terms; indeed, Mr.
Browne in his treatise upon the subject has defined
' Delaware & Hudson Canal Co. v. Clark, 13 Wall. (80 U. S.) 311-327.
-Sebastian on Trade-marks (4th ed.), p. 23.
56 LAW OF UNFAIR TRADE. [§32
"generic names" to be "names merely descriptive of an
article of trade, of its qualities, ingredients or charac-
teristics." ^ The United States supreme court has held
that there can be no technical trade-mark right in words
used to denote class, grade, style, quality, ingredients or
characteristics.'^
It is apparent, therefore, that the definition of generic
terms which we have adopted is scientifically exact, in-
♦ eluding nothing more nor less than the words which are
not subject to exclusive appropriation as trade-mark, be-
cause they cannot be so appropriated "to the advance-
ment of the business interests of any particular indi-
vidual, firm or company. The inability to make such
appropriation of them arises out of the circumstance that,
on account of their general or popular use, every indi-
vidual in the community has an equal right to use them,
and that right is in all cases paramount to the rights and
interests of any person."^
A generic or descriptive word cannot be made a valid
trade-mark by misspelling it (as, for example, "Kid Nee
Kure," applied to a medicine),* or by printing it in letters
from the alphabet of a foreign language. '^
It must not be inferred, however, that words in com-
mon use cancot be appropriated as trade-marks. They
certainly can be so appropriated if used in a new and
distinctive sense. If any other rule obtained, no words
could be used as trade-marks unless the person adopting
them was their original and first inventor. There is no
such legal requirement either as to words or devices.*^
"Words in common use may be adopted, if at the time of
adoption they were not used to designate the same or
similar articles of production."'
'Browne on Trade-marks (2d ed.), sec. 134.
2Canal Co. vs. Clark, 13 Wall. 311-322; Lawrence Mfg. Co. v. Ten-
nessee Mfg. Co., 138 U. S. 537-548.
^5 Daniels, J., in Newman v. Alvord, 49 Barb. 588; Cox, 404.
^Ex parte Henderson. 85 OS. Gaz. 453.
••"Ex parte Stuhmer, 86 Off. Gaz. 181.
^Osgood V. Allen, 1 Holmes, 185.
"Osgood V. Allen, supra.
§32 J WHAT CONSTITUTES A VALID TRADE-MARK. 57
While the foUowinj,^ is an extract from a judicial argu-
ment delivered by a court in a futile attempt to justify its
decree sustaininnr as a trade -mark a geographical word
to which the plaintiff had no color of exclusive right,
it is still a lucid exposition of the principle under con-
sideration: "Words and names having a known or estab-
lished signification cannot within the limits .of such
specification be exclusively appropriated to the advance-
ment of the business purposes of any particular indi-
vidual, firm or company. The inability to make such
appropriation of them arises out of the circumstance
that on account of their general or popular use every
individual in the community has an equal right to use
them, and that right is in all cases paramount to the
rights and interests of any one person, firm or company.
What alike may be claimed and used by ail cannot be
exclusively appropriated to advance the interests of any
person. Numerous cases have been before the courts in
which this limitation upon the use of words and names
as trade-marks has been maintained and established, and
no good reason can be given for questioning or impeach-
ing their conclusions. But while this limitation is en-
tirely reasonable, there can be no propriety in extending
it beyond the circumstance upon which it is founded; and
accordingly any member of the community whose inter-
ests and business may be promoted by doing so, should be
at liberty to apply even names and words in common use
to the products of his industry, in such a manner as to
indicate their origin or particular manufacture, where
such application will not intrench upon and'be in no way
included in their use by the public. By doing so, the
rights of no member of the community can be in any
manner infringed, and no public inconvenience whatever
can be occasioned by it. The public will still be left at
full liberty to use such words or terms as they were used
before; while for a special purpose a new office or pur-
pose may be imposed upon them.
"In cases of that description no greater inconvenience
or embarrassment can be found in protecting partk^s in
58 LAW OF UNFAIR TRADE. [ § 33
the enjoyment of the new use or purpose engrafted upon
a popular term than has been found in extending that
protection to the case of a word created for the occa-
sion.''^
§ 33. Illustrations of generic terms. — In the follow-
ing instances the words and marks mentioned have been
held to be invalid as trade-marks because generic; being-
geographical or descriptive. The examples are arranged
in alphabetical order for convenient reference.
"A. C. A.," cloth;- "Acid Phosphate,'' medicinal prep-
aration;^ "Allcock's Porous Plasters," medicated plas-
ters;* " Ammoniated Bone Superphosphate of Lime," fer-
tilizer;^ "Anglo-Portugo," oysters;*^ "Angostura," bit-
ters;' "American," sardines;^ "Antiquarian," book-store;^
"Apple and Honey," medicine; ^"^ "Astral," oil.^^
"Balm of Thousand Flowers," cosmetic; ^^ "Barber's
Model," razors ;^^ "Bazaar, "patterns for clothing; ^^ "Bet-
ter Than Mother's," mince meat;^-^ "Black Package,"
tea;^^ "Book, "the device of a book, used by a publisher; ^^
"Borax," soap ;i^ "Braided Fixed Stars," cigar lights. ^'-^
"Cachemire Milano," fabric;-*^ "California Syrup of
^Newman v. Alvord, 49 Barb. 588.
^Amoskeag- Mfg. Co. v. Trainer, 101 U. S. 51.
3Rumford Chem. Works v. Muth, 35 Fed. Rep. 524.
<Re Brandreth, L. R. 9 Ch. D. 618.
^Alleg-hany Fertilizer Co. v. Woodside, 1 Hughes, 115.
"Re Saunion & Co., Seb. 625; Cox, Manual, 625.
^Siegert v. Findlater, L. R. 7 Ch. D. 801; Siegert v. Abbott (2),
79 N. Y. Sup. Ct. 243.
^Re American Sardine Co., 3 Off. Gaz. 495.
"Choynski v. Cohen, 39 Cal. 501.
'«Ex parte G. F. Heublein & Bro., 87 Off. Gaz. 179.
1' Pratt's Mfg. Co. v. Astral Refining Co., 27 Fed. Rep. 492-494.
i^Fetridge v. Wells, Cox, Am. Tr. Cas. 180.
13 Ex parte Krusius Bros., 82 Off. Gaz. 1687.
'*McCall V. Theal, 28 Grant (Up. Can.) Ch. 43.
'•5 Ex parte Ervin A. Rice Co.. 83 Off. Gaz. 1207.
i«Fischer v. Blank, 138 N. Y. 244.
'"Merriam v. Famous Shoe & Clothing Co., 47 Fed. Rep. 411.
'^'Dreydoppel v. Young, 14 Phila. 226.
J«Re Palmer, L. R. 24 Ch. D. 504.
20 Re Warburg, 13 Off. Gaz. 44.
§33] WHAT CONSTITUTES A VALID TRADE-MARK. 59
Pigs," laxative medicine;^ "Castoria," medicine T'^ "Cele-
brated Stomach Bitters," bitters; =* "Cellular," cloth of
cellular construction;^ "Cherry Pectoral," medicine;'^
"Chill Stop," medicine;^ "Chlorodjme," medicinal com-
pound;^ "Club House," gin;'* "Continental," sought to
be protected from infringement as the name of a fire
insurance corporation;'' "Cough Remedy," cough medi-
cine;^" "Crack Proof," rubber;^^ "Cramp Cure."
medicine; ^'^ "Cresylic," ointment; ^-^ "Croup Tincture,'
medicine; ^^ "Crystallized Egg," for a preparation of
eggmeat;^^ "Cylinder," glass products. ^"^
"Desiccated," codfish ;i^ " Druggists' Sundries," cigars;^^
"Dry Monopole," champagne ;^'-' "Durham," tobacco. ^^
"Egg," macaroni ;2i "Elgin," watches;"^- "Emoill-
'California Fig SjTup Co. v. Putnam, 66 Fed. Rep. 50; California
Fig Syrup Co. v. Stearns, 67 Fed. Rep. 1008; S. c. on appeal, 73
Fed. Rep. 812; Re California Fig Syrup Co., L. R. 40 Ch. D. 620.
Contra, see California Fig Syrup Co. v. Improved Fig Syrup Co., 51
Fed. Rep. 296; Improved Fig Syrup Co. v. California Fig Syrup Co.,
54 Fed. Rep. 175; California Fig Syrup Co. v. Worden, 86 Fed. Rep.
212; s. c, 95 Fed. Rep. 132.
^Centaur Co. v, Robinson, 91 Fed. Rep. 889; Centaur Co. v. Neathery,
91 Fed. Rep. 891; Centaur Co. v. Hughes Bros. Mfg.Co.,91 Fed.Rep.901.
^Hostetter v. Adams, 20 Blatchf. 326.
< Cellular Clothing Co. v. Maxton, L. R. (1899) A. C. 326.
^Ayer v. Rushton, 7 Daly, 9.
« Ex parte Hance Bros. & White, 87 Off. Gaz. 698.
'Browne v. Freeman (1), 12 W. R. 305; Seb. 230; Cox, Manual,
230; Browne V. Freeman (2), Seb. 424; Cox, Manual, 424.
** Cor win v. Daly, 7 Bos. 222.
» Continental Ins. Co. v. Continental Fire Ass'n, 96 Fed. Rep. 846.
'OGilman v. Hunnewell, 122 Mass. 139.
"Re Goodyear Rubber Co., 11 Off. Gaz. 1062.
12L. H. Harris Drug Co. v. Stucky, 46 Fed. Rep. 624.
I'^Carbolic Soap Co. v. Thompson, 25 Fed. Rep. 625.
"Re Roach, 10 Off. Gaz. 333.
'•'Lamont v. Leedy, 88 Fed. Rep. 72.
"'Stokes V. Landgraff, 17 Barb. 608; Cox, Am, Tr. Cas. 137.
''Townv. Stetson,4Abb.Pr.N.S.218;3Daly,53;Cox,Am.Tr.Cas.514.
I'^Ex parte Cohn (2), 16 Off. Gaz. 680.
>■•' Richards v. Butcher. L. R. (1891) 2 Ch. 522.
■-"Blackwell v. Wright, 73 N. C. 310.
21 Re Dole Bros., 12 Off. Gaz. 939.
"Illinois Watch Case Co. v. Elgin Nat. Watch Co.. 94 Fed. Rep.
667; reversing s. C, 89 Fed. Rep. 487.
60 LAW OF UNFAIR TRADE. [§33
orum," waterproof dressing for leather;^ "Encyclopedia
Britannica," title of an encyclopedia;'-^ "Evaporated,"
food products;^ "Ever Ready," coffee mills;^ "Extract
of Nig'ht-Blooming Cereus," perfume.^
"Fairbank's Patent," scales;'' "Famous," stoves;^
"FerrophosphoratedElixirofCalisaya Bark, "medicine;^
"Fire-proof, "oil;'' "French," paints;^" "Fruit, "vinegar."
"Galen," manufactured glass ;^'- "Gibraltar," lamp
chimneys; ^^ "Glendon," iron;^* "Golden," ointment; ^^
"Gold Label," bread;i« "Gold Medal," saleratus;i^ "Good-
year Rubber Co.," as name for rubber manufacturing
house; ^^ "Granite, "enameled kitchen utensils;^'' "Grano-
lithic," artificial stone ;2'' "Granulated Dirt-Killer," soap ;2i
"Greatest value for the money," shoes ;'^"^ "Green Moun-
tain," grapes ;^^ "Guaranteed," corset ;2* "Guenther's
Best," flour ;'^-^ "Gyrator," bolting machines."^''
iRe Talbot, 8 R. P. C. 149.
^ Black V. Ehrich, 44 Fed. Rep. 793.
3 Re Alden, 15 Off. Gaz. 389.
^Ex parte Bronson Co., 87 Off. Gaz. 1782.
sphalon V. Wright, 5 Phila. 464; Cox, Manual, 232.
^F'airbanks v. Jacobus, 14 Blatch. 337.
'Ex parte Brand Stove Co., 62 Off. Gaz. 588.
»Caswell V. Davis, 58 N. Y. 223; 17 Amer. Rep. 233.
^Scottv. Standard Oil Co., 106Ala. 475; 31 L.R.A.374; 19 So.Rep. 71.
10 Ex parte Marsching- & Co., 15 Off. Gaz. 294.
"Alden v. Gross, 25 Mo. App. 123.
12 Stokes V. Landgraff, 17 Barb. 608; Cox, Am. Tr. Cas. 137.
I'^Ex parte Nave & McCord Merc. Co., 86 Off. Gaz. 1985.
1^ Glendon Iron Co. v. Uhler, 75 Pa. St. 467; 15 Amer Rep. 599.
1'^ Green v. Rooke, W. N. 1872, p. 49.
16 Ex parte Stuhmer, 86 Off. Gaz. 181.
1" Taylor v. Gillies, 59 N. Y. 331.
1* Goodyear 's India Rubber Glove Mfg. Co. v. Goodyear Rubber
Co., 128 U. S. 598; reversing s. C, 21 Fed. Rep 276.
i''St. Louis Stamping Co. v. Piper, 33 N. Y. Supp. 443.
20Stuart & Co. v. Scottish Val de Travers Paving Co., Ct. Sess. Cas.
(4th ser.j 13, 1.
21 Ex parte Waeferling, 16 Off. Gaz. 764.
2-' Ex parte Parker, Holmes & Co., 85 Off. Gaz. 287.
2'5Hoyt v. J. T. Lovett Co., 71 Fed. Rep. 173; 17 C. C. A. 652; 31
L. R. A. 44; 39 U. S. App. 1.
2^ Symington v. Footman, 56 L. T. N. S. 696.
25 Ex parte Guenther Milling Co., 86 Off". Gaz. 1986.
2«Ex parte Wolf, 80 Off. Gaz. 1271.
§33] WHAT CONSTITUTES A VALID TRADE-MARK. 01
"Hand Grenade,' tire extinguisher; ^ "Hamburg," tea;''^
"Harvey's Sauce," condiment;^ "Headache Wafers,"
medicinal compound;^ "Health Food," cereal products
and prepared foods;-' "Health Preserving," corsets;''
"Highly Concentrated Compound Fluid Extract of
Buchu," medicine;" "Holbrook's," school ai)paratus;^
"Homoeopathic Medicines," description of articles so
called;'-^ "Hydro-Bromo Soda Mint," medicine; ^° "Hy-
gienic," underwear. ^^
' ' Imperial, " beer; ^'- ' ' Indurated Fibre, " wood-pulp prod-
ucts; ^^ "Instantaneous," tapioca prepared for speedy
cooking; ^^ "International Banking Co.," as name of bank-
ing concern;^* "Iron Bitters," bitters containing iron;^*'
"Ironstone," water pipe. ^"
"Johnson's American Anodyne," liniment;^** "Juli-
enne," soup.^''
"Kaiser," beer ;'^" "Kid Nee Kure," medicine ;'^^ "Kidney
& Liver," bitters.-
^Re Harden Fire Esting-uisher Co.'s Trade-mark, 55 L.J. CIi. 596.
2Frese v. Bachof, 14 Blatchf. 432.
3Lazenburgv. White, 41 L. J. Ch. 354.
^Gessler v. Grieb, 80 Wis. 21; 27 Am. St. Rep. 20.
•^Fuller V. Huff, 99 Fed. Rep. 439.
«Ball V. Sieg-el, 166 111. 137.
"Helmbold v. Helmbold Mfg. Co., 53 How. Pr. 453.
** Sherwood v. Andrews, 3 Am. Law Reg. N. S. 588.
^Humphrey's Spec. Homoeopathic Med. Co. v.Wenz. 14 Fed. Rep. 250.
"Ex parte Spayd, 86 Oflf. Gaz. 631.
"Jaros Hyg-ienic Underwear Co. v. Fleece Hyg-ienic Underwear
Co., 60 Fed. Rep. 622; S. c, 65 Fed. Rep. 424.
^^Beadleston & Woerz v. Cooke Brewing- Co., 20 C. C. A. 405; 74
Fed. Rep. 229.
i'"' Industrial Fibre Co. v. Amoskeag- Indurated Fibre Ware Co.,
37 Fed. Rep. 695.
i^Bennet v. McKinley, 65 Fed. Rep. 505; 13 C. C. A. 25.
'•"^Kohler v. Sanders, 122 N. Y. 65; affirming S. c, 48 Hun, 48.
i"Brown Chem. Co. v. Stearns, 37 Fed. Rep. 360; Brown Chem. Co.
V. Meyer, 139 U. S. 591; Cox, Manual, 726.
'■Re Rader, 13 Off. Gaz. 596.
i"Re Johnson, 2 Off. Gaz. 315.
lOGodillot V. Hazard, 81 N. Y. 263.
-"Luyties v. Hollender, 30 Fed. Rep. 632. Per contra, see Kaiser-
brauerei v. Baltz Brewing Co., 11 Fed. Rep. 695.
-'Ex parte Henderson, 85 Off. Gaz. 453.
"Spieker v. Lash, 102 Cal. 38; 36 Pac. Rep. 362.
62 LAW OF UNFAIR TRADE. [§33
"Lackawanna," coal;i "Lake," glass product;-' "La
Normandie," cig-ars;^ "Liebig's Extract of Meat," meat
extract made under Liebig's formula;* "Lieutenant
James' Horse Blister," ointment ;5 "Linoleum," floor-
cloth i^ "Loch Katrine," whisky.'
'^Magnolia," alloy metal ;'^ "Malted Milk," infants'
food;^ "Marshall's Celebrated," liniment;io ''Maryland
Club Rye," whisky; ^^ "Masonic," cigars; ^'^ "Matzoon,"
fermented milk;^-^ "Medicated Prunes," medicine; ^^ "Me-
tallic Clinton," paint ;i'^ "Microbe Killer," antiseptic;i«
"Moline," plows;i^ "Montserrat," lime juice. ^^
"National Sperm," candles ;!'■' "Native Guano," fertil-
izer;''^ "New Manny," harvester; -1 "New York," glass
products; 2"^ "Nourishing London," stout. ^^
1 Delaware & Hudson Canal Co. v. Clark, 13 Wall. 311.
2 Stokes V. Landgraff, 17 Barb. 60S; Cox, Am. Tr. Cas. 137.
^Stachelberg v. Ponce, 128 U. S. 686.
^Liebig's Extract of Meat Co. (Ltd.) v. Hanbury, 17 L. T. N. S.
298; Anderson v. Liebig's Extract of Meat Co. (Ltd.), 45 L. T. 757;
Cartmell, 47.
•'James v. James, L. R. 13 Eq. 421; 41 L. J. Ch. 353; 26 L. T. N. S.
568; 20 W. R. 434; Seb. 388.
« Linoleum Mfg. Co. v. Nairn, L. R. 7 Ch. D. 834; 47 L. J. Ch.
430; 38 L. T. N. S. 448; 26 W. R. 463; Seb. 536.
'Bulloch, Lade & Co. v. Gray, 19 Jour. Juris. 218; Seb. 452.
* Magnolia Metal Co. 's Trade-marks, 66 L. J. Ch. N. S. 312.
"Ex parte Horlick's Food Co., 84 Off. Gaz. 1870.
10 Marshall v. Pinkham, 52 Wis. 572.
"Cahn V. Hoffman House, 28 N.Y. Supp. 388. Contra, see Cahn
V. Gottschalk, 2 N. Y. Supp. 13.
12 Ex parte Smith (3), 16 Off. Gaz. 764.
i*Dadirrian v. Yacubian, 72 Fed. Rep. 1010; Dadirrian v. Yacu-
bian (2), 90 Fed. Rep. 812.
14 Ex parte Smith (2), 16 Off. Gaz. 679.
1'^ Clinton Metallic Paint Co. v. New York Metallic Paint Co., 50
N. Y. Supp. 437.
i«Alff V. Radam, 77 Tex. 530.
I'Candee, Swan & Deere v. Deere & Co., 54 111. 439; 5 Amer. Rep.
125.
1^ Evans v. Von Laer, 32 Fed. Rep. 153.
i»Re Price's Patent Candle Co., L. R. 27 Ch. D. 681.
20Native Guano Co. v. Sewage Manure Co., 8 P. R. 125.
21 Re Graham, 2 Off. Gaz. 618.
22 Stokes V. Landgraff, 17 Barb. 608; Cox, Am. Tr. Cas. 137.
25 Raggett V. Findlater, L. R. 17 Eq. 29; 43 L. J. Ch. 64; 29 L. T.
N. S. 448; 22 W. R. 53; Seb. 431.
§33] WHAT CONSTITUTES A VALID TRADE-MARK.
63
"Old Bourbon," whisky;' "Old Innishowen," whisky;'^
"Old London Dock," g-in;=^ "Olive," bicycles having
olive-colored frames.^
"Paraffin," oil;"* "Parson's Purgative," pills;« "Per-
fect Face Paste," medicine;^ "Philadelphia," beer;*
"Pocahontas," coal;"' "Post Office," directory;''^ "Por-
ous," medicinal plasters; 11 "Prime Leaf," lard; ''^ "Prize
Medal, 1862," on goods sold by one awarded a medal at
the London International Exhibition of 1862;i-^ "Purity,"
oleomargarine.!*
"Red," snuff;!-^ "Richardson's Patent Union," leather
splitting machine;!^ "Rose," vanilla extract;'" "Rosen-
dale," cement;!' "Rye and Rock," liquor.'''
"Safety," explosive powder;^^ "Sanitary," filter;-'
" Sarsaparilla and Iron," tonic:"^^ "Satinine," starch and
1 Hardy v. Cutter, 3 Off. Gaz. 468.
2 Watt V. O'Hanlon, 4 P. R. 1.
yBinninger v. Wattles, 28 How. Pr. 206.
*Ex parte Olive Wheel Co., 84 Off. Gaz. 1871.
^Young V. Macrae, 9 Jur. N. S. 322.
«Re Johnson, 2 Off. Gaz. 315.
'Ex parte Rail, 85 Off. Gaz. 453.
^Eg-gers V. Hink, 63 Cal. 445.
9Coffman v. Castner, 87 Fed. Rep. 457. Contra, Atwater v. Castner,
88 Fed. Rep. 642.
w Kelly V. Byles, 40 L. T. 623.
"Re Brandreth, Seb. 626.
i-Popham V. Wilcox, 66 N. Y. 69.
I'^Batty V. Hill, 1 H. ii M. 264; 8 L. T. N. S. 791; 11 W. R. 745;
2 N. R. 265; Seb. 218.
"Ex parte Capitol City Dairy Co., 83 Off. Gaz. 295.
i-'Ex parte Pearson Tobacco Co., 85 Off. Ga2. 287.
'«Re Richardson, 3 Off. Gaz. 120.
"Clotworthy v. Schepp, 42 Fed. Rep. 62.
i^Nevv York Cement Co. v. Coplay Cement Co. (1), 44 Fed. Rep.
277; New York Cement Co. v. Coplay Cement Co. (2), 45 Fed. Rep.
212.
19 Van Beil v. Prescott, 82 N. Y. 630.
20 Ex parte Safety Powder Co., 16 Off. Gaz. 136.
21 Re Atkins Filter Co., 3 P. R. 164.
22 Schmidt v. Brieg, 100 Cal. 672; Same v. McEwen, 35 Pac. Rep.
854; Same V. Crystal Soda Water Co., Id. 855; Same v. Steinke. Id.
855; Same v. Haake, Id. 855; Same v. Liberty Soda Works Co., Id.
856.
64 LAW OF UNFAIR TRADE. [ § 33
soap;i "Satin Polish," boots and shoes;^ "Schiedam
Schnapps,'* liquor; =^ "Selected Shore," mackerel;*
' ' Singer, " sewing- machines, after expiration of the Singer
patents;^ "Snowflake," crackers, the word being de-
scriptive of the quality of flour used;*' "Somatose,"
meat extract, from the Greek "somo," Angl. "body,"
genitive "somatos;"^ " Splendid," flour; » "Standard A,"
cigars;'' "Steel Shod," shoes having soles quilted with
steel wire ; ^'^ " Straight-Cut, " cigarettes ; " " Svenska Snus-
maganiset," meaning Swedish snuff store;^'-^ "Sweet Lo-
tus," tobacco;^^ "Swing," scythe-sockets.^^
"Taffy Tolu," chewing gum;i^ "Tasteless," drugs; i«
"Thomsonian," medicines;i^ "Timekeeper," watches;^^
"Tycoon," tea;i» "Tucker Spring," bed.^o
"United States," dental rooms. -^
"Valvolene," oil;-'^ "V-0," medicine ;23 "Vitae-Ore,"
medicine; 2^ "Victoria," lozenges.^^
iRe Meyerstein, 7 R. P. C. 114; L. R. 43 Ch. D. 604; 59 L. J. Ch.
401; 62 L. T. 526; 38 W. R. 440; Cartmell, 225.
2 Ex parte Brigham, 20 Off. Gaz. 891.
3Wolfe V. Goulard, 18 How. Pr.64; Seb. 179; Cox, Am.Tr. Cas. 226;
Burke v. Cassin, 45 Cal. 467; Wolfe v. Hart, 4 V. L. R. Eq. 125; Wolfe v.
Alsop,10V. L. R.Eq. 41; 12 V. L. R. 421; Wolfe v. Lang, 13 V. L. R. 752.
^Trask Fish Co. v. Wooster, 28 Mo. App. 408.
e Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169.
^Larrabee v. Lewis, 67 Ga. 561; 44 Am. Rep. 735.
^Farben-fabriken T. M. K., 7 R. P. C. 439; L. R. (1894) 1 Ch. 645.
8 Ex parte Stokes, 64 Off. Gaz. 437.
«Ex parte Cohn (1), 16 Off. Gaz. 680.
'«Brennan v. Emery-Bird Thayer Dry Goods Co., 99 Fed. Rep. 971.
'iGinterv. Kinney, 12 Fed. Rep. 782.
J2Bolander v. Peterson, 136 111. 215.
^3 Wellman & Dwire Tob. Co. v. Ware Tob. Works, 46 Fed. Rep. 289.
"Ex parte Thompson, Derby & Co., 16 Off. Gaz. 137.
J^Colgan V. Danheiser, 35 Fed. Rep. 150.
i«Re Dick & Co., 9 Off. Gaz. 538.
1^ Thomson v. Winchester, 36 Mass. 214.
i»Ex paite Strasburger & Co., 20 Off. Gaz. 155.
i«Corbin v. Gould, 133 U. S. 308.
-'J Tucker Mfg. Co. v. Boyington, 9 Off. Gaz. 455.
2'Cady V. Schultz, 19 R. I. 193; 61 Am. St. Rep. 763.
22ReHorsburgh, 53 L. J. Ch. 237.
23Noel V. Ellis, 89 Fed. Rep. 978-981.
24 Noel V. Ellis, supra.
25Wotherspoon v. Gray, Ct. Sess. Cas. (3d ser.) 2, 38.
§34] WHAT CONSTITUTES A VALID TRADE-MARK. 65
"Water of Ayr," stone; ^ "Webster's Dictionary," ap-
plied to the standard lexicon of that name;^ "Wister's
Balsam of White Cherry," medicine;^ "Worcestershire,"
sauce;^ "Yale," locks;'' "Yucatan," leather and leather
goods. ^
§ 34. Examples of valid trade-marks, fancy, arbi-
trary or distinctive words.— The following instances
are illustrative of fancy, arbitrary or distinctive words,
which have either been held proper, protected against
unfair competition, or their use upheld as trade-marks
in application to the classes of merchandise in connec-
tion with which the words have respectively been used.
In some cases the question of validity was not raised,
nor are all of them to be upheld as technical trade-
marks. These illustrations are given in their alphabeti-
cal order to facilitate reference.
"Ainsworth," thread;" "Alderney," oleomargarine;^
"American Cold Japan," paint ;'^ "American Express,"
sealing wax; ^'' "American Volunteer," shoes;" "Anato-
lia," licorice;^- "A. N. Hoxie's Mineral," soap;^^ "Anchor
Brand," wire;^^ "Annihilator," medicine;!^ "Anti-Wash-
iMontgomerie v. Donald, Ct. Sess. Cas. (4th ser.) 11, 506.
^Merriam v. Texas Sifting-s Pub. Co., 49 Fed. Rep. 944-947.
•''Towle V. Spear, 7 Penn. L. J. 176; Cox, Am. Tr. Cas. 67; Seb. 90.
■»Lea V. Deakin, 11 Biss. 23; Lea v. Wolff, 15 Abb. Pr. N. S. 1;
46 How. Pr. 157; Seb. 407; Lea v. Millar, Seton (4th ed.). 242; Seb.
513.
■'Ex parte Yale & Towne Ufg. Co., 81 Off. Gaz. 801.
«Ex parte Weil, 83 Off. Gaz. 1802.
'Ainsworth v. Walmesley, 44 L. R. 1 Eq. 518.
SLauferty v. Wheeler, 11 Abb. N. C. 220; 11 Daly, 194; 63 How.
Pr. 488.
•'Reeder v. Brodt, 6 Ohio Dec. 248; 4 Ohio X. P. 265.
i»Dennison Mfg. Co. v. Thomas Mfg-. Co., 94 Fed. Rep. 651-653.
"Joseph Banig-an Rubber Co. v. Bloomingdale, 89 Off . Gaz. 1670.
i^McAndrews v. Bassett, 4 DeG. J. & S. 380; 33 L. J. Ch. 566; 10
Jur. N. S. 550; 10 L. T. N. S. 442; 12 W. R. 777; 4 N. R. 123; Cox,
669. Anatolia is a geographical name, but its use here was protected
on the theory of unfair competition.
i^Hoxie V. Chaney, 143 Mass. 592.
•••Edelsten V. Edelsten, 1 DeG. J. & S. 185; Cox, 667.
'•■^Re N. Jenkins, Cert. No. 746; Fulton v. Sellers, 4 Brewst. 42.
66 LAW OF UNFAIR TRADE. [§34
board," soap;^ "Apollinaris," mineral water;-' "Arctic,"
soda apparatus.'^
"Baco-Curo," remedy for tobacco habit;* "B. B. B.,"
medicine;^ "B. B. H." with a crown, iron;" "Bafle,"
safes;' "Balm of Thousand Flowers," cosmetic;^
"Beatty's Headline," copy book;'' "Bell of Moscow,"
wine;^" "Benedictine," liqueur;" "Bethesda," mineral
water;^- "Bismarck," paper collars;^^ "Blackstone," ci-
g"ars;" " Blood Searcher," medicine;^'^ "Blue Lick,"water;^"
"Boker's Stomach Bitters," medicine;" "Bovilene," po-
made ; ^^ " Bo vril, " meat extract ; ^^ " Bromidia , " medicine ; ^°
"Bromo-Caffeine," medicine ;^^ "Brown Dick," tobacco. "^"^
lO'Rourke v. Central City Soap Co., 26 Fed. Rep. 576.
^Apollinaris Co. v. Norrish, 33 L. T. N. S. 242; Same v. Edwards,
Seton (4th ed.), 237; Same v. Moore, Cox, Manual, Case No. 675;
Same v. Herrfeldt, 4 P. R. 478; Same v. Scherer, 27 Fed. Rep. 18.
3 Re James W. Tufts, Cert. No. 678.
* Sterling Remedy Co. v. Eureka Chemical and Mfg. Co., 80 Fed.
Rep. 105; 49 U. S. App. 709; 25 C. C. A. 314.
^Foster v. Blood Balm Co. (Ga.), 3 S. E. Rep. 284.
6Hall V. Barrows, 4 DeG. J. & S. 150; Cox, 668.
^Talbotv. Webley, 3 R. P. C. 276; Cartmell, 324.
**Fetridge v. Merchant, 4 Abb. Pr. 156.
"Gage V. Canada Publ. Co., 11 Can. Sup. Ct. 306; 6 Out. Rep. 68;
11 Ont. App. 402.
10 Re Charles Narcisse Ferre, Cert. No. 8939.
"Societe Anonyme v. "Western Distilling Co., 43 Fed. Rep. 416.
12 Dunbar v. Glenn, 42 Wis. 118; Seb. 529.
i^Messerole v. Tynberg, 4 Abb. Pr. N. S. 410; 36 How. Pr. 14;
Cox, 479; Seb. 300.
" Levy V. "Waitt, 56 Fed. Rep. 1016.
I'^Fulton V. Sellers, 4 Brewst. 42; Cox, Manual, Case No. 279.
i«Northcutt V. Turney, 101 Ky. 314; 41 S.W. Rep. 21; Parkland Hill
Blue Lick Water Co. v. Hawkins (Ky,), 26 S. W. Rep. 389; 95 Ky.
502; 16 Ky. Law Rep. 210; 44 Am. St. Rep. 254.
I'Funke v. Dreyfus, 34 La. Ann. 80; 44 Am. Rep. 413.
'**Lockwood V. Bostwick, 2 Daly, 521.
'3 Re Bovril, L. R. (1896) 2 Ch. D. 600.
»JBattle V. Finlay (2), 50 Fed. Rep. 106; Battle v. Finlay (1), 45
Fed. Rep. 796.
2iKeasbey v. Brooklyn Chemical "Works, 37 N. E. Rep. 476; 142
N. Y. 467; reversing s. c, 21 N. Y. Supp. 696.
22 J. W. Carroll, Cert. No. 157.
§34] WHAT CONSTITUTES A VALID TRADE-MARK. 67
"Cashmere Bouquet,'' toilet soap;^ "Celluloid," com-
pound of pyroxyline;-' "Centennial," clothing,'^ or alco-
holic spirits;* "Champion," flour;"' "Charley's Aunt,"
name of farce;*' "Charter Oak,"' stoves; ' "Chatterbox,"
juvenile books, published periodically;** "Chicago
Waists," corset waists;'' "Chicken Cock," whisky; ^°
"Chinese Liniment;"" "Climax,'' stoves;'-' "Club Soda,"
carbonated water;" "Coal Oil Johnny's Petroleum,"
soap;'* " Cocoaine,'' hair oil; '^ " Compactum," umbrellas; '^
"Congress Water,'' mineral water;'' "Cottolene,'" lard
substitute;'** "Cough Cherries, "confectionery;''' "Cream,"
baking powder;-'^ "Crystal," castor oil;"^' "Cuticura,"
toilet soap."-"
"Damascus Blade," scythes;-^ "Daniel," bridle bits
1 Colgate & Co., Cert. No. 914; Colgate v. Adams, 88 Fed. Rep. 899.
2 Celluloid Mfg. Co. v. Read, 47 Fed. Rep. 712; Celluloid Mfg. Co.
V. Cellonite Mfg. Co., 32 Fed. Rep. 94.
"'Sternberger v. Thalheimer, 3 OflF. Gaz. 120.
^Re Bush & Co., 10 Off. Gaz. 164.
•'-Atlantic Milling Co. v. Robinson, 20 Fed. Rep. 217; 27 Off. Gaz.
1322.
BFrohman v. Miller, 29 N. Y. S. 1109; 8 Misc. Rep. 379.
'Filley V. Fassett, 44 Mo. 173; 100 Am. Dec. 275; Cox, Am. Tr. Cas.
530; 9 Am. L. Reg. N. S. 402; Seb. 313; Filley v. Child, 16 Blatchf. 376.
*Estes V. Leslie, 29 Fed. Rep. 91; Estes v. Worthington, 31 Fed.
Rep. 154; Estes v. Leslie, 27 Fed. Rep. 22.
^Gage-Downs Co. v. Featherbone Corset Co., 83 Fed. Rep. 213.
i»G. G. White Co. v. Miller, 50 Fed. Rep. 277,
" Coflfeen v. Brunton, 4 McLean, 516; 5 McLean, 256.
12 Filley v. Fassett, 44 Mo. 173.
13 Cochrane v. Macnish, (P. C.) L. R. (1896) A. C. 225; 65 L. J. P.
C. N. S. 20; 74 Law T. R. 109.
'^Petrolia Mfg. Co. v. Bell & Bogart Soap Co., 97 Fed. Rep. 781.
!• Burnett v. Phalon, 3 Keyes, 594; 5 Abb. Pr. N. S. 212. ■
it'Re Davis Trade-marks, 22 Trade-mark Record, 50.
'^Congress, etc. Spring Co. v. High Rock Congress Spring Co., 57
Barb. 526; Cox, 599; 45 N. Y. 291; 10 Abb. Pr. N. S. 348; 6 Am. Rep.
82; 4 Am. L. T. 168; Cox, Am. T. R. Cas. 624; Seb. 354.
i^'N. K. Fairbank Co. v. Central Lard Co., 64 Fed. Rep. 133.
'■•' Stoughton V. Woodard, 39 Fed. Rep. 902.
2*^ Price Baking Powder Co. v. Fyfe, 45 Fed. Rep. 799.
21 H. J. Baker & Bro., Cert. No. 373.
"Potter Drug & Chem. Co. v. Miller, 75 Fed. Rep. 656. Held in-
fringed by word "curative" and imitative devices.
-Duiin Edge Tool Co., Cert. Xo. 563.
68 LAW OF UNFAIR TRADE. [§ 34
and stirrups;^ "Daylight," oil;^ "Deer Tongue," to-
bacco;^ "Derringer," fire-arms;* "Diamond," soap;^
"Dolly Varden," stationery;*' "Dr. Lobenthal's Essentia
Antiphthisica," medicine;^ "Dublin," soap; ^ "Durham,"
smoking tobacco;^ "Dyspepticure," medicine. ^"^
"Edelweiss," perfume; ^^ "Electro-Silicon," polishing'
preparation;^ "Elk," cig^ars;^^ " Emollia," toilet cream;"
"Empire," stoves; ^^ "Epicure," canned salmon; i** "Ethi-
opian," stockings; ^^ "Eureka," fertilizer,^^ or shirts, ^^
or steam packing; ^^ "Everlasting," pills;^^ "Excelsior,"
stoves,'-^ or soap.^^
"Faber," pencils; ^^ "Falstaff," cigars ;25 "Family,"
^Kelita Broadhurst, Cert. No. 946.
2Bostwick & Tilford, Cert. No. 376.
SL. L. Armistead, Cert. No. 512.
•^Derringer v. Plate, 29 Cal. 292; Cox, Am. Tr. Cas. 324.
5J. Buchan & Co., Cert. No. 924.
^Berg-en & Brainbridge, Cert. No. 833.
^Re Rohland, 10 Off. Gaz. 980.
*Re Cornwall & Co., 12 Off. Gaz. 312.
^Blackwell v. Armistead, 5 Am. L. T. 85; 3 Hughes, 163; Armi-
stead V. Blackwell, 1 Off. Gaz. 603; Blackwell v. Dibrell, 14 Off.
Gaz. 633; Blackwell v. Wright, 73 N. C. 310.
10 Ex parte Foley & Co., 87 Off. Gaz. 1957.
"Rosing V. Atkinson, 27 Sol. J. 534.
12 Electro-Silicon Co. v. Hazard, 29 Hun, 369; 36 N. Y. Sup. Ct.
369.
I'Lichtenstein v. Goldsmith, 37 Fed. Rep. 359.
"Re Grossmith, 60 L. T. N. S. 612.
i^Filley v. Fassett, 44 Mo. 173; Seb. 313.
i« George v. Smith, 52 Fed. Rep. 830.
i^Hine v. Lart, 10 Jur. 106; 7 L. T. O. S. 41; Seb. 80.
1* Alleghany Fertilizer Co. v. Woodside, 1 Hughes, 115; Seb. 364;
Fed. Case No. 206.
iSFord V. Foster, L. R. 7 Ch. D. 611; 41 L. J.Ch.682; 27 L. T.N. S.
219; 20 W. R. 818; Seb. 384.
20Symonds v. Greene, 28 Fed. Rep. 834.
21 Dunn «& Co., Cert. No. 448.
22Filley v. Fassett, 44 Mo. 173; Seb. 313; Sheppard v. Stuart, 13
Phila. 117.
23Braham v. Bustard, 1 H. & M. 447.
24Faber v. Faber, 49 Barb. 357; 3 Abb. Pr. N. S. 115; Cox, Am.
Tr. Cas. 401.
25 David Hirsch, Cert. No. 23.
§34] WHAT CONSTITUTES A VALID TRADE-MARK. 69
salve;^ "Pavorita," flour;^ "Fibre Chamois," dress
lining:s;3 "Filofloss," silk;* "Filtre Rapide," filters.'^
"Gaslight," oil;« "German," syrup;^ "Glenfield,"
starch; « "Gold Dust," whisky, '-' or washing powder; ^"^
"Golden Crown," cigars; 11 "Gouraud's Oriental Cream,"
cosmetic; 1'^" Grand Master," cigars ;i" "Green Mountain,"
scythe-stones;" "Grenade," syrup; ^^ "Gulliver," cigars. i''
"Hanford's Chestnut Grove," whisky; ^^ "Hansa," lard,
sausages and bacon ;i** "Harvest Victor," harvester; i''
"Heliotype," prints;'*^ "Hero," jars;''^i "Home." sewing
machine ; '^' ' ' Hoosier, " drills; -^ ' ' Howqua's Mixture, " tea ; ^*
"Hunter," shoes;"'^^ "Hygeia," water;'^'' "Hygieniques,"
suspenders."
iReinhart v. Spaulding, 49 L. J. Ch. 57.
2Menendez v. Holt, 128 U. S. 182; Cox, Manual, Case No. 707.
^American Fibre Chamois Co. v. DeLee, 67 Fed. Rep. 329; 71 Off.
Gaz. 1458.
•*Rawlinson v. Brainard & Armstrong Co., 59 N.Y. Supp 880;
28 Misc. Rep. 287.
•^Re Maignen's Application, 28 W. R. 759; Cartmell, 216.
Bfiostwick & Tilford, Cert. No. 377.
^Re Green, 8 Off. Gaz. 729.
sWotherspoon v. Currie, L. R. 5 H. L. 508; 42 L. J. Ch. 130; 27
L. T. N. S. 393.
"Barkhouse Bros. & Co., Cert. No. 626.
»0N. K. Fairbank Co. v. Luckel, etc. Soap Co., 88 Fed. Rep. 694.
"Palmer v. Harris, 60 Pa. St. 156.
i^Gouraud v. Trust, 10 N. Y. Sup. Ct. 627.
I'^Yale Cigar Mfg. Co. v. Yale, 30 Oflf. Gaz. 1183.
i^Pike Mfg. Co. v. Cleveland Stone Co., 35 Fed. Rep. 896.
'■■'Rillet V. earlier, 61 Barb. 435.
16 David Hirsch, Cert. No. 24.
•^Hanford v. Westcott, 16 OS. Gaz. 1181.
"*Ex parte Tietgens & Robertson, 87 Off. Gaz. 2117.
18 Samuel B. Forbes, Cert. No. 843.
-0 Osgood V. Rockwood, 11 Blatch. 310.
'•'' Rowley v. Houghton, 2 Brewst. 303.
^New Home Sewing Machine Co. v. Bloomingdale, 59 Fed. Rep. 284.
2'' Julian V. Hoosier Drill Co., 78 Ind. 408.
2<Pidding v. How, 8 Sim. 477.
"Certificate 33863; 89 Off. Gaz. 2256.
2" Waukesha Hygeia Mineral Springs Co. v. Hygeia Sparkling
Distilled Water Co., 63 Fed. Rep. 438; 11 C. C. A. 277.
-'^Bailly v. Nashawannuck Mfg. Co., 51 Off. Gaz. 970; 10 N. Y.
Supp. 224.
70 LAW OF UNFAIR TRADE. [§ 34
"Ideal," fountain pens;i "Indian Pond," scythe-
stones;2 "Indian Root," pills;=^ "Insectine," insect pow-
der;'* "Insurance," oil;^ "Invigorator," spring bed bot-
toms;« "Iron Clad," boots.'
"Kaiser," beer;^ "Kathairon," remedy;^ "King Bee,"
smoking tobacco;^« "King of the Field," agricultural im-
plements;!^ "Kitchen Crystal," soap; ^'^ "Koffio," cereal
coffee. ^^
"La Cronica," newspaper; ^^ "Lacto-Peptine," medi-
cine;!^ "La Favorita," flour ;i« "Lamoille, "scythe-stones ;i'"
"La Norma," cigar boxes ;!^ "La Normandi," cigars ;!>*
"Leopold," woolen cloth;^^ "Licensed Victuallers," rel-
ish;-^ "Lightning," hay knives;- "Lion," merchandise;"^*
"Liverpool," woolen cloth ;'-^ "London Whiffs," cigars ;2^
"Lone Jack," smoking tobacco.'^^
1 Waterman v. Shipman, 130 N. Y. 301.
-'Pike Mfg-. Co. V. Cleveland Stone Co., 35 Fed. Rep. 896.
^Comstock V. White, 18 How. Pr. 421.
•t Arthur v. Howard, 19 Pa. Co. Ct. 81.
^Insurance Oil Tank Co. v. Scott, 33 La. Ann. 946.
6 Ex parte Heyman, 18 Off. Gaz. 922.
'Hecht V. Porter, 9 Pac. Coast L. J. 569.
SKaiserbrauerei v. Blatz Brewing Co., 71 Fed. Rep. 695; S. C. af-
firmed, 74 Fed. Rep. 222.
''Heath v. Wright, Cox, Am. Tr. Cas. 154.
loSarrazin v. W. R. Irby Cigar Co., 93 Fed. Rep. 624.
"Greenwoods Scythe Co., Cert. No. 749.
12 Re Eastman, W. N. 1880, p. 128.
13 Sleepy Eye Milling Co. v. C. F. Blanke Tea & Coffee Co., 85 Off.
Gaz. 1905.
"Stephens v. DeConto, 4 Abb. Pr. N. S. 47.
i^Carnrick v. Morson, Seb. 543; Cox, Manual, 543.
i«Menendez V. Holt, 128 U. S. 514.
17 Pike Mfg. Co. v. Cleveland Stone Co., 35 Fed. Rep. 896.
i«Ex parte Egyptian Cigarette Co., 85 Off. Gaz. 1905.
isstachelberg v. Ponce, 23 Fed. Rep. 430.
20Hirst V. Denham, L. R. 14 Eq. 542; 27 L. T. N. S. 56; 41 L. J.
Ch. 752.
21 Cotton V. Gillard, 44 L. J. Ch. 90.
22 Hiram Holt Co. v. Wadsworth, 41 Fed. Rep. 34.
23 Re Weaver, 10 Off. Gaz. 1.
24Hirst V. Denham, L. R. 14 Eq. 542.
25Feder v. Brudno, 5 Ohio N. P. 275.
26Carrcll v. Ertheiler, 1 Fed. Rep. 688.
§34] WHAT CONSTITUTES A VALID TRADE-MARK. ^i
"Magic," scythe-stones;^ "Magnetic Balm, "'ointment;"^
"Mag-nolia," liquor;^ "Maizena," corn flour-/ "Marvel,"
mill products;^ "Medicated Mexican Balm," medicine;**
"Menlo Park," watches;' "Mojava," blended coffee.^
"Napoleon," cigars;'-* "New Era," newspaper ;^''
"Nickel," soap;" "Nickel-In," cigars;^ "No-To-Bac,"
medicine; ^^ "O. F. C," whisky;" "Old Crow," whisky ;i-^
"Osman," towels;"' "Otaka," biscuits."
"Pain-Killer,"medicine;i« "Parabola," needles;'^ "Pec-
torine," medicine;"''" " Persian," thread ;'^i" Pigs in Clover,"
puzzle;'" "Pocahontas," coal;2=^ "Portland," stoves;"^^
"Pride," cigars;^^ "Puddine," pudding preparation.-"'
"Rising Sun," stove polish;" "Roger Williams," cot-
iPike Mfg. Co. v. Cleveland Stone Co., 35 Fed. Rep. 896.
2Smith V. Sixbury, 25 Hun, 232; 32 N. Y. Sup. Ct. 232.
3Kidd & Co. V. Mills, Johnson & Co., 5 Off. Gaz. 337; Kidd v.
Johnson, 100 U. S. 617.
<Glen Cove Mfg. Co. v. Ludeling, 22 P'ed. Rep. 823.
SListman Mill Co. v. William Listman Milling Co., 60 N. W. Rep.
261; 88 Wis. 334.
«Perry v. Truefit, 6 Beav. 56; 1 L. T. 384; Seb. 73.
7 Ex parte Hampden Watch Co., 81 Off. Gaz. 1282.
s American Grocery Co. v. vSloan, 68 Fed. Rep. 539.
9 Goldstein v. Whelan, 62 Fed. Rep. 124.
'OBell V. Locke, 8 Paige, 75; Cox, Am. Tr. Cas. 11.
'^Ex parte Butler, 87 Off. Gaz. 1781.
J^Schendel v. Silver, 18 N. Y. Supp. 1; 63 Hun, 330.
13 Sterling Remedy Co. v. Eureka, etc. Mtg. Co., 70 Fed. Rep. 704;
80 Fed. Rep. 105.
i^Geo. T. Stagg Co. v. Taylor, 95 Ky. 651; 27 S.W. Rep. 247.
'^W. A. Gaines & Co. v. Leslie, 54 N. Y. Supp. 421.
18 Barlow & Jones v. Johnson, 7 P. R. 395.
i^Ex parte Lorenz, 89 Off. Gaz. 2067.
i^Davis V. Kendall, 2 R. I. 566; Davis v. Kennedy, 13 Grant Up.
Can. Ch. 523.
iSRoberts v. Sheldon, Fed. Case No.ll916; 18 Off.Gaz.1277; 8 Biss.398.
2" Smith v. Mason, W. R. (1875) p. 62.
21 Taylor v. Carpenter (1), 3 Story, 458.
22 Lyman v. Burns, 47 Off. Gaz. 660.
23Atwater v. Castner. 88 Fed. Rep. 642. Per contra, Coffman v.
Castner, 87 Fed. Rep. 457.
2n^an Horn v. Coogan, 52 N. J. Eq. 380; 28 Atl. Rep. 788.
25Hier v. Abrahams, 82 N. Y. 519; 37 Am. Rep. 589.
-^Clotworthy v. Schepp, 42 Fed. Rep. 62.
-"Morse V. Worrell, 10 Phila. 168.
72 LAW OF UNFAIR TRADE. [§34
ton cloth;^ "Rosebud," canned salmon;^ "Royal," bak-
ing powder;'^ "Royal Blue," carpet sweeper.*
"Sapolio," scouring brick;^ "Saponifier," concen-
trated lye;« "Seftoa," cloth ;^ "Shawknit," stockings ;«
"Silver Grove," whisky;'-^ "Six Little Tailors," tailor-
ing firm's name; ^° "Slate Roofing," paint;" "SlicedAni-
mals," toys;^ "Social Register," directory;!^ "Star,"
shirts," iron,^^ oil,^^ soap,^' lead pencils, ^^ tobacco; ^^ "St.
James," newspaper,^^ or cigarettes ;2^ "Sunlight," soap;^'''
"Swan Down," complexion powder; '^^ "Sweet Caporal,"
cigarettes;'^* "Sweet Opoponax of Mexico," perfume ;2-^
"Syrup of Red Spruce Gum," medicine. ^'^
^ Barrows v. Knight, 6 R. I. 434; Cox, Am. Tr. Cas. 238.
2 Ex parte Kinney, 72 OfP. Gaz. 1349.
=* Royal Baking Powder Co. v. Raymond, 70 Fed. Rep. 376; Ray-
mond V. Royal Baking Powder Co., 85 Fed. Rep. 231.
^Ex parte Grand Rapids School Furniture Co., 87 Off. Gaz. 1957.
•^ Enoch Morgan's Sons Co. v. Wendover, 43 Fed. Rep. 420.
« Pennsylvania Salt Mfg. Co. v. Meyers, 79 Fed. Rep. 87.
"Hirst V. Denham, L. R. 14 Eq. 542.
8 Shaw Stocking Co. v. Mack, 12 Fed. Rep. 707.
9 Seltzer v. Powell, 8 Phila. 296.
'0 Mossier v. Jacobs, 65 111. App. 571.
" Re Glines, 8 Off. Gaz. 435.
i-'Selchow V. Baker, 93 N. Y. 59.
"Social Reg. Ass'nv. Howard, 60 Fed. Rep. 270; 67 Off. Gaz. 1448.
'^Morrison v. Case, 9 Blatchf. 548; 2 Off. Gaz. 544; Fed. Case No.
9845; Hutchinson V. Blumberg, 51 Fed. Rep. 829; Hutchinson v. Covert,
51 Fed. Rep. 832.
^■^ Dixon V. Jackson, 2 Scot. L. Rep. 188.
'«Re American Lubricating Oil Co., 9 Off. Gaz. 687.
'■Re Cornwall, 12 Off. Gaz. 138.
'^Faberv. Hovey, Codd. Dig. 79, 242; Seb. 481.
'•'Liggett & Myer Tob. Co. v. Sam Reid Tob. Co., 155 Mo. 843;
Liggett & Myer Tob. Co. v. Hynes, 20 Fed. Rep. 883.
^«Gibblettv. Read, 9 Mod. 459; Seb. 3; Ex parte Foss, Re Baldwin,
30 L. T. 354; 2 DeG. & J. 230; 27 L. J. Bkptcy. 17; 4 Jur. N. S.
522; 21 L. T. 30; Seb. 159.
'-'i Kinney v. Basch, Seb. 542.
'-^2 Lever Bros. (Ltd.) v. Pasfield, 88 Fed. Rep. 484.
'^•■^Tetlow v. Tappan, 85 Fed. Rep. 774.
2iKinney Tob. Co. v. Mailer, 53 Hun, 340; 6 N. Y. Supp. 389.
2-'' Smith v. Woodruff, 48 Barb. 438.
^•^Kerry v. Toupin, 60 Fed. Rep. 272; Hornbostel v. Kinney, 110 N. Y.
94- 17 N. E. Rep. 66^..
§35] WHAT CONSTITUTES A VALID TRADE-MARK. 73
"Tamar Indien," lozenges;^ "The Good Things of
Life," periodical;'^ "The Nile," playing cards registered
a^ a print;^ "Tidal Wave," tobacco;^ "Tivoli," beer;*^
"Trilby," gloves;"^ "Twin Brothers," yeast.'
"Uneeda," biscuit.^
" Valvoline," lubricating oil;" " Vitascope," machine;'*^
"Vulcan," matches."
"Waverly," bicycles;^'' "Willoughby Lake," scythe-
stones;'^ "Wistar's Balsam of Wild Cherry," medicine; '*
" Yankee," soap.^'^
S 35. Generic terms judicially defined. — It is confus-
ing to the student to be told that words indicating quality
cannot be a valid trade-mark, and yet to be confronted
by the physical fact and judicial dictum that the highest
function of the trade-mark is its indication of quality.
In a leading case Mr, Justice Field said that a trade-
mark is "a sign of the quality of the article;"'*' and
ill the leading case of Amoskeag Manufacturing Co. v.
Spear, the learned court says that the trade-mark of a
manufacturer "is an assurance to the public of the qual-
ity of his goods. "'^ In the same opinion, however, the
judge (Duer) observes that the manufacturer "has no
' Grillon v. Guenin, W. N. 1877, p. 14,
■ Stokes V. Allen, 9 N. Y. Supp. 846; 56 Hun, 526.
■'Ex parte United States Playing- Card Co., 82 Off. Gaz. 1209.
^Sorg V. Welsh, 16 Off, Gaz. 910.
■Berliner Brauerei Gesellschaft v. Knight, W. N. 1883, p. 70.
'■Re Holt & Co.'s Trade-mark (C. A.), L. R. (1891) 1 Ch. 711.
'Burton v. Stratton, 12 Fed. Rep. 696.
"National Biscuit Co. v. Baker, 95 Fed, Rep, 135.
'•'Leonard v. White's Golden Lubricator Co., 38 Fed. Rep. 922;
Leonard v. Wells, L. R. 26 Ch. D. 288. Per contra, Re Horsburgh,
53 L, J. Ch. 237,
i» Vitascope Co. v. U. S. Phonograph Co., 83 Fed. Rep. 30.
"Taendsticksfabriks Antiebolaget Vulcan v. Myers, 139 N. Y. 364.
I'^Ex parte Indiana Bicycle Co., 72 Off, Gaz. 654.
13 Pike Mfg. Co. V. Cleveland Stone Co., 35 Fed. Rep. 896.
"Fowle V, Spear, 7 Pa. L. J. 176.
'* Williams v. Adams, 8 Biss, 452; Fed, Case No. 17711; Williams
V. Spence, 25 How. Pr. 366; Williams v, Johnson, 2 Bos. 1.
i« Manhattan Medicine Co. v. Wood, 108 U. S. 218-222.
I'AmoskeagMfg. Co. V. Spear (1849), 2 Sand, S.C. 599; Cox, 87;Seb. 100.
In a recent case Judge Bradford has called attention to the use of
74 LAW OF UNFAIR TRADE. [§35
right to appropriate a sign or symbol which, from the
nature of the fact which it is used to signify, others may
the word "quality" in the cases, and distinguished its two differ-
ent meanings, in the following language:
"A trade-mark is designed to enable one legitimately to build
up or protect his business, but not to deprive others of the right to
use necessary or proper means for carrying on an honorable compe-
tition in trade. No one has a right to appropriate a sign or a sym-
bol which, from the nature of the fact it is used to signify, others
may employ with equal truth, and therefore have an equal right to
employ for the same purpose. Canal Co. v. Clark, 13 Wall. 311, 324.
Hence no one can acquire an exclusive right to the use, as a trade-
mark, of a generic name, or word, which is merely descriptive of an
article, or a sign, symbol, figure, letter, brand, form or device,
which either on its face or by association indicates or denotes merely
grade, quality, class, shape, style, size, ingredients or composition
of an article, or a word or words in common use designating locality,
section or region of country. The word 'quality' is used in differ-
ent senses in the cases. It is employed in some to denote the grade,
ingredients or properties of an article, and in others to indicate
generally the merit or excellence of an article as associated with or
coming from a certain source. While there can be no valid trade-
mark as denoting quality when used merely in the former sense, there
may be a valid trade-mark as indicating quality when used in the lat-
ter sense. Thus in McLean v. Fleming, 96 U. S. 245-253, the court said :
" ' Such a proprietor, if he owns or controls the goods which he ex-
poses to sale, is entitled to the exclusive use of any trade-mark adopted
and applied by him to the goods to distinguish them as being of a
particular manufacture and qualit3% ' etc.
"In Medicine Co. v. Wood, 108 U. S. 218, 222; 2 Sup. Ct. 439, the
court said:
'"He may thus notify the public of the origin of the article and
secure to himself the benefits of any particular excellence it may
possess from the manner or materials of its manufacture. His trade-
mark is both a sign of the quality of the article and an assurance
to the public that it is a genuine product of his manufacture. '
"In Menendez v. Holt, 128 U. S. 514, 520; 9 Sup. Ct. 144, the court,
speaking of the words 'La Favorita' as applied to flour, said:
" ' It was equivalent to the signature of Holt & Co. to a certificate
that the flour v/as the genuine article which had been determined by
them to possess a certain degree of excellence. . . . And the fact
that flour so marked acquired an extensive sale, because the public
discovered that it might be relied on as of a uniformly meritorious
quality, demonstrates that the brand deserves protection rather than
it should be debarred therefrom, on the ground, as argued, of being
indicative of quality only. ' "
Dennison Mfg. Co. v. Thomas Mfg. Co., 94 Fed. Rep. 651-657.
§35] WHAT CONSTITUTES A VALID TRADE-MARK. 75
employ with equal truth, and therefore have an equal
right to employ for the same purpose. Were such an
appropriation to be sanctioned by an injunction, the ac-
tion of a court of equity would be as injurious to the
public as it is now beneficial; it would have the effect in
many instances of creating- a monopoly in the sale of
particular goods as exclusive as if secured by a patent,
and freed from any limitation of time."
In another early case the chancellor observed: "In
respect to words, marks or devices which do not denote
the goods or property or particular place of business of
a person, but only the nature, kind or quality of the arti-
cles in which he deals, ... no property in such words,
marks or devices can be acquired. There is obvious' y
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." ^ And in more recent cases the rule
has been explained in somewhat similar terms. "It is
true that no one can appropriate as a trade-mark the
commercial name of an article which every man has the
right to make and sell."'-
"No manufacturer can acquire a special property in
an ordinary term or expression, the use of which as an
entirety is essential to the correct and truthful designa-
tion of a particular article or compound. The courts
have gone a long way, and with plain justice, in protect-
ing the honest and enterprising manufacturer of any
good and useful article from the unscrupulous pirating
of his special reputation; but they have been equally
careful to prevent any attempted monopoly of that which
is common to all."^
"Nor can a generic name, or a name merely descrip-
• stokes V. Landgraflf, 17 Barb. 608; Cox, 137; Seb. 121.
-Dreydoppel v. Young, 14 Phila. 226; Price & Steuart, 423, 42-;.
"Town V. Stetson, 5 Abb. Pr. N. S. 218; Cox, 514, 515.
76 LAW OF UNFAIR TRADE. [§36
live of an article of trade, of its qualities, ingredients or
characteristics, be employed as a trade-mark, and the
exclusive use of it be entitled to legal protection. No
one can claim protection for the exclusive use of a trade-
mark or trade-name which would practically give him a
monopoly in the sale of any goods other than those pro-
duced or made by himself. If he could, the public would
be injured rather than protected, for competition would
be destroyed."^
The fact that the article to which the trade-mark is
applied has obtained such a wide sale that the mark has
become indicative of quality, as well as of origin and
ownership, is not of itself sufficient to render the mark
publici juris and so deprive its owner of the right to relief
against infringers.^
§ 36. Necessary name of product. — The necessary
name of a product, natural or manufactured, cannot be a
trade-mark, for the reasons we have discussed. This is
true of goods manufactured under a patent. The descrip-
tive name by which they are known during the life of
the letters patent becomes their popular name in the
trade — the name by which they are necessarily known
and distinguished. When, therefore, the protection of
the patent has expired the name \s publici juris, and the
manufacturer under the letters patent can claim no trade-
mark in it.^
Thus the word "Linoleum" as applied to a kind of
floor covering,* and "Singer" applied to sewing ma-
chines,^ were held to be publici juris upon the expiration
1 Delaware & Hudson Canal Co. v. Clark, 13 Wall. 311-323; 5 Am.
L. T. 135; 1 OflF. Gaz. 279; Seb. 327.
2 Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537-547;
Burton v. Stratton, 12 Fed. Rep. 696.
•■'Centaur Co. v. Robinson, 91 Fed. Rep. 889; Same v. Neathery,
91 Fed. Rep. 891; Same v. Hughes Bros. Mfg. Co., 91 Fed. Rep. 901.
The cases are collected, (j.nte, p. 51, n. 4.
•» Linoleum Mfg. Co. v. Nairn, L. R. 7 Ch. D. 834; 47 L. J. Ch.
430; 38 L. T. N. S. 448; 26 W. R. 463; Seb. 536.
^Singer Mfg. Co. v. Bent, 163 U. S. 205; Singer Mfg. Co. v. June,
163 U. S. 169.
§36] WHAT CONSTITUTES A VALID TRADE-MARK. 77
of the letters patent covering the articles to which they
were applied.
Analog"Ous to this class of cases is that where new
combinations of old elements are found, and it is souj^ht
to distinguish such a new compound or combination by-
joining the descriptive names of its constituent elements.
This is best illustrated by a case where the words claimed
as trade-mark were " Ferro-phosphorated Elixir of Cali-
saya Bark," which claim was distinctly negatived by
the New York Court of Appeals, Polger, J., saying:
"They may not be appropriated by one to mark an
article of his manufacture, when they may be used truth-
fully by another to inform the public of the ingredients
which make up an article made by him."^ For this
reason the name "Acid Phosphate" applied to a medici-
nal preparation,'- and "Indurated Fibre" applied to
wares made of wood-pulp,^ are not valid trade-marks;
and the word "Bromo-Quinine" was refused registration
as a trade-mark for medicines,'^ as was also the word
"Perro-Manganese" as a mark for mineral waters,-^ and
the word "Bromo-Celery "' for a medicinal preparation.*^
There are cases, however, where such words or combi-
nations of words have been held not to be descriptive.
Thus the word "Cocoaine"as applied to a hair wash
compounded from cocoanut oil and other ingredients,^
and "Magnetic Balm" as applied to a medicinal com-
pound,^ have been upheld as valid trade-marks. The
word "Electro-Silicon" applied to a polishing compound
has also been upheld;^ and it appears very clear that the
words "Magnetic" or "Electric" as used in the two
cases last referred to are purely arbitrary and fanciful.
1 Caswell V. Davis, 58 N. Y. 223-233.
2Rumford Chemical Works v. Muth, 35 Fed. Rep. 524.
^Indurated Fibre Co. v. Amoskeag Fibre Co., 37 Fed. Rep. 695.
^Re Grove, Newton, Dig. 172; s. C Ibid. 191; 67 Off. Gaz. 1447.
*Re Excelsior Spring- Co., Newton, Dig. 153.
6 Re Bromo-Celery Co., Newton, Dig. 190.
^Burnett v. Phalon, 3 Kej-es, 594.
8 Smith V. Sixbury, 25 Hun. 232.
•'Electro-Silicon Co. v. Trask, 59 How. Pr. 189; Electro-Silicon Co.
V. Hazard, 29 Hun, 369.
78 LAW OF UNFAIR TRADE. [§36
We have noted that the patent oflfice has refused regis-
tration to an applicant offering- the word "Bromo-Qui-
nine" as the name of a medicinal preparation. This
decision is in hopeless conflict with some of the adjudi-
cated cases. The word "Bromidia," as a trade-mark for
a chemical combination of chloral hydrate, bromide of
potassium and other substances, was admitted to regis-
traiion and subsequently upheld as valid, the court upon
final hearing- saying that the word "has no meaning
whatever except as connected with complainants' busi-
ness, and as associated with and indicative of a soothing
or soporific mixture prepared and sold by them."^ The
word "Bromo-Caffeine" was admitted to registration,
and upheld judicially, the Court of Appeals of New York
saying, per Peckham, J., "We think there is a distinc-
tion between the facts in this case and that of Caswell
V. Davis.^ In this case the term perhaps suggests that
some one among the hundreds of substances that bromine
may combine with has been used in such combination
together with caffeine. There are, however, some seven
different ingredients in the plaintiffs' preparation, and
there is no free bromine among them, and there is no
evidence as to what the substance is which the bromine
(if any) had combined with before being used in the prep-
aration, and so it is plain that the words 'Bromo-
Caffeine ' do not in fact describe the ingredients or even
give any clear general idea as to what they are."^ It is
the general rule that "when an article is made that was
theretofore unknown, it must be christened with a name
by which it can be recognized and dealt in; and the name
thus given to it becomes public property, and all who
deal in the article have the right to designate it by the
name by which alone it is recognizable."*
'Battle & Co. v. Finlay (preliminary hearing-), 45 Fed. Rep. 796,
(final hearing) SO Fed. Rep. 106.
'58 N. Y. 223, cited supra.
^Keasbey v. Brooklyn Chemical Works, 142 N. Y. 467-476.
^Wallace, J., in Declanche Battery Co. v. Western Elec. Co., 23
Fed. Rep. 276.
§§ 37, 38] WHAT CONSTITUTES A VALID TRADE-MARK. 79
ij 37. Words taken from the dead languages. —
Words from the dead langua^'es have frequently been
applied to merchandise and sustained as valid trade-
marks, as, for example, the Greek "Eureka" as a mark
for shirts^ or for a fertilizing material,"^ and the Latin
"Excelsior" for stoves^ or soap.^ The Latin phrase
"Ne Plus Ultra" was invalid as a trade-mark solely
because the plaintiff did not show exclusive user in
himself, and the words and an accompanying device were
found to be common to the trade. "^ It has been said by
the Canadian supreme court that there can be property
in a word of a dead language even if it be expressive of
quality,'' but this dictum is incorrect, as appears from
the authorities reviewed in the next succeeding section.
A descriptive word from a dead language cannot be
other than a generic term when used as a mark for goods.
Thus, on an application for registration for the word
"Sanitas"for medicines, Kay, J., remarked: "The truth
is that if this word were applied to medicines, it would
mean to any ordinary person that the medicines were
health medicines; that is, health-giving medicines; and
that is descriptive of the quality or of the effect of the
use of these medicines. How is it i:)Ossible that it is not
descriptive?" '
§ 38. Words and phrases from modern foreign
languages. — This topic has been fruitful of conflicting
holdings. It is not settled what character of words so
taken will be sustained as valid trade-marks.
'Ford V. Foster, L. R. 7 Ch. D. 611.
^Alleghany Fertilizer Co. v. Woodside, 1 Hughes, 115.
^'Sheppard v. Stuart, 13 Phila. 117; Price Ov: Steuart, 193.
^Braham v. Bustard, 1 H. & M. 447. "Excelsior" applied to gun-
coiton goods was not upheld. Steinthal v. Samson, Seb. 546.
•''Beard v. Turner, 13 L. T. N. S. 746; Seb. 251. ■
•'Partlov. Todd, 17 Can. S. C. R. 196.
•Re Sanitas Co., 4 R. P. C. 533; 58 L. T. 166; Cartmell, 305.
Similar reasoning forbade the registration of ** Somatose " as a
trade-mark for a nourishing meat product; the (ireek "Soma," gen-
itive "Somatos, " being the equivalent of the English "body:"'
"somat " being the root of manj- English words and "ose"a common
English suffix. Re Farben-fabriken T. M. K.. L. R. (1894)1 Ch. D. 645.
80 LAW OF UNFAIR TRADE. [§38
The Eng-lish courts have consistently adhered to the
rule announced by Chitty, J., in Davis v. Stribolt: " I am of
the opinion that in reference to an article produced in a
foreign country and imported into England, where it
was previously unknown and without a name, the word
used in that foreign country as the common term to de-
scribe or denote the article is not a fancy name within
the meaning of the act." For these reasons the Norwe-
gian words "Bokel" and "Bokol" (meaning "beer")
were held not valid as trade-marks for beer.^
A curious case is that of Be Eotherham. The house of
Rotherham of Coventry had long made and exported
watches to Tod & Co. of Alexandria, by whom they were
sold, such watches bearing upon their dials the word
"Tod" in Arabic characters; "Tod" as an Arabic sub-
stantive meaning "A high mountain." The Arabic word
was registered as a trade-mark, Vice-Chancellor Bacon
holding an order of the commissioners prohibiting regis-
tration of words in foreign languages invalid.'^
The phrase "Flor Fina Prairie Superior Tabac" was
held to be a valid trade-mark for cigars,^ as have been
the words "Tamar Indien" for lozenges,* "Intimidad"
for cigars,^ "El Destino," also for cigars,*' "El Cabio"
for tobacco,'' and "La Favorita" for flour.« "Mazawat-
tee," a compound of the Hindustani words " Maza," mean-
ing taste or relish, and the Singalese " Wattee," meaning
garden or estate, is a valid trade-mark because it con-
veys no meaning to any class of persons, English, Hindo
or Singalese, and has no reference to the quality of the
gfoods.^
1 Davis V. Stribolt, 59 L. T. 854; Cartmell, 105.
2Re Rotherham, 29 W. R. 503; Seb. 647.
3 Cope V. Evans, L. R. 18 Eq. 138; 30 L. T. N. S. 292; 22 W. R.
453; Seb. 433.
*Grillon v. Guenin, W. N. 1877, p. 14; Seb. 532.
■'Caruncho v. Stephenson, 25 Sol. J. 929.
«Pintov. Badman, 8 R. P. C. 181; Cartmell, 270.
"Soils Cigar Co. v. Pozo, 16 Colo. 388; 26 Pac. Rep. 556.
»Holt V. Menendez, 128 U. S. 182.
8 Re Densham, L. R. (1895) 2 Ch. D. 176.
§38] WHAT CONSTITUTES A VALID TRADE-MARK.
81
The rules thus far discussed in this section do not seem
to apply to aborij^nnal words or sounds. The word (or
sound) "Oomoo," taken from the language of the Austra-
lian aborigines, was admitted to English registration by
Chitty, J. , after careful consideration ; ^ on the other hand,
the word "Kokoko," meaning "owl" in the language of
the Chippeway Indians, was refused registration as a
trade-mark for cotton goods. ^
It was held in a dictum of the supreme court of Can-
ada, in the very thoroughly considered case of Partlo v.
Todd, that a descriptive foreign word, or a word in a dead
language not known to people in general, because it is
not understood, may become the trade-mark of the per-
son who first uses it upon a particular article sold by
him.'^ This theory has been affirmed by a New York
state court and denied by Judge Showalter in the fed-
eral circuit court for the Northern District of Illinois,
in two suits of the same complainant, involving the right
to the word "Matzoon" as a trade-mark for a food prod-
uct made of fermented milk. "Matzoon" or "Maad-
zoon" appears to be the sound of the name which
Armenians give to a similar article made of fermented
milk in Turkey. The New York court says: "I do not
think that such a term can properly be regarded as de-
scriptive in this country. It would be absolutely mean-
ingless to all but a little group of Armenians in the mil-
lions of inhabitants of the United States. It would be
equally meaningless in most of Europe. A Choctaw
word would signify just as much. To the medical pro-
fession, among whom the plaintiff sought approval for
his product, and to the drug trade, the name 'Matzoon'
was practically an arbitrary or fanciful designation.
It was not incorporated into the English language. It
was derived from a language hardly known here, and to
the vast majority of our people it meant nothing. Hence
the rule upon which the defendant relies has no applica-
iRe Burgoyne, 6 R. P. C. 227; 61 L. T. 39; Cartmell, 85.
2Re Jackson Company's Trade-mark, 6 R. P. C. 80; Cartmell, 177.
sPartlo V. Todd, 17 Can. S. C. R. 196-213.
6
82 LAW OF UNFAIR TRADE. [§38
tion here." It was accordingly held to be a valid trade-
mark.^ That this rule is dangerous to the law of trade-
marks is apparent. If it is left to the courts to say-
when a descriptive word taken from a modern foreign
language may or may not be used as a trade-mark, prac-
tically endless litigation is opened to future generations.
The court forgot the rule that a trade-mark must be
capable of universal use, and knows no territorial re-
striction.2 As Chitty, J., remarked in Davis v. Stribolt:
"If the argument were well founded, the importer into
this country of any foreign article not previously known
in this country could restrain any one else from using
the name by which it was called in the country in which
it was produced."^ Upon the application to Judge Sho-
walter for a preliminary injunction to restrain the use
of the same word "Matzoon," that learned court said:
"The strong contention is that Dr. Dadirrian introduced
into this country a product which was unknown here,
and by a name which was equally unknown, and that,
since the name has become identified here with the arti-
cle as made by him, his property in the name should
be recognized. But, as already said, the product was in
fact old, as was also the name. The ignorance of peo-
ple in this country touching it, its uses and its name, can-
not be treated as property, and be, in a manner, capital-
ized as an element in the good-will of this complainant.
This would be the case if no other dealer was permitted
to tell what Matzoon is, and what a considerable portion of
the human race has found it useful for, after an experience
with it under that name which, according to the record,
dates back some eight centuries. " The application was ac-
cordingly denied, and the ruling of the trial court was fol-
lowed in the first circuit and subsequently upheld by the
United States circuit court of appeals for that circuit.*
1 Dadirrian v. Theodorian, 37 N. Y. Supp. 611.
2 Subject to the exceptions noted ante, ^ 10, and p. 52, n.
s Davis V. Stribolt, 59 L. T. N. S. 854, cited supra.
^Dadirrian v. Yacubian, 72 Fed. Rep. 1010-1014; 75 OflF. Gaz. 1856;
followed in Dadirrian v. Yacubian (2), 90 Fed. Rep. 812. Latter
case affirmed on appeal, Dadirrian v. Yacubian (3), 98 Fed. Rep. 872.
§38] WHAT CONSTITUTES A VALID TRADE-iMARK. 83
The German word "Ansatz," meaning "Compound,"
has been refused registration as a trade-mark for bit-
ters,^ as have been the words "Chili Colorow" (meaning-
red pepper in provincial Spanish), as a trade-mark for
condiments.^
Vice-Chancellor Shad well held a complainant who
marked watches manufactured by him for the Turkish
trade with the Turkish word "Pessendede" (meaning
warranted) in Turkish characters, entitled to the exclu-
sive right to so mark his watches. This was, however,
not necessary to the decision of the case, and was a
mere dictum.''
The case of Broadhurst v. Barloiu was that of plaintiffs
who used, beside a symbol of a lion in a scroll, the words
"Exactly 12 Yards," in Turkish, Armenian and Greek,
upon the rolls of cloth made by them for exportation to
Greece and Turkey. With other relief, the defendant
was enjoined from using the words "exactly 12 yards"
in the languages used by plaintiffs. This relief would
seem to be incidental to the portion of the injunction
which related to fanciful scrollwork used by both parties.^
The use of the word "Grenadine" as a trade-mark for
a syrup made of pomegranate juice was protected by
injunction against a defendant who began the sale of
another syrup under the name of "Grenade Syrup,"
notwithstanding the word "Grenade" in French signifies
"Pomegranate." This was purely a case of unfair com-
petition.'' The patent office has refused registration for
^Re Weisman, Newton. Dig-. 119.
-Re Railton, Newton, Dig. 213.
SQout V. Aleploglu. 6 Beavan, 69; 5 Leg. Obs. 495; Seb. 51.
^Broadhurst V. Barlow. W. N. 1872, p. 212: L. J. Notes of Cases,
p. 183; Seb. 411. Tlie use of labels printed in several languages
was enjoined in Siegert v. Findlater, L. R. 7 Ch. D. 801; Siegert v.
Ehlers, Seb. 432; Curtis v. Bryan, 2 Daly, 212; Cox, 434, Siegert v.
Abbott (2), Cox, Manual, 718; Societe Anonyme v. Western Distilling
Co., 43 Fed. Rep. 416; Fischer v. Blank, Cox, Manual, 731.
*Rillet V. earlier, 61 Barb. S. C. 435; 11 Abb. Pr. N. S. 186; Seb.
334. The word "Ethiopian" printed in Egyptian characters upon
stockings was protected from infringement, but in a case of unfair
competition. Hine v. Lart, 10 Jur. 106; 7 L. T. 41.
84 LAW OF UNFAIR TRADE. [^ ^^
the words ' ' Fiir Familien-Gebrauch "' (For Family Use) and
"Lawrence Feiner Familien-Flannel" (Lawrence Fine
Family Flannel), but upon the ground that they were mere
words in common use and not distinctive.^ And it is now
the fixed rule of that office that no descriptive words
reproduced in letters from a foreign language will be ad-
mitted to registration, when registration would be refused
to their English equivalents.^
§ 39. Words become generic through use. — A word
originally fanciful and indicative of origin or ownership
may through the laches of the owner become publici
juris. Thus the word "Chlorodine," while originally a
good trade-mark, became generic through the failure of
the manufacturer to prosecute a suit brought by him
to restrain its use,^ and because it had become the name
of the article.^ This, of course, is substantially a hold-
ing that the trade-mark has been abandoned by the own-
er's neglect. The American courts have been averse to
so holding. It was said in Taylor v. Carpenter that the
court was "not aware that a neglect to prosecute, be-
cause one believed he had no rights, or from mere pro-
crastination, is any defense at law, whatever it may be
in equity, except under the statute of limitations pleaded
and relied on, or under some positive statute, like that
as to patents, which avoids the right if the inventor
permits the public to use the patent some time before
iRe Lawrence & Co., 10 Off. Gaz. 163; Seb. 504.
2 Ex parte Stuhmer, 86 Off. Gaz. 181. In this case the applicant
sought registration for the words "Gold Label " produced in Hebrew
characters.
3Brovvne v. Freeman (1), 12 W. R. 305; 4 N. R. 476.
'Browne v. Freeman (2), W. N. 1873, 178; Amoskeag Mfg. Co. v.
Garner, 55 Barb. 151; 6 Abb. Pr. N. S. 265; Cox, 541.
In this case the controlling fact was that the complainant's and
defendant's marks were used on different classes of goods. The
court, however, expressly names the laches of the complainant as a
ground for withholding relief, citing, in support of this proposition,
inter alia, the opinion of Chancellor Walworth in Smith v. Adams,
6- Paige, 435-U3; and the copyright case of Lewis v. Chapman, 3
Beavan, 133, where a delay of six years was held to disentitle the
plaintiff from relief.
§40] WHAT CONSTITUTES A VALID TRADE-MAKK. 85
taking out letters.'" Words primarily indicative of
orig-in or ownership remain valid as trade-marks not-
withstanding- the fact that the articles to which they are
applied may obtain such extensive sales that the marks
have also become indicative of quality. -
S 40. The use of generic names protected. — Possi-
bly the widest deviation from the narrow path of trade-
mark protection which has been accomplished by the
law of unfair competition is to be found in the cases in-
volving- the deceptive use of generic terras. The su-
preme court of the United States has held in regard to
the name of a person used as a descriptive name of a
I)atented article, during the life of a patent, that while
that name becomes puhlici juris upon the expiration of
the patent, it must be so used by manufacturers other
than the original maker as not to deceive the public into
the belief that the goods offered for sale are the goods of
such original maker. -^ The same rule has been estab-
lished in England.*
So it was held by Mr. Justice McKenna, when circuit
judge, that "Syrup of Figs" was entitled to injunctive
protection. He said: "Respondent urges that the words
'Syrup of Figs' are descriptive, and that complainant
deceives w^hen it uses them to designate its compound.
The deceit does not appear on the face of the bill, and it
is unimportant if they are descriptive. The question is
now, not whether complainant has the exclusive right to
use the words 'Syrup of Figs' or 'Fig Syrup,' but it is
whether respondent has, by use of them and other words,
and by the other imitations alleged and exhibited, so far
imitated the form of complainant's device and descrip-
1 Taylor v. Carpenter, 2 Wood. & M. 1; 9 L. T. 514; Cox, 32.
-'Burton v. Stratton, 12 Fed. Rep. 696-702; Lawrence Mfg. Co. v.
Tennessee Mfg. Co., 138 U. S. 537-547.
•'Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169; Singer Mfg. Co.
V. Bent, 163 U. S. 205. See also, to the same effect, Fairbanks v.
Jacobus, 14 Blatchf. 337; Adee v. Peck Bros. & Co., 37 Fed. Rep. 209;
Singer Mfg. Co. v. Brill, Cox, Manual, 672.
* Singer Mfg. Co. v. Loog, H. L. 8 A. C. 15; 53 L. J. Ch. 481; 48
L. T. 3; 31 W. R. 325; Cartmell, 306.
86 LAW OF UNFAIR TRADE. [§^0
tion to represent its goods as its goods, and appropriate
its reputation and trade. The gravamen of the action
is the simulation of complainant's devices and the de-
ception of purchasers. This is the principle of the best
considered cases, uniting them, notwithstanding their
diverse facts. "^
In affirming the decision of Judge McKenna, however,
the circuit court of appeals held that "Syrup of Figs"
was not a generic name.'^ The more recent case of Cali-
fornia Fig Syrup Co. v. Worden^ again puts the plaintiff's
right to relief upon the proper ground of unfair competi-
tion, aside from any technical trade-mark right in the
words.
From the doctrine stated by the federal supreme court*
it follows that the designs, symbols and marks used by
a patentee during the life of the patent upon packages
containing the patented article may not be imitated by
another upon the expiration of the patent, and such imi-
tation will be enjoined.''
The rule of unfair competition, that no man has a right
1 California Fig Syrup Co. v. Improved Fig Syrup Co., 51 Fed. Rep.
296-297, citing Burton v. Stratton, 12 Fed. Rep. 696; Baking Powder
Co. V. Fyfe, 45 Fed. Rep. 799; Nerve Food Co. v. Baumbach, 32 Fed.
Rep. 205; Anonyme, etc., Societe v. Western Dis. Co., 43 Fed. Rep. 417.
2 Improved Fig Syrup Co. v. California Fig Syrup Co., 54 Fed. Rep.
175-178. It is very difficult to understand how the court could con-
clude that "Syrup of Figs" was not a generic name. It lacks every
requisite of a valid trade-mark, and is undoubtedly either deceptive
or merely descriptive of one of the ingredients of the medicine (a
liquid laxative). It has been so held in California Fig Syrup Co. v.
Stearns, 67 Fed. Rep. 1008; S. c, 73 Fed. Rep. 812-814; California
Fig Syrup Co. v. Putnam, 66 Fed. Rep. 750.
3(1) 86 Fed. Rep. 212-215; California Fig Syrup Co. v. Worden (2),
95 Fed. Rep. 132.
4 Singer Mfg. Co. v. June, 163 U. S. 169; Singer Mfg. Co. v. Bent^
163 U. S. 205.
^Greene v. Woodhouse, 38 Off. Gaz. 1891; Centaur Co. v. Killen-
berger, 87 Fed. Rep. 725; Same v. Robinson, 91 Fed. Rep. 889; Same
v. Neathery, 91 Fed. Rep. 891; Same v. Hughes Bros. Mfg. Co., 91
Fed. Rep. 901. In this connection it is probable that the name by
which the patented article was known during the life of the patent
(if otherwise valid as a trade-mark) may be continued in use, with
the prefix "original." Cocks v. Chandlers, L. R. 11 Eq. 447.
§40] WHAT CONSTITUTES A VALID TRADE-MARK. 87
to represent his g^oods as the goods of another, is dis-
tinctly applied in several of the more recent English de-
cisions to terms strictly generic and of which technical
trade-mark rights could not be predicated. Thus where
the manufacturers of "Reddaway Camel Hair Belting"
sought to enjoin a rival manufacturer from styling his
product "The Bentham Camel Hair Belting," Lord Jus-
tice Lindley, in the court of appeal, said: "The catch-
words are 'Camel Hair Belting' . . , The use of the
catch-words alone may establish the plaintiffs' right to
relief. The plaintiffs have no right to the exclusive use
of the.se words; but they have a right to restrain any
one from so using them as to pass his goods off as the
goods of the plaintiffs."^ So an injunction was granted.
Very similar to this was the case in which the plaintiffs
manufactured a soap under the name "The Self -washer."
The defendants thereafter applied the term "Self -wash-
ing" to their soaps. It was held that the term "Self-
washer" or "Self -washing" were used in a descriptive
sense and therefore neither could be appropriated as a
valid technical trade-mark; but because of the paper used
by the defendants in wrapping- their soap, being an imi-
tation parchment paper, and the type used by them, which
closely resembled that used by the plaintiffs, the defend-
ants were enjoined, Lord Justice Cotton, in the court of
appeal, observing: "There may be no monopoly at all in
the individual things separated, but if the whole are so
joined together as to attempt to pass oft", and to have the
effect of passing off, the defendants' soap as the plain-
tiff's', then, although the plaintiffs have no monopoly
either in 'Self- washing' or 'Self-washer' or in the parch-
ment paper or in the spaced printing, yet if those things
in which they have no sole right are so combined by the
defendants as to pass off the defendants' goods as the
plaintiffs', then the defendants have brought themselves
within the old common-law doctrine in respect of which
equity will give to the aggrieved party an injunction in
'Reddaway v. Bentham Hemp Spinning- Co., 9 R. P. C. 503; L. R.
(1892) 2 Q. B. 639; 67 L. T. 301; Cartmell, 282.
88 LAW OF UNFAIR TRADE. [§40
order to restrain the defendant from passing off his goods
as those of the plaintiff." ^
These cases, with those cited in the foot-note, will suf-
ficiently demonstrate the fact that the rule under con-
sideration is not only important but well established,
and that the user of a strictly generic term will be pro-
tected in the business he has established under that term,
as against a dishonest use of it by a competitor.'-
The doctrine of unfair competition, by which the use
of descriptive words has sometimes been restrained, has
engrafted upon it this important qualification — that in no
case will the use of a merely descriptive word be re-
strained as deceptive, unless in circumstances which
show fraud on the part of the user.^ The English lead-
ing cases upon this proposition are the "Camel Hair
Belting" case,* to which we have already referred, and
the "Cellular Clothing" case.^ In the former case the
defendant said expressly that by using the term "Camel
Hair Belting" he would be enabled to sell his goods
as those of the plaintiff. Each case involved the use
of a descriptive word. In the belting case, however,
the word had acquired an additional meaning. The
mere use of the words "Camel's Hair" had come to be
understood in the trade as indicating belting of the
plaintiff's manufacture. It was proved in addition to
iLever v. Goodwin, 4 R. P. C. 492-506; 36 Ch. D. 1; 57 L. T. 583;
36 W. R. 177; Cartmell, 209.
2Lever v. Bedingfield, 80 L. T. N. S. 100; Barlow v. Johnson, 7 R.
P. C. 395; Cartmell, 73; Curtis v. Pape, 5 R. P. C. 146; Cartmell,
105; Jay v. Ladler, 6 R. P. C. 136; 40 Ch. D. 649; 60 L. T. 27; 37
VI. R. 505; Cartmell, 184; Powell v. Birmingham Vinegar Brewery
Co., L. R. (1894) 3 Ch. D. 449-462; Reddaway v. Banham, L. R.
(1896) A. C. 199; Brown Chemical Co. v. Meyer, 31 Fed. Rep. 453;
Jennings v. Johnson, 37 Fed. Rep. 364; Meyer v. Bull Medicine Co.,
58 Fed. Rep. 884; Morgan Envelope Co. v. Walton, 86 Fed. Rep. 605;
VanHorn v. Coogan, 52 N. J. Eq. 380; 28 Atl. Rep. 788; Anheuser-Busch
Brewing Ass'n v. Fred Miller Brewing Co., 87 Fed. Rep. 864; Cellu-
lar Clothing Co. v. Maxton, L. R. (1899) A. C. 326; Goodman v. Bohls,
3 Tex. Civ. App. 183; 22 S. W. Rep. 11.
3 Cellular Clothing Co. v. Maxton, L. R. (1899) A. C. 326-341.
4 Reddaway v. Banham, L. R. (1896) A. C. 199.
•'-Cellular Clothing Co. v. Maxton, L. R. (1899) A. C. 326.
§41] WHAT CONSTITUTES A VALID TRADE-MARK.
89
this that the defendant's acts were done in consumma-
tion of a fraudulent design to sell his goods as those of
the plaintiff. For these reasons the use of the words by
the defendant was restrained.^ The Cellular Clothing
ca.se differed from this on the facts. As in the belting
case, the words "Cellular Clothing" were originally
purely descriptive, being applied to a cloth of cellular
structure. It was not shown that the term had so ac-
quired a technical and secondary meaning, dilfering from
its natural meaning, that it could be excluded from the
use of every one else,-' and it was not shown that the de-
fendant had intended to defraud the plaintitf, or that
any one had bought of the defendant in the belief that
he was getting plaintiff's goods. -^ The Cellular Clothing
case demonstrates very clearly that one who takes upon
himself to prove that words which are merely descrip-
tive or expressive of the quality of the goods have
acquired a secondary meaning and indicate that the goods
are of his manufacture has assumed a burden which,
while it is not impossible, is, in the language of Lord
Davey, "at the same time extremely difficult to dis-
charge— a much greater burden than that of a man who
undertakes to prove the same thing of a word, not sig-
nificant and not descriptive, but what has been com-
pendiously called a 'fancy' word."^
§41. The test of "origin or ownership." — One of
the primary methods — if indeed it is not the funda-
mental test — in determining the validity of a trade-
mark has been broadly announced by the supreme court
of the United States in these words: "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
'See opinion of Lord Halsburj- in Cellular Clothing Co. v. Maixton,
L. R. (1899) A. C. 326-335, and Reddaway v. Banham. L. R. (1896)
A. C. 199, 204-205.
2 Lord Halsbury in Cellular Clothing Co. v. Maxton, L. R. (1899)
A. C. 326-337.
••>LordWatson in Cellular Clothing Co. V. Maxton. L. R. (1899)326-337.
^Lord Davey in Cellular Clothing Co. v. Maxton, L. R. (1899)
326-343.
90 LAW OF UNFAIR TRADE. [§41
words, to give notice who was the producer."^ And it
has recently been said: "That such mark or symbol (/. e.,
any mark or symbol claimed as trade-mark) must be
designed, as its primary object and purpose, to distin-
guish each of the articles to which it is affixed from like
articles produced by others, seems to be the clear con-
sensus of all the cases which are authoritative."'-^
Substantially this form of expression has been em-
ployed by the American courts from their earliest trade-
mark decisions. Our profoundly learned chancellor,
Walworth, stated the rule as well as any court that has
followed him, when he said: "The court proceeds upon
the ground that the complainant has a valuable interest
in the good-will of his trade or business. And that hav-
ing appropriated to himself a particular label, or sign
or 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, or that he carries on busi-
ness at a particular place, he is entitled to protection
against a defendant who attempts to pirate u]3on 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."'^ In the light of
this statement, the words of the supreme court assume a
broader meaning. In 1849, the year following that in
which the last quoted opinion was rendered, it was said
in an opinion of the superior court of New York City,
that "the owner of a trade-mark has no right to an
exclusive use of any words, letters, figures or symbols
which have no relation to the origin or ownership of the
goods."* And the same court, by the same judge (Duer),
1 Delaware & Hudson Canal Co. v. Clark, 13 Wall. 311; 5 Am.
L. T. 135; 1 Off. Gaz. 279; Seb. 327.
^Lurton, J., in Deering- Harvester Co. v. Whitman-Barnes Mfg.
Co., 91 Fed. Rep. 376-378, citing Delaware & Hudson Canal Co.
V. Clark, 13 Wall. 311; Amoskeag Mfg. Co. v. Trainer, 101 U. S. .54;
Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537; Columbia
Mill Co. V. Alcorn, 150 U. S. 460.
^Patridge v. Menck, 2 Sand. Ch. 622; 2 Barb. Ch. 101; 1 How. App.
Cas. 558; Cox, 72; Seb. 91.
*Amoskeag Mfg. Co. v. Spear, 2 Sand. S. C. 599; Cox, 87; Seb. 100.
§42] WHAT CONSTITUTES A VALID TRADE-MARK.
91
repeated the statement in very nearly the same words in
1857, saying: that a name could be rightfully used and
protected as a trade-mark only "where the name is used
merely as indicating the true origin or ownership of the
article ottered for sale, never where it is used to desig-
nate the article itself and has become, by adoption and
use, its proper appellation. "^ And in 1808 the supreme
court of California stated the rule to be that trade-marks
will be protected ' ' only so far as such marks serve to desig-
nate the true origin or ownership of the goods to which
they are attached."- So that when the doctrine as first
stated by the federal supreme court was announced, it
had become well settled in our jurisprudence that a
trade-mark must indicate origin or ownership, and the
only difficulty presented by the maxim to bench and bar
is that of its application to each new state of facts as
it arises. It must be noted, however, that "it is, of
course, no fatal objection to the validity of a trade-mark
that it does not include the name of the manufacturer or
producer. The sign, symbol or mark may be purely
fanciful, and convey no information as to the name of the
producer. But the essential thing is that it shall be de-
signed and used to indicate the origin of the article and
that all articles having the same mark come from a com-
mon source."^
It is self-evident that while a mark may be indicative
of origin and ownership, it may, because generic or
deceptive, fall short of being a valid trade-mark. But
every valid trade-mark must be indicative of origin or
ownership in the sense in \vhich those words are used in
the decisions.
§ 42. Geographical names. — The rule that geograph-
ical names cannot be exclusively appropriated for the
iFetridge V.Wells, 4 Abb. Pr. 144; 13 How. Pr. 385; Cox, 180; Seb. 144.
-Falkinburg- v. Lucy, 35 Cal. 52; and Eggers v. Hink, 63 Cal. 445.
See also Osgood v. Allen (Maine), 1 Holmes, 185; 6 Am. L. T. 20; 3
Off. Gaz. 124; Seb. 410.
^Lurton, J., in Deeriug Harvester Co. v. Whitman ct Barnes Mfg.
Co., 91 Fed. Rep. 376-380. To the same effect see Dennison Mfg.
Co. V. Thomas Mfg. Co., 94 Fed. Rep. 651-656.
92 LAW OF UNFAIR TRADE. [§43
purposes of trade-mark has been recognized from the
infancy of trade-mark law. It was said by the United
States supreme court that "No one can apply the name
of a district of country to a well-known article of com-
merce and obtain thereb}^ such an exclusive right to the
application as to prevent others inhabiting the district,
or dealing in similar articles coming from the district,
from truthfully using the same designation. It is only
when the adoption or imitation of what is claimed to be
a trade-mark amounts to a false representation, express
or implied, designed or incidental, that there is any title
to relief against it."^
S 43. As employed by sole owner of a natural
product and its place of production. — There can be no
doubt that, where the owner of a geographical site pro-
ductive of a salable article is the sole owner, he may
have an exclusive right in the name of his site. This
rule has been followed in several cases where the pro-
^Delaware & Hudson Canal Co. v. Clark, 13 Wall. 311; 5 Am.L.T.
135; 1 OfF. Gaz. 279; Seb. 327; Columbia Mill Co. v. Alcorn, 150 U.S.
460; Candee, Swan & Co. v. Deere & Co., 54 111. 439; 5 Am. Rep.
125; 4 Am. L. T. 266; 10 Am. L. Reg. N. S. 694; Seb. 339; Re
Tolle, 2 Off. Gaz. 415; Seb. 405; Osgood v. Allen, 1 Holmes, 185;
6 Am. L. T. 20; 3 Off. Gaz. 124; Seb. 410; Glendon Iron Co. v. Uhler,
75 Pa. St. 467; 15 Am. Rep. 599; 13 Am. L. Reg. N. S. 543; 6 Off.
Gaz. 154; Seb. 439; Bulloch, Lade & Co. v. Graj% 19 Journ. of Jurisp.
218; Seb. 452; Wolfe v. Goulard, IS How. Pr. 64; Clinton Met. Paint
Co. V. N. Y. Met. Paint Co., 50 N. Y. Supp. 437; Gabriel v. Sicilian
Asphalt Co., 52 N. Y. Supp. 722; Morgan Envelope Co. v. Walton,
86 Fed. Rep. 605; Wm. Rogers Mfg. Co. v. Rogers & S. Mfg. Co.,
11 Fed. Rep. 495; Burgess v. Burgess, 17 Eng. L. & Eq. 257; Brook-
lyn White Lead Co. v. Masury, 25 Barb. 416; Lea v. Wolff, 13 Abb.
Pr. N. S. 389; 15 Id. 1; 46 How. Pr. 157; 1 Am. L. T. N. S. 400;
Seb. 407; Carmichel v. Latimer, 11 R. I. 395; Eggers v. Hink, 63
Cal. 445; Dunbar v. Glenn, 42 Wis. 118; Anheuser-Busch Brewing
Association v. Pisa, 23 Blatchf. 245; Lea v. Deakin, 11 Biss. 23;
Pratt's Appeal, 117 Pa. St. 401; Smith v. Walker, 37 Mich. 456;
Smith V. Imus, 32 Alb. L. J. 455; Burton v. Stratton, 12 Fed. Rep.
696; Evans v. Van Laer, 32 Fed. Rep. 153; Coffman v. Castner, 87
Fed. Rep. 457. Even though the word "Raleigh" was that of an
historical personage, registration was refused because it was also a
geographical name. Ex parte Oliver, 18 Off. Gaz. 923; Price &
Steuart, 59.
§44] WHAT CONSTITUTES A VALID TRADE-MAi:K. 03
prietor of tlie commodity was the owner of the place
of its production, and the name of that place was a promi-
nent and controlling part of the trade-mark. Lord Cran-
worth so held in the case of a wine-grower who used the
name of his vineyard as a trade-mark for his wines. ^
And the use of the words "Congress Water" as designat-
ing the product of "Congress Spring" was sustained on
the suit of the sole owner of the springs. -
jj 44. When geographical names "will be protected
as trade-marks. — In many cases the use of geographical
words has been protected on the ground of unfair compe-
tition. It was so held where the complainants applied
the word " Durham," the name of a town in North Caro-
lina, to tobacco manufactured by them at that locality.
The defendant, whose business was conducted at Rich-
mond, was enjoined from applying the word to tobacco
produced by him.=* And the usual rule by which geograph-
ical names have been protected against infringers by
injunction was thus tersely stated by our patent office:
"Undoubtedly courts of equity have granted injunctions
to restrain the fraudulent use of words of this character;
but the grounds of such decisions have been invariably,
I think, the fraud of the defendants, and not any exclu-
sive right of the plaintiffs."^ Probably a more accurate
statement, however, is that of the United States circuit
court of appeals in the very well considered opinion in
PiUshury -Washburn Co. v. Eagle:'" "The distinction, both in
iSeixov. Provezende, L. R. 1 Ch. 192; 12 Jur. N. S. 215; 14 L. T.
N. S. 314; 14 W. R. 357; Seb. 256.
2 Congress & Empire Spring Co. v. High Rock Congress Spring Co.,
4 Am. L. T. 168; 10 Abb. Pr. N. S. 348; 6 Am. Rep. 82; 57 Barb. 526;
45 N. Y. 291; Cox, 599; La Republique Francaise v. Schultz, 57 Fed.
Rep. 37; City of Carlsbad v. Kutnow, 68 Fed. Rep. 794; S, C, 71 Fed.
Rep. 167; City of Carlsbad v. Schultz, 78 Fed. Rep. 469; Northcutt
V. Turney, 101 Ky. 314; 41 S. W. Rep. 21.
^Blackwell & Co. v. Dibrell & Co., 3 Hughes, 151; Price & Steu-
art, 10.
*Ex parte Farnum e^ Co., 18 Oflf. Gaz. 412; Price .i Steuart, 68.
*86 Fed. Rep. 608; overruling S. c, 82 Fed. Rep. 816. The false
use of a geographical name will not be tolerated when it is so used
94 LAW OF UNFAIR TRADE. [§45
the English and American cases, is between those where
a geographical name has been adopted and claimed
as a trade-mark proper, and those where it has been
adopted first as merely indicating the place of manu-
facture, and afterwards, in the course of time, has become
a well-known sign and S3monym for superior excellence.
In the latter class of cases, persons residing at other
places will not be permitted to use the geographical name
so adopted as a brand or label for similar goods for the
mere purpose, by fraud and false representation, of ap-
propriating the good-will and business which long con-
tinued industry and skill and a generous use of capital
has rightfully built up. It will be of no avail in such
cases, where the facts are admitted or proven, to allege a
want of power in a court of equity to find a remedy." In
other words, geographical names can never be appropri-
ated as trade-mark; but with the development of the
law of unfair competition has come the incidental pro-
tection of geographical names applied to merchandise,
not as technical trade-mark, but as an indication to the
public of the true place of its manufacture. And no manu-
facturer can defend, any more than he could maintain a
suit in equity, where he is falsely representing the place
where his manufacture is conducted.
ij45. Geographical names — The underlying prin-
ciple.— Judge Lacombe has recently given this concise
expression of the rule applied by courts of equity to
geographical names falsely used in unfair competition:
as to promote unfair competition and to induce the sale of spurious
g-oods. Collinsplatt v. Finlayson, 88 Fed. Rep. 693.
"Whatever might have been the doubts some years ago, we think
that now it is pretty well settled that the plaintiff, merely on the
streng-th of having been first in the field, may put later comers to the
trouble of taking such reasonable precautions as are commercially
practicable to prevent their lawful names and advertisements from
deceitfully diverting the plaintiff's custom." This was said of the
word "Waltham" as applied to watches, by Holmes, J., in Ameri-
can Waltham Watch Co. v. United States Watch Co., 173 Mass. 85;
53 N. E. Rep. 141; followed in American Waltham Watch Co. v.
Sandman, 96 Fed. Rep. 330.
§45] WHAT CONSTITUTES A VALID TRADE-MARK. 95
'* Whatever may be the decisions in the state courts, it
is abundantly settled by authority in the federal courts
that they will not tolerate a false use of a geographical
name when it is so used as to promote unfair competition
and to induce the sale of spurious goods." ^ And in an-
other recent case the United States circuit court of
appeals of the seventh circuit said, per Bunn, J,: "The
distinction, both in the English and American cases, is
between those where a geographical name has been
adopted and claimed as a trade-mark proper, and those
where it has been adopted first as merely indicating the
place of manufacture, and afterwards, in the course of
time, has become a well-known sign and synonym for
superior excellence. In the latter class of cases, persons
residing at other places will not be permitted to use the
geographical name so adopted as a brand or label for
similar goods for the mere purpose, by fraud and false
representation, of appropriating the good-will and busi-
ness which long continued industry and skill and a gen-
erous use of capital has rightfully built up. It will be of
no avail in such cases, where the facts are admitted or
proven, to allege a want of power in a court of equity to
find a remedy."^
The supreme court of the United States has clearly ex-
cluded geographical names from use as technical trade-
marks.
It was said by Mr. Justice Jackson: "The general
principles of law applicable to trade-marks, and the con-
ditions under which a party may establish an exclusive
right to the use of a name or symbol, are well settled by
iCollinsplatt v. Finlayson, 88 Fed. Rep. 693.
2Pillsbury-Washburn Co. v. Eagle, 86 Fed. Rep. 608-618. The
leading English case is the Stone Ales Case, Thompson v. Mont-
gomery, (1891) App. Cas. 217; 8 R. P. C. 365. Of this decision a
very learned English law writer has said: "There are dicta in the
Stone Ales Case, in the House of Lords, which suggest that a prac-
tical monopoly might be acquired of the use of the name of a place
where goods are manufactured; but they must, it is submitted, be
read by reference to the facts of the case, which was one of deliberate
fraud." Kerly on Trade-marks (London, 1894), p. 44.
96 LAW OF UNFAIR TRADE. [§45
the decisions of this court, . . . which . . . establish
the following general propositions: ... (3) That the
exclusive right to the use of the mark or device claimed
as a trade-mark is founded on priority of appropriation;
that is to say, the claimant of the trade-mark must have
been the first to use or employ the same on like articles
of production. (4) Such trade-marks cannot consist of
words in common use as designating locality, section, or
region of country."^
The reasons for this rule have been more fully expressed
by Mr. Justice Strong, in these words: " No one can claim
protection for the exclusive use of a trade-mark or trade-
name, which would practically give him a monopoly in
the sale of any goods other than those produced or made
by himself. If he could, the public would be injured
rather than protected; for competition would be de-
stroyed. Nor can a generic name, or a name merely
descriptive of an article of trade, of its qualities, in-
gredients, or characteristics, be employed as a trade-
mark, and the exclusive use of it be entitled to a legal
protection. ... He has no right to appropriate a sign,
or a symbol, which, from the nature of the fact it is used
to signify, others may employ with equal truth, and
therefore have an equal right to employ for the same
purpose. And it is obvious that the same reasons which
forbid the exclusive appropriation of generic names, or
of those merely descriptive of the article manufactured,
and which can be employed with truth by other manu-
facturers, apply with equal force to the appropriation of
geographical names designating districts of country.
Their nature is such that they cannot point to the origin
(personal origin) of the articles of trade to which they
may be applied. ... It must be considered as sound
doctrine that no one can apply the name of a district of
country to a well-known article of commerce, and obtain
thereby such an exclusive right to the application as to
prevent others inhabiting the district, or dealing in
1 Columbia Mill Co. v. Alcorn, 150 U. S. 460.
§45] WHAT CONSTITUTES A VALID TRADE-MARK. U7
similar articles coming from the district, from truthfully-
using' the same designation."'
Is it not a reasonable conclusion from these and the
kindred cases which we have heretofore examined, that
there can be no technical trade-mark in a geographical
name? To the author's mind that conclusion is inevi-
table, and there is but one class of geographical names
which are to be excepted from the operation of the rule,
namely, those applied to a natural product and its sole
place of production. The name so used may very prop-
erly be a trade-mark, indicative of the origin and own-
ership of the natural product, and at the same time indi-
cating the locality of its production. Here the name
undoubtedly is a trade-mark if there is but one owner of
the entire locality, and the courts have uniformly so
held.2 The same scientific objection to geographical
names as trade-mark obtains as in the case of proper
names. They are generic, in that every manufacturer
who sees fit to locate in that city or vicinage and inaugu-
rate a competing business has an equal right with all
those who have preceded him in the locality, and all
those who may thereafter so locate, in using the name of
that locality in advertising his wares and in preparing
them for commerce.^
Being generic they cannot be used as trade-marks, with
the one exception we have noted, that of the title to the
entire locality being vested in one owner. In that case
no one else can locate there and institute competition;
the name of the locality is not generic, and that fact ex-
empts it from the operation of the rule. There is one
other very rare exception which is the subject of differ-
ence between two of the federal courts in different cir-
1 Delaware & Hudson Canal Co. v. Clark, 13 Wall. 323.
2 City of Carlsbad v. Schultz, 78 Fed. Rep. 469; City of Carlsbad
V. Kutnow, 71 Fed. Rep. 167, affirming 67 Fed. Rep. 794; Hill v. Lock-
wood, 32 Fed. Rep. 389; Northcutt v.Turney,101Ky.314, 41 S. W. Rep. 21.
'Blackwell v. Dibrell, 3 Hughes, 160; Newman v. Alvord, 49 Barb.
588; 35 How. Pr. 108; Cox, 404; Delaware & Hudson Canal Co. v. Clark,
13 Wall. 311; New York Cement Co. v. Coplay Cement Co., 45 Fed.
Rep. 212.
7
98 LAW OF UNFAIR TRADE. [§§46,47
cuits; the case where the locality has derived its name
from the use of the word by the party claiming it as .
trade-mark, one court holding that it is a valid trade-
mark,^ the other denying its validity.^ Without express-
ing an opinion upon this proposition, the general rule
may be said to be unaffected by these possible exceptions;
and the unfair use of a geographical name is a matter
with which the law of unfair competition must deal in
the majority of cases.
In the course of a well-considered opinion Judge Sho-
walter has held the name "Elgin" as applied to watch-
movements to be a strictly technical trade-mark, even
though the name is that of the town where the factory is
situated, because, in the words of the court: "This mark
has this significance (designating complainants' manu-
facture) where the town of Elgin is entirely unknown."
But this is purely a dictum, and presented in a case of
fraudulent competition, where the defendants had re-
moved their factory from Chicago to Elgin "with the
purpose ... of giving some color of right to a designed
trespass on complainant's good-will."^
§ 46. A false geographical name vitiates trade-
mark.— To all that has been said in the last preceding
section must be noted one broad qualification. He who
seeks to uphold a trade-mark in a court of equity must do
so with clean hands, so that a trade-mark otherwise good
will be vitiated and the right to it destroyed by the use
of a false geographical name in connection with it.* And
this is true, as expressed by Judge Showalter, even though
"No actual or substantial wrong may have resulted to
any one from this misrepresentation."'^
S 47. The right to complain of unfair use of geo-
graphical name. — The right to use the name of a locality
in the manufacture and sale of goods is a general right
^Atwater v. Castner, 88 Fed. Rep. 642.
2CofiFman v. Castner, 87 Fed. Rep. 457.
3Elg-in Nat. Watch Co. v. Illinois Watch Case Co., 89 Fed. Rep. 487.
-•Manhattan Med. Co. v. Wood, 108 U. S. 218; and cases cited ante,
§27.
5 Royal Baking Powder Co. v. Raymond, 70 Fed. Rep. 376-382.
§48] WHAT CONSTITUTES A VALID TRADE-MARK. 99
of all who manufacture in that locality. • It therefore
follows that where any one not living- in that locality
uses its name to indicate his merchandise, he is resorting
to a trick to divert business from the dealers in the same
kind of merchandise who in fact live in the locality and
honestly use its name as a mark upon the goods. -
The action to restrain such an unfair competition may
be brought either by one-^ or all^ of the merchants who
are entitled to the use of the name of the locality and are
using it upon the same class of merchandise.
S 48. When relief will be granted against fraud-
ulent use of geographical names. — It would be a vain
task to enumerate the various forms of misuse of geo-
graphical names which have been enjoined. An exam-
ination of the cases will show the versatility of the
fraudulent dealer in devising schemes to deceive the
public and deprive the legitimate dealer of his trade.
The printing of an American label in the French lan-
guage has been treated as evidence of unfairness in com-
petition against French exporters to the United States ;5
and the statement upon a package that its contents were
"Chicorien Kaffee aus der fabrik von E. B. Muller & Co.,
in Roulers (Belgien)," was held to be misleading and un-
fair where the facts showed that the only part of the
manufacture done in Belgium was to "harvest" the chic-
ory root, the other processes being done in the United
States. *> In brief, it is particularly true of the subject
under discussion that "a court of equity keeps pace with
the rapid strides of the sharp competitors for the prize
iPillsbury-Washburu Co. v. Eagle, 86 Fed. Rep. 608.
2 Ibid. "A palpable trick," it was termed by Gresham, J., in
Southern White Lead Co. v. Gary, 25 Fed. Rep. 125-127.
^Newman v. Alvord, 49 Barb. 588; 35 How. Pr. 108; Cox, 404; 51
N. Y. 189; 10 Am. Rep. 588; Klotz v. Hecht, 73 Fed. Rep. 822; Scheuer
V. Muller, 74 Fed. Rep. 225; Gage-Downs Co. v. Featherbone Corset
Co., 83 Fed. Rep. 213; Southern White Lead Co. v. Coit, 39 Fed. Rep.
492; A. F. Pike Mfg. Co. v. Cleveland Stone Co., 35 Fed. Rep. 896.
<Pillsbury-Washburn Co. v. Eagle, 86 Fed. Rep. 608.
^Koltz V. Hecht, 73 Fed. Rep. 822.
« Scheuer v. Muller, 74 Fed. Rep. 225-228.
100 LAW OF UNFAIR TRADE. [§-4^
of public favor and insists that it shall be won only by
fair trade. "1 Some of the cases are cited in the foot-
note.-
S 49. Proper names as trade-mark.— It is a self-evi-
dent proposition that every one has the right to use his
own name for purposes of trade. It was held by Vice-
Chancellor Wood that a man's own name might be his
trade-mark even when united with other words, them-
selves generic and hence incapable of exclusive appro-
priation. In sustaining the words " Ainsworth's Thread"
as a trade-mark he said: "Is not a mans name as strong
an instance of trade-mark as can be suggested? — sub-
ject only to this inconvenience, that if a Mr. Jones or a
Mr. Brown relies on his name, he may find it a very in-
adequate security, because there may be several other
manufacturers of the same name.'^^ But any name may
be used by any one who cares to designate himself by it,
and in this sense a proper name can never be an essen-
tial part of a trade-mark, because, as we have seen, a
valid trade-mark must be exclusive, as against all the
world. The decisions as to this are conflicting, very
confusing, and in many instances the result of careless
use of language. Thus Chancellor Westbury said: "It is
true that a name or the style of a firm may by long
usage become a mere trade-mark.'"' In another case the
same learned chancellor said: "A name, though origi-
'R. Heinisch's Sons Co. v. Boker, 86 Fed. Rep. 765-768.
2Atwaterv. Castner, 88 Fed. Rep. 642; Anheuser-Busch Brewing
Ass'n V. Piza, 24 Fed. Rep. 149; A. F. Pike Mfg. Co. v. Cleveland
Stone Co., 35 Fed. Rep. 896; Southern White Lead Co. v. Cary, 25
Fed. Rep. 125; Same v. Coit, 39 Fed. Rep. 492; City of Carlsbad v.
Thackeray, 57 Fed. Rep. 18; Cahn v. Gottschalk, 2 N. Y. Supp. 13;
Hiram Walker & Sons v. Mikolas, 79 Fed. Rep. 955; Von Mumm v.
Frash, 56 Fed. Rep. 830; Lea v. Wolff, 15 Abb. Pr. N. S. 1; 46 How.
Pr. 147; Seb. 407; Anheuser-Busch Brewing Co. v. Fred Miller Brew-
ing Co., 87 Fed. Rep. 864; Manitowoc Pea-Packing Co. v. William
Numsen & Sons, 93 Fed. Rep. 196.
SAinsworth v. Walmsley, 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; Seb. 257.
^Leather Cloth Co. v. American Leather Cloth Co., 4 DeG. J. & S.
137-142; Seb. 223.
§ 50] WHAT CONSTITUTES A VALID TRADE-MARK. 101
nally the name of the first maker, may in time become a
mere trade- mark or sign of quality, and cease to denote
or to be current as indicating that any particular person
is the maker. In many cases a name once affixed to a
manufactured article continues to be used for generations
after the death of the individual who first affixed it.''^
In the first named case, any one named "Ainsworth"'
might lawfully use the words as a trade-mark. He
would be restrained only where he resorted to unfair
competition by so preparing or advertising his thread as
to deceive customers into the belief that they were buy-
ing the thread made by the other Ainsworth. As to the
dicta of Lord Westbury, they are meaningless, for the
same reason. IE a man's name is not a valid trade-mark
for his goods in his life-time, because any one of the same
name may use it for the same purpose, how can it possi-
bly become a trade-mark in the use of his successors
after his death?
§ 50. Names of celebrities.— Far different is the rule
as to names which are those of celebrities, their use as
trade-mark being universally recognized.'- Yet here the
scientific objection remains that any one bearing the
name of the ill-fated Corsican would have the undoubted
right to manufacture "Napoleon" cigarettes, notwith-
standing the prior appropriation of that word as trade-
mark by another manufacturer. If the words "Emperor
Napoleon " were so appropriated, they would undoubt-
edly be good as against the world. ^
iHallv. Barrows, 4 DeG. 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; Seb. 215.
2" 'Roger Williams,' though the name of a famous person, long
since dead, is, as applied to cotton cloth, a fancy name, as would be
80 applied the names of Washington, Greene, Perry, or of any other
heroes, living or dead." Ames, C. J., in Barrows v. Knight, 6 R. I.
434; Cox, 238; Seb. 184. It has been so held of the word "Bismarck"
(used as a trade-mark for paper collars) during the life-time of Bis-
marck. Messerole v. Tynberg, 36 How. Pr. 14; 4 Abb. Pr. N. S. 410.
^The learned English barrister Sebastian, in his work on Trade-
marks, thus states the rule: "There is between a name of an indi-
vidual or lirm used as a trade-mark, and a fancy name or arbitrary
102 LAW OF UNFAIR TRADE. [§51
§51. In general, of one's own name.— Although
the custom is universal for male persons to bear the
name of their parents, there is nothing in the law pro-
hibiting a man from taking any other name he may
choose.^ This doctrine has long been settled beyond per-
adventure. It is of course equally certain that one must
not use his name so as to work a fraud upon others of
the same name.^ Subject to this restriction a man will
never be restrained from the full enjoyment of his name,
whether that name be that of his parents or adopted by
symbol used for the same purpose, a broad distinction which was
early perceived and which caused some difficulty in the universal
acceptance of a name as an efficacious trade-mark. The difference
is, that a name is in its very nature generic, and is properly applied
to designate, not one individual in the world, but, it may be, many
thousands, to all of whom it is equally appropriate. The addition
of the christian to the surname does, indeed, diminish the number
of persons to whom the appellation belongs; but the christian name
is commonly abbreviated to an initial letter, and, in any case, the
surname is the important part of the name, beyond which many per-
sons do not care to investigate. " Sebastian, Trade-marks (3d ed.), 26.
1 England v. New York Pub. Co., 8 Daly, 375; Price & Steuart, 14;
Re Snook, 2 Hilt. 566.
The right to assume a name.— 'Lord Chelmsford observes: "In this
country we do not recognize the absolute right of a person to a par-
ticular name to the extent of entitling him to prevent the assumption
of that name by a stranger. The right to the exclusive use of a
name in connection with a trade or business is familiar to our law;
and any person using that name, after a relative right of this de-
scription has been acquired by another, is considered to have been
guilty of a fraud, or at least of an invasion of another's right, and
renders himself liable to an action, or he may be restrained from the
use of the name by an injunction. But the mere assumption of a name
which is the patronymic of a family by a stranger who had never
before been called by that name, whatever cause of annoyance it may
be to the family, is a grievance for which our law affords no redress. "
Du Boulay v. Du Boulay, L. R. 2 P. C. 430-441; and see Olin v. Bate,
98 111. 53; 38 Am. Rep. 98, where injunction to restrain the use of an
assumed name was denied under peculiar circumstances.
-The doctrine is well settled that "every one has the absolute
right to use his own name honestly in his own business, even though
he may thereby incidentally interfere with and injure the business
of another having the same name, in such case the inconvenience
or loss to which those having a common right are subjected is damnum
absque injuria. But although he may thus use his name, he cannot
§ 52] WHAT CONSTITUTES A VALID TRADEMARK. 103
himself. A.s stated by Turner, L. J. : "Where the defend-
ant sells goods under his own name, and it happens that
the plaintiff has the same name, it does not follow that
the defendant is selling his goods as the goods of the
plaintiff. It is a question of evidence in each case
whether there is false representation or not."^ Hence
we see that the subject of this section is more properly
treated under the head of unfair competition, and it is
therefore considered in that connection elsewhere.
g 62. Trade-names, so-called. — We have in the pre-
ceding sections given some consideration to the subject
of proper names, considered with reference to their ex-
clusive appropriation for mercantile purposes. The con-
clusion reached was that in a scientific sense there can
be no trade-mark in a proper name, because all proper
names are generic. The author believes that this rule is
well sustained by the reasons heretofore given at length.
resort to any artifice or do any act calculated to mislead the pub-
lic as to the identity of the business firm or establishment, or of the
article produced by them, and thus produce injury to the other be-
yond that which results from the similarity of name." Devens, J.,
in Russia Cement Co. v. Le Page, 147 Mass. 206-208; quoted and
followed in Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169-187. This
is the rule announced in Burgess v. Burgess, 3 DeG. M. & G. 896; 22
L. J. Ch. 675; 17 Jur. 292; 21 L. T. 53. And see Linoleum Mfg. Co.
V. Nairn, 7Ch. Div. 834-837; 47 L. J. Ch. 430; 38 L. T. N. S. 448; 26
W. R. 463; 1 Trade-marks, 291; Dig. 536; Croft v. Day, 7 Beavan, 84;
Dig. 76; Holloway v. Hollow ay, 13 Beavan, 209; Dig. 106; Wotherspoon
V. Currie, L. R. 5 H. L. 508; Montgomery v. Thompson, (1891) App.
Cas. 217; Rogers v. Rogers, 53 Conn. 121; 55 Am. Rep. 78; 33 Alb.
L. J. 70; Gilman v. Hunnewell, 122 Mass. 139; Dig. 541; Meneely v.
Meneely, 62 N. Y. 427; 1 Hun, 673; 2 Thomp. & C. 540; N. Y. Ct. of
App. 62 N. Y. (17 Sickels), 427; 20 Am. Rep. 489; 2 Am. L. T. N. S.
482; Dig. 472; Pillsbury v. Pillsbury, 24 U. S. App. 395-404; Law-
rence Mfg. Co. V. Tennessee Mfg. Co., 138 U. S. 537; 31 Fed. Rep. 776;
Brown Chem. Co. v. Meyer, 139 U. S. 540; 31 Fed. Rep. 453; Coats v.
Merrick Thread Co., 149 U. S. 562; 45 Off. Gaz. 347; Singer Mfg. Co.
V. Larsen, 8 Bissell, 151-153; Price «& Steuart, 72; Singer Mfg. Co. v.
Bent, 163 U. S. 205.
^Burgess v. Burgess, 3 DeG. M, & G. 896; 22 L. J. Ch. 675; 17 Jur.
292; 21 L. T. O. S. 53; Dig. 117. A man cannot sell his own name
to another for the purpose of carrj'ing on a rival trade against an-
other bearing the name so attempted to be used. Melachrino v.
Melachrino Cigarette Co.. 4 R. P. C. 215; Cartmell, 223.
10-1 LAW OF UNFAIR TRADE. [§52
In their anxiety to effect perfect justice the courts have
frequently said that such words were valid trade-
marks,^ but the reasoning of the opinions indicated that
the use of the language adopted was careless and erro-
neous. The proper method of reading the class of cases
just referred to is to bear in mind that, while the courts
recognized the law of unfair competition, they did not
know or recognize it by that name. The tendency was
to restrain fraudulent competition, but to restrain it by
invoking trade-mark law. In the inaccurate reasoning of
the courts, the fact that a man whose name was "R. P.
Hall" came into equity seeking an injunction against a
defendant bearing a different name, but printing "R, P.
Hall" upon his merchandise, suggested that the easiest
manner of disposing of the issues was to say that Hall
had a trade-mark right in his own name, which right the
defendant was infringing.^ So the defendant was very
properly enjoined, justice was done, and the technical
error of the decision was overlooked. For error it was,
because the proper name Hall, even prefixed by the
initials R. P., is a generic name which any one may use,
provided that he does not so use it as to pass off his goods
upon the purchasing public as the goods of another.
If any further proof were needed to show the rule to
be accurate, we could examine the cases in which the
use of a proper name could not possibly give a right of
trade-mark, because the name was not used in applica-
tion to merchandise. One of the most striking instances
of this kind is afforded by the case in which a theat-
rical combination was protected in the use of the name
"Christy's Minstrels. "=^
^Standinger v. Standinger, 19 Leg. Int. 85; Fulton v. Sellers, 4
Brews. 42; Candee v. Deere, 54 111. 439; Howe v. Howe Sewing
Machine Co., 50 Barb. 236; Gillis v. Hall, 3 Brews. 509.
2 Gillis V. Hall, 3 Brews. 509.
■■'Christy v. Murphy, 12 How. Pr. 77. In his opinion, Judge Clarke
makes these prefatory remarks: "It is now well established that
the court will grant an injunction against the use by one tradesman
of the trade-marks of another. Will this protection be extended to
enterprises undertaken for the purpose of affording amusement or
recreation to the public?" The court instinctively, in his sense of
§53] WHAT CONSTITUTES A VALID TllADE-MARK. 105
There is, however, a considerable class of words ap-
plied to places of business, and not to merchandise,
which are not trade-marks, but may be conveniently
called trade-names, and these are protected ag-ainst un-
fair competition.' In using- the expression "tradename "
however, it must be remembered that it is simply a
colloquial term, used by the courts as a matter of con-
venience, and that it has no technical sig-nificance.
§53. The use of proper names generally. — From
this preliminar}^ discussion of the principles of unfair
competition we can now undertake to classify what we
may term, for want of a better phraseology, the proper-
name cases.
(a) Where the defendant is using his own name in good
faith. In these cases there is no unfairness in the com-
petition between the parties, and the defendant will not
be restrained. 2
equity, saw that a wrong- was being: committed and that it oug-ht to
be enjoined, and he enjoined it. The remedy was just as effective
and proper as if he had comprehended the law of unfair competition
as treated in the later decisions. But if he had understood the
principles he administered he would not have referred to the law of
trade-marks to justify his conclusion.
iWeinstock, Lubin & Co. v. Marks, 109 Cal. 529-537.
^Burgess v. Burgess, 3 DeG. M. & G. 806; 17 Jur. 292; Seb. 117;
Coats V. Piatt, 17 Leg. Int. 213; Faber v. Faber, 49 Barb. 357; 3 Abb.
Pr. N. S. 115; Cox, 401; Seb. 278; Wolfe v. Burke, 7 Lans. 151; 56
N. Y. 115; Mcneely v. Meneely, 1 Hun, 367; 62 N. Y. 427; Seb. 472;
Decker v. Decker, 52 How. Pr. 218; Seb. 525; Prince Metallic Paint
Co. V. Carbon Metallic Paint Co., Seb, 573; Rodgers v. Nowill,
6 Hare, 325; Seb. 82; Clark v. Clark, 25 Barb. 76; Cox, 206; Seb. 148;
Comstock v. White, 18 How. Pr. 421; Cox, 232; Binninger v. Wattles,
28 How. Pr. 206; Cox, 318; Seb. 240; Hardy v. Cutter, 3 Ofif. Gaz.
468; Seb. 427; Carmichel v. Latimer, 11 R. I. 395; 23 Am. Rep. 481;
16 Alb. L. J. 73; Seb. 521; Gilman v. Hunnewell, 122 Mass. 139;
Seb. 541; McLean v. Fleming, 96 U. S. 245; 13 Off. Gaz. 913;
Brown Chemical Co. v. Meyer, 139 U. S. 591; Cox, Manual, 726;
Wm. Rogers Mfg. Co. v. Rogers & S. Mfg. Co., 11 Fed. Rep. 495;
Landreth v. Landreth, 22 Fed. Rep. 41; Wm. Rogers Mfg. Co.
V. R. W. Rogers Co., 66 Fed. Rep. 56; affirmed, 70 Fed. Rep. 1017;
Wm. Rogers Mfg. Co. v. Rogers, 84 Fed. Rep. 639; Rogers v. Taintor,
97 Mass. 291; Thynue v. Shove, L. R. (1890) 45 Ch. D. 577-582; In-
vestor Pub. Co. V. Dobinson, 82 Fed. Rep. 56; Marcus Ward & Co.
v. Ward, 15 N. Y. Supp. 913; 61 Hun, 625; Drummond Tobacco Co.
106 LAW OF UNFAIR TRADE. [§55
But in this connection it should be observed that one
who enters into competition with another person of the
same name, who has an old and established business, is
under an oblig"ation to more widely differentiate his
goods from those of the latter than is required of third
persons having" different names. ^ A court of equity will
direct a defendant, in such a case, how to use his name
so as not to injure the complainant who bears the same
name. 2 This direction has at times taken the form of an
injunction restraining the party at fault from using his
name in connection with his product, except in conjunc-
tion with the words "No connection with the original
" (giving the name and location of the other party),
or words of like import.^
(6) Where the defendant is using his own name or that
of another in a manner wilfully calculated to deceive the
public into a belief that his goods are the goods of the
plaintiff who bears the same name. This presents a
state of facts that warrants the invocation of the injunc-
tive power of equity; the decisions being practically
unanimous.'*
V. Randle, 114 Dl. 412; Newark Coal Co. v. Spangler,54 N.J. Eq. 354;
34 Atl. Rep. 932; American Cereal Co. v. Petti John Cereal Co., 76
Fed. Rep. 372; aflfirming s. c, 72 Fed. Rep. 903; Diiryea v. National
Starch Mfg. Co., 45 U. S. App. 649; 79 Fed. Rep. 651; affirmed, 101
Fed. Rep. 117; Wm. Rogers Mfg. Co. v. Simpson, 54 Conn. 527; Fos-
ter V. Webster Piano Co., 13 N. Y. Supp. 338; 59 Hun, 624; Tussaud
V. Tussaud, 38 W. R. 440; Iowa Seed Co. v. Dorr, 70 la. 481; Turton
& Sons (Ltd.) V. Turton, 42 Ch. D. 128.
1 Baker & Co. v. Baker, 77 Fed. Rep. 181; 78 Off. Gaz. 1427; Walter
Baker & Co. v. Sanders, 80 Fed. Rep. 889-895.
=^ Baker & Co. v. Baker, 77 Fed. Rep. 181; 78 Off. Gaz. 1427; Tar-
rant & Co. V. Hoflf, 76 Fed. Rep. 959; affirming s. c, 71 Fed. Rep.
163; Walter Baker & Co. v. Sanders, 80 Fed. Rep. 889-894; City of
Carlsbad v. Schultz, 78 Fed. Rep. 469, In the last named case Judge
Coxe designed a label for the defendant's use, a copy of which is
embodied in his opinion.
■' Allegretti Chocolate Cream Co. v. Keller, 85 Fed. Rep. 643.
^Holloway v. Holloway, 13 Beav. 209; Seb. 106; Burgess v. Bur-
gess, 3 DeG. M. & G. 896; 22 L. J. Ch. 675; 17 Jur. 292; 21 L. T. 53;
Seb. 117; Taylor v. Taylor, 2 Eq. R. 290; 23 L. J. Ch. 255; 22 L. T.
271; Seb. 124; Clark v. Clark, 25 Barb. 76; Cox, 206; Seb. 148; Stone-
braker v. Stonebraker, 33 Md. 252; Seb. 333; Holmes, Booth & Hay-
§53] WHAT CONSTITUTES A VALID TRADE-MARK. 107
"Every one has the absolute rij^ht to use his own name
honestly in his own business, even though he may thereby
incidentally interfere with and injure the business of an-
other having the same name. In such case the incon-
venience or loss to which those having a common right are
subjected is damnum absque injuria. But, although he may
thus use his name, he cannot resort to any artifice or to any
act calculated to mislead the public as to the identity of
the business firm or establishment, or of the article pro-
duced by them, and thus produce injury to the other be-
yond that which results from the similarity of name.
Where the name is one which has previously thereto come
to indicate the source of manufacture of particular de-
vices, the use of such name by another, unaccompanied
with any precaution or indication, in itself amounts to
an artifice calculated to produce the deception alluded
to in the foregoing adjudications."^
dens V. Holmes, Booth & Atwood Mfg. Co., 37 Conn. 278; 9 Am. Rep.
324; Seb. 340; James v. James, L. R. 13 Eq. 421; 41 L. J. Ch. 353;
26 L. T. N. S. 568; 20 W. R. 434; Seb. 388; McLean v. Fleming, 96
U. S. 245; 13 Off. Gaz. 913; Thorley's Cattle Food Co. v. Massam,
42 L. T. N. S. 851; Cox. Manual, 668; Russia Cement Co. v. Le
Page, 147 Mass. 206; 44 Off. Gaz. 823; Cox, Manual, 706; Brown
Chemical Co. v. Meyer, 55 Off. Gaz. 287; 139 U. S. 540; Meyer v.
Bull Medicine Co., 66 Off. Gaz. 197; 18 U. S. App. 372; 7 C. C. A.
558; 58 Fed. Rep. 884; Higgins Co. v. Higgins Soap Co., 144 N. Y.
462; Wm. Rogers Mfg. Co. v. R. W. Rogers Co., 66 Fed. Rep. 66; 73
Off. Gaz. 970; DeLong v. DeLong Hook & Eye Co., 74 Off. Gaz. 809;
Garrett v. Garrett & Co., 79 Off. Gaz. 1681; 78 Fed. Rep. 472-478;
Baker & Co. v. Baker, 77 Fed. Rep. 181; 78 Oft'. Gaz. 1427; Rogers
Mfg. Co. V. Rogers & Spurr Mfg. Co., 11 Fed. Rep. 495; Price &
Steuart, 621; Tuerk Power Co. v. Tuerk, 36 N. Y. Supp. 384; 92 Hun,
65; Gillis v. Hall, Cox, 596; Devlin v. Devlin, 69 N. Y. 212; Tussaud
V. Tussaud, 38 W. R. 440; Frazer v. Frazer Lubricating Co., 121 111.
147; Shaver v. Shaver, 54 la. 208; India Rubber Comb Co. v. Rubber
Comb Co., 45 N. Y. Super. Ct. R. 258; Gage v. Canada Pub. Co., 11
Can. Sup. 306; Rogers Co. v. Wm. Rogers Mfg. Co., 70 Fed. Rep.
1017; Landreth v. Landreth, 22 Fed. Rep. 41; Manufacturing Co. v.
Simpson, 54 Conn. 527; Rogers v. Rogers, 53 Conn. 121; Hohner v.
Gratz, 52 Fed. Rep. 871; Williams v. Johnson, 2 Bos. 1; Cox, 214;
Stuart V. F. G. Stewart Co., 91 Fed. Rep. 243; reversing S. C, 85 Fed.
Rep. 778.
'Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169. "A man may
not use his own name to accomplish a fraud, designed or construc-
tive." Jenkins, J., in Stuart v. F. G. Stewart Co., 91 Fed. Rep. 243-248.
108 LAW OF UNFAIR TRADE. [§53
(c) Where the defendant is a corporation whose cor-
porate name includes a proper name and was selected
by its incorporators with the intent and for the purpose
of deceiving- the public into the belief that its goods are
the goods of the plaintiff. Such frauds will of course be
enjoined.^
(d) Where the defendant has, solely for the purpose of
unfair trade, secured from some person having the same
name as the plaintiff a license to use that name for the
purpose of fraudulently competing with the plaintiff.
This, being an artifice in promotion of unfair trade, ren-
ders the defendant liable to injunction.^
Finally, in regard to the assignment of the right to
use one's name, the law is well settled that a man can so
assign the right to use his name subject only to the gen-
eral rules of public policy governing contracts in re-
straint of trade.
The right to use the name Booth, in connection with a
theatre, described in the assignment of a lease as " Booth's
Theatre," was held to pass to the assignee because it had
become affixed to the establishment; ^ and it may follow
that proper names attached to or used in connection with
places of amusement generally would pass to an assignee
without specific enumeration in the instrument of assign-
ment.
It was suggested in the case of Christy v. Murphy, in-
volving the right to use the words "Christy's Minstrels,"
that if the plaintiff had seen fit to do so he could have
conveyed to the defendants an irrevocable license to use
that name in connection with that form of theatrical
iWm. Rogers Mfg. Co. v. R. W. Rogers Co., 73 Oflf. Gaz. 970; 84
Fed. Rep. 639; Rogers Mfg. Co. v. Rogers & Spurr Mfg. Co., 11 Fed.
Rep. 495; Higgins Co. v. Higgins Soap Co., 144 N. Y. 402; Plant
Seed Co. v. Michel Plant & Seed Co., 23 Mo. App. 579; Garrett v.
T. H. Garrett & Co., 78 Fed. Rep. 472; Clark Thread Co. v. Armi-
tage, 74 Fed. Rep. 936; Stuart v. F. G. Stewart Co., 91 Fed Rep.
243; reversing s. c, 85 Fed. Rep. 778.
-Melachrino v. Melachrino Egyptian Cigarette Co., 4 R. P. C. 215;
Cartmell, 223; Sawyer v. Kellogg, 7 Fed. Rep. 720; Cox, Manual,
681; R. Heinisch's Sons Co. v. Boker, 86 Fed. Rep. 765; Garrett v.
T. H. Garrett & Co., 78 Fed. Rep. 472.
SBooth V. Jarrett, 52 How, Pr. 169; Seb. 524.
§53] WHAT CONSTITUTES A VALID TRADE-MARK. 109
enterprise.^ But in the more recent case of Messer v. The
Fadcttes, the supreme court of Massachusetts, Lathrop,
J,, dissenting", refused to recognize an assignment of the
name of an orchestra, holding that while the organizer
and conductor of a musical organization may have some
right of ownership in it, such right is purely personal,
depending upon the personal reputation or skill of the
conductor, and is therefore not assignable; and that the
continued use of the name would mislead and therefore
work a fraud upon the public."^ While the name involved
("The Fadettes ") is not the name of a person, the decis-
ion is properly noticed here as a striking- departure from
the doctrine of Christy v. Murphy, supra., and from what
the author conceives to be the law. The dissenting
opinion of Justice Lathrop is well grounded on authority,
and the reader is referred to it for his reasoning". Briefly,
the court ought to have done as has been done in the
federal courts, namely, it should have instructed the
assignee of the name "The Fadettes" how to use that
name in its advertising matter so as not to deceive the
public into a belief that the orchestra was still under the
personal direction of its former manager and director.
To hold that the assignment was void was to put a
premium on dishonesty. The court erred in neglecting
its duty to instruct the assignee how to use the name —
the right to use which he had bought and paid for —
as not to work a fraud upon the public; its power and
duty in this respect have been judicially defined.^
One who has assigned the right to use his name in spe-
cific trade will be enjoined from using his own name in
that trade, in competition with his assignee, for such
competition would be unfair and fraudulent.* Promoters
^ Christy v. Murphy, 12 How. Pr. 77; Cox, 164; Seb. 137.
2 Messer v. The Fadettes, 168 Mass. 140.
3Baker & Co. v. Baker, 77 Fed. Rep. 181; Tarrant c^ Co. v. Hofif,
76 Fed. Rep. 959; s. c, 71 Fed. Rep. 163; Walter Baker & Co. v. Sand-
ers, 80 Fed. Rep. 889-894; City of Carlsbad v. Schultz, 78 Fed. Rep.
469-472. In the last named case Judge Coxe went so far as to desig-n
a label for the defendant's use, which is embodied in fac-simile in
his opinion.
^Meyers v. Kalamazoo Buggy Co., 54 Mich. 215; Thj'nne v. Shove,
110 LAW OF UNFAIR TRADE. [§54
of a corporation whose names have been used as a part
of the corporate name cannot be permitted to use their
names in connection with and as the name of a rival
company. Such conduct will be enjoined because of " the
injury to the party ag^grieved, and the imposition upon
the public, by causing them to believe that the goods of
one man or firm are the production of another."^
The care with which equity protects the names of cor-
porations is well recognized; the reason being found in
the fact that its name is a vital essential of a corpora-
tion.^
In conclusion, the general rule underlying this class of
cases has been aptly stated as follows: "All these cases
in equity depend upon an appropriation by one person
of the reputation of another, sometimes actually fraudu-
lent, and sometimes only constructively so."^
§ 54. Corporate names. — Upon this subject the courts
are hopelessly confused in their phraseology. There can
be no trade-mark right in a corporate name, for the con-
clusive reason that it is not, as such, applied to the sub-
ject-matter of commerce. In an early case Judge Deady,
of Oregon, said, "The corporate name of a corporation is
a trade-mark from the necessity of the thing,""* and this
very phrase, with other dicta, has been quoted with ap-
L. R. (1890) 45 Ch. D. 577; Wood v. Sands, Seb. 467; Russia Cement
Co. V. Le Page, 147 Mass. 206; Kidd v. Johnson, 100 U. S. 617
Spieker v. Lash, 102 Cal. 38-45; Hoxie v. Chaney, 143 Mass. 592
Skinner v. Oakes, 10 Mo. App. 45; Grow v. Seligman, 47 Mich. 647
Churton v. Douglas, Johns. 174; 28 L. J. Ch. 841; 5 Jur. N. S. 887
33 L. T. 57; 7 W. R. 365. And where the assignor has acquiesced
in the opening of mail addressed to him, by his assignee, he will be
enjoined from receiving and opening such mail addressed to him.
Dr. David Kennedy Corp. v. Kennedy, 55 N. Y. Supp. 917.
1 Holmes, Booth & Haydens v. The Holmes, Booth & Atwood Mfg.
Co., 37 Conn. 278; 9 Am. Rep. 324; Seb. 340.
^Investor Pub. Co. v. Dobinson, 72 Fed. Rep. 603; s. c, 82 Fed.
Rep. 56.
'Lowell, J., in Wm. Rogers Mfg. Co. v. Rogers & Spurr Mfg. Co.,
11 Fed. Rep. 495-499.
''Newby v. Railroad Co., Deady, 609. "The name of a corporation
has been said to be the 'knot of its combination, ' without which it
cannot perform its corporate functions." Wallace, J., in Goodyear
Rubber Co. v. Goodyear's Rubber Mfg. Co., 21 Fed. Rep. 276.
§54] WHAT CONSTITUTES A VALID TRADE-MARK. Ill
proval in a more recent case.^ The author has in a for-
mer section collected the judicial detinitions of trade-
mark, and it is a scientific impossibility to bring Judge
Deady's dictum within the scope of either of those defi-
nitions, or to extend the definitions to include that dic-
tum. Justice Clifford's definition may be referred to as
making the author's position clearer.^ It is entirely erro-
neous to treat a corporate name as being a trade-mark.
This error has arisen from the unfamiliarity of the
courts with the essential requirements of technical trade-
marks, and the fact that equitable relief had to be admin-
istered in cases where the courts had no precedents at
hand except in the trade-mark decisions, which afforded
similar reasoning to support their conclusions.
The reason why equity intervenes to protect corporate
names from imitation is that they are essential parts of
the being of corporations, or, as expressed by the supreme
court of Missouri, its name is a necessary element of the
existence of a corporation.^ The courts, therefore, will
protect a corporation in the use of its name in the absence
of any express statutory enactment.^ The exercise of
this power is an enforcement of the law of unfair compe-
tition as shown in the following language of Bradley, J. :
"Pair competition in business is legitimate, and pro-
motes the public good; but an unfair appropriation of
another's business, by using his name or trade-mark, or
an imitation thereof calculated to deceive the public, or
in any other way, is justly punishable by damages, and
will be enjoined by a court of equity."^ This dictum is
contained in the opinion in the Celluloid case, where the
corporate name happened to be the trade-mark applied
by the corporation to merchandise manufactured and
'Investor Pub. Co. v. Dobinson, 72 Fed. Rep. 603-606.
^McLean v, Fleming, 96 U. S. 245-254.
s State V. McGrath, 92 Mo. 357.
* Farmers' Loan »& Trust Co. v. Farmers' Loan & Trust Co. of
Kansas, 1 N. Y. Supp. 44; William Rogers Mfg. Co. v. Rogers
& Spurr Mfg. Co., 11 Fed. Rep. 495; Celluloid Mfg. Co. v. Cellonite
Mfg. Co., 32 Fed. Rep. 94; Investor Pub. Co. v. Dobinson, 72 Fed.
Rep. 603.
^Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. Rep. 94.
112 LAW OF UNFAIR TRADE. [§54
sold by it. It is a self-evident proposition that a generic
word embodied in a corporate name is not entitled to pro-
tection in equity. The rule was thus stated by Mr.
Justice Field, in delivering the opinion of the United
States supreme court in a case where the Goodyear Rub-
ber Co. sought to restrain another corporation from using
the name "Goodyear's Rubber Manufacturing Co." He
said: "The name of 'Goodyear Rubber Company' is
not one capable of exclusive appropriation. 'Goodyear
Rubber' are terms descriptive of well-known classes of
goods produced by the process known as Goodyear's in-
vention. Names which are thus descriptive of a class of
goods cannot be exclusively appropriated by any one.
The addition of the word 'Company' only indicates that
parties have formed an association or partnership to deal
in such goods, either to produce or to sell them. Thus
parties united to produce or sell wine, or to raise cotton
or grain, might style themselves wine company, cotton
company, or grain company; but by such description
they would in no respect impair the equal right of others
engaged in similar business to use similar designations,
for the obvious reason that all persons have a right to
deal in such articles and to publish the fact to the world.
Names of such articles cannot be adopted as trade-
marks, and be thereby appropriated to the exclusive
right of any one, nor will the incorporation of a com-
pany in the name of an article of commerce, without
other specification, create any exclusive right to the use
of the name."^
'Mr. Justice Field, in Goodyear Co. v. Goodyear Rubber Co., 128
U. S. 598-602; reversing S. c, 21 Fed. Rep. 276. Tlius in an action
by one fire insurance company to restrain another from the use of the
word " Continental " in its corporate name, the court said: "The
distinguishing- feature of the names of the two incorporated compa-
nies is the word 'Continental.' It is the use of this word by the
defendant which the complainant seeks to enjoin. It is the conten-
tion of the complainant that, by reason of the long-continued use of
this word by it, and the fact that it has built up a large and lucra-
tive business under this distinguishing name, it has secured a prop-
erty right in said word 'Continental,' in connection with its incor-
porated name, and it is entitled to the exclusive use of the word 'Con-
tinental,' in connection with its insurance business, in the sections of
§54] WHAT CONSTITUTES A VALID TRADE-MARK. ll;;i
A foreigri corporation cannot, by application to a court in
the state in which a new corporation is bein^ organized,
secure an injunction restraining the formation of the new
corporation under the same corporate name as that of the
plaintiff. But in dismissing a bill brought for such a pur-
pose, Judge Gresham said: "I do not say what may be
done if the defendants succeed in creating their corpora-
tion bearing the complainant's name, and a suit shall be
brought by the complainant to prevent individuals claim-
ing to be officers or managers of such corporation from
interfering with the complainant's business."^
In conclusion, there is no practical difference, so far
as equitable rights and remedies are concerned, between
corporate names and the name of a copartnership or an
individual. As said by Mr. Justice Bradley, on circuit,
in dealing with the names of corporations plaintiff and
defendant, "the fact that both are corporate names is of
no consequence in this connection. They are the busi-
ness names by which the parties are known, and are to
be dealt with precisely as if they were the names of pri-
vate firms or partnerships. "-
the country where it is engaged in such business. Upon the showing
made by the complainant, it might be entitled to the relief sought,
were the distinguishing word of its corporate name such a one as
could be exclusively appropriated in the designation or conduct of
a business by a person, firm of corporation. The word 'continental '
is in general and prevalent use, and means pertaining to or charac-
teristic of a continent. As applied to or designating an insurance
company, it would be descriptive of the bounds within which such
company carried on its business. The scope of the business carried
on by many insurance companies is continental in extent. A term
which can be truthfully used by many in the description of a business
or occupation cannot be exclusively appropriated by any one of
them. The word 'continental' is a generic term, and it is not the
policy of the law to permit the exclusive appropriation of words or
terms which are generic; that is, which pertain to a class of related
things, and which are of general application. The right to use
such words should remain vested in the public." Meek, J., in Con-
tinental Ins. Co. V. Continental Fire Ass'n, 96 Fed. Rep. 846-848;
affirmed, 101 Fed. Rep. 255. To the same effect see Goodyear Rub-
ber Co. V. Day, 22 Fed. Rep. 44.
1 Lehigh Valley Coal Co. v. Hamblen, 23 Fed. Rep. 225, 226.
2 Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. Rep. 94-97.
8
114 LAW OF UNFAIR TRADE. [§54
A corporation cannot, by securing- a license from or em-
ploying a person bearing the desired proper name, so use
that name as part of its corporate name as to maintain
an unfair competition with an older business employing-
the name.^
1 Garrett v. T. H. Garrett & Co., 78 Fed. Rep. 472.
CHAPTER IV.
TRADE-MARK RIGHTS IN TITLES OF BOOKS
AND PERIODICALS.
§ 56. Trade-mark in title of a book. — Upon this sub-
ject there has been less harmony of opinion tlian would
be expected. It has been said by the court of appeals of
Maryland that "A publisher has either in the title of his
work or in the application of his name to the work, or in
the particular marks which desig"nate it, a species of
property similar to that which a trader has in his trade-
mark. "^
Mr. Browne in his learned treatise on trade-marks says:
"Can printed books be protected by trade-marks? Yes,
as mere merchandise; no, as literary productions."^ This
is true, in so far as it asserts that marks or devices may
be used to distinguish the product of the publisher or
book dealer.'^ He says further: "There seems to be no
sufficient reason why the title of a book may not be
deemed a valid trade-mark,"* and thereby expresses the
error contained in the careless dictum of the Mary-
land court quoted above. The correct view is stated in
clear terms by Mr. Rowland Cox, in his note to Clemens v.
Bedford:^ "It is necessarily true that the name of a book
is, under all circumstances, a descriptive term which
means a particular thing. The book is created and given
a name, and the name is added to the language as a term
of description. If a copyright is taken, the owner of the
copyright enjoys, as long as the privilege continues, the
' Robertson v. Berry, 50 Md. 591; Price & Steuart, 153.
-Browne, Trade-marks, sec. 116.
^Mr. Browne cites six cases in support of this proposition, neither
one of which is applicable. All related to property right in the title
of a periodical publication.
* Browne, Trade-marks, sec. 118.
*14 Fed. Rep. 728; Cox, Manual, 685.
115
116 LAW OF UNFAIR TRADE. [ § 55
exclusive right to the use of the name; and when the
privilege expires, the name, always a descriptive term,
becomes publici juris. If the book is not copyrighted, the
literary matter becomes piiblici juris as soon as it is pub-
lished, and the name of the literary matter goes to the
public as an incident of that which it describes. If there
is language in some of the cases which seems to indicate
that the name of a book can be protected as a trade mark,
reflection will demonstrate that it cannot be made good.
The names of periodicals and newspapers, as distin-
guished from books, are protected as in the nature of
trade-marks; and in many instances the publications in
connection with which the names have been used were
proper subjects of copyright. In some cases they con-
tained, or might have contained, articles in connection
with which the statutory privilege had been acquired.
But the name which has been protected has never been
simply the name of a book, but always that of a con-
stantly changing series. Thus the term 'Old Sleuth
Library' was distinctly arbitrary, and never the name of
a particular book or literary production, and for this
reason it was in an accurate sense a trade-mark, and
must continue to be as long as the publication was con-
tinued. But if the publication of the periodical were dis-
continued for a period of years, the name would cease
to be arbitrary and take its place in literature as indicat-
ing a definite collection of articles, pictures, etc., and as
soon as it acquired that settled meaning, it would, in the
absence of copj^right, become publici juris."
It is now established law that there is no trade-mark
right in the title of a book. Judge Wallace stated the
rule very lucidly when he said: "Neither the author or
proprietor of a literary work has any property in its
name. It is a term of description, which serves to iden-
tify the work; but any other person can with impunity
adopt it, and apply it to any other book, or to any trade
commodity, provided he does not use it as a false token
to induce the public to believe that the thing to which it
is applied is the identical thing which it originally des-
§ 56] BOOK TITLES AS TRADE-MARKS. 117
ignated. If literary property could be protected upon
the theory that the name by which it is christened is
equivalent to a trade-mark, there would be no necessity
for copyri<cht laws."^ This doctrine is fully sustained
by the later cases. -
§66. Trade-mark in title of periodical. — In 1859
Vice-Chancellor Stuart enjoined a defendant who had
beg^un the publication of "The Penny Bell's Life and
Sporting News" from publishing any newspaper under
that name, or any other name in which the words "Bell's
Life "should occur, the application being made by the
proprietors of "Bell's Life in London." In the course
of his opinion the vice-chancellor said: "This is an ap-
plication in support of the right to property."-' Thus
was distinctly recognized the right of trade-mark in the
title of a periodical publication. Long prior to this
time, however, equity had suppressed this species of
piracy between publishers, the first reported case being
that of Hogg v. Kirby, where the complainant was the
proprietor of a magazine called "The Wonderful Maga-
zine" and the defendant's publication bore substantially
the same name with the addition of the words "New
Series, Improved." The injunction was granted by Lord
Eldon.''
In the United States Chancellor Sandford was the first
to recognize this right, in 1825, although he refused
to enjoin the use of the title "The New York National
Advocate" on the application of the proprietor of "The
National Advocate," both being applied to newspapers
1 Black V, Ehrich, 44 Fed. Rep. 793, 794.
"Merriam v. Holloway Pub. Co., 43 P"'ed. Rep. 450 (opinion by Mr.
Justice Miller on circuit); Merriam v. Famous Shoe and Clothing
Co., 47 Fed. Rep. 410 (opinion by Judge Thayer); Merriam v. Texas
Siftings Pub. Co., 49 Fed. Rep. 944 (opinion by Judge Shipman).
•■'Clement v. Maddick, 1 Giff. 98; 5 Jur. N. S. 592; 33 L. T. 117;
Seb. 174.
*Hogg V. Kirby, 8 Ves. 215; Seb. 10. Lord Eldon also restrained
a defendant from the publication of a court calendar which he was
issuing as a continuation of the complainant's work. Longman v.
Winchester, 16 Ves. 269; Seb. 15.
118 LAW OF UNFAIR TRADE. [§56
published in the city of New York, holding the names to
be substantially different; and this notwithstanding the
fact that the defendant had been the editor for the pub-
lisher who had sold "The National Advocate" to the
complainant. The chancellor did not expressly hold the
title of the paper to be a trade-mark, but treated it as
part of the good- will of the printing establishment.^ In-
deed he seems to have treated the subject solely from
the standpoint of unfair competition, ignoring the ques-
tion of technical property right, as did Chancellor Wal-
v^^orth in 1840 in refusing to enjoin the use of the title
"New Era " on the application of complainants who pub-
lished the "Democratic Republican New Era," saying,
inter alia, "There could be very little excuse for the edi-
tor of a new paper who should adopt the precise name
and dress of an old established paper, which would be
likely to interfere with the good-will of the latter by
actually deceiving its patrons."^
In 1867, however, a clear cut opinion of the court of
common pleas of the city of New York recognized the
property right in unmistakable terms. The plaintiffs,
proprietors of the "National Police Gazette," applied
for an injunction to restrain the publication of the
"United States Police Gazette" by the defendants.
Brady, J., said: "The title of a newspaper may be a
purely original one, and the proprietor for that reason
entitled to its exclusive use. He may create a word, or
combination of words, for the particular designation of
his paper, and in that way acquire an exclusive right to
the use of the name employed. He may combine, as the
plaintiffs have, well-known English words in common use.
. . . It also appears that the plaintiffs' paper has been
published weekly under that name for many years, . . .
that its circulation is large and valuable, and that it
was the only police gazette, eo nomine, published in the
United States at the time of the publication of the paper
complained of by them. . . . From these facts it is
iSnowdenv. Noah, Hopkins, Ch. R. 347; Cox, 1; Seb. 41.
2 Bell V. Locke, 8 Paige, 75; Cox, 11; Seb. 65.
§56] BOOK TITLES AS TRADE-MARKS. 119
apparent that the plaintiffs have acquired a right con-
nected with the publication of a newspaper called the
National Police Gazette, which must be preserved against
any fraud attempted to be perpetrated against them."^
Subsequently the superior court of New York City,
per Monell, J., said: "I do not understand that the pro-
tection which the law affords to 'trade-marks,' even as-
suming 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 designating some particular
manufacture or business. There can be no such prop-
erty in a newspaper except, perhaps, in the name or
title of the paper, 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 proprietor-
ship 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. "^
As late as 1881 Sir George Jessel, master of the rolls,
said: "It does not appear to me that there was any in-
vention in the combination of 'Splendid Misery,' any
more than there would be in the words 'Miserable Sin-
ner,' or anything of that kind. The adoption of the
words as the title of a novel might make a trade-mark."'^
In 1898 the appellate division of the supreme court of
New York said it could not follow the reasoning of coun-
sel "when he contends that the public, by its short
way of referring to the 'Commercial Advertiser,' has
given the plaintiff some kind of an undefined trade-mark
iMatsell V. Flanag-an, 2 Abb. Pr. N. S. 459; Cox, 367; Seb. 270.
2 Stephens v. De Couto, 7 Robertson, 343; 4 Abb. Pr. N. S. 47; Cox,
442; Seb. 295, The learned court cites an opinion holding that a
newspaper or price current cannot be copyrighted because the term
science cannot, with any propriety, be applied to a work of so fluc-
tuating and fugitive a form. Clayton v. Stone, 2 Paine, 382-392.
'Dicks V. Yates, L. R. 18 Ch. D. 76-88.
120 LAW OF UNFAIR TRADE. [§56
in this popular form of speech, — a doctrine which would
equally apply to a 'sobriquet' or diminutive; that its
unauthorized use by the defendant, whether likely to in-
jure the plaintiff or not, should be absolutely enjoined as
an invasion of a strict property right. "^
While, on the other hand, the United States circuit
court for the district of New Jersey had held in 1894
that the words "Social Register," applied by a publisher
to a directory of a certain locality, containing names of
persons resident therein, selected with reference to the
personal and social standing of such persons, "become a
trade-mark, and are entitled to protection as such."^
From our cursory view of the foregoing decisions and
dicta it is plainly manifest that the right to technical
trade-mark in the title of a periodical has been affirmed
and denied with some show of reason upon each side.
The subject has been ably discussed by Mr. Browne, who
concludes that the name so used is a technical trade-
mark.^ In that conclusion we must coincide, and it is
well sustained by the reasoning of Mr. Rowland Cox,
which we have before quoted.* But the fact is patent
that it is still a mooted question, and that the solicitor
attempting to restrain piracy of this kind would better
frame his bill upon unfair competition and not upon
technical trade-mark. The New York supreme court, in
its decision above referred to, says that "the fundamen-
tal doctrine upon which relief in this class of cases is
afforded" is that of "misleading or the tendency to mis-
lead, with consequent injury, actual or probable."^
1 Commercial Advertiser Ass'n v. Haynes, 49 N. Y. Supp. 938-942.
2 Social Reg-ister Ass'n v. Howard, 60 Fed. Rep. 270, 271.
"Browne, Trade-marks (2d ed.), sec. 115. As instances of injunc-
tion restraining use of infringing titles of periodicals, see Edmonds
V. Benbow, Seton (3d ed.), 905; Re Edinburgh Correspondent News-
paper, Ct. of Sess. Cas. 1st ser. I (new ed.), 407 n. ; Cox, Manual,
No. 34.
^Note to Clemens v. Belford, 14 Fed. Rep. 728; Cox, Manual, 684;
ante, % 55.
•■^Commercial Advertiser Ass'n v. Haynes, 49 N. Y. Supp. 938-942; cit-
ing Bradbury v. Beeton, 39 Law J. Ch. 57; Ingram v. Stiff, 5 Jur. N. S.
947; Lee v. Haley, 5 Ch. App. Cas. 155; Clement v. Maddick, 5 Jur.
§56] BOOK TITLES AS TRADE-MARKS. 121
N. S. 592. And see Snowden v. Noah, Hopkins, Ch. 347; Bell v. Locke,
8 Paige, 75; Tallcot v. Moore, 6 Hun, 106; Stephens v. DeConto, 4 Abb.
Pr. N. S. 47; Matsell v. Flanagan, 2 Abb. Pr. N. S. 459; Publishing
Co. V. Dobinson, 82 Fed. Rep. 56; Richardson & Boynton Co. v. Rich-
ardson & Morgan Co., 8 N. Y. Supp. 53; Farmers' Loan & Trust Co.
V. Farmers' Loan & Trust Co., 1 N. Y. Supp. 44; Borthwickv. Even-
ing Post, L. R. 37 Ch. D. 449; Estes v. Leslie (2), 29 Fed. Rep. 91;
Estes V. Leslie (1), 27 Fed. Rep. 22; Estes v. Worthington, 31 Fed.
Rep. 154.
CHAPTER V.
THE LOSS OF THE RIGHT TO A TRADE-MARK'S USE.
§ 67. Laches. — There is no laches where a complain-
ant is only waiting to get a sufficient quantity of evidence
to secure a successful prosecution of the infringer,^ and
of course none exists where the complainant has no knowl-
edge of the fact of infringement; ^ and it has been dis-
tinctly held by the federal supreme court that an injunc-
tion will not generally be refused on the ground of delay
alone.^ Following that decision, it was said by Judge
Nixon, in the United States circuit court in the district of
New Jersey : ' ' There has been large discussion of the ques-
tion how far laches, in stopping the infringement of a
trade-mark, will deprive a complainant of the benefits
of a preliminary injunction. But that discussion has
been put to rest, so far as this court is concerned, by the
recent decision of the supreme court in the case of McLean
V. Fleming,^ where it was held that acquiescence of long
standing was no bar to an injunction, although it pre-
cluded the party acquiescing from any right to an account
for past profits."^
The rule has always been, however, that laches on the
part of the owner of a trade-mark would be a bar to his
application for a preliminary injunction. Judge Wallace
stated the rule as follows: "Laches in prosecuting in-
fringers has always been recognized as a sufficient reason
for denying a preliminary injunction; sometimes, appar-
iCave v: Myers, Seton (4th ed.), 238; Lee v. Haley, 22 L. T. N. S. 251.
2 Re Farina, 27 W. R. 456; Seb. 642; Weldon v. Dick, L. R. 10
Ch. D. 247; 39 L. T. N. S. 467; Seb. 638; Taylor v. Carpenter (1), 3
Story, 458; Cox, 14; Seb. 78; Taylor v. Carpenter (2), 2 Wood.
& M. 1; Cox, 32; 9 L. T. 514; Gilka v. Mihalovitch, 50 Fed. Rep. 427.
3 McLean v. Fleming, 96 U. S. 245.
* Supra.
^Consolidated Fruit Jar Co. v. Thomas, Cox, 665. And see La
Republique Francaise v. Schultz, 102 Fed. Rep. 153.
122
§§58,59] LOSS OF RIGHT TO TRADE-MARK'S USE. 123
ently, by way of discipline to a complainant who has
manifested reluctance to burden himself with the expense
and vexation of a lawsuit, and delayed leg'al proceeding's
until his patience was exhausted. When delay of the
owner of a patent or trade-mark to prosecute infringers
has been of a tendency to mislead the public or the de-
fendant sought to be enjoined into a false security, and
a sudden injunction would result injuriously, it ought
not to be granted summarily, but the complainant should
be left to his relief at final hearing,"^
§ 68. Laches and acquiescence distinguished. —
"Laches" and "acquiescence" are terms frequently used
synonymously, or at least without due reg"ard to their
respective meanings. ' ' Laches " imports a merely passive,
while "acquiescence" implies an active assent. ^ The
supreme court of California has said, " 'Laches' would
strictly seem to imply neglect to do that which ought to
have been done; 'acquiescence' a resting satisfied with
or submission to an existing state of things."^
"Acquiescence — that is, assent — is tantamount to an
agreement."'* The supreme court of the United States,
by Mr. Justice Swayne, has said: "Acquiescence and
waiver are always questions of fact. There can be
neither without knowledge. The terms import this foun-
dation for such action. One cannot waive or acquiesce
in a wrong- while ignorant that it has been committed.
Current suspicion and rumor are not enough. There must
be knowledge of facts which will enable the party to
take effectual action."'^
§59. Acquiescence. — "The consent of a manufac-
turer to the use or imitation of his trade-mark by another
maj?-, perhaps, be justly inferred from his knowledge and
silence; but such a consent, whether expressed or im-
1 Estes V. Worthington, 22 Fed. Rep. 822.
-Wood on Limitations, sec. 62.
•'"Lux V. Haggin, 69 Cal. 255-269.
^Matthews v. Murchison, 17 Fed. Rep. 760-766.
•■'Pence v. Langdon, 99 U. S. 578-581. See also Allen v. McKeen,
1 Sumn. 276-314; Evans v. Smallcombe, L. R. 3 H. L. 249; Ramsden
V. Dyson, L. R. 1 H. L. 129; Reed v. West, 47 Tex. 240.
124 LAW OF UNFAIR TRADE. [§59
plied, when purely gratuitous, may certainly be with-
drawn; and when implied, it lasts no longer than the
silence from which it springs. It is, in reality, no more
than a revocable license. The existence of the fact may
be a proper subject of inquiry in taking an account of
profits if such an account shall hereafter be decreed;
but even the admission of the fact would furnish no
reason for refusing an injunction."^ This dictum of
Judge Duer in Amoskeag Mfg. Co. v. Spear is so compre-
hensive as to warrant its extended quotation above given.
While it was held by Vice-Chancellor Wood that a plain-
tiff's acquiescence in the defendant's use of his mark for
two years after the plaintiff had seen it publicly exhibited
would disentitle him to relief ,2 an injunction was granted
in a case where a dissenting opinion shows that the es-
sential feature of the mark had been used by others than
plaintiff with his knowledge for more than twenty years. ^
It has been held in a federal circuit court that acquies-
cence for a time equal to that prescribed in the statute
of limitations must be shown.* Acquiescence cannot be
inferred, and it is revocable if it could be.^
"In England the rule is stringent in trade-mark cases
that lack of diligence in suing deprives the complainant
in equity of the right either to an injunction or an ac-
count. Our courts are more liberal in this respect. A
long lapse of time will not deprive the owner of a trade-
mark of an injunction against an infringer, but a reason-
lAmoskeag- Mfg. Co. v. Spear, 2 Sandf. S. C. 599; Cox, 87. The
withdrawal of gratuitous permission to use one's name may be made
at the pleasure of the party granting such permission. McCardel v.
Peck, 28 How. Pr. 120.
2Beard v. Turner, 13 L. T. R. N. S. 747; Cox, 717.
SQillott V. Esterbrook, 47 Barb. 455; Cox, 340. Dissent of Ingra-
ham, J.
^Taylor v. Carpenter (2), 2 Wood. & M.l; Cox, 32. But "laches for
even less than the statutory period of limitations, aided by other cir-
cumstances, will bar a right." Acheson, J., in Prince's Met.
Paint Co. V. Prince Mfg. Co., 57 Fed. Rep. 938-944, where the plaintiff
was held to be estopped by eight years' acquiescence.
•''Gillottv. Esterbrook, supra; Amoskeag Mfg. Co. v. Spear, su^jra;
Christy v. Murphy, 12 How. Pr. 77; Cox, 164; Seb. 137; Menendez v.
Holt, 128 U. S. 514.
§60] LOSS OF RIGHT TO TRADE-MARK'S USE. 125
able dilij^ence is required of a complainant in assertinjj
his rights, if he would hold a wrong-doer to an account
for profits and damages. This rule, however, applies
only to those cases where there has been an acquiescence
after a knowledge of the infringement is brought home
to the complainant."^
§ 60. Abandonment. — The consideration of laches and
acquiescence leads us naturally to the subject of aban-
donment. The first form of abandonment is by disuse of
the mark. "That the right to use a trade-mark ma}'- be
lost by abandonment or disuse is too clear to need argu-
ment or the support of authorit3^"'^ But the length of
time during which the mark is not used is immaterial
except when it is such as, taken in connection with all
the circumstances, will show the intention of its owner
to abandon it. "A man who has a trade-mark may prop-
erly have regard to the state of the market and the de-
mand for the goods; it would be absurd to suppose he
lost his trade-mark by not putting more goods on the
market when it was glutted."-^ Registration w^as refused
in England where the applicant's mark "EmoUio"' had
not been used b}'- him for eleven years, and his applica-
tion was opposed by one who had, in the meantime, reg-
istered the word "Emolline " as a trade-mark for articles
similar to those upon which the applicant intended to
affix his mark (perfumery).-* Before the courts will de-
clare an abandonment by disuse there must be satisfac-
tory proof of intention of abandonment. It has been
suggested by Chitty, J., that such intention will be gath-
ered from the owner's acts in breaking up the moulds by
which the mark is made, and taking the trade-marked
article from his price lists. '^
^Nixon, J., in Sawyer v. Kellogg-, 9 Fed. Rep. 601.
2 Hughes, J., in Blackwell v. Dibrell, 3 Hughes, 151; 14 Off. Gaz.
633; Price & Steuart, 39; Seb. 590; Laverne v. Hooper, Ind. L. R.
8 Mad. 149; Royal Baking Powder Co. v. Raymond, 70 Fed. Rep. 376.
•''Chitty, J., in Monson v. Boehm, L. R. 26 Ch. D. 398-406; Cart-
mell, 233.
^Re Grossmith, 6 R. P. C. 180; 60 L. T. N. S. 612; Cartraell, 137.
5 Monson v. Boehm, L. R. 26 Ch. D. 398-405; Cartmell, 233.
126 LAW OF UNFAIR TRADE. [§60
It must be borne in mind, in this connection, that the
defense of abandonment is not favored by the courts.
One judge has said, ''there is something very abhorrent
in allowing- such a defense to a wrong, "^ although as a
matter of course a trade-mark once abandoned may be
adopted by another for the same class of merchandise.^
There must be clear proof of the fact of abandonment,^
and it ought to be clearly shown that any other person
is adopting the same mark fairly and honestly, and not
in an attempt to filch from its original owner the reputa-
tion he has obtained for it.'' What act or acts will con-
stitute an abandonment must be determined by the facts
in each particular case. One English decision held that
a dismissal of a bill for injunction was an abandonment
of the trade-mark sought to be protected by the bill.^
The abandonment of names used in connection with
particular premises where selling or manufacturing is
conducted has led to some apparent conflicts of opinion
among the courts. Careful analysis of the facts will
show that there is some semblance of harmony in the
rulings. Whether a removal from the premises will con-
stitute an abandonment of the use of the name depends
on whether the name indicates the building itself, or
merely the business conducted therein. Thus, "Booth's
Theatre " designated the theatre and not the actor, and
upon its sale by Edwin Booth he could not restrain his
vendee from the use of the name, as Messrs. Jarrett &
Palmer had fully advertised the fact that they were lessees
and managers, and no question of fraud could be raised.^
As stated by Wallace, J., in Atlantic Milling Co. v. Robin-
son: "The right to the exclusive use of a word or symbol
as a trade-mark is inseparable from the right to make
and sell the commodity which it has been appropriated
1 Woodbury, J., in Taylor v. Carpenter (2), 2 Wood. & M. 1; Cox, 32.
^Holt V. Menendez, 128 U. S. 514; Royal Baking Powder Co. v.
Raymond, 70 Fed. Rep. 376-382.
•-'Sohl V. Geisendorf, 1 Wilson (Ind.), 60; Seb. 367.
'' Royal Baking- Powder Co. v. Raymond, 70 Fed. Rep. 376-382.
■'Browne v. Freeman, 12 W. R. 305; 4 N. R. 476.
SBooth V. Jarrett, 52 How. Pr. 169.
§60] LOSS OF RIGHT TO TRADE-MARK'S USE. 127
to designate as the production or article of the propri-
etor. It may be abandoned if the business of the pro-
prietor 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 production of that
place or establishment, rather than of the proprietor.
A trade-mark of this description is of no value to the
original proprietor because he could not use it without
deception, and therefore would not be protected in its
exclusive enjoyment. Such a trade-mark would seem to
be an incident to the business of the place or establish-
ment to which it owes its origin, and without which it
can have no independent existence. It should be deemed
to pass with a transfer of the business because such an
implication is consistent with the character of the trans-
action and the presumable intention of the parties."^
So that the use of the name "Stillman" to indicate the
cloth product of the Stillman Mills; -^ "Old Oscar Pepper"
to indicate the product of the distillery of that name;"
"Osborne House" to designate a hotel first owned by
Osborne * * ' Towner Palace, " designating a building, having
a tower, where a clothing business was conducted,^ are
all held to be indicative of the premises and abandoned
by the owner of the name who sells the premises or re-
moves therefrom. It follows that a mere arbitrary name
not designating the locality or building in which a busi-
ness is transacted will survive a change in the location
of the business.*'
J Atlantic Milling Co. v. Robinson, 20 Fed. Rep. 218; citing- Dixon
Crucible Co. v. Guggenheim, 3 Am. L. T. 228; Hudson v. Osborne,
39 L. J. Ch. N. S. 79; Shipwright v. Clements, 19 W. R. 599. See
also Hall v. Barrows, 4 DeG. J. & S. 157; Glen & Hall Mfg. Co. v.
Hall, 61 N. Y. 227-234; Kidd v. Johnson, 100 U. S. 617; Leather
Cloth Co. V. American Leather Cloth Co., 11 Jur. N. S. 513; Ains-
worth V. Walmesley, 44 L. J. 555.
-Carmichael v. Latimer, 11 R. L 395.
8 Pepper v. Labrot, 8 Fed. Rep. 29.
^Hudson V. Osborne, 39 L. J. Ch. N. S. 79.
^Armstrong v. Kleinhaus, 82 Ky. 304.
''Dewitt V. Mathey (Ky.), 35 S. W. Rep. 1113 (not officially reported).
128 LAW OF UNFAIR TRADE. [ § 60
The leng-th of time during which a trade-mark is not
used is, as we have seen, merely a circumstance to be
considered with all the other facts in the case in deter-
mining whether there was an intention to abandon its
use. Thus, defendants have been restrained from using
a mark that has lain in disuse for periods of one year,^
three years, "^ nine years,^ ten years,^ and even twenty
years. ^ The vital question is the intention of the owner
of the mark, and the burden of establishing abandonment
lies upon the party who affirms it.^
There may be an involuntary abandonment of a trade-
mark through the fact that, once distinctive, it has
ceased to indicate the merchandise of the owner of the
mark and has become publici Juris because it indicates
only a peculiar product or method of manufacture. This
again arises from the peculiar circumstances of each
case. "What is the test by which a decision is to be
arrived at, whether a word which was originally a trade-
mark has become puNici juris? I think the test must be,
whether the use of it by other persons is still calculated
to deceive the public; whether it may still have the effect
of inducing the public to buy goods not made by the orig-
inal owner of the trade-mark as if they were his goods.
If the mark has come to be so public and in such universal
use that nobody can be deceived by the use of it, or can be
induced from the use of it to believe that he is buying the
iLemoine v. Ganton, 2 E. D. Smith, 343; Cox, 142.
2 Julian V. Hoosier Drill Co., 75 Ind. 408.
^Lazenby v. White, 41 L. J. N. S. 354. But nine years' inaction,
where knowledge can be imputed to the party, has been held to work
an abandonment of his trade-mark in Saxlehner v. Eisner & Men-
delson Co. (2), 91 Fed. Rep. 536; and an injunction was refused be-
cause plaintiff delayed action for nine years in Amoskeag Mfg. Co.
V. Garner, 55 Barb. 151.
< Wolfe V. Barnett, 24 La. Ann. 97.
*Gillottv. Esterbrook, 48 N. Y. 374.
6 Julian V. Hoosier Drill Co., 75 Ind. 408. This is analogous to the
rule that where one sued for infringing a trade-mark sets up a prior
right to the mark in question, it is incumbent upon him to establish
his prior use by satisfactory evidence. Tetlow v. Tappan, 85 Fed.
Rep. 774.
gGOJ LOSS OF RIGHT TO TIIADE-MARK'S USE. 129
goods of the original trader, it appears to me, however
hard to some extent it may appear on the trader, yet prac-
tically as the right to a trade-mark is simply a right to
prevent a trader from being cheated by other persons'
goods being sold as his goods through the fraudulent use
of the trade-mark, the right to the trade-mark must be
gone." This extract from an opinion of Mellish, L. J.,^
is probably the clearest explanation of the cases involv-
ing this topic. The cases turning upon this point are
many.'^
The adoption of a new label or brand is, of course, an
abandonment of all the distinctive features of the old
label or brand not preserved in the new one.^
The owner of a trade-mark may by a practice of ship-
ping goods bearing the mark to the same consignee, so
that it may be held out to or believed by purchasers to in-
dicate some right to the mark in the consignee, lose the
exclusive right to its use.^
The fact that a manufacturer uses his name or an addi-
tional symbol, such as a coat-of-arms, in connection with
the distinctive word, does not deprive him of his trade-
mark right in the distinctive word. Thus the manufac-
turer of "Eureka" shirts, which he marked "R. Ford's
Eureka Shirt, London," was awarded an injunction re-
straining a defendant from the sale of an article marked
iFord V. Foster, L. R. 7 Ch. D. 611.
2Lazenby v. White, 41 L. J. Ch. 354; Lea v. Millar, Seb. 513; Se-
ton (4th ed.), 242; Lea v. Deakin, 11 Biss. 23; Re Arbenz, L. R. 35
Ch. D. 248; Neva Stearine Co. v. Mowling, 9 Vict. L. R. 98; Sher-
wood V. Andrews, 5 Am. L. R. N. S. 588; Re Hall, 13 OS. Gaz. 229;
Liebig's Extract Co. v. Hanbury, 17 L. T. N. S, 298; Watkins v.
Landon, 52 Minn. 389-393; Marshall v. Pinkham, 52 Wis. 572; Price «&
Steuart, 497. The mere fact that a name used as trade-mark comes
into popular use in a descriptive sense does not invalidate its use as
a trade-mark. Selchow v. Baker, 93 N. Y. 59; Celluloid Mfg. Co. v.
Cellonite Mfg. Co., 32 Fed. Rep. 94; Lawrence Mfg. Co. v. Tennes-
see Mfg. Co., 138 U. S. 537-547; Burton v. Stratton, 12 Fed. Rep. 696.
^Manhattan Medicine Co. v. Wood, 108 U. S. 218; Lea v. Millar,
Seton {4th ed.), 242; Seb. 513.
••Robinson v. Finlay, and Ward v. Robinson, L. R. 9 Ch. D. 487.
9
130 LAW OF UNFAIR TRADE. [§60
"The Eureka Shirt." ^ The manufacturers of "Excelsior
White Soft Soap" sought to enjoin the makers of ' ' Bustard
& Co.'s Excelsior White Soft Soap," and upon the motion
it was held that their right to injunctive relief was not
affected by the fact that the defendants had never used
the word except in conjunction with their firm name.^
A manufacturer who uses his trade-mark in connection
with words indicating that his goods are the product of
another maker will lose his right to have the word used
as trade mark protected. This was held in a case where
"Eton" cigarettes were so put up as to suggest that
they were of foreign manufacture.^ But a manufacturer
who uses his trade-mark on goods prepared for the job-
bing trade, adding to or using therewith the name of the
jobber, does not lose his right to the protection of the
trade-mark, for, as said by Judge Colt: "In doing this
no real deceit was practiced upon the public, because the
purchaser obtained the same goods which he would have
purchased if the name of the jobber had not been upon
them. " * In one case it was argued by the defendants that
when the plaintiffs furnished their "Excelsior" stoves to
the trade and marked the dealers' names upon the stoves,
they thereby permitted the dealer to hold himself out to
the public as the manufacturer of the stoves. This was
not a successful defense, but the court stood upon the
fact that there was "nothing in connection with the
names of these dealers to indicate that they are the
iFord V. Foster, L. R. 7 Ch. D. 616; L. R. 7 Ch. D. 611; 41 L. J.
Ch. 682; 27 L.^T. N. S. 219; 20 W. R. 818; Seb. 384. The mere ad-
dition of a coat-of-arms to a trade-mark (as registered in England)
is not sufficient to disentitle the person using the mark to sue for an
injunction. Melachrino v. Melachrino Cigarette Co., 4 R. P. C. 215;
Cartmell, 223; Hammond v. Bruuker, 9 R. P. C. 301; Cartmell, 142.
2Braham v. Bustard, 1 H. & M. 447; 9 L. T. N. S. 199; 11 W. R.
1061; 2 N. R. 572; Seb. 226. The same defense was attempted where
"Cottolene" was the trade-mark and "Cottoleo, " with the defend-
ant's name, the alleged infringement. Defendant was enjoined.
N. K. Fairbank Co. v. Central Lard Co., 64 Fed. Rep. 133.
•'Wood V. Lambert, L. R. 32 Ch. D. 247.
<Pike Mfg. Co. v. Cleveland Stone Co., 35 Fed. Rep. 896-898.
§ 60] LOSS OF RIGHT TO TRADE-MARK'S USE. 131
manufacturers, and there is no evidence that any one ever
supposed they were the manufacturers.'"^
Advertisements published in the United States by a cor-
poration having the exclusive sale of certain Hungarian
mineral waters, to the effect that the name under which
the waters were sold had become a general name for all
similar waters, and that the corporation would thence-
forth distinguish the particular water sold by it by a
special trade-mark, were held to evidence an abandon-
ment of the original mark which was binding on the
owner of the wells.-
In the same case it was held that the failure of the
corporation to sue infringers of the label used in bottling
the water worked an abandonment of the trade-marks
used on the label as against the owner of the well.^
There may be a constructive abandonment of specific
features of a trade-mark, arising from a failure to enu-
merate such features in securing registration. If the reg-
istration shows a claim to a trade-mark "more limited
in its description than the owner's common-law rights
would otherwise be, the owner is bound by such limita-
tion as showing what he really claimed."^ Thus, in an
application for registration of a trade-mark, the failure
to claim the letter "s" as a part or feature thereof was
held to be an abandonment of that feature of the mark.^
iSheppard v. Stuart, 13 Phila. 117; Price & Steuart, 193.
2Saxlehner v. Eisner & Mendelson Co. (1), 88 Fed. Rep. 61; af-
firmed in Saxlehner v. Eisner & Mendelson Co. (2), 91 Fed. Rep. 536.
''Saxlehner v. Eisner & Mendelson Co. (2), 91 Fed. Rep. 536; over-
ruling- Saxlehner v. Eisner & Mendelson Co. (1), 88 Fed. Rep. 61.
■*Hawley, J., in Hennessy v. Braunschweiger & Co., 89 Fed. Rep.
664-668; citing Kohler Mfg. Co. v. Beeshore, 8 C. C. A. 215; 59 Fed.
Rep. 572; Richter v. Reynolds, 8 C. C. A. 220; 59 Fed. Rep. 577.
^Pittsburgh Crushed Steel Co. v. Diamond Steel Co., 85 Fed. Rep.
637.
CHAPTER VI.
GOOD-WILL.
§ 61 . Defined. — " Good-will is a modern but important
growth of the law, not mentioned by some of the early
writers, but given great prominence at the present time."^
Mr. Justice Story has defined good-will as "the advan-
tage or benefit which is acquired by an establishment be-
yond the mere value of the capital, stock, funds, or prop-
erty employed therein, in consequence of the general
public patronage and encouragement which it receives
from constant or habitual customers, on account of its
local position or common celebrity, or reputation for
skill or affluence, or punctuality, or from other acciden-
tal circumstances or necessities, or even from ancient
partialities or prejudices. "^
It would be very difficult, if indeed possible, to frame
a more accurate and comprehensive definition. This one,
as given, has been expressly and in hcec verba adopted by
the supreme court of the United States, Mr. Chief Justice
Puller prefacing his use of it by saying "there is diffi-
culty in deciding accurately what is included under the
term."^
§62. In particular cases. — "As applied to a news-
paper, the good-will usually attaches to its name rather
iVann, J., in People v. Roberts, 159 N. Y. 70-80; 53 N E. Rep.
685; 45 L. R. A, 126.
2 Story on Partnership, sec. 99.
^Metropolitan Bank v. St. Louis Dispatch Co., 149 U. S. 436-446.
"Good-will was defined by Lord Eldon in Cruttwell v. Lye, 17
Ves. 335-346, to be 'nothing more than the probability that the old
customers will resort to the old place; ' but Vice-Chancellor Wood, in
Churton v. Douglas, Johnson, V. C. 174-188, says it would be taking-
too narrow a view of what is there laid down by Lord Eldon to con-
fine it to that, but that it must mean every positive advantage that
has been acquired by the old firm in the progress of its business,
whether connected with the premises in which the business was pre-
viously carried on, or with the name of the late firm, or with any
1.32
§ 62] GOOD-WILL. 133
than to the place of publication. The probabilit}' of the
title continuing- to attract custom in the way of circula-
tion and advertising patronage, gives a value which may
be protected and disposed of and constitutes property. "^
Good-will is an appurtenant of every form of business
which relies directly upon public favor. We find in the
books cases in which the existence of a valuable good-
will is found as appurtenant to a wide range of mercan-
tile pursuits; as, for example, in the business of flour
and grain merchants,^ the manufacture of patent medi-
other matter carrying with it the benefit of the business. " Mr. Chief
Justice Fuller in Menendez v. Holt, 128 U. S, 514-522.
"The good-will of an established business, which is a common
subject of contract, is nothing but the chance of being able to keep
the business which has been established." Wallace, J., in Barber
V. Connecticut Mutual Life Ins. Co., 15 Fed. Rep. 312, 313.
"It is property of a very peculiar and exceptional character. It
is intangible property which, in the nature of things, can have no
existence apart from a business of some sort that has been estab-
lished and carried on at a particular place." Thayer, J., in Metro-
politan Bank v. St. Louis Dispatch Co., 36 Fed. Rep. 722-724.
"The good-will of a business comprises those advantages which
may inure to the purchaser from holding himself out to the public as
succeeding to an enterprise which has been identified in the past
with the name and repute of his predecessor." Wallace, J., in
Knoedler v. Boussod, 47 Fed. Rep. 465, 466. This definition was
approved on appeal. Knoedler v. Glaenzer, 55 Fed. Rep. 895-899.
"Good-will has been defined as '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.' There is nothing marvelous or mysterious
about it. When an individual or a firm or a corporation has gone on
for an unbroken series of years conducting a particular business,
and has been so scrupulous in fulfilling every obligation, so careful
in maintaining the standard of goods dealt in, so absolutely honest
and fair in all business dealings that customers of the concern have
become convinced that their experience in the future will be as satis-
factory as it has been in the past, while such customers' good report
^Metropolitan Bank v. St. Louis Dispatch Co., 149 U. S. 436-446;
affirming s. c, 36 Fed. Rep. 722. To the same effect see Porter v.
Gorman, 65 Ga. 11; Dayton v. Wilkes, 17 How. Pr. 510.
The good-will and name of a newspaper may attach to the print-
ing plant, so as to be vested in the lessee of the plant. Lane v.
Smythe, 46 N. J. Eq. 443-454.
-Menendez v. Holt, 128 U. S. 514-522.
134 LAW OF UNFAIR TRADE. [§62
cines/ and of ferro plates and picture frames,^ the busi-
ness of a stag-e-line,^ a livery-stable,^ a milk-route,-' a
drinking- saloon,'' or where the owners of the good- will
were bankers," bakers,^ glass-stainers,^ haberdashers, ^"^
glass-blowers," brewers, ^^ hardware dealers, ^^ tailors,^*
cheesemongers,^^ provision merchants,^** manufacturing
chemists,^' real estate and fire insurance agents, ^^ com-
of their own experience tends continually to bring new customers to
the same concern, there has been produced an element of value quite
as important — in some cases, perhaps, far more important — than
the plant or machinery with which the business is carried on. That
it is property is abundantly settled by authority, and, indeed, is not
disputed. That in some cases it may be very valuable property is
manifest." Lacombe, J., in Washburn v. National Wall Paper Co.,
81 Fed. Rep. 17-20.
"Good-will has been defined by this court to be 'the favor which
the management of a business wins from the public, and the proba-
bility that old customers will continue their patronage. ' " McGrath,
J., in Williams V. Farrand, 88 Mich. 473^77.
"There is considerable difficulty in defining accurately what is
included under this term good-will; it seems to be that species of con-
nection in trade which induces customers to deal with a particular
firm. It varies almost in every case, but it is a matter distinctly
appreciable which may be preserved (at least to some extent), if the
business be sold as a going concern, but which is wholly lost if the
concern is wound up, its liabilities discharged, and its assets got in
and distributed." Sir John Romilly, M. R., in Wedderburn v.
Wedderburn, 22 Beavan, 84-104.
iBrown Chemical Co. v. Meyer, 31 Fed. Rep. 453; S. c, 139 U.S. 540.
2 Dean v. Emerson, 102 Mass. 480.
"Pierce v. Fuller, 8 Mass. 228.
^Herbert v. Dupaty, 42 La. Ann. 343.
SMunsey v. Butter field, 133 Mass. 492.
^Howard v. Taylor, 90 Ala. 241.
^ Smith V. Everett, 27 Beavan, 446.
^Costello V. Eddy, 12 N. Y. Supp, 236.
9 Scott V. Rowland, 20 W. R. 508.
lORe Randall's Estate, 8 N. Y. Supp. 652.
"Featherstonhaugh v. Fenwick, 17 Ves. 298.
i2Hall V. Hall, 20 Beavan, 139.
'^Thompson v. Andrus, 73 Mich. 551.
'< Parsons v. Hay ward, 31 L. J. Ch. 666.
I' Hudson V. Osborne, 39 L. J. Ch. 79.
isScott V. Mackintosh, 1 V. & B. 503.
"Turner v. Major, 3 Giff. 442.
1^ Armstrong v. Bitner, 71 Md. 118.
§62] GOOD-WILL. 135
mission agents,^ mercers,"^ paper-makers,'^ pencil-makers,*
hotel or public-house keepers,'' whisky merchants,^
dyers, ^ dealers in works of art and artists' materials,^
dealers in boots and shoes,' tobacco brokers,^" hide deal-
ers,^'snuh makers,'-' upholsterers, ^'^ iron masters,^* dealers
in seeds, grains and plants, ^^ carriers,^* milliners;^^and as
we will see elsewhere, physicians, solicitors and attor-
neys may have a vendible good-will.
It is patent that a good-will may be created in con-
nection with any business, enterprise, occupation or pro-
fession. The older cases expressly denied the existence
of a good-will which could be the subject of sale, in con-
nection with the learned professions. Thus, Lord Chan-
cellor Chelmsford, as recently as 1858, said: "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. "^^
That there is good reasoning in this dictum cannot be
denied. In a case of later date, in Scotland, it was said
'Macdonald v. Richardson, 1 GiflF. 81.
2 Morris v. Moss, 25 L. J. Ch. 194.
'^Potter V. Commissioners of Inland Revenue, 10 Ex.147.
■•Banks v. Gibson, 34 Beavan, 566.
^Spratt V. Jefferj', 10 B. & C. 249; Lashus v. Chamberlain, 6 Utah,
385; Elliott's Appeal, 60 Pa. St. 161; Musselman & Clarkson's Ap-
peal, 62 Pa. St. 81.
«Kidd V. Johnson, 100 U. S. 617.
'Bryson v. Whitehead, 1 S. & S. 74.
^Knoedler v. Boussod, 47 Fed. Rep. 465; Knoedler v. Glaenzer,
55 Fed. Rep. 895.
9 Curtis V. Gokey, 68 N.Y. 300.
lODavies v. Hodgson, 25 Beavan, 177.
^1 Goodman v. Henderson, 58 Ga. 567.
1- Hammond v. Douglas, 5 Ves. 539.
^^Chissum v. Dewes, 5 Russ. 29.
"Hall V. Barrows, 4 DeG. J. & S. 150.
I"' Iowa Seed Co. v. Dorr, 70 la. 481.
i^Cruttwell V. Lye, 17 Ves. 335.
1" Shackle v. Baker, 14 Ves. 468.
i^Auten v. Boys, 2 DeGex & Jones, 626-636.
136 LAW OF UNFAIR TRADE. [§62
"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 differ-
ent in the case of a trade or manufacture, where the em-
ployer may have the possession of patents or trade
secrets, or may, by long exercise of his trade or manufac-
ture 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 individ-
ual skill of the employer, but the reputation which his
establishment has acquired, which creates that incor-
poreal, 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 de-
pend for success upon his own exertions. It is quite true
that such businesses are occasionally sold; but what is
thus sold in case of a living professional man retiring
from business is truly the personal recommendation which
the seller gives to his former clients or patients in favor
of his successor, coupled with the predecessor's own re-
tirement from business. But where the physician or law
agent is dead, nothing of the kind can take place. He
has been removed by death from all possibility of com-
peting with the new doctor or the new solicitor, and his
voice being forever silenced, he cannot give any recom-
mendation to his clients or patients."^
^Lord Curriehill in Bain v. Munro, 15 Scot. L. Rep. 260. It has
been held that the g-ood-will of an attorney was not a subject of ad-
ministration. Spice V. James, Seb. 46; Arundell v. Bell, 52 L. J.
Ch. 537.
In an early case, however, it was held that a contract entered into
by a practicing attorney to relinquish practice, recommend his cli-
ents to his successor, that he would not practice within certain lim-
its, and would permit the use of his name in the firm name of his
successor for a certain period, was gfood in law. (1803) Bunn v.
Guy, 4 East, 190. And in a similar case, where a solicitor sold his
practice and agreed not to practice in Great Britain for twenty
years, Lord Laugdale held the contract valid and binding on the
vendor, and he was enjoined from attempting to resume his practice
§63] GOOD- WILL. 137
While the courts have, for the reasons stated, looked
with disfavor upon executory contracts for the sale of
the good-will of a professional man's practice, and have
refused to decree specific performance under such con-
tracts,^ still when the sale is complete and the contract
partly executed, its terms will be enforced.'^ Thus where
a solicitor retired, permitting- his partner to continue the
use of the firm name, in consideration of an annuity to
be paid him, and the continuing partner defaulted in the
payment of the annuity, the contract was specifically en-
forced.''
In the United States there have been frequent instances
of the sale of the good-will of a medical practitioner, and
contracts for such sales have been uniformly held good.*
§63. As a subject of sale.— "The good-will of a
trade is a subject of value and price. It may be sold,
in Great Britain during- the specified time. (1841) Whittaker v.
Howe, 3 Beavan, 383.
But the courts have refused to decree specific performance of a con-
tract for the sale of an attorney's practice. Bozon v. Farlow, 1 Mer.
459; Seb. 22; Thornbury v. Bevill, 1 Y, & C. Ch. 554; 6 Jur. 407;
Seb. 71.
And where a member of a firm of surgeons died, it was held that
the survivor could not be obliged to sell the good-will of the practice
for the joint benefit of himself and his deceased partner's estate,
Vice-Chancellor Leach remarking- that "such partnerships are very
different from commercial partnerships." Farr v. Pearce, 3 Madd.
74.
1 See last note.
2Hanna v. Andrews, 50 la. 462; Smalley v. Greene, 52 la. 241.
SAubin v. Holt, 2 K. & J. 66.
* Webster v. Williams, 62 Ark. 101; 34 S.W.Rep 537; Bradbury v.Bar-
den, 35 Conn. 577; Martin v. Murphy, 129 Ind. 464; Pickett v. Green,
120 Ind. 584; Hoyt v. Holly, 39 Conn. 326; Gilmanv. Dwig-ht, 13 Gray,
356; Dwiffht v. Hamilton, 113 Mass. 175; Warfield v. Booth, 33 Md.
63; Miller v. Keeler, 9 Pa. Co. Ct. R. 274; Butler v. Burleson, 16
Vt. 176. But, to the contrary, see Mandeville v. Harman, 42 N. J.
Eq. 185. In this case the covenant was as follows: "In considera-
tion of this contract, made with him by the said Mandeville, the said
Harman hereby covenants and agrees not to engage in the practice
of medicine or surgery in the city of Newark at any time hereafter."
The court held that the law was unsettled as to whether such a con-
tract was or was not void as in restraint of trade, and therefore
denied the preliminary injunction sought for.
138 LAW OF UNFAIR TRADE. [§63
bequeathed, or become assets in the hands of the per-
sonal representative of a trader."^
It may be of greater value than the stock of goods or
plant of machinery with which the business is carried
on, 2 or it may attach to the mere name of a publication
and have a definite value apart from and in no wise de-
pendent upon any tangible property.^
It cannot be sold apart from the business with which
it is connected.* It may be given, together with the busi-
ness with which it is connected, in payment for stock in
a corporation, so that stock issued solely for such good-
will will, to the extent of its value, be issued for "prop-
erty actually received " within the meaning of section 42
of the stock corporation law of the state of New York.^
The good-will of a domestic corporation is property which
is taxable as part of its capital stock." That of a for-
eign corporation is liable to taxation "at the place where
it has a market value."'
It must be remembered that the trade-marks and the
good-will of a business are inseparable. We have seen
elsewhere that a trade-mark can have no existence in
gross. It is strictly appurtenant to the good-will of the
business in which it is used.^ And so it has been said of
good- will that "while it is not necessarily local, it is
usually to a great extent, and must of necessity, be inci-
dent to a place, an established business, or a name known
to the trade."'"'
JTindal, C. J., in Hitchcock v. Coker, 6 Ad. & E. 428-454.
2Vv'ashburn v. National Wall Paper Co., 81 Fed. Rep. 17-20.
•'Metropolitan Bank v. St. Louis Dispatch Co., 149 U. S. 436-446;
Boon V. Moss, 70 N. Y. 465.
•* Robertson v. Quiddington, 28 Beavan, 529.
•nVashburn v. National Wall Paper Co., 81 Fed. Rep. 17.
« Matter of Hondayer, 150 N. Y. 37.
^People V. Roberts, 159 N. Y. 70; 53 N. E. Rep. 685.
^"As an abstract right, apart from the article manufactured, a
trade-mark cannot be sold, the reason being that such transfer would
be a fraud upon the public." Colt, J., in Morgan v. Rogers, 19 Fed.
Rep. 596. And to same effect, Witthaus v. Braun, 44 Md. 303; Hoxie
V. Chaney, 143 Mass. 592; Russia Cement Co. v. LePage, 147 Mass. 206.
yVann, J., in People v. Roberts, 159 N. Y. 70-83; 53 N. E. Rep.
685; 45 L. R. A. 126.
§63] GOOD-WILL. 139
In a conveyance of ^ood-will, however, apt words
should be employed. Thus it has been held that the
good-will was not covered by a clause in a contract of
partnership relating- to the partnership "property, credits
and effects," or "stock in trade and effects."^ And a sim-
ilar holding has been made in regard to the words "prem-
ises, stock in trade, etc.,"''^ as well as where the words
"estate and effects" were used in partnership articles,^
On the other hand. Lord Westbury construed the words,
"stock belonging to the partnership," to include the
good-will,^ and other eminent judges have held good-will
to be included in the words "moneys, stock in trade,
debts, effects and things,"^ and "property and effects,"®
while Vice-Chancellor Malins said: "The sale of a busi-
ness is a sale of the good-will. It is not necessary that
the word 'good-will ' should be mentioned. . . . In the
sale of a business a trade-mark passes, whether specially
mentioned or not." He accordingly held that good-will
was included in an assignment that conveyed all the as-
signor's interest in the partnership premises and effects,
without specifically referring to the good-will.^ In a suit
for the specific performance of a contract for the pur-
chase of a share in a business, in which the expression
"good- will, etc." was employed. Lord Romilly was of
opinion that "these words are connected together, and
unite such other things as are necessarily connected with
and belong to the good-will, many of which are easily
pointed out; for instance, the use of trade-marks. . . .
All these would be included in the words et cetera, and
would be included in the conveyance. "**
iHall V. Hall, 20 Beavan, 139.
^Burfield v. Rouch, 31 Beavan, 241.
^Steuart v. Gladstone, L. R. 10 Ch. D. 646.
•»Hall V. Barrows, 4 DeG. J. & S. 150.
•'Rolt V. Bulmer, Seb. 614.
«Re3'nolds v. Bullock, 47 L. J. Ch. 773.
' Shipwright v. Clements, 19 W. R. 599. But a mortgage of the
entire assets of a business does not necessarily include the good-will.
Santa Fe Electric Co. v. Hitchcock (New Mex.), 50 Pac. Rep. 332.
'^Cooper V. Hood, 26 Beavan, 293.
140 LAW OF UNFAIR TRADE. [§63
In this connection it is to be noted that there are two
g:eneral classes of good- will — general and local. The
distinction is well-drawn in an English case, as follows:
"In some classes of business, when the trade has long
been carried on in a profitable manner in a particular
house, and a new tenant comes in and continues to carry
on the same business there, it is found by experience
that many, if not all, of the customers resort there as
before. This is found so regularly to happen that it has
become usual to pay a money value for it, which is com-
monly called 'good-will.' It may be that there may be
a species of good-will which may be the subject of bar-
gain and sale, although not dependent on the business
being carried on in any particular place; for instance, in
the case of what are called 'quack-medicines.' But when
we come to speak of the good-will of a public-house, it
is obvious that it is a thing which is attached to a local-
ity."^ In accordance with this rule, whenever the good-
will is local, in the sense of being attached to a partic-
ular house or store, it will pass with a sale of the lease
of the trading premises,^ or the sale of a public house, ^
or even a tailoring establishment.^
While the unity existing between good-will and trade-
marks is clearly defined, the subject of trade-names or
firm-names in their relation to good-will is attended with
some difficulty. The general rule has been well stated
by Vice-Chancellor Wood, as follows: "The name of a
firm is a very important part of the good-will of the
business carried on by the firm. A person says: 'I have
always bought good articles at such a house of business;
I know it by that name, and I send to the house of busi-
ness identified by that name for that purpose. ' There are
cases every day in this court with reference to the use
1 Llewellyn v. Rutherford, L. R. 10 C. P. 456.
2Daugherty v. Van Nostrand, 1 Hoff. Ch. (N. Y.) 68; Williams
V. Wilson, 4 Sandf. Ch. 379.
3 Ex piirte Punnett, L. R. 16 Ch. D. 226; Elliott's Appeal, 60 Pa.
St. 161.
^Parsons v. Hay ward, 31 Beavan, 199; Chittenden v. Witbeck,
50 Mich. 401-421.
§63] GOOD-WILL. 141
of the name of a particular firm, connected generally,
no doubt, with the question of trade-mark. But the
question of trade-mark is in fact the same question. The
firm stamps its name on the articles. It stamps the
name of the firm which is carryinjj on the business on
each article, as a proof that they emanate from the firm;
and it becomes the known firm to which applications are
made, just as much as when a man enters a shop in a
particular locality. And when you are parting with the
good-will of a business, you mean to part with all that
good disposition which customers entertain towards the
house of business identified by the particular name or
firm, and which may induce them to continue giving their
custom to it. You cannot put it anything short of that.
That the name is an important part of the good-will of a
bu.siness is obvious, when we consider that there are at
this moment large banking firms, and brewing firms, and
others, in this metropolis, which do not contain a single
member of the individual name exposed in the firm."^
This dictum, however, is flatly opposed to the rulings of
the American courts, that the sale of the good- will of a
business carries with it no right to the use of the vendor's
name as the name of the establishment,'- although the
purchaser may properly advertise himself as being "suc-
cessor to" his vendor.^ And the later English cases indi-
cate that the rule has been somew^hat modified in England,
Justice Stirling saying, "the defendant is entitled to use
the plaintiff's name in the business so long and so far as
he does not by so doing expose him to any liability, but
no further."* The American courts have very properly
gone to the length of holding that, upon the withdrawal
of a partner, the remaining partners will be enjoined from
continuing the use of a firm name which indicates that the
withdrawing partner is still a member of the firm.'^
'Churtonv. Douglas, Johns. 174.
^Knoedler v. Glaenzer, 55 Fed. Rep. 895; Reeves v. Denicke, 12
Abb. Pr. N. S. 92.
''Knoedler v. Glaenzer, 55 Fed. Rep. 895; Weed v. Peterson, 12 Abb.
Pr. N. S. 178.
<Thynne v. Shove, L. R. (1890) 45 Ch. D. 577-582.
•■'McGowan v. McGowan, 22 Ohio St. 370.
142 LAW OF UNFAIR TRADE. [§64
ij 64. Rights of vendor.— The vendor of the good will
of a business may, in the absence of any agreement to the
contrary, re-engage in a similar business in some other
place. ^ As said by Chief Justice Bigelow in the supreme
court of Massachusetts: "Whenever such is the intent
of the parties, it is carried into effect by an express stipu-
lation, which, if not in undue restraint of trade, may be
valid and binding. But we know of no case where any
such agreement has been raised by mere implication,
arising from the sale of the good-will of a person's
trade, in connection with a particular place of business
where it has been carried on."^
An English writer has said, "As the decisions at pres-
ent stand, the title to this section is to some extent mis-
leading, inasmuch as the legal position of the assignor
of a business, after he has parted with it, is in no way
different from that of any other member of the public,
provided, of course, that he has not bound himself by ad-
ditional restrictive covenants."^ Even in the absence of
express stipulation, good faith requires of a party who
has sold the good-will of his business that he should do
nothing which tends to deprive the purchaser of its
benefits and adva.ntages. It is clear that he has no right
to hold himself out as continuing the business which he
sold to the plaintiff, or as carrying on his former busi-
ness at another place to which he has removed.'' In
other words, in every case of the sale of a good-will the
vendor must not enter into an unfair competition with
his purchaser. What will constitute such unfair compe-
tition must be determined in the light of all the facts in
each particular case.
iHoxie V. Chaney, 143 Mass. 592-596; Treg-o v. Hunt, 65 L. J. Ch. 1.
^Bassettv. Percival, 5 Allen, 345-347; Porter v. Gorman, 65 Ga.
11; Knoedler v. Boussod, 47 Fed. Rep. 465; Knoedler v. Glaenzer,
55 Fed. Rep. 895; Bergamini v. Bastian, 35 La. Ann. 60; 48 Am. Rep.
216; White v. Jones, 1 Abb. Pr. N. S. 337; Howe v. Searing", 6
Bosw. 354; Cruttwell v. Lye, 17 Ves. 344; Dayton v. Wilkes, 17 How.
Pr. 516; Hanna v. Andrews, 50 la. 462; Cottrell v. Babcock Mfg. Co..,
54 Conn. 138.
"Allan on Good-will, p. 32.
<Hoxie V. Chaney, 143 Mass. 592-597.
§64] GOOD-WILL. 143
The vendor is at liberty to lease or sell other prop-
erty he may own in the neighborhood, to another person
who may carry on the same business, provided there is
no collusion, and the lessor has no interest in the busi-
1
ness
A verbal agreement not to engage in a rival business
does not come within the statute of frauds. It may be
valid when made as collateral to and distinct from a
lease of premises, provided the parol agreement is made
in consideration of the execution of the written lease. -
But in an action at law upon a contract of sale, such col-
lateral parol agreement cannot be shown or recovered on.'
A contract not to re-engage in business must, like any
other contract, be founded on a sufficient consideration
or it will not be enforced.* And the plaintiff in an ac-
tion upon such a contract must not be guilty of any
breach on his part, or he will be denied relief in equity. ^
Furthermore, the contract must not be void as against
public policy because in restraint of trade. The courts
of late years have relaxed the old rules so that the re-
strictive covenant may be unlimited as to area. "It
cannot be said that the early doctrine that contracts in
general restraint of trade are void, without regard to
circumstances, has been abrogated. But it is manifest
that it has been much weakened, and that the founda-
tion upon which it was originally placed has, to a con-
siderable extent at least, by the change of circumstances,
been removed. ■■^■'
In the absence of a covenant not to re-engage in busi-
ness, the vendor may employ any method of soliciting
1 Bradford v. Peckham, 9 R. I. 250-253; Herbert v. Dupaty, 42 La.
Ann. 343.
2Welz V. Rhodius, 87 Ind. 1; Spier v. Lambdin, 45 G a. 319.
sCostello V. Eddy, 12 N. Y. Supp. 236; Herbert v. Dupaty, 42 La.
Ann. 343.
^Onondaga Co. Milk Association v. Wall, 17 Hun, 494.
^Cassidy v. Metcalf, 1 Mo. App. 593-601; S. c, 66 Mo. 519; Hollis
V. Shaffer, 38 Kas. 492.
« Andrews, J., in Diamond Match Co. v. Roeber, 106 N. Y. 473-484..
The cases are reviewed at length in this opinion.
144 LAW OF UNFAIR TRADE. [§64
trade which does not involve a false or fraudulent repre-
sentation.^ But the English rule is that he cannot so-
licit former customers. ^ A covenant not to re-engage
in business will not be implied from the vendor's cove-
nant in the bill of sale "to warrant and defend the sale
of the said property and interest, as herein stated."^
The good-will of the business of a decedent does not
carry with it the right to use the decedent's name.* Such
good-will is an asset to be accounted for by the personal
representative, and if that representative takes charge
of the business and conducts it as his own he is charge-
able with the value of the good-will.^
Equity looks with disfavor upon any method of divert-
ing from the purchaser of a good-will the benefits which
ought to come to him by reason of his purchase. Thus,
where partners sold out their interest in the good-will of
a partnership known as the Kalamazoo Wagon Company,
and then organized a corporation under the name of
Kalamazoo Buggy Company, they were enjoined, at the
suit of their vendee, from the use of that name; and the
court held that the writ of injunction properly ran against
all persons connected with the corporation.^
iCottrell V. Babcock, 54 Conn. 122; Vonderbank v. Schmitt, 44 La.
Ann. 264; Marcus Ward & Co. v. Ward, 40 N. Y. State Rep. 792;
Knoedler v. Boussod, 47 Fed. Rep. 465; Close v. Flesher, 59 N. Y.
State Rep. 283; Knoedler v. Glaenzer, 55 Fed. Rep. 895.
2Tregov. Hunt, 65 L. J. Ch. 1; L. R. (1896) A. C. 7; 12 Eng. Rul-
ing Cas. 442.
•■^Costellov. Eddy, 12 N. Y. Supp. 236. Agreements upon dissolu-
tion are construed by the same rules as other contracts, with a view
of ascertaining the actual intent in the minds of the parties. Thus
in a covenant which read "the said Rivers covenants that he will not
engage in the manufacture of furniture so long as said Bagby con-
tinue such business," it was held that Bagby 's conveyance of the
business to a corporation was a discontinuance of the business by
him, and Rivers was entitled to resume the furniture business if he
saw fit. Bagby & Rivers Co. v. Rivers, 87 Md. 400; 40 L. R. A. 632.
^Morgan v. Schuyler, 79 N. Y. 490; Re Randall's Estate, 8 N. Y.
Supp. 652-654.
■'Re Randall's Estate, 8 N. Y. Supp. 652.
"Myers v. Kalamazoo Buggy Co., 54 Mich. 215; Brass & Iron Works
Co. v. Payne, 50 Ohio St. 115; 19 L. R. A. 82.
§64] GOOD-WILL. 145
In another case one Thomson was a partner of his
brother, in Europe, and a partner of other persons in a
separate establishment in New York. Both hou.ses were
dealing in "Thomson's Glove-fitting" corsets. Thomson
sold out his interest in the New York house and after-
ward attempted to sell the corsets made by him in Europe,
in the United States. He was enjoined from so doing,
the court holding that, when he assigned his interest in
the good-will of the New York partnership, the good-will
carried with it all his right to use the trade-mark "Thom-
son's Glove-fitting" in the United States.^
In a sale of a physician's practice, where the vendor,
after three months, returned to the same city and opened
an office fifteen rods away from, in the nearest house but
one to, his former olfice, the supreme court of Massachu-
setts held his conduct to be a breach of an implied cove-
nant "that the vendor will not himself do anything to
disturb or injure the vendee in the enjoyment of that
which he has purchased. '"'-
When an article of manufacture has had the manufac-
turer's name applied to it, and he sells his business,
good-will and "confers the authority to use his name,"
so applied, to his vendee, he will be enjoined from again
engaging in a similar business under his own name.^
A covenant by the vendor not to re-engage in business
may not specify the territory in which he is precluded
from doing business. If from all the circumstances of
iBatchellor v. Thomson, 86 Fed. Rep. 630.
2Endicott, J., in Dwight v. Hamilton, 113 Mass. 175-177. Where
the vendor re-engaged in the same (a mercantile) business in the
same vicinity, a bill in equity brought by him to reform the contract
of sale was dismissed on the ground that he had not done equity.
Cassidy v. Metcalf, 1 Mo. App. 593-601. This decision was reversed
by the supreme court of Missouri, but that court agreed with the St.
Louis court of appeals in holding that "the plaintiff's conduct was
not characterized by that good faith with which a party should
always approach a court of equity when asking its assistance."
Cassidy v. Metcalf, 65 Mo. 519.
^Frazer v. Frazer Lubricator Co., 121 111. 147; Ayer v. Hall, 3
Brewst. 509; Filkins v. Blackman, 13 Blatch. 440; Probasco v. Bou-
j'on, 1 Mo. App. 241.
10
146 LAW OF UNFAIR TRADE. [§64
the case it appears that it was the intention of the par-
ties to limit that territory to a town, county or state, the
contract will be so construed, and the vendor will be en-
joined from continuing or re-entering business in the ter-
ritory so fixed. ^
A vendor of a good-will may not do indirectly what he
is forbidden, by the terms of his contract, from doing
directly. So if he form a corporation to carry on his
business, and the other incorporators have knowledge
of his contract, the corporation will be enjoined from
conducting business with or for the vendor. ^ If he re-
engages in business under the pretense of acting as a
broker or commission agent only, the same rule applies
and he will be enjoined.^ And again, the rule applies
where the defendant re-engages in the prohibited busi-
ness as the salaried employee of a third person, and he
will be enjoined.* In a case where the vendor covenanted
to make the good-will as valuable as he could, Lord
Eldon held that the vendee was not bound to take the
actual profit made, but that he would "have an action of
covenant, if he can establish his title to more through the
default of the vendor.""^
Where a limit of time is fixed in the covenant against
re-engaging in business, the vendor may re-engage in the
business upon the expiration of the time. But where the
covenant was made jointly with a conveyance of the ven-
dor's good-will, he was restrained after he re-engaged in
business from making personal solicitation of his former
customers and using extracts from their books in relation
to the business."
1 Hubbard v. Miller, 27 Mich. 15.
2Beal V. Chase, 31 Mich. 490.
3 Richardson v. Peacock, 33 N J. Eq. 597.
■» Finger v. Hahn, 42 N. J. Eq. 606.
•5 Scott V. Mackintosh, 1 V. & B. 503. As a matter of course such a
covenant will not be created by implication. Where the vendor con-
veyed the good-will of a school, it was held that the sale did not bind
him by implication to exert his efforts thereafter to secure the attend-
ance of pupils. McCord v. Williams, 96 Pa. St. 78.
"Armstrong v. Bitner, 71 Md. 118-127.
§65] GOOD-WILL. 147
§66. Partnership good-will.— Disputes as to good-
will arise most frequently between partners. The vari-
ous text-writers who have treated the law of jjartner-
ship have dwelt at leng-th upon the principles of the law
of good-will which are applicable in this connection, .so
that for the purpose of this book a brief glance at the
leading principles will suffice.
As we have seen elsewhere, every man has the right to
use his own name in business so long as he does not use
it in such a way as to establish an unfair competition.
The use of the name of a withdrawing partner, as part
of the firm name, in such a way as to expose him to
liability or to the possibility of being sued, will be en-
joined at his suit.^ The better rule would seem to be
that in the absence of express agreement the firm name
will not pass to one who purchases the assets of a part-
nership.^
When one partner has been expelled from the partner-
ship because of his violation of its articles, he will not,
in the absence of contract binding him not to re-engage
in the business, be enjoined from doing similar business
in his own name, and soliciting patronage from custom-
ers of the old firm.=^ A surving partner who has the
right to use the firm name may enjoin his deceased part-
iMcGowan v. McGowan, 22 Ohio St. 370; Peterson v. Humphrej-,
4 Abb. Pr. 394.
2 Williams V. Farrand, 88 Mich. 473; Horton Mfg. Co. v. Horton Mfg.
Co. , 18 Fed. Rep. 816. This rule is not yet clearly established. Thus
the supreme court of Ohio says: "Upon the dissolution of a trad-
ing copartnership its assets, including the good-will of the business,
may be sold as a whole, either by the partners directly, or through
a receiver under an order made by a court in a case to which they
are parties; and that a purchaser thereof under either method of
sale is entitled to continue the business as the successor of the firm,
and make use of the firm name for that purpose. And further, that
when the purchaser transfers the property so acquired by him to
a corporation of which he is a member, organized to succeed to the
business, it may carry on the business in the same manner under a
corporate name including the name which had been used by the
firm." Williams, J., in Snyder Mfg. Co. v. Snyder, 54 Ohio St.
86-96; citing Brass & Iron Works v. Payne, 50 Ohio St. 115.
s Dawson v. Beeson, L. R. 24 Ch. D. 504.
148 LAW OF UNFAIR TRADE. [ § (>5
ner's executor from using the firm name for his own bene-
fit.i
Upon the appointment of a receiver for the firm assets,
either member of the firm will be enjoined from so using-
his own name as to mislead the public into the belief
that he has acquired the good-will, since such injunction
is necessary to the preservation of the good-will as part
of the firm assets. ^
A retiring partner who has sold the other the firm
property, without making mention of the good-will, will
be granted an injunction against any use of the firm name
by the continuing partner which would give the public
reason to believe he was still a member of the firm, to
the injury of his new business.^
Upon the dissolution of a partnership the partner who
retains the use of the old premises may lawfully advertise
the premises as being "formerly occupied by" the old
firm, and either partner may advertise himself as being
"formerly of" or "late of " the firm, using words that
convey only the facts and have no tendency to deceive
or mislead the firm's customers or the public generally.*
Where the retiring partner permits the old firm name
(of which his name is a part) to be used, and makes no
publication of the fact of his retirement, he is estopped
from denying the copartnership, as against a creditor of
the continuing partner, who has extended credit on the
belief that he is still a member of the firm.^
Upon administration of a partnership estate, the good-
will should be included in the appraisement of the part-
nership assets, and if the surviving partner appropriates
1 Lewis V. Langdon, 7 Sim. 422.
2Bininger v. Clark, 60 Barb. 113. Where a retiring partner stipu-
lated that the continuing partner might continue the use of his name
in the style of the firm, it has been held that the assignment of the
right to use the name is personal and cannot be transferred by the
continuing partner to another. Horton Mfg. Co. v. Horton Mfg. Co.,
18 Fed. Rep. 817; Bagby & Rivers Co. v. Rivers, 87 Md. 400; 40
L. R. A. 632.
■'McGowan v. McGowan, 22 Ohio St. 370.
4 Morgan v. Schuyler, 79 N, Y. 490.
^Backus V. Taylor, 84 Ind. 503; Richards v. Hunt, 65 Ga. 342.
§66] GOOD-WILL. 149
it to his own use by continuing the partnership business,
he may be compelled to account for its value to the estate
of the deceased partner.^
Where a partner came into a partnership for a fixed
period, agreeing "to carry on business with the defend-
ants for one year, and then to leave it in their hands,"
he was held to have acquired thereby no interest in the
good-will of the business.''
;^ 66. Remedies. — The purchaser of a good-will whose
enjoyment of it is interfered with may have his remedy
either at law or in equity. These remedies are adminis-
tered on the same general principles which apply to
other cases of unfair competition, and which are dis-
cussed elsewhere in this book.
The jurisdiction of equity in this class of cases is predi-
cated upon the fact that the injury is continuous, that its
further operation can only be restrained by the exercise
of the injunctive power of the chancellor, and that dam-
ages at law afford no adequate compensation for the in-
jury.
If, however, the plaintiff resorts to an action at law,
the measure of his damages is well defined by the supreme
court of Missouri: "If plaintiffs lost less than the de-
fendant made, they cannot recover the whole of de-
fendant's profits; if plaintiffs lost more than the defend-
ant made, they would not be limited to defendant's
profits. What the plaintiffs have lost by the defendant's
breach of covenant, and not what the defendant has
gained thereby, is the legal measure of damages in this
case."^
iRammelsberg v. Mitchell, 29 Ohio St. 22.
2VanDyke v. Jackson, 1 E. D. Smith (N. Y.),419; Duden v. Maloy,
63 Fed. Rep. 183; 11 C. C. A. 119. In the latter case the partnership
articles provided that the incoming partner's interest should be as-
certained annually, and further provided for the sale of his interest
to his partner on dissolution at the price ascertained in determining
his share. The court held that this disposed of his propertj' in the
good-will.
"Hough, J., in Peltz v. Eichele, 62 Mo. 171-180. And to the same
effect see Burckhardt v. Burckhardt, 36 Ohio St. 261,
150 LAW OF UNFAIR TRADE. [§66
The parties to a contract for the sale of a good-will
may provide in the contract for a fixed amount of dam-
ages. In the absence of fraud, the sum so fixed will be
adopted as the measure of damages by the court. ^ Where
the parties have so agreed upon the amount of damages,
the vendee, in case of a breach of covenant, has an ade-
quate remedy at law, and injunction will not lie.^ The
remedy is for the recovery of the sum so fixed. ^
Where there are no damages stipulated, and no sub-
stantial injury is proven, the plaintiff is entitled only to
nominal damages. "The loss of profits, if there are data
from which the amount may be ascertained with reason-
able certainty, the diminution in value of the property
sold, all may be regarded as elements of the damages
which go to make up the measure of recovery."*
^Tode V. Gross, 127 N. Y. 480-487; Dakin v. Williams, 17 Wendell,
447; Bagley v. Peddie, 16 N. Y. 469; Wooster v. Kisch, 26 Hun, 61.
2 Martin v. Murphy, 129 Ind. 464-467. Unless the defendant is in-
solvent, which fact will make a case for injunctive relief. Pickett v.
Green, 120 Ind. 584.
The general doctrine that equity will not interfere to restrain a
person from doing an act which he has agreed not to do, when liqui-
dated damages have been provided in case he does the act, is sub-
ject to this qualification. "The question in every case is, what is
the real meaning of the contract? And if the substance of the agree-
ment is that the party shall not do a particular act, and that is the
evident object and purpose of the agreement, and it is provided that,
if there is a breach of this agreement, the party shall pay a stated
sum, which does not clearly appear to be an alternative which he
has the right to adopt instead of performing his contract, there would
seem to be no reason why a court of equity should not restrain him
from doing the act, and thus carry out the intention of the parties.
. . . In other words, naming a sum to be paid as liquidated dam-
ages does not in itself conclusively establish that the parties contem-
plated the right to do the act upon payment of the compensation, and
make an alternative agreement for the benefit of the party who has
done what he had agreed not to do." Endicott, J., in Ropes v. Up-
ton, 125 Mass. 258-261.
"Martin v. Murphy, 129 Ind. 464.
^Howard v. Taylor, 90 Ala. 241-244; Burckhardt v. Burckhardt, 47
Ohio St. 474; Mitchell v. Read, 84 N. Y. 556; Mellesch v. Keen, 28
Beavan, 453; Rawson v. Pratt, 91 Ind. 9; Lashusv. Chamberlain, 6
Utah, 385.
§66] GOOD-WILL. 151
For the greater part the remedies open to the owner
of a good-will whose rights are invaded are administered
by courts of equity. But injury to a good-will may be
effected in many various ways, for each of which an ap-
propriate remedy will be found either at law or in equity.
Thus where a defendant's good- will has been destroyed
by a wrongful attachment, he will be allowed compensa-
tion therefor in an action for damages against the attach-
ing creditor. 1
In an action at law a petition which alleges that
plaintiff has purchased defendant's business and good-
will, an agreement that the defendant was not to re-
engage in the same line of business for two years, and
that, in violation of his agreement, he has re-engaged in
the same line of business during such period, and thereby
damaged plaintiff, has been held good on demurrer.^
The action for damages for breach of contract involv-
ing good-will is governed by the general principles in-
volved in similar actions in trade-mark cases, which are
considered elsewhere in this book.
A contract for the sale of a business and good-will will
be rescinded if the vendor has falsely stated facts in re-
gard to the value of the good- will; as where he has rep-
resented that his receipts from the business were greater
than they actually had been,^ or that the premises sold
have brought a higher rental than they actually did.^
And the misrepresentation has been held to rescind the
contract where the misstatement was not made directly
to the vendee, but to a third party who communicated it,
with the vendor's knowledge, to the vendee.^ On the
other hand, the duty is imposed upon the vendee to act
at once upon learning the facts which justify a rescission.
Where he fails to do so he will be bound by his contract,
and his remedy lies in an action for damages.^
1 Miller v. Beck (Iowa), 72 N. W. Rep. 553.
2Erwin v. Hayden (Texas), 43 S. W. Rep. 610.
SDobell V. Stevens, 3 B. & C. 623.
^Lysney v. Selby, 2 Ld. Raym. 1118.
^Pilmore v. Hood, 5 Bing. N. C. 97.
«Dobell V. Stevens, 3 B. & C. 623.
152 LAW OF UNFAIR TRADE. [§66
Whenever the false representations amount to a war-
ranty, an action for damages will lie even in the absence
of proof of fraud. Otherwise the burden is upon the ven-
dee to show that the representation was fraudulently
made.^
Covenants against re-engaging in business may be spe-
cifically enforced, as we have seen, or the vendor may be
enjoined from their violation. It has been held in Eng-
land that with an action for specific performance a claim
for damages may be made as an alternative.'^
It has been held that a debtor's good-will cannot be
reached by a creditor's bill, because it is not subject to
levy in satisfaction of their debts. ^
The application for injunctive relief is governed by the
rules concerning similar applications in trade-mark cases.
A plaintiff need not allege or prove damages as a pre-
requisite to an injunction to restrain a defendant from
re-engaging in business, in breach of a covenant between
the parties.* When a vendee in applying for an injunc-
tion also asked judgment for the possession of the books
and papers used by the vendor in the business in which
it had engaged in violation of its covenant, the order was
refused because there was a remed}'- at law for their re-
covery.^
In cases where the vendor of a good-will is sought to
be restrained from re-engaging in business in violation
of his covenant, the amount in controversy is the value
of the good-will, and the federal courts cannot acquire
jurisdiction unless the value of the good-will exceeds
$2,000.« ■
^Redgrave v. Hurd, L. R. 20 Ch. D. 1.
2Hipgrave v. Case, L. R. 28 Ch. D. 356.
^Lilienthal v. Drucklieb, 84 Fed. Rep. 918.
^Anderson v. Rowland, 18 Tex. Civ. App. 460; 44 S. W. Rep. 911.
•^Lawrence v. Times Printing- Co., 90 Fed. Rep. 24-26.
^Lawrence v. Times Printing Co., 90 Fed. Rep. 24-28.
CHAPTER VII.
TRADE SECRETS; RIGHTS OF PRIVACY.
J^ 67. Introductory. — "A secret in trade is fully rec-
ognized as property in equity, the disclosure of which
will be restrained by injunction."^ A contract in refer-
ence to such a secret cannot be in restraint of trade,
"because the public has no rights in the secret."'-*
When the name applied to a secret preparation is a
trade-mark, no one but the owner of the mark can apply
it to the preparation. But if it be not a valid trade-mark,
then the manufacture of the secret preparation, and the
placing- of it upon the market under the same name, is
open to any one who can lawfully discover the secret pro-
cess.^ But "it is settled that a secret art is a legal
subject of property,"* and its owner has a vested right
to the secrecy of all those who occupy a fiduciary re-
lationship to his business. So that no one who obtains
^ Smith, p. J., in Champlin v. Stoddart, 30 Hun, 300-302.
^Morse Machine Co. v. Morse, 103 Mass. 73-75; Vickery v. Welsh,
19 Pick. 523-527.
■'Watkins v. Landon, 52 Minn. 389; 54 N.W. Rep. 193; Davis v. Ken-
dall, 2 R. I. 566; Siegert v. Findlater, L. R. 7 Ch. D. 801 ; Comstock v.
White, 18 How. Pr. 421; Condy v. Mitchell, 37 L. T. N. S. 268, 766;
James v. James, L. R. 13 Eq. 421; Canham v. Jones, 2 V. & B. 218.
"It may also be observed, in this connection, that the word 'prop-
erty,' as applied to trade secrets and inventions, has its limitations;
for it is undoubtedly true that when an article manufactured by some
secret process, which is not the subject of a patent, is thrown upon
the market, the whole world is at liberty to discover, if it can by any
fair means, what the process is, and, when discovery is thus made,
to employ it in the manufacture of similar articles. In such a case,
the inventor's or manufacturer's property in his process is gone; but
the authorities all hold that, while knowledge obtained in this
manner is perfectly legitimate, that which is obtained by any breach
of confidence cannot be sanctioned." Adams, J., in Eastman Co. v.
Reichenbach, 20 N. Y. Supp. 110-116; affirmed, 29 N. Y. Supp. 1143;
79 Hun, 188.
■•Gray, J., in Peabody v. Norfolk, 98 Mass. 452.
153
154 LAW OF UNFAIR TRADE. [§68
knowledge of the secret by fraud or unfair means will be
permitted to avail himself of the fruits of his fraud, by
disclosing the secret or manufacturing under it.^
§ 68. Where equity will not interfere. — "Courts of
equity will not interfere by injunction in disputes be-
tween the owners of quack medicines, meaning thereby
remedies or specifics whose composition is kept secret,
and which are sold to be used by the purchasers without
the advice of regular or licensed physicians. "^ And in
1817 Lord Eldon said: "I do not think that the court
ought to struggle to protect this sort of secrets in med-
icine."^
And, broadly stated, equity will not interfere to pre-
vent the disclosure of secrets by means of w^hich frauds
have been committed.*
Then there are limits to the extent of the injunction,
which will be suggested by the facts in each particular
case. For example, in one case which has been fre-
quently cited, the plaintiff was a tanner and manufacturer
of leather, owning secret processes in regard to the treat-
ment of leather. Two of his former employees were en-
joined, on his application, from disclosing any of his se-
cret processes, but, in the absence of any proof of an
express agreement of secrecy, the court refused that por-
tion of his prayer for relief which asked that the defend-
ants be enjoined from disclosing "where or from whom
the complainant buys his materials, and to whom he sells
his goods, or the prices at which he buys or sells;" the
chancellor remarking that an agreement in reference to
such matters "may well be regarded, in the absence of
anything to the contrary in its terms, as limited in its
obligation to the time of employment. . . . He (the
employee), notwithstanding such agreement, might him.
1 Salomon v. Hertz, 40 N. J. Eq. 400; Little v. Gallus, 38 N. Y
Supp. 487.
-Shiras, Circuit Justice, in Kohler Mfg. Co. v. Beeshore, 59 Fed.
Rep. 573-574.
^Williams v. Williams, 3 Mer. 157; Seb. 26.
^Follet V. JefFreyes, 1 Sim. N. S. 1; Gartside v. Outram, 3 Jur.
N. S. 39.
§69] TRADE SECRETS. 155
self, after leaving the employment, use the knowledge
he had obtained. He miglit sell to the customers of his
late employer, and buy of those from whom the latter
purchased, and do both in competition with him."^
§69. Relief in equity. — In one of the early cases in
which a property right in trade secrets was recognized,
the proceeding was one brought to enforce the specific
performance of a contract for the sale of the good-will
of a dyer's business, with the exclusive use of a secret
mode of dyeing. Vice-Chancellor Leach sustained the
contract and directed its specific performance. In the
course of his opinion he said: "Although the policy of the
law will not permit a general restraint of trade, yet a
trader may sell a secret of business and restrain himself
generally from using that secret. Let the master, in
settling the deed which is to give effect to this agree-
ment, introduce a general covenant to restrain the use of
the secret for twenty years, and a covenant, limited in
point of locality, as to carrying on the ordinary business
of a dyer, both parties being willing that the agreement
should be so modified."'^
As against employees who attempt to profit by secrets
of which they have obtained knowledge by reason of
their employment, the right to relief in equity has always
been recognized. In one of the early cases Lord Cran-
worth said: "There is no doubt whatever that where a
party who has a secret in trade employs persons under
contract, express or implied, or under duty, express or
implied, those persons cannot gain the knowledge of
that secret and then set it up against their employer."^
In order to obtain this relief it is not necessary that
the employee should have been bound to secrecy by con-
JRunyon, C, in Salomon v. Hertz, 40 N. J. Eq. 400.
2Bryson v. Whitehead, 1 S. & S. 74.
^Morison v. Moat, 21 L. J. Ch. 248; Ansell v. Gaubert, Seton (4th
ed.), 235; Peabodj' v. Norfolk, 98 Mass. 452; Weston v, Hemmons, 2
Vict. L. R. Eq. 121; Hagg v. Darley, 47 L. J. Ch. 567; Thum Co. v.
Tloczynski, 114 Mich. 149; 72 N. W. Rep. 140; Salomon v. Hertz, 40
N. J. Eq. 400; Eastman Co. v. Reichenbach, 20 N. Y. Supp. 110; 29
N. Y. Supp. 1143; 79 Hun, 188; Little v. Gallus, 38 N. Y. Supp. 487;
156 LAW OF UNFAIR TRADE. [§69
tract. In an opinion dealing with a case of this charac-
ter, Judge Williams said: "Having entered the service
of complainants, and having had imparted to him their
secrets, defendant was, in equity and good conscience,
obliged to preserve them as sacredly as his own, and
this as well without a contract as with it. " ^ And another
court has stated the rule as follows: "By a careful
reading of the various decisions upon this subject, it
will be seen that some are made to depend upon a breach
of an express contract between the parties, while others
proceed upon the theory that where a confidental rela-
tion exists between two or more parties engaged in a
business venture, the law raises an implied contract be-
tween them that the employee will not divulge any trade
secrets imparted to him, or discovered by him in the
course of his employment, and that a disclosure of such
secrets, thus acquired, is a breach of trust and a viola-
tion of good morals, to prevent which a court of equity
should intervene. "2
Where there is such a contract between employer and
employee, it is not objectionable as being in restraint of
trade'. ^
The obligation of secrecy extends to every character
of employment. Thus, canvassers who have accumu-
Fralich v. Despar, 165 Pa. St. 24; Merry weather v. Moore, L. R. (1892)
2 Ch. 518; Simmons Med. Co. v. Simmons, 81 Fed. Rep. 163,
The following contract was held valid and binding upon the de-
fendant in Fralich v. Despar, supra:
"I, Andrew Despar, of the city of Pittsburg, state of Pennsylva-
nia, in the emploj' of E. C. Fralich, a manufacturer of oils, etc., also
of the said city of Pittsburg, do solemnly swear that if the said
E. C. F. makes known to me the ways and secrets of manufacturing
and stilling of different kinds of oils, and of the different kinds of
grease manufactured by him, that I will not use such knowledge or
secrets for my own gain, nor will I ever, so long as I may live, di-
vulge or make known in any way the knowledge I may receive while
in his employ, or any part of said secret, either of mixing in oils or
otherwise. "
' Simmons Med. Co. v. Simmons, 81 Fed. Rep. 163-166.
^Adams, J., in Eastman Co. v. Reichenbach, 20 N.Y. Super. 110-116.
^Simmons Med. Co. v. Simmons, 81 Fed. Rep. 163; Peabody v. Nor-
folk, 98 Mass. 452.
§ 69 ] TRADE SECRETS. 157
lated materials in the course of soliciting advertisements
for their employer may be enjoined from usinfj such
material for a rival publication;^ and an eng-ine maker's
clerk who had made a table of dimensions of his em-
ployer's engines was enjoined from disclosing the data
so obtained, 2
The principles under consideration extend beyond the
relationship of master and servant. In fact, through-
out all of this book that relates to equitable remedies we
are but dealing with the application of those remedies
which has been made upon specific forms of fraud. The
cases analogous to trade secrets are many, and the lan-
guage of Vice-Chancellor Turner in the leading case of
Morrison v. Moat is applicable to all of them: "Different
grounds have been assigned for the exercise of the juris-
diction. In some cases it has been referred to property,
in others to contract, and in others, again, it has been
treated as founded upon trust or confidence, meaning, as
I conceive, that the court fastens the obligation on the
conscience of the party, and enforces it against him in
the same manner as it enforces, against a party to whom a
benefit is given, the obligation of performing a j)roraise,
on the faith of which the benefit has been conferred."^
So a photographer has been restrained from making
prints from a negative bearing the plaintiff's portrait;*
a lithographer, from making copies of the plaintiffs'
pictures in excess of the number ordered by the plaint-
iffs;^ and the exhibition of etchings, obtained by the
defendant through a breach of trust, has been restrained,^
as has the publication of lectures, not published or au-
thorized to be published by the lecturer,^ and the publi-
cation of private letters.^
'Lamb v. Evans, L. R. (1892; 3 Ch. 462.
^Merryweather v. Moore, L. R. (1892) 2 Ch. 522.
3Morison v. Moat, 20 L. J. Ch. 522.
* Pollard V. Photographic Co., 40 C. D. (Eng.) 345.
^Tuck & Sons v. Priester, 19 Q. B. D. 629.
« Albert v. Strange, 2 De G. & Sm. 652.
^Abernethy v. Hutchinson, 3 L. J. Ch. 214.
»Earl of Lytton v. Devey, 54 L. J. Ch. 293; Perceval v. Phipps, 2
Ves. & B. 19.
158 LAW OF UNFAIR TRADE. [§69
A peculiar state of facts developed in a recent case is
■worthy of notice. The plaintiff, a hardware dealer, had
published and distributed to the trade catalogues in
which the prices were marked in figures, letters and
characters, according to a secret code devised by plain-
tiff. The defendant, who owned a copy of the catalogue,
so marked with prices in secret characters, obtained a
copy of the key to the code from one of the plaintiff's em-
ployees, and incorporated the secret code from the key
into the catalogue. Upon this state of facts the defend-
ant was enjoined from disclosing the information thus
obtained, and a receiver was appointed to take charge
of the defendant's copy of the catalogue.^ This case ap-
pears to be in conflict with the English case of Reuter^s
Telegram Go. v. Byron, where the plaintiffs had devised a
cj^pher code containing cypher words indicating the
names of their customers. This cypher was communi-
cated to the defendant while he was in the employment
of the plaintiffs. After he left the plaintiffs and started
a rival business, he sent advertisements to their custom-
ers stating that he had their cyphers, and soliciting
their custom. The court held that the defendant was
guilty of no breach of trust because the cyphers were
known to the customers, and the defendant could have
obtained the cyphers from any of them who might choose
to do business with him.'-^ The decision of the American
court seems to be correct in principle.
In every case where the plaintiff seeks protection for
a trade secret, it must appear that it really is a secret.
If a so-called secret process is known to others in the
trade, no one will be enjoined from disclosing or using
it.^ But the fact that the secret has been the subject of
a patent, since expired, which remained a mere paper
patent, and dormant, does not negative the fact that it
is or may be still a secret. "Many an invention and
many an idea of value are doubtless to be found in the
J Simmons Hardware Co. v. Waibel (1 So. Dak.), 47 N.W. Rep. 814.
2 Renter's Telegram Co. v. Byron, 43 L. J. Ch. 661.
"Bell & Bogart Soap Co. v. Petrolia Mfg. Co., 54 N. Y. Supp. 663-
666; Bristol v. Equitable Life Assurance Society, 132 N. Y. 264.
§69] TRADE SECRETS. 159
records of the patent office, but so far as public actual
knowledge thereof is concerned, they might as well be
non-existent."^
Contracts relating to trade secrets are, of course, sub-
ject to the same rules of construction as other contracts.
So in a case where the defendant sold a formula for making
certain soap and "agreed to file and surrender his right
and claims in the process and formukii and making of
said soap," and that he "would not sell any plants in the
United States for the manufacture of (that particular
kind of) soap, during the term of twenty years," it was
very properly decided that the contract did not preclude
him from selling or putting up any other kind of a soap
plant to or for anybody else; and where he put up a soap
plant for making soaps in general, and the owner of the
plant then began the manufacture of the particular soap
in question, there was no cause of action either as against
him or the owners of the plant. ^
Employees may be enjoined from disclosing trade secrets
even in the absence of an express agreement of secrecy,
as we have seen, and it is no defense that the employee
was a minor at the time he entered the employment. '^
A defendant had agreed upon entering the employment
of the plaintiff as a workman, on a salary, to disclose
certain secret processes known only to him. He failed
to make the disclosure and left the plaintiff's employ-
ment. In defense to an application for an injunction re-
straining him from imparting the secret processes to
others, he urged that his employment had been for no
definite term. This defense did not avail in view of the
fact that the plaintiff had invested in matters it expected
to use in connection with the secret processes. The court
observed that "although the processes were not patented,
yet, as they were secret, and as their secrecy was pro-
tected by the contract between the defendant and the
plaintiff, the plaintiff is in a situation to insist that the
iShiras, J., in Benton v. Ward, 59 Fed. Rep. 411-413.
2 Bell & Bogart Soap Co. v. Petrol i a Mfg-. Co., 54 X. Y. Supp. 663.
3 Little V. Gallus, 38 N. Y. Supp. 487.
160 LAW OF UNFAIR TRADE. [§70
defendant, who agreed to protect the secrecy of these
processes, and thus preserve their value, should not be
permitted to disclose them, and thus deprive the plain-
tiff of the valuable property which he had induced it to
purchase."^
Where an employee of a partnership invents secret
processes for the use of the firm, either member of the
firm may after dissolution use the secret process, and
either member will, on the complaint of another member,
be enjoined from representing- himself as being the sole
owner of such secret process.'^
§ 70. The right of privacy.— The right of privacy is
among the most vague and indefinite elements of modern
equity jurisprudence. In its broadest sense it may be
defined to be the right of an individual, to injunctive pro-
tection against the unauthorized publication of a por-
trait or other purely personal matter relating to himself
or his relatives. The subject has been very thoughtfully
treated in some of the leading legal periodicals,^ but so
far it has received but little attention from the courts.
Where the existence of the doctrine has been admitted,
it has been given a construction so narrow as to deprive
it of any practical value. But the reported cases con-
tain much that is interesting, and the close relationship
between this subject and that of trade secrets warrants
giving here a brief resume of its treatment by the courts.
In 1892 this right was distinctly affirmed by the su-
preme court of New York in a case* in which an injunc-
tion issued against the execution and display at the Chi-
cago World's Fair of a statue of one Mrs. Schuyler, which
iRumsey, J., in National Gum & Mica Co. v. Braendly, 51 N. Y.
Supp. 93-97.
^Baldwin v. Von Micheroux, 25 N. Y. Supp. 857; affirmed, 83 Hun,
43; 31 N. Y. Supp. 857.
S"The Right of Privacy," 4 Harv. Law Rev. 193; and editorials in
32 Cent. L. J. 69; 40 Cent. L. J. 53; 49 Cent. L. J. 379; "Schuyler
V. Curtis, and the Right of Privacy," 36 Am. Law Reg. and Rev.
N. S. 745; "The Right to Injunction as a Means of Protecting Pri-
vacy," 7 Am. Lawyer, 558.
■t Schuyler v. Curtis, 19 N. Y. Supp. 264.
§ 70] TRADE SECRETS. 161
statue was to be designated "The Tj^pical Philanthro-
pist." The proceeding was brought h)y a relative of Mrs.
Schuyler, and the injunction issued against the members
of an unincorporated association under whose auspices
the display was to be made. The motion for injunction
pendente lite was granted upon the ground that Mrs.
Schuyler was not a public character because she had not
placed herself before the public, either in accepting pub-
lic office or in becoming a candidate for office, or as an
artiste or literateure. This order being appealed from,
Van Brunt, P. J., said: "While concurring with the con-
clusion arrived at by the learned justice below, I cannot
subscribe to the doctrine which seems to pervade the
opinion rendered upon the decision of the motion, that if
Mrs. Schuyler had been a public character, as defined by
him, this motion should have been denied. The claim
that a person who voluntarily places himself before the
public, either by accepting public office or becoming a
candidate for office, or as an artist or literar}^ man,
thereby surrenders his personality while living and his
memory when dead to the public, to be used or abused,
as any one of that irresponsible body may see fit, cannot
for a moment be entertained. . . It is urged ujjon
the part of the appellants that even if Mrs. Schuyler
were alive, and had the same objection to the defend-
ants' proposed action that the plaintiff now has, she
would be remediless and powerless. If such were the
fact, it would certainly be a blot upon our boasted sys-
tem of jurisprudence that the courts were powerless to
prevent the unwarranted doing of things by persons who
are mere volunteers, which would wound in the most
cruel manner the feelings of many a sensitive nature.
It is further urged that the plaintiff has no standing in
court and that the fancied injury to the plaintiff com-
plained of, if any such injury can be in any way discov-
ered, is certainly not such an injury as the court will
grant an injunction to prevent, because it is not an in-
jury to his person, to his estate, or to his good name,
and is not a violation of his privacy or seclusion, and
11
162 LAW OF UNFAIR TRADE. [§70
because the plaintiff stands in the same relation to the
defendants and to their project as does all the rest of
the world, and in no other relation. The result of this
claim is that when a person is dead there is no power in
any court to protect his memory, no matter how out-
rag^eously it may be insulted. The feelings of relatives
and friends may be outraged, and the memory of the de-
ceased degTaded with impunity, by any person who may
desire thus to affect the living. It seems to us that such
a proposition carries its own refutation with its state-
ment. It cannot be that by death all protection to the
reputation of the- dead and the feelings of the living, in
connection with the dead, has absolutely been lost. The
memory of the deceased belongs to the surviving rela-
tives and friends, and such relatives have a right to
see that that which would not have been permitted in
respect to the deceased when living shall not be done
with impunity when the subject has become incapable of
protecting himself. It is undoubtedly true that cases of
the character now before the court are not to be found in
the books. But it is probably the first time in the his-
tory of the world that the audacious claim which is here
presented has ever been advanced. If it had, we have
no doubt the books would have contained a record in
connection with the same. The fact that the plaintiff
has suffered no pecuniary damage, redress for which is
sought in this action, is no answer to the application,
because one of the most important departments in the
jurisprudence of courts of equity is the prevention of
wrongs which would be otherwise irreparable because
courts of law cannot afford any remedy in damages."^
Upon entering judgment in the same case, Ingraham,
J., calls attention to the fact that the action of the de-
fendants was not a libel nor within the provisions of the
New York constitution securing to each citizen the right
to freely speak, write and publish his sentiments on all
subjects.'^
^ Schuyler v. Curtis, 64 Hun, 594.
2 Schuyler v. Curtis, 24 N. Y. Supp. 509-511.
§70] TRADE SECRETS. 163
In a subsequent case (1893) the superior court of New
York city reaffirmed the doctrines of Schuyler v. Curtis in
the case of an actor whose portrait was to be published
in connection with that of another member of his profes-
sion as the subjects of a voting- contest to ascertain
which was the more popular, and such publication was
enjoined.^
In 1895 Schuyler v. Curtis reached the New York court
of appeals, and in an elaborate opinion delivered by
Judge Peckham the judgment of the lower court was re-
versed. In the course of his opinion, however, he says:
"For the purpose we have in view it is unnecessary to
wholly deny the existence of the right of privacy to which
the plaintiif appeals as the foundation of his cause of
action. It may be admitted that courts have power in
some cases to enjoin the doing of an act where the nature
or character of the act itself is well calculated to wound
the sensibilities of an individual, and where the doing of
the act is wholly unjustifiable, and is, in legal contem-
plation, a wrong, even though the existence of no 'prop-
erty,' as that term is generally used, is involved in the
subject."'^
Pending this appeal another New York court had held
that "a parent cannot maintain an action to enjoin the
unauthorized publication of the portrait of an infant
child, and for damages for injury to his sensibilities caused
by the invasion of his child's privacy, for the law takes
no cognizance of a sentimental injury, independent of a
wrong to person or property."^
The supreme court of Michigan in 1899 has held that it
had no jurisdiction to enjoin the use of the name and
likeness of a deceased person used upon a label applied
to a cigar named after him, so long as such publication
did not amount to a libel. At the conclusion of an ex-
haustive review of the cases, Hooker, J., said: "This 'law
1 Marks v. Jaffa, 26 N. Y. Supp. 908.
2 Schuyler v. Curtis, 42 N. E. Rep. 22-24; 147 N. Y. 434; 49 Am. St.
Rep. 671; 31 L. R. A. 286.
^Murray v. Engraving Co., 28 N. Y. Supp. 271.
164 LAW OF UNFAIR TRADE. [ § 70
of privacy' seems to have obtained a foothold at one
time in the history of our jurisprudence, not by that
name, it is true, but in effect. It is evidenced by the
old maxim, the greater the truth the greater the libel ;
and the result has been the emphatic expression of
public disapproval, by the emancipation of the press
and the establishment of freedom of speech, and the
abolition in most of our states of the maxim quoted, by
constitutional provisions."
"The limitation upon the exercise of these rights being
the law of slander and libel, whereby the publication of
an untruth that can be presumed or shown to the satis-
faction, not of the plaintiff, but of others [i. e., an impar-
tial jury), to be injurious, not alone to the feelings but to
the reputation, is actionable. Should it be thought that
it is a hard rule that is applied in this case, it is only
necessary to call attention to the fact that a ready remedy
is to be found in legislation. We are not satisfied, how-
ever, that the rule is a hard one, and think that the con-
sensus of opinion must be that the complainants contend
for a much harder one." ^
The only case in which the question of the existence
of the right of privacy has been brought before the fed-
eral courts is one which the widow and children of
George H. Corliss, an inventor, brought to enjoin the
publication of a biographical sketch and portrait of
Mr. Corliss. The plaintiffs put their case squarely upon
the proposition that the proposed publication would be
an invasion of the right of privacy which a court of
equity should protect. There was some discussion upon
the question whether Mr. Corliss was a public or a pri-
vate character. The court distinctly denied the exist-
ence of any right of privacy which it could recognize,
saying that under the law "one can speak and publish
what he desires, provided he commits no offense against
public morals or private reputation. "^ The opinion pro-
^ Atkinson v. John E. Doherty & Co. (Mich.), 80 N. W. Rep. 285-
289.
^Corliss V. E. W. Walker Co., 57 Fed. Rep. 434.
§70] TRADE SECRETS. 165
ceeds flatly on the theory that a court of equity has no
power to restrain a libelous publication.^ At the .same
time the publication of the portrait was enjoined because
the original had been obtained by the defendant from
the plaintiffs on certain conditions which it had not com-
plied with.
Upon the motion to dissolve the injunction certain ad-
ditional evidence had been adduced, and the court in its
opinion finds the fact to be that the defendant had ob-
tained the portrait from a photograph; and that Mr.
Corliss was in fact a public character. The court says:
*'The distinction in the case of a picture or photograph
lies, it seems to me, between public and private char-
acter. A private individual should be protected against
the publication of any portraiture of himself, but where
an individual becomes a public character the case is
different. A statesman, author, artist, or inventor, who
asks for and desires public recognition, may be said to
have surrendered this right to the public.""^
These cases practically negative the existence of any
right of privacy that the courts will enforce. Under
different facts and with the growth of the law the sub-
ject may possibly develoj) into one of consequence in the
future.^
1 Boston Diatite Co. v. Florence Mfg. Co., 114 Mass. 69; Brandreth
V. Lance, 8 Paige, 24; Kidd v. Horry, 28 Fed. Rep. 773.
2 Corliss V. E. W. Walker Co., 64 Fed. Rep. 280-282.
^Thus in a recent case presented to the Patent Office the applicant
sought to register the mark "Dewey's Chewies, " for confectionery.
The commissioner said, in response to the applicant's suggestion
that "Dewey's" is not an ordinary surname: "I cannot refrain from
expressing the opinion that even if it be registrable, no one has the
right without the consent of Dewey to appropriate it as a trade-
mark. A living celebrity is entitled to protection from the ordinary
trader." Duell, Commissioner, in Ex parte Mclnnerney, 85 Off.
Gaz. 149.
CHAPTER VIII.
INFRINGEMENT.
§71. Of infringement generally. — The word "in-
fringement" is difficult of exact definition. For the pur-
poses of the present discussion, its broadest meaning, that
of the infraction or invasion of another's trade rights, by-
passing off, or attempting to pass off, upon the public
one's own goods as his, may suffice. As to technical
trade-mark infringement, it should be more narrowly de-
fined as the infraction or invasion of any portion of the
mark, symbol or device in which one has acquired a right
of property, either by way of reproduction in fac-simile,
or imitation. An English text-writer has thus defined
it: "Infringement is the use by the defendant, for trad-
ing purposes, in connection with goods of the kind for
which the plaintiff's right to exclusive use exists, not
being the goods of the plaintiff, of a mark identical with
the plaintiff's mark, or either comprising some of its
essential features or colourably resembling it, so as to
be calculated to cause the goods to be taken by ordinary
purchasers in any market where the marks circulate, for
the goods of the plaintiff."^ Vice-Chancellor Shadwell
stated the rule to be that, if a mark contains twenty-five
parts and but one is taken (i, e., imitated or copied),
liability has been created thereby, and there has been a
technical infringement.^
§ 72. No trade-mark in form, size, material or
color. — It is a well settled rule that there can be no
trade-mark right in the mere form, size or color of an
^Kerly on Trade-marks (London, 1894), p. 305.
^Guinness v. Ullmer, 10 L. T. 127; Seb. 89. "The imitation need
not be exact or perfect. It may be limited or partial; nor is it requi-
site that the whole should be pirated." Filley v. Fassett, 44 Mo. 173;
Cox, 530; Seb. 313. And to the same effect, Braham v. Bustard, 9 L. T.
N. S. 199; 1 Hem. & M. 447; 11 W. R. 1061; 2 N. R. 572; Seb. 226.
166
§72] INFRINGEMENT. 167
article used commercially, or the form, size or color of
the packag"e containing it.^ It is also an established
principle that there can be no trade-mark right in the
directions, notices or usual advertising" matter used upon
or in description of merchandise.^ There has never been
a deviation from this rule in the adjudications of the
courts of this country. Whenever relief has been granted
against an imitator or counterfeiter of either the form,
size, color, method of packing, advertising, or directions
used by a legitimate dealer, it has been granted upon the
broad theory of regulating fraud, and not upon the nar-
rower ground of technical trade-mark infringement.
There can be no technical trade-mark in a well known
material substance, such as a tin tag impressed upon
plug tobacco;'* nor in a method of packing merchandise;^
but a fraudulent imitation of another's tin tag has been
restrained;^ and injunctions against the fraudulent use
of another's style of package are frequent, in the absence
of any claim to a technical trade-mark right in the com-
plainant.
The courts have been averse to recognizing a trade-
mark right in anything calculated to be useful, aside
from indicating origin or ownership. So, in holding that
'Moorman v. Hoge, 2 Sawyer, 78; Harrington v. Libby, 14 Blatchf.
128; Ball v. Siegel, 116 111. 143; Enoch Morgan's Sons Co. v.
Troxell, 89 N. Y. 292; Sawyer v. Horn, 4 Hughes, 239; 1 Fed. Rep.
24; Manhattan Medicine Co. v. Wood, 108 U. S. 218; Re Kane & Co.,
9 Off. Gaz. 105; Liggett & Myers Tob. Co. v. Hynes, 20 Fed. Rep.
883; Fairbanks v. Jacobus, 14 Blatchf. 337; Wilcox & Gibbs Sewing
Machine Co. v. Gibbons, 21 Blatchf. 431; Brill v. Singer Mfg. Co.,
41 Ohio St. 127; Re Whitaker, Newton's Dig. 130; Adams v. Heisel,
31 Fed. Rep. 279; Lorillard v. Pride, 28 Fed. Rep. 434; Davis
V. Davis, 27 Fed. Rep. 490; Nuthall v. Vining, 28 W. R. 330; Van
Camp Packing Co. v. Cruikshanks Bros. Co., 90 Fed. Rep. 814; Von
Mumm V. Witteman, 85 Fed. Rep. 966; Von Mumm v. Witteman (2),
91 Fed. Rep. 126; P'leischraann v. Starkey, 25 Fed. Rep. 127; Brown
V. Doscher, 147 N. Y. 647-651; Charles E. Hires Co. v. Consumers'
Co., 100 Fed. Rep. 809-811.
2Candee v, Deere, 54 111. 462; Ball v. Siegel, 116 111. 143.
3 Lorillard v. Pride, 28 Fed. Rep. 434.
< Davis V. Davis, 27 Fed. Rep. 490.
* Lorillard v. Wight, 15 Fed. Rep. 383.
168 LAW OF UNFAIR TRADE. [§73
there was no trade-mark right in a series of indentations
in plug tobacco, so arranged as to serve as guides in cut-
ting the plug into pieces of one ounce each, Judge
Blodgett said: "One of the principles running through
the law of trade-marks is that there need be no utility
attached to the trade-mark itself — that is, it shall have
no useful purpose in connection with the goods further
than to show the origin or manufacture."^
§ 73. The early adjudications.— The endeavor of the
dishonest merchant to prey upon and profit by the rep-
utation of his honest competitor is always hampered by
fear of detection! If a trade-mark is counterfeited the
counterfeit product is placed upon the market stealthily;
where the offender lacks the courage to counterfeit he
resorts to colorable imitations, not of his competitor's
trade-mark, but of his methods of packing and prepar-
ing goods for sale, thus simulating a resemblance, in the
words of Judge Lacombe, "sufficiently strong to mislead
the consumer, although containing variations sufficient
to argue about, should the designer be brought into
court. "'^
The earliest leading case involving this form of fraudu-
lent competition arose between rival soap manufacturers.
The plaintiffs made and sold an article styled "Genuine
Yankee Soap." The defendant put up a soap under the
same style, imitating the size and shape of the cake, the
color and material of the wrapper, and a hand-bill, as
used by the plaintiffs. There was a disinclination on
the part of the court to decide whether the words "Gen-
uine Yankee" were a valid trade-mark, and its decision
was put solely upon the ground of unfair trade, the court
saying: "The defendant is engaged in a gross and palpa-
ble endeavor, by imitating the marks and labels used by
plaintiffs, to deceive the public and obtain patronage
which would in all probability be attracted to the plain-
tiffs. . . . They have adopted, in reference to their
manufacture (of an article which any and everyone may
^ Dausman & Drummond Tobacco Co. v. Ruffner, 15 Off. Gaz. 559.
^Collinsplatt v. Fiulayson, 88 Fed. Rep. 693.
§74] INFRINGEMENT. 169
manufacture and sell, if he please), a form and size of
cake, a particular mode of covering and packing", a com-
bination of three labels on each cake, an exterior hand-
bill upon the box, and have so arranged the whole as to
suggest to any one desiring to i)urchase their soap, upon
an inspection, that the article is theirs, and made by
them, like that heretofore made, sold and known as their
manufacture. All this the defendant has copied, with an
exactness which is calculated to deceive even the wary,
much more to entrap those who are not in the exercise
of a rigid scrutiny. . . . Without deciding whether
the defendant may or may not use either of the words
'Genuine' or 'Yankee, 'in any possible combination, we
think it sufficient to say that he may not use the la-
bels, or devices, or handbills which he is using, nor any
other like labels, handbills, or devices, in imitation of,
or simulating the 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."^
Mr. Rowland Cox has said,- however, that the rule
"that where the appearance of a peculiar and original
package has acquired through use an understood refer-
ence to the goods of a manufacturer, and a competing
manufacturer knowingly imitates the peculiar charac-
teristics of the package, with intent to deceive the public,
such imitation will be held to be an infringement of the
rights of the person first using the package," can hardly
be said to have found distinct expression prior to 1878,
where it occurs in the opinion of Judge Wheeler in Frese
V. Bachof.'^ And, indeed, that decision, if not the earliest,
is still one of the clearest in its enunciation of the rule.
§ 74. Infringeraent of color. — The cases in which an
unfair competition is effected b}' means of infringement
MVilliams v. Johnson (1857), 2 Bos. 1; Cox, 214.
-Cox, Manual, p. 86; note to Williams v. Johnson.
3Seb, 603; 13 Off. Gaz. 635.
170 LAW OP UNFAIR TRADE. [§74
of color alone are naturally very few in number. Indeed
the case nearest approximating' such an infringement is
one in which the complainant and defendant manufac-
tured stoves of similar external appearance, enameling
the inside faces of their stoves with white enamel. On
demurrer to the bill Judge Baker said: "If the question
for decision were simply whether the plaintiff could ac-
quire the sole rig-ht to use white enamel for the lin-
ing of the doors of its stoves and ranges, it would pre-
sent a question whose solution would prove embarrass-
ing. But the case made upon the bill and admitted by
the demurrer is that the defendants are manufacturing"
stoves and ranges having white enamel doors in the simili-
tude of those manufactured by complainant, and with
the fraudulent purpose of palming them off upon the
trade and the public as the stoves and ranges manufac-
tured by the complainant. It is not necessary to deter-
mine whether the white enamel lining, which has been
long and exclusively used by the complainant for the
inner lining of the doors of its stoves and ranges, consti-
tutes a trade-mark, or whether it does not. It is suffi-
cient to justify the interposition of a court of equity if the
stoves and ranges manufactured by the defendants are
purposely constructed in the similitude of those manu-
factured by the complainant, with the intention and
result of deceiving the trade and the public, and inducing
them to purchase the stoves and ranges of the defend-
ants in the belief that they are purchasing the stoves and
ranges of the complainant's manufacture. The imitative
devices used upon the stoves and ranges manufactured
by the defendants are alleged to be employed by them
for the purpose and with the result of deceiving the
public, and thereby diverting the trade of the complain-
ant to the defendants. This they have neither the moral
nor the legal right to do."^
The question of its collocation must always be consid-
ered in connection with the question of infringement by
the use of color. Announcing the opinion of the federal
'Buck's Stove & Range Co. v. Kiechle, 76 Fed. Rep. 758.
§74] INFRINGEMENT. 171
circuit court of appeals of the second circuit, Judge
Lacombe has said: "Color, undoubtedly, is a most im-
portant element in all package combinations; but there
are other elements as well, which go to make up the
entire combination. Because a total change of color
wouM so change the general appearance as to destroy
resemblance to another package, it by no means follows
that color alone would be sufficient to produce a general
appearance, resembling another package. It would not
be giving the complainant a monopoly of yellow to re-
strain the sale of a particular yellow package, where, in
addition to the color, a number of other elements, each
differing more or less from its analogue in complainant's
package, had been so collocated together as to produce
a general appearance calculated to delude the unwary
purchaser."^
So that we find many cases in which the imitation of
color has been a material element in determining the
question of infringement. ^ In a proper case the court
will enjoin the defendant from using the color used by
^N. K. Fairbanks Co. v. R. W. Bell Mfg. Co., 77 Fed. Rep. 869;
reversing S. c, 71 Fed. Rep. 295. To the same effect, see Allen B.
Wrisley Co v. Geo. E. Rouse Soap Co., 87 Fed. Rep. 589.
2Kerry v. Toupin, 60 Fed. Rep. 272; Burt v. Smith, 71 Fed. Rep.
161; Carbolic Soap Co. v. Thompson, 25 Fed. Rep. 625; Cleveland
Stone Co. v. Wallace, 52 Fed. Rep. 431-438; Anheuser-Busch Brew-
ing Co. V. Clarke, 26 Fed. Rep. 410; Landreth v. Landreth, 22 Fed.
Rep. 41; Lorillard v. Wight, 15 Fed. Rep. 383; Hostetter v. Adams,
10 Fed. Rep. 838; Von Mumm v. Frash, 56 Fed. Rep. 830; Wellman
& Dwire Tobacco Co. v. Ware Tobacco Works, 46 Fed. Rep. 289;
Gail V. Wackerbarth, 28 Fed. Rep. 286; Hires v. Hires, 6 Pa. Dis.
R. 285; Myers v. Theller, 38 Fed, Rep. 607; American Brewing Co.
V. St. Louis Brewing Co., 47 Mo. App. 14; Sperry v. Percival Mill-
ing Co., 81 Cal. 252; Royal Baking Powder Co. v. Davis, 26 Fed.
Rep. 293; Fleischmann v. Starkey, 25 Fed. Rep. 127; Carlisle Soap
Co. V. Thompson, 25 Fed. Rep. 625; C. F. Simmons Med. Co. v. Sim-
mons, 81 Fed. Rep. 163; Johnson & Johnson v. Bauer & Black, 82
Fed. Rep. 662; reversing s. c, 79 Fed. Rep. 954; Fischer v. Blank,
138 N. Y. 251; Cox, Manual, 731; McCann v. Anthony, 21 Mo. App.
83; 38 Oflf. Gaz. 333; Von Mumm v. Kirk, 40 Fed. Rep. 589; Coats
v. Merrick Thread Co., 36 Fed. Rep. 324; Philadelphia Nov. Co.
V. Blakesley Nov. Co., 40 Fed. Rep. 588; Proctor & Gamble Co. v.
Globe Refining Co,, 92 Fed. Rep. 357.
172 LAW OF UNFAIR TRADE. [§75
the plaintiff, upon the theory that the defendant must be
allowed no advantage out of the trade thus obtained
wrongfully, but must establish the reputation of his
goods upon merit, and without benefit of the imitation.^
It may be said that in issues of technical trade-mark
infringement the color of the respective marks is fre-
quently of controlling importance. Any system of
registration, to be effective, ought to provide for the
registration of marks in the exact coloring which it is
intended to apply to the mark in use. After the English
court of appeals had discussed this question, ^ it was
enacted by Parliament that registration might be in
color.^
§75. Infringement of size and form. — The decision
of the leading case, Cook & Bernheimer Go. v. Boss,^ by
Judge Lacombe in the circuit court of the United States
for the southern district of New York, marked a distinct
advance in the scientific development of the law of un-
fair competition. The complainant was a corporation
which had acquired the sole right to bottle, at the dis-
tillery, the "Mount Vernon Rye" whisky distilled by the
Hannis Distilling Company, in which bottling the com-
j)lainant used a bottle of distinctive form. The facts
more fully appear in the opinion, a portion of which is as
follows:
"Complainant, of course, has no exclusive right to the
name 'Mount Vernon,' and the labels of defendants are
in no sense an imitation of the labels of the complainant.
iFranck v. Frank Chicory Co., 95 Fed. Rep. 818-821.
2 Re Worthington & Co. '.s Trade-mark, L. R. 14 Ch. D. 8-18. See
also Nuthall v. Vining-, 28 W. R. 330; Cartmell, 248.
■■'The Patents, Designs, and Trade-marks Act, 1883, sec. 67. It
has been held, under this section, that the mark reg-istered in color
must be distinctive apart from its color; and as said by Kay, J.:
"You may register a mark, which is otherwise distinctive, in color,
and that gives you the right to use it in any color you like; but you
cannot register a mark of which the only distinction is the use of a
color, because, practically, under the terms of the act, that would
give you a monopoly of all the colors of the rainbow." Re Hanson's
Trade-mark, 5 R. P. C. 130; L. R. 37 Ch. D. 112; 57 L. J. Ch. 173;
57 L. T. N. S. 859; 36 \V. R. 134; Cartmell, 146.
473 Fed. Rep. 203.
§75] INFRINGEMENT. 173
Complainant's case rests solely on the form of package,
which it claims has been so imitated as to make out a
case of unfair competition.
"Undoubtedly, a large part of the consumption of
whisky is in public drinking places, where it is dispen.sed
to the consumer from the opened bottle. It is always
desirable, therefore, for a dealer who wishes to push the
sale of his own goods on their own merits to devise, if he
can, some earmark more permanent than a pasted label
to distinguish them. Complainant's predecessors accord-
ingly, in March, 1890, adopted a brown glass bottle of a
peculiar square shape, unlike any that had theretofore
been used for bottling whisky, or, indeed, so far as the
evidence shows, for any other purpose. It is a form of
package well calculated by its novelty to catch the eye,
and be retained in the remembrance of any one who has
once seen it. In order to develop and extend the busi-
ness they expected to control under their agreement with
the Hannis Distilling Company, complainant and its
predecessors have expended more than S50,000 in adver-
tising its said bottling. In all these advertisements the
peculiar square-shaped bottle is the chief and most promi-
nent feature. It is not surprising, therefore, to find it
stated in the moving affidavits that the shape and gen-
eral appearance of the bottle has come to be principally,
if not exclusively, relied on by ordinary purchasers as
the means of identifying this bottling of Mount Vernon
whisky from all other bottlings, the purity of which is
not guaranteed by the distillers, but only by the bottler.
Complainant's bottling seems to have acquired a high
reputation, large and increasing quantities of it being
yearly sold, at a price in excess of that obtained by other
bottlers of Mount Vernon whisky.
"About December, 1895, defendants, who had been deal-
ing in Mount Vernon whisky for many years, began lirst
to put it up in bottles, which are Chinese copies of the
peculiar square-shaped, bulging-necked bottles of the
complainant. Of course, they aver that this was with-
out any intention 'to deceive the public, or to palm off
174 LAW OF UNFAIR TRADE. [§75
defendants' g"oods for complainant's.' They account for
the sudden appearance of their output of Mount Vernon
whisky in this form as follows: 'There was a demand
for Mount Vernon whisky along in November last, and
defendants sought a convenient and useful package in
which to place their product upon the market, and pur-
chased a stock of bottles of the square form for that
purpose, without making a special design therefor, and
in the open market;' and allege that 'such bottles can
be purchased of reputable bottle manufacturers from
molds used for some time last past.' This last averment
may well be true. The industry of defendants' counsel has
marshaled here an array of square-shaped bottles filled
with whisky, which shows that for some time imitations
of complainant's bottle have been on the market. But
there is not a word of proof to trace back any one of
these bottles to a period anterior to the adoption of the
square shape by complainant's predecessor as a distinc-
tive form of package. Despite defendants' denials, — and
they only deny intent to deceive the public, not intent to
use a form of package just like complainant's, — the
court cannot escape the conviction that they found the
square-shaped bottle 'convenient and useful,' because
it was calculated to increase the sale of their goods; and
that such increase, if increase there be, is due to the cir-
cumstance that the purchasers from defendants have a
reasonable expectation that the ultimate consumer, de-
ceived by the shape, will mistake the bottle for one of
complainants'. This is unfair competition within the
authorities, and should be restrained. Injunction pen-
dente lite is granted against the further use of the square-
shaped, bulging-necked bottle as a package for Mount
Vernon whisky."
There never existed a valid reason why a manufacturer
should not be protected in the use of a package so pe-
culiar and distinctive in size and shape as not to inter-
fere with the packing methods of the trade generally.
In this respect the law of trade-marks fell short in the
recognition it should have extended to tradesmen, who,
§ 75 ] INFRINGEMENT. 175
like the Cook & Bernheimer Company in the case last
mentioned, chose to distinguish their wares by distinc-
tive packing. On account of this deficiency in the law,
occasional hardships were inflicted upon honest trades-
men and the dishonest competitor went unwhipped of
justice.^ But the amount of fraudulent trading effected
by means of this form of imitation was sure to evoke the
ruling of the leading case in time, and there are numbers
of other cases in which an imitation of size and form has
been a moving ground of injunction."^ The remedy has
in some cases been held to be dependent upon proof that
the public has actually been deceived by the defendant's
package.^ It has been expressly held, indeed, that
"there is no unfair competition, apart from the infringe-
ment of a patent or trade-mark, unless the competing
person so makes or marks his goods or conducts his busi-
ness that purchasers of ordinary caution and prudence,
and not those who are exceptionally dull, are likely to
be misled into the belief that his goods are the goods of
somebody else."* But it is the probability of deception,
and not proof that customers have actually been de-
ceived, that controls or should control in all cases of un-
fair competition as well as in cases of technical trade-
mark infringement. A learned English judge has asked:
*'Why should we be astute to say that (the defendant)
1 Enoch Morgan's Sons Co. v. Troxell, 89 N. Y. 292.
2 Charles E. Hires Co. v. Consumers' Co., 100 Fed. Rep. 809; Apol-
linaris Co. v. Brumler, Cox, Manual, 429; Hostetter v. Adams,
10 Fed. Rep. 838; Sawyer v. Kellogg, 7 Fed. Rep. 720; Sperry & Co.
V. Percival Milling Co., 81 Cal. 252; Noera v. Williams Mfg. Co.,
158 Mass. 110; Moxie Nerve Food Co. v. Baumbach, 32 Fed. Rep. 205;
Kerry v. Toupin, 60 Fed. Rep. 272; Burt v. Smith, 71 Fed. Rep. 161;
Hildreth v. McDonald, 164 Mass. 16; 49 Am. St. Rep. 440; Royal
Baking Powder Co. v. Davis, 26 Fed. Rep. 293.
^Hildreth v. McDonald, 164 Mass. 16; 49 Am. St. Rep. 440.
^Allen, J., in Dover Stamping Co. v. Fellows, 163 Mass. 191; 47
Am. St. Rep. 448: citing Gilman v. Hunnewell, 122 Mass. 139; Singer
Mfg. Co. V. Wilson, 2 Ch. D. 434-447; Brill v. Singer Mfg. Co., 41
Ohio St. 127; 52 Am. Rep. 74; Robertson v. Berry, 50 Md.591; 33 Am.
Rep. 328. To the same effect, Van Camp Packing Co. v. Cruik-
shanks Bros. Co., 90 Fed. Rep. 814; Von Mumm v. Witteman, 85 Fed.
Rep. %6; affirmed, 91 Fed. Rep. 126.
176 LAW OF UNFAIR TRADE. [§76
cannot succeed in doing what he is straining every nerve
to do?"'^ Where the form and size of a package have be-
come common to a trade, resemblance in either or both
of these particulars is not actionable.^
In all of this class of cases the general rule of trade-
mark law applies, that it is immaterial whether the goods
sold by the defendant are inferior or superior to those of
the plaintiff. Thus in an early case Judge Morris said:
"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 labeled boxes adopted
by him, and as his goods have become known to pur-
chasers, and are bought as the goods of the complainant
by reason of their peculiar shape, color and label, no
person has the right to use the complainant's form of
package, color or label, or any imitation thereof, in such
manner as to mislead purchasers into buying his goods
for those of the complainant, whether they be better or
worse in quality."^
§ 76. Intent and scienter. — It was at first held that
equity could only administer relief ancillary to that
offered by the courts of law. It is, indeed, difficult to
apprehend on what ground this reluctance to interfere in
trade-mark cases arose. The only explanation vouch-
safed is, that when chancery undertook to act it was ' ' ex-
ercising a jurisdiction over legal rights."* But whether
at law or in equity, the doctrine of the common law pre-
vailed, that the defendant must be shown to have guilty
knowledge or fraudulent intent.'^
In 1838 the rule was distinctly announced that courts
of equity "will act on the principle of protecting prop-
^Lindley, L. J., in Slazenger v. Feltham, 6 R. P. C. 538.
2 Allen B. Wrisley Co. v. Geo. E. Rouse Soap Co., 87 Fed. Rep.
S89.
s Sawyer v. Horn, 1 Fed. Rep. 24-38.
^Motley V. Downman, 3 Mylne & Cr. 1-14.
5 Singleton v. Bolton, 3 Doug. 293; Morrison v. Salmon, 2 Man. &
G. 385; Crawshay v. Thompson, 4 Man. & G. 357; Taylor v. Ashton,
11 M. & W. 402; Rodgers v. Nowill, 5 C. B. 109; Myers v. Baker, 3
H. & N. 802; Sykes v. Sykes; 3 B. & C. 541; 5 D. & R. 292.
§76] INFRINGEMENT. 177
erty alone, and it is not necessary for the injunction to
prove fraud in the defendant."^ This rule is now univer-
sally recof^nized in technical trade-mark cases. '^ It is
unnecessary to show that the defendant knew that his
trade-mark resembled any other trade-mark,'^ and it fol-
lows that it need not be shown that he knew whose mark
his resembled;* and, the intent of the defendent being"
immaterial, the fact that he intended to infringe plain-
tiff's rights will not entitle the plaintitf to relief if the
defendants' acts do not amount to trade-mark infringe-
ment or unfair competition.^
There is a line of demarkation, to be noted in this re-
gard, between the class of unfair trade cases which
involves a technical trade-mark and that which does not.
Where a plaintiff establishes by competent proof his
title to the specific trade-mark, infringement is shown by
comparison with the defendant's mark. The resemblance
of the defendant's mark creates a presumption of fraud. "^
iMillington v. Fox, 3 Mylne & Cr. 338.
2Glenny v. Smith, 2 Drew. & Sm. 476; 11 Jur. N. S. 964; 13 L. T.
N. S. 11; 13 W. R. 1032; 6 N. R. 363; Seb. 247; Filley v. Fassett, 44
Mo. 173; Cox, 530; Seb. 313; Amoskeag Mfg. Co. v. Garner (1), 55
Barb. 151; 6 Abb. Pr. N. S. 265; Cox, 541; Seb. 314; Holmes, Booth
& Haydens v. Holmes, Booth & Atwood Mfg. Co., 37 Conn. 278; 9
Am. Rep. 324; Seb. 340; Singer Mfg. Co. v. Wilson, 3 App. Cas,
376-391; Colman v. Crump, 70 N. Y. 573; 16 Alb. L. J. 352; Seb. 579;
Shaw V. Pilling, 175 Pa. St. 78-87; Wotherspoon v. Currie, L. R. 5
H. L. 508-517; McLean v. Fleming, 96 U, S. 245-253; Liggett & Myer
Tob. Co. V. Hynes, 20 Fed. Rep. 883; C. F. Simmons Med. Co. v.
Mansfield Drug Co., 93 Tenn. 84.
'^Kinahan v. Kinahan, 15 Ir. Ch. 75; Orr-Ewing & Co. v. Grant, 2
Hyde, 185; Singer Mfg. Co. v. Loog, 18 Ch. D. 412; Harrison v. Tay-
lor, 11 Jur. N. S. 408; Edelsten v. Edelsten, 1 DeG. J. & S. 185;
Burgess v. Hills, 26 Beavau, 244.
^Cartier v. Carlile, 31 Beavan, 292.
*Kann v. Diamond Steel Co., 89 Fed. Rep. 706-712.
8 "A trade-mark, clearly such, is in itself evidence, when used by
a third party, of an illegal act. It is of itself evidence that the party
intended to defraud and to palm off his goods as another's." Mr.
Justice Bradley in Putnam Nail Co. v. Bennett, 43 Fed. Rep. 800.
And to the same effect, Boston Diatite Co. v. Florence Mfg. Co., 114
Mass. 69; McLean v. Fleming, 96 U. S. 245; Menendez v. Holt, 128
U. S. 514; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537.
12
178 LAW OF UNFAIR TRADE. [§§77,78
But where the plaintiff has no trade-mark there is no
basis of comparison such as existed in the former case,
because there is no technical property right in the plain-
tiff. Mere resemblance between the goods of the parties
may or may not be sufficient to establish the right to
injunction. It must be established that the defendant
is unfairly competing with the plaintiff; his fraud must
be proven directly or by inference. In a recent opinion
Judge Baker says: "While the idea of fraud or imposi-
tion lies at the foundation of the law of technical trade-
marks as well as the law of unfair competition, it must
be borne in mind that fraud may rest in actual intent
shown by the evidence, or may be inferred from the cir-
cumstances, or may be conclusively presumed from the
act itself. In the case of unfair competition the fraudu-
lent intent must be shown by the evidence, or be infer-
able from the circumstances, while in the case of the use
by one trader of the trade-mark or trade-symbol of a
rival trader, fraud will be presumed from its wrongful
use."^
And the United States supreme court states the rule to
be that "the deceitful representation must be made out
or be clearly inferable from the circumstances. "^
§ 77. What persons liable. — With the establishment
of the rule that mala mens need not be shown, ^ it fol-
lowed that liability for infringement was extended to
many persons who, in the absence of that doctrine, could
not be reached by the owner of the pirated mark. "All
persons in any way connected with the infringement of a
trade-mark are responsible to the owner for the injury
done to his rights."*
§ 78. The engraver or manufacturer of the label. —
The rule that equity will enjoin one who participates in
the production of an infringing mark or label was first
established in Guinness v. Ullmer, in 1847, in which case
^Church & Dwight Co. v. Russ, 99 Fed. Rep. 276-279.
2 Lawrence Mfg-. Co. v. Tennessee Mfg. Co., 138 U. S. 537-551.
•'Wotherspoon v. Currie, L. R. 5 H. L. 508-517.
■*Hawley, J., in Hennessy v. Herrmann, 89 Fed. Rep. 669-670.
§78] INFRINGEMENT. 179
the plaintiffs were brewers of porter, and the defend-
ants, who were engravers, engraved plates to be used in
printing labels in imitation of the plaintiff's label. ^ This
decision was followed in 1855 by a case in which a printer
printed and sold labels which were fac-similes of the
plaintiff's labels, and the piracy was enjoined; ^ and the
rule is now extended to include one who deals in counter-
feit labels, though he does not manufacture them.^
In 1877 a label printer was enjoined by the superior
court of New York from the manufacture of labels which
were colorable imitations of plaintiff's. In affirming the
decision of the lower court the New York court of ap-
peals announced that it is not necessary in such a case
"to establish a guilty knowledge or fraudulent intent on
the part of the wrong-doer."* It is now the settled rule
that "the mere act of printing and selling labels in
imitation of the complainant's might be innocent, and,
1 Guinness v. Ullmer, 10 L. T. 127; Seb. 89.
2Farina v. Silverlock, 1 K. & J. 509; 3 Eq. Rep. 883; 24 L. J. Ch.
632; 25 L. T. 211; 3 W. R. 532; 6 DeG. M. & G. 214; 26 L. J. Ch. 11;
2 Jur. N. S. 1008; 27 L. T. 277; 4 W. R. 731; 52 Leg. Obs. 342; 30
L. T. 242; 31 L. T. 99; 4 K. & J. 650; Seb. 130. See also to the same
effect, Colman v. Crump, 70 N. Y. 573; Cuervo v. Jacob Henkell Co.,
60 Off. Gaz. 440; SO Fed. Rep. 471; Moxie Nerve Food Co. v. Beach,
33 Fed. Rep. 248; De Kuyper v. Witteman, 23 Fed. Rep. 871; Hildreth
V. Sparks Mfg. Co., 99 Fed. Rep. 484.
^Hennessy v. Herrmann, 89 Fed. Rep. 669.
< Colman v. Crump, 70 N. Y. 573-578; affirming S. c, 40 N. Y.
Super. Ct. (8 J. & S.) 548; Seb. 579. The court of appeals in this
case further says (per Allen, J.): "It is an infraction of that right
(i. e., the right to a trade-mark) to print or manufacture, or put on
the market for sale and sell for use, upon articles of merchandise of
the same class as those upon which it is used by the proprietor, any
device or symbol which by its resemblance to the established trade-
mark will be liable to deceive the public and lead to the purchase
and use of that which is not the manufacture of the proprietor, be-
lieving it to be his." From which Mr. Cox makes this deduction:
♦'The distinction would seem to be that where the facts of the case
show that the printer of the labels contemplated their use upon goods
not made by the owner of the mark, the court will interfere what-
ever the intent; but where the purpose was that they should be hon-
estly used in such manner as to be tantamount to an application
of the mark by its owner, the courts will decline to interfere." Note
to Farina v. Silverlock, Cox, Manual, 130.
180 LAW OF UNFAIR TRADE. [§§79, 80
without evidence of an illicit purpose, would not be a
violation of the complainant's rights. "^ Judge Thayer,
however, held that the court would presume fraudulent
intent where counterfeit labels were manufactured and
sold and advertised for sale by the defendant.'^
Where a person induces a manufacturer to make for
him goods marked with the trade-mark of a third per-
son, the manufacturer can hold him liable for all money
paid and expense incurred by the manufacturer in com-
promising a suit brought against him by the owner of
the trade-mark.^
Where both parties are in a similar business, one will
be enjoined from buying up the empty bottles or other
packages used by the other.*
§ 79. Of counterfeiting trade-marks. — A counterfeit
mark is one which is a fac-simile (e. g., an exact copy
or reproduction) of a genuine trade-mark. Counterfeiting
may be accomplished either by using forged fac-simile
trade-marks, or by using genuine trade-marks upon goods
substituted for those of the owners of the trade-marks;
as by refilling bottles, boxes or other packages bearing
trade-marks after their original contents have been con-
sumed.
§ 80. Of imitation of trade-marks. — An imitation is
a mark so contrived as to resemble an established
trade- mark. The imitation is actionable only in cases
where, upon comparison, the court determines that the
difference is "merely colorable,"^ or as stated by Vice-
Chancellor Wood: "In every case the court must ascer-
tain whether the differences are made bona fide in order
to distinguish the one article from them, whether the re-
1 Wallace, J., in De Kuyper v. Witteman, 28 Fed. Rep. 71; Cox,
Manual, 694.
2 Carson v. Ury, 39 Fed. Rep. 777; Cox, Manual, 709. See also
Von Mumm v. Wittemann, 85 Fed. Rep. 966.
SDixon V. Fawcus, 9 W. R. 414; 3 Ell. & Ell. 537; 30 L. J. Q. B.
137; 7 Jur. N. S. 895; 3 L. T. N. S. 693; Seb. 194.
* Evans v. Van Laer, 30 Fed. Rep. 153; SawyeV Crystal Blue Co.
V. Hubbard, 32 Fed. Rep. 388.
^Davis V. Kendall, 2 R. I. 566; Cox, 112; Seb. 103.
§§81,82] INFRINGEMENT. 181
semblances and the differences are such as naturally
arise from the necessity of the case, or whether, on the
other hand, the dilTerences are simply colorable."^
§81. Colorable imitation. — As to what constitutes
colorable imitation, some apparent diversity of opinion
arises in the cases. In the opinion of Vice-Chancellor
"Wood from which we have quoted in the foreg^oing sec-
tion, he says: "Resemblance is a circumstance which is
of primary importance for the court to consider, because
if the court finds, as it almost invariably does find in
such cases as this, that there is no reason for the resem-
blance, excepting- for the purpose of misleading-, it will
infer that the resemblance is adopted for the purpose of
misleading-. "2 But this dictum is not convincing-, be-
cau.se if the resemblance is not, in fact, calculated to
mislead, the fact that it was adopted for the purpose of
misleading- is wholly immaterial.
Thus it has been held repeatedly that where there is no
imitation of the essential part of a trade-mark, a resem-
blance in particulars common to the trade is not an in-
fring-ement.^
§ 82. The test of probability of deception. — The va-
riance of opinion as to what constitutes colorable imita-
tion arises from the standard adopted by the different
courts as to the tendency of the alleged infringement to
deceive the cautious, ordinary or unwary customer. It
is never necessary to establish actual deception. Lord
Westbury said that it was not "necessar}'- for relief in
equity that proof should be given of persons having been
actually deceived, and having bought goods with the de-
fendant's mark under the belief that they were the manu-
J Taylor v. Taylor, 2 Eq. Rep. 290; 23 L. J. Ch. 255; 22 L. T. 271;
Seb. 124.
2 Taylor v. Taylor, supra.
sportuondo v. Monne, 28 Fed. Rep. 16; Price & Steuart, 1115; Ball
V. Sieg-el, 116 111. 137; 56 Am. Rep. 766; Re Horsburgh, 53 L. J. Ch.
237; Tucker Mfg:. Co. v. Boyingfton, 9 Oflf. Gaz, 455; Thornton v.
Crowley, 47 N. Y. Super. Ct. 527; Price & Steuart, 455; Coats v.
Merrick, 45 Oflf. Gaz. 347; Marshall v. Hawkins, 4 N. Z. L. R. Sup.
Ct. 59; Stachelberg v. Ponce (2), 128 U. S. 686.
182 LAW OF UNFAIR TRADE. [§82
facture of the plaintiffs, provided the court be satisfied
that the resemblance is such as would be likely to cause
the one mark to be mistaken for the other. "^ Accord-
ingly it is no defense to show that all the persons pur-
chasing- goods bearing the simulated mark were aware
that the goods were not of the plaintiff's manufacture,^
or that the maker of the spurious goods, or the jobber
who sells them to retailers, informs those who purchase
that the article is spurious or an imitation;^ the reason
being that there is no assurance that the retailer will
give the same cautionary information to his customers.*
So where the defendant claimed that the goods bearing
the false mark were for his own family's use, he was en-
joined;^ and where the defendants contended that they
did not deal in the goods bearing the fraudulent mark,
but only acted as forwarding agents, they were enjoined.^
It is always the presumption, however, that the con-
suming purchaser has no opportunity of comparing the
conflicting marks; and this presumption is an important
element in passing upon the probability of the defend-
ant's mark effecting deception.^
lEdelsten v. Edelsten, 1 DeG. J. & S. 200; 9 Jur. N. S. 479; 11
W. R. 328; 7 L. T. N. S. 768; 1 N. R. 300; Monro v. Smith, 13 N. Y.
Sup. 708; Cox, Manual, 724; Dixon v. Fawcus, 3 Ell. & Ell. 537;
30 L. J. Q. B. 137; 7 Jur. N. S. 895; 3 L. T. N. S. 693; 9 W. R. 414;
Re Christiansen's Trade-mark, 3 R. P. C. 54; Cartmell, 95; Com-
pania General de Tobacos v. Rehder, 5 R. P. C. 61; Cartmell, 103;
Orr-Ewing v. Johnston, 7 A. C. 219; 51 L. J. Ch. 797; 46 L. T. 216;
30 W. R. 417; Cartmell, 249; Seb. 646; Reddaway & Co. v. Bentham
Hemp Spinning Co., 9 R. P. C. 503; (1892) 2 Q. B. 639; 67 L. T. 301;
^Edelsten v. Edelsten, 9 Jur. N. S. 479; 1 DeG. J. & S. 185;
11 W. R. 328; 7 L. T. N. S. 768; 1 N. R. 300.
3Coats V. Holbrook, 2 Sandf. Ch. 586; Seb. 79.
*Chappell V. Davidson, 2 K. & J. 123; 8 DeG. M. & G. 1; Seb. 136.
«Upmann v. Forester, L. R. 24 Ch. D. 231; 52 L. J. Ch. 946;
49 L. T. 122; 32 W. R. 28; Cartmell, 331.
«Upmann v. Elkan, L. R. 12 Eq. 140; 40 L. J. Ch. 475; 24 L. T. N.
S. 869; 19 W. R. 867; L. R. 7 Ch. 130; 41 L. J. Ch. 246; 25 L. T. N. S.
813; 20 W. R. 131; Seb. 369.
^Pillsbury v. Pillsbury-Washburn Co., 64 Fed. Rep. 841; 12
C. C. A. 432; Manufacturing Co. v. Trainer, 101 U. S. 51-64; Lig-
gett & Myer Tobacco Co. v. Hynes, 20 Fed. Rep. 883.
§83] INFRINGEMENT. 183
§ 83. The degree of care expected of the purchaser.
Mr. Justice Clifford expressed the rule in these words:
"What degree of resemblance is necessary to constitute
an infringement is incapable of exact definition as ap-
plicable to all cases. All that courts of justice can do
in that regard is to say that no trader can adopt a trade-
mark so resembling that of another trader as that ordi-
nary purchasers buying with ordinary caution are likely
to be misled."^ But further, in the same opinion, he bases
the decision explicitly upon the ground that the defend-
ant's package "is well calculated to mislead and deceive
the umuary.''^'^
There are many instances of similar dicta. We have
heretofore referred to the assertion of Vice-Chancellor
Shadwell, who said that "If a thing contains twenty-
five parts, and but one is taken, an imitation of that one
will be sufficient to contribute to a deception, and the
law will hold those responsible who have contributed to
the fraud. '"^ It is at this point that we can secure prob-
ably the most striking proof of the manner in which the
law of trade-marks and the law of unfair competition
overlap each other. True, the function of the trade-
mark is to distinguish the goods to which it is applied,
and whose origin or ownership it indicates. True that
the purpose of an intentional infringement is to draw
away the trade secured by the infringed mark for the
benefit of the owner of the infringing mark. That in-
fringement is to be determined, not by the question
Braham v. Bustard, 9 L. T. N. S. 199; 1 Hem. & M. 427; 11 W. R.
1061; 2 N. R. 572; Seb. 226; Filley v. Fassett, 44 Mo. 168; Seb. 313;
Abbott V. Bakers & Confectioners Tea Ass'n, W. N. 1871, p. 207; W. N.
1872, p. 31; Seb. 379; Osgood v. Allen, 1 Holmes, 185; 6 Am. L. T.
20; 3 Off. Gaz. 124; Seb. 410.
'McLean v. Fleming, 96 U. S. 245-251; following the language of
Lord Cranworth in Seixo v. Provezende, L. R. 1 Ch. D. 192. See also
Popham V. Wilcox, 14 Abb. Pr. N. S. 206; 38 N. Y, Super. Ct. 274;
66 N. Y. 69; 23 Amer. Rep. 22; Seb. 425; Dawes v. Davies, Seb. 426.
2 McLean v. Fleming, 96 U. S. 245, at page 256.
8 Guinness v. Ullmer, 10 L. T. 127. See also Leather Cloth Case, 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; Popham v. Wilcox, 66 N. Y. 69.
184 LAW OF UNFAIR TRADE. [§83
whether any substantial part of the trade-mark is copied
or duplicated by the infringing' mark, but by the tendency
of the pirated mark to deceive (whether the careful, or-
dinary or unwary purchaser is immaterial), is an anomaly
in our jurisprudence. But the courts have persisted in dis-
regarding the technical composition and detail of trade-
marks, and have invariably applied the test of tendency
of the suspected mark to deceive. The test ignores the
absolute right of property which exists in a lawful trade-
mark, and gives the owner of such a mark no other or
further rights than are given the plaintiff who uses only
generic terms to designate his wares and perforce relies
upon the doctrines of unfair competition.^
The broad rule as stated above by Mr. Justice Clifford
has been elaborated by other courts. In some cases no
reference is made to the care and caution expected to be
exercised by the purchasing public,^ while in others it is
held that it must be shown that the mark employed bears
such resemblance to the complainant's trade-mark "as
to be calculated to mislead the public generally who are
purchasers of the article;"^ sometimes it has been ex-
pressed as the deception of "the ordinary mass of pur-
chasers; "* or as by the Massachusetts court, that injunc-
tion will not lie ' ' unless the form of the printed words, the
words themselves, and the figures, lines and devices, are
so similar that any person, with such reasonable care and
^Lord Westbury evidently was impressed ^ith this thought when
he said, "Imposition on the public is necessary for the plaintiff's
title, but in this way only, that it is a test of the invasion by
the defendant of the plaintiff's right of property; for there is no in-
jury if the mark used by the defendant is not such as is mistaken, or
is likely to be mistaken, by the public for the mark of the plaintiff;
but the true ground of this court's jurisdiction is property." Hall v.
Barrows, 4 DeG. J. & S. 150.
^Ransome v. Bentall, 3 L. J. Ch. N. S. 161; Seb. 53; Taylor v.
Carpenter (3), 2 Sandf. 603; 11 Paige, 292; Cox, 45; Seb. 84; Coffeen
v. Brunton, 5 McLean, 256; Cox, 132; Seb. 109; Shrimptonv. Laight,
18 Beav. 164; Hardy v. Cutter, 3 Off. Gaz. 468.
•■'Walton V. Crowley, 3 Blatchf. 440-447; Compania de Tobacos v.
Rehder, 5 R. P. C. 61; Cartmell, 103.
<Blackwell v. Wright, 73 N. C. 310-313; Crawshay v. Thompson,
4 Man. & G. 357; 5 Scott N. R. 562; 11 L. J. C. P. 301; Seb. 72.
§83] INFRINGEMENT. 185
observation as the public generally are capable of using-
and may be expected to exercise, would mistake the one
for the other. "^ The irreverent layman could not fail to
note the remarkable elasticity of the rule as thus laid
down. 2 And we find a court of repute holding that "it
is the unwary, and not the wary, who are to be protected,
as most likely to be taken in by the counterfeit;"^ and
another saying that equity "should presume that the
public makes use of the senses of sight and hearing, and
that it is possessed of a sufficient amount of intelligence
to note the difference these senses convey;"* and Sir
George Jessel saying: "I am not, as I consider, to de-
cide cases in favor of fools and idiots, but in favor of
ordinary English people, who understand English when
they see it."^
The English courts have devoted much time to specu-
lating whether "most Englishmen" would mistake the
defendant's mark for the plaintiff's, or whether if the
mark failed to deceive "most Englishmen" it still might
mislead "the ordinary native purchaser in Bombay where
the goods go," as has actually been done in the opinion
of one court.*' Under the doctrine so stated, I will not
be protected by injunction in a case where the defendant
has not copied my trade-mark sufficiently in detail to
'Gilman v. Hunnewell, 122 Mass. 139-148. It is only fair to note
that this case was improperly brought as a trade-mark case, and is
treated as such by the court, whereas the facts show that injunctive
relief could only have been granted, if at all, to restrain the unfair
competition of the defendant. It has been held elsewhere, however,
that the relief will not be granted where the defendants' acts are
such as could deceive only a careless purchaser. N. K. Fairbank
Co. V. Luckel, King & Cake Soap Co., 88 Fed. Rep. 694. But this de-
cision was reversed on appeal: s. c, 102 Fed. Rep. 327-332.
^Substantially the same dictum is to be found in Ball v. Siegel, 116
111. 137-146; citing Popham v. Cole, 66 N. Y. 69.
3 Swift V. Day, 4 Robertson, 611; Cox, 319; Seb. 245. And Judge
Benedict has said: "It is no answer to say that the ultimate purchaser
was ignorant or unwary. " Von Mumm v. Frash, 56 Fed. Rep. 830-839.
■•Munro v. Tousey, 129 N. Y. 38.
•'■ Singer Mfg. Co. v. Wilson, L. R. 2 Ch. D. 434; quoted with ap-
proval, Munro v. Smith, 13 N. Y. Sup. 708.
^Wilkinson v. Griffith, 8 R. P. C. 370-374.
186 LAW OF UNFAIR TRADE. [§84
deceive "most Englishmen," but if my goods are sold to
natives of Africa I may have an injunction against him
if he engages in that trade.
If we were to undertake to deduce a general rule from
the cases it would be that the test is the likelihood of
deception of the consuming purchaser;^ and in applying
this test all doubts are to be resolved in favor of the
complainant. 2
§ 84. Infringement must be by use on same class
of goods. — The English Patents, Designs, and Trade-
mark Acts, 1883 to 1888, provide that the application for
registration must state the particular goods or classes
of goods in connection with which the applicant desires
the trade-mark to be registered.^ A similar provision ex-
ists in the act of congress of 1881.^ Aside from these
provisions as to registration, it is self-evident that there
can be no infringement unless the two marks are used on
the same class of goods ;^ though in this country, owing
to the absence of the exact classifications used in the
English registration practice, it is probably more exact
to say that the marks must be used upon goods of so
similar description that goods bearing the defendant's
mark may be taken for the manufacture of the plaintiff;
as where the plaintiff adopted the words "Lone Jack"
to designate smoking tobacco manufactured by him, and
the defendant applied the same words to cigarettes. The
^Allegretti Chocolate Cream Co. v. Keller, 85 Fed. Rep. 643; Col-
linsplatt V. Finlayson, 88 Fed. Rep. 693; N. K. Fairbank Co. v.
R. W. Bell Mfg. Co., 77 Fed. Rep. 869-877.
^Anheuser-Busch Brewing Ass'n v. Piza, 24 Fed. Rep. 149-151.
3 Patents, Designs, and Trade-marks Act, 1883, Part IV, sec. 62,
subsec. 3.
*Act of 1881, sec. 3 (b).
SRe Rabone, Seb. 642; Re Jelly, Son & Jones, 51 L. J. Ch. 639;
Re Whiteley, 43 L. T. N. S. 627; Ainsworth v. Walmesley, L. R. 1 Eq.
518; Hall v. Barrows, 4 DeG. J. & S. 150; Hart v. Colley, 7 R. P. C.
93; L. R. 44 Ch. D. 193; 59 L. J. Ch. 355; Cartmell, 154; Jay v. Lad-
ler, 6 R. P. C. 136; L. R. 40 Ch. D. 649; 60 L. T. 27; 37 W. R. 505;
Cartmell, 184; Colman v. Crump, 70 N. Y. 573; Hecht v. Porter, 9
Pac. C. L. J. 569; Societe Anonyme v. Baxter, 14 Blatchf. 261;
Amoskeag Mfg. Co. v. Garner, 55 Barb. 151; George v. Smith, 52
Fed. Rep. 830; Air-Brush Mfg. Co. v. Thayer, 84 Fed. Rep. 640.
§84] INFRINGEMENT. 187
court gave as its reason for enjoining the defendant that
he was holding out his cigarettes as containing the plain-
tiff's tobacco.^ And where the defendants were selling
shirts under the name of "Wamyesta" and advertising
them as made of "Wamyesta," they were enjoined from
using that designation at the instance of the Wamsutta
Mills, whose product was known as " Wamsutta" muslin,
and was not used by defendants in the manufacture of
their shirts. ^ Where the complainants used the words
"Collins & Co." upon metal articles of their manufac-
ture, but did not manufacture shovels, the defendants
were enjoined from placing those words on shovels, they
having exported shovels so marked to Australia, where
the complainants marketed a portion of their output.^
In a recent case Judge Bradford said: "Pale ale and
half-and-half must, as against an infringer of a trade-
mark for the former, be treated as malt liquors substan-
tially similar to each other and belonging to the same
class. Courts should not be astute to recognize in favor
of an infringer fine distinctions between different articles
of merchandise of the same general nature, and should
resolve against the wrong-doer any fair doubt whether
the public may or may not be deceived through the ap-
plication of the spurious symbol."'*
It is the necessary converse of the rule under consider-
ation that it is no defense to an action for trade-mark
infringement that the defendant used the mark in appli-
cation to another class of merchandise before the plain-
tiff began his use of the mark. Thus where a defendant
had applied the word " Epicure " to canned peaches and
canned tomatoes, that fact did not avail as a defense,
where the plaintiff was the first to apply the word to
canned salmon, and the defendant afterwards began to
apply it to canned salmon. In his opinion, Judge Coxe
1 Carroll v. Ertheiler, Cox, Manual, 669.
^Wamsutta Mills v. Allen, 12 Phila. 535.
^Collins Co. V. Oliver Ames & Sons, 18 Fed. Rep. 561. See also
Eno V. Dunn, L. R. 15 A. C. 252.
*Bass, Ratcliflf & Gretton (Ltd.) v. Feigenspan, 96 Fed. Rep. 206-
211.
188 LAW OF UNFAIR TRADE. [§85
observes: "The reasoning of some of the authorities
would indicate that the defendants had a right to use
the brand in connection with other fruit and vegetables,
analogous to tomatoes and peaches, but to assert that
they have the right to use it on all canned goods is
carrying the doctrine far beyond any reported case.
Beer and nails do not belong to the same class of mer-
chandise because both are sold in kegs."^
In a recent case in which the complainant's mark was
applied to baking soda and saleratus, and the defend-
ant's to baking powder. Judge Baker held the parties'
goods to be in the same class because they were handled
generally by the same class of dealers and purchased oy
the same class of customers; either is indifferently used
to accomplish the same object; so that they come in
direct competition with each other in sale and use. In
that case the rule is announced that "goods are in the
same class whenever the use of a given trade-mark or
symbol on both would enable an unscrupulous dealer
readily to palm off on the unsuspecting purchaser the
goods of the infringer as the goods made by the owner
of the trade-mark, or with his authority and consent. "^
§ 85. The value of proof of fraudulent intent.— So
much is said of fraudulent intent in the decisions that it
is proper to discuss it in this place, in its relation to in-
fringement. As we have seen, equity will restrain the
use of the infringing mark without regard to the intent
of the defendant. It is, however, a matter of practical
importance to establish the deliberate fraud of the de-
fendant where it exists. It was distinctly held by Lord
Westbury that an account would only be given with the
injunction in respect of any user by a defendant after he
had become aware of the prior ownership;^ and in another
case, where defendant claimed to have bought counterfeit
champagne believing it to be genuine, an accounting was
denied because of the absence of proof of guilty knowl-
' George v. Smith, 52 Fed. Rep. 830-832.
2 Church & D wight Co. v. Russ, 99 Fed. Rep. 276-280.
3Edelsten v. Edelsten, 1 DeG. J. & S. 185,
§86] INFRINGEMENT. 189
edg'e.^ And the fraudulent intention of the defendant
must be shown in an action at law,'' or at least to support
the recovery of punitive damages.^ But the rule is fixed
both in Eng-land and the United States that proof of
fraudulent intent, or actual deception of the public, are
alike unnecessary in actions in equity, in technical trade-
mark cases.
:? 86. The manner of establishing fraudulent in-
tent.— The inspection of the two marks in controversy
is the main test of the alleged resemblance,* although the
testimony of expert witnesses familiar with the trade
and the habits of customers is of weight.'"' So, for exam-
ple, where the plaintiff's mark was a tin star, and the
defendant's a tin buzz-saw, both affixed in use upon plug
tobacco, the court could have small difficulty in inferring
fraudulent intent.^ Among other matters considered by
the courts as j^robative of the defendant's intent are
false representations of securing awards at an exhibi-
tion;' the fact that defendant, who adopted as a mark
for his factory the ^vords "Norfolk House," previously
used by plaintiff, kept the publication of that name out
of a city directory;^ and the circumstance that defend-
ant removed his place of business into the same locality as
the plaintiff,'* or is dealing in other fraudulent goods. ^*'
A curious instance of facts regarded as indicia of fraud
is to be found in a case where a plaintiff whose name,
^Moet V. Couston, 33 Beav. 578. See also Rose v. Loftus, 47 L. J.
Ch. 576; Millinglon v. Fox, 3 Mylne & Cr. 338; Weed v. Peterson, 12
Abb. Pr. N. S. 178.
^Edelstenv. Edelsten, supra.
3Faber v. D'Utassey, 11 Abb. Pr. N. S. 399; Marsh v. Billings, 7
Cush. 322; Cox, 118.
^Drummond v. Tinsley, 52 Mo. App. 10.
^Drummond v. Tinsley, supra.
6 Liggett & Myers Tob. Co. v. Sam Reid Tob. Co., 104 Mo. 53.
^Cave V. Myers, Seton (4th ed.), 238; Seb. 304.
SRodgers v. Rodgers, 31 L. T. N. S. 285; Seb. 442.
» Elgin Nat. Watch Co. v. Illinois Watch Case Co., 88 Fed. Rep.
487, 488; reversed on other grounds, 94 Fed. Rep. 667; FuUwood v.
Fullvvood (1), W. N. 1873, p. 93; W. N. 1873, p. 185; Seb. 42. See
also Leev. Haley, 21 L. T.N. S. 546; 18 W. R. 181; L. R. 5 Ch. D. 155;
39 L. J. Ch. 284; 22 L. T. N. S. 251; 18 W. R. 242.
loChas. E. Hires Co. v. Consumers' Co., 100 Fed. Rep. 809-812.
190 LAW OF UNFAIR TRADE. [§87
originally "Dr. J. W. Trust," had been changed to "Dr.
T. F. Gouraud," was the manufacturer of cosmetic styled
"Gouraud's Oriental Cream," and the defendants, his
sons, who had retained the name Trust, engaged in the
sale of a cosmetic which they named "Creme Orientale,
by Dr. T. F. Gouraud's Sons; " the court holding from these
facts that the statement of the relationship, though truth-
ful, was made with fraudulent intent.^
As most of these badges of fraud have been referred
to by the courts because of their determining influence
in cases of unfair competition, we will consider them at
length in that connection. Those we have mentioned
are illustrative, however, of the class of facts pertinent
to be shown in cases of technical trade-mark infringe-
ment, and to prove which is important for the reasons
and purposes above referred to.
§ 87. Infringing by refilling trade-marked pack-
ages.— There is no doubt that one who furnishes liquors
(or any other class of goods) with the expressed purpose
that the goods so sold are to be used in refilling genuine
packages whose original contents have been removed
will be dealt with as an infringer and enjoined in equity.^
The refilling of genuine packages will be restrained,^
even where the package, a bottle bearing a name blown
in the glass, is used for a similar article, in connection
with a label not resembling that borne by it originally.*
Injunction will issue even where the refilling was done at
the request of a customer.^ Judge Thayer has enjoined
iGouraudv. Trust, 3 Hun, 627; Seb. 460.
^Hostetter Co. v. Brueg-geman-Reinart Distilling- Co., 46 Fed. Rep.
188; Cox, Manual, 729. Compare Hostetter v. Fries, 17 Fed. Rep.
620, in which defendants compounded a substance to be used in mak-
ing Hostetter 's Bitters, and sold it with directions for so using it,
but injunction was denied. This decision is entitled to no weight.
3 Evans v. Von Laer, 32 Fed. Rep. 153; Sawyer Crystal Blue Co.
V. Hubbard, 32 Fed. Rep. 388; Rose v. Henley, cited at 47 L. J.
Ch. 577; 38 L. T. N. S. 410; Seb. 551.
* Evans v. Von Laer, 32 Fed. Rep. 153; Hostetter v. Anderson, 1 V.
R. (W. A'B. & W.) Eq. 7; 1 Anst. Jour. 4; Seb. 652; Rose v. Lof-
tus, 47 L. J. Ch. 576; 38 L. T, N. S. 409; Seb. 608. See contra, Welch
V. Knott, 4 K. & J. 747; 4 Jur. N. S. 330; Seb. 157.
^Harnett v. Leuchars, 13 L. T. N. S. 495; 14 W. R. 166; Seb. 253.
§88] INFRINGEMENT. 191
a defendant from ofEering for sale an imitation of Hos-
tetter's Bitters in bulk with advice to customers to refill
bottles orig-inally containing the genuine compound, with
the spurious article.^ In this class of cases "the burden
is strongly upon the complainant to prove fraud by a
fair preponderance of evidence. "-'
§ 88. Infringement by applying a manufacturer's
trade-mark to goods of his to which he does not in-
tend its application. — In Hcnnessy v. W/dte, the defend-
ants bottled brandy^, purchased in casks from plaintiffs,
and applied to such bottling a label which was a color-
able imitation of that used by plaintiffs to designate a
higher grade of brandy sold by them in bottles only.
The court, by Molesworth, J., said: "I think a new fea-
ture which has not been present in any other case, and is,
therefore, not touched by the language of the other cases,
is one which I ought to act upon here; that is, that the
makers of articles of different qualities are entitled to
brand their best article in a particular way to show the
superior value they put upon it." Stowell, C. J., in the
same case, in the Victoria supreme court, states the rule
more broadly: "If a brandy different from that which
the manufacturer bottled is put into bottles and sold as
the manufacturer's bottled brandy, the fact that it is the
manufacturer's bulk brandy does not make the sale less
an imposition. " '^ There can be no doubt of the right of the
manufacturer or selector to designate goods of a certain
grade bottled or packed by him by a distinctive trade-
mark, and that no one purchasing goods in bulk from
^Hostetter v. Bruegg-eman-Reinart Co., 46 Fed. Rep. 188; Cox, Man-
ual, 729; cited and followed in Hostetter v. Sommers, 84 Fed. Rep.
333, These cases overrule Hostetter v. Fries, 17 Fed. Rep. 620,
where Judge Wallace refused to enjoin defendants who prepared and
sold an extract, giving instructions to their customers for making
"Hostetter's Bitters " from the extract. The rule stated in the text
is followed in Myers v. Theller, 38 Fed. Rep. 607-609.
^Coxe, J., in Hostetter Co. v. Comerford, 97 Fed. Rep. 585; and to
the same effect see Hostetter Co. v. Bower, 74 Fed. Rep. 235.
^Hennessy v. White, 6 W. W. & A'B. Eq. 216-221; Seb. 650. See
also to same effect Hennessy v. Hogan, 6 W. W. & A'B. Eq. 225; Seb.
651; Krauss v. Jos. R. Peebles' Sons Co., 58 Fed. Rep. 585.
192 LAW OF UNFAIR TRADE. [§89
him can thereby acquire the right to pack or bottle such
goods under the trade-mark of the vendor used only upon
his packing- or bottling. Whether the bulk goods are
better than or inferior to the trade-marked goods is ut-
terly immaterial except as bearing upon the question of
damages.^
"It is manifest that the sale of merchandise in bulk by
a manufacturer does not justify the vendee in using on
his retail packages the label Avhich the manufacturer
uses upon the same merchandise only when prepared by
himself on smaller packages for the retail trade. "^
^ 89. Substitution. — By "substitution," as used here,
is meant the substitution by a retail merchant of goods
other than those called for by a purchaser. In its nar-
rower sense it is confined to the retail merchant who
commits the offense. In its broader sense it includes the
manufacturer of the substituted goods in cases where he
has so prepared the goods as to make the substitution
possible, and for the purpose and with the intent that
they may be substituted. ^ Of such manufacturers the
superior court of New York, by Barrett, J. , has said : ' ' The
law of trade-marks has been gradually expanding so as
to meet just such cases. The courts, in a long and un-
broken line of decisions, have endeavored to uphold and
enforce commercial morality, and have afforded their pro-
tection to honest enterprise and skill."* As to the re-
1 See the case in which a person purchasing- pens from a manufac-
turer removed the labels and substituted others marked with a nu-
meral indicating another grade of pen made by the same manufac-
turer. Gillott V. Kettle, 3 Duer, 624; Cox, 148.
2Taft, J., inKraussv. Jos. R. Peebles' Sons Co., 58 Fed. Rep. 585-
592.
3 Enoch Morgan's Sons Co. v. Wendover, 43 Fed. Rep. 420.
■'Morgan Sons Co. v. Troxell, Cox, Manual, 674. The New York
court of appeals, treating this case as purely a technical trade-mark
case, reversed it in 89 N. Y. 292. If there had been considered by
the appellate court the doctrines we have now under discussion, the
decision of the lower court would have been affirmed. Taendsticks-
fabriks Aktiebolaget Vulcan v. Myers, 11 N. Y. Sup. 663; Avery
V. Meikle, 81 Ky. 75; Cox, Manual, 686, and cases cited elsewhere in
this chapter.
§90] INFRINGEMENT. 193
taller who performs the actual substitution, there is no
question that he will invariably be enjoined from repeti-
tions of his offense.'
§ 90. Infringement by a dissimilar Avord or mark.
The general rule is that there may be infringement even
in the absence of exact similarity between the marks.'-'
In 1866 Lord Cranworth said in a leading case: "If the
goods of a manufacturer have, from the mark or device
he has used, become known in the market by a particu-
lar name, I think that the adoption by a rival trader of
any mark which will cause his goods to bear the same
name in the market may be as much a violation of the
rights of that rival as the actual copy of his device."^
This dictum was elicited in a case where the plaintiff sold
wine in casks stamped with the device of a crown and an
eagle, and the initials "B. S." on the head of the cask,
and a crown, the word "Seixo" and a date at the bung
hole, from which the wine had acquired the name "Crown
Seixo;" while the defendants sold wine in casks stamped
on the head and at the bung hole with the device of a
^Saxlehner v. Eisner & Mendelson Co., 88 Fed. Rep. 61-70; Munro
V. Smith, 13 N.Y. Sup. 708.
2Ligg-ett & Mj-er Tobacco Co. v. Hynes, 20 Fed. Rep. 883. "What
degree of resemblance is necessary is, from the nature of things, a
matter incapable of definition a priori. All that courts of justice can
do is to say that no trader can adopt a trade-mark so resembling
that of a rival as that ordinarj' purchasers, purchasing with ordi-
nary caution, are likely to be be misled. " Lord Cranworth in Seixo
V. Provezende, L. R. 1 Ch. D. 192.
3Seixo V. Provezende, supra; 12 Jur. N. S. 215; 14 L. T. N. S. 314;
14 W. R. 357; Seb. 256.
The doctrine of the leading case applies to all cases where the
goods of a particular dealer or manufacturer have become known bj'
a name derived from his trade-mark. Anglo- Swiss Condensed Milk
Co. V. Metcalf, L. R. 31 Ch. D. 454; 55 L. J. Ch. 463; 34 \V. R. 345;
3 R. P. C. 28; Cartmell, 48; Re Speer's Trade-mark, 4 R. P. C. 521;
55 L. T. N. S. 880; Cartmell, 317; Re Baschiera's Trade-mark, 33
S. J. 469; Re La Society Anonyme des Verreries de I'Etoile, 10 R.
P. C. 436; L. R. (1894) 1 Ch. D. 61; 11 R. P. C. 142; Wilkinson v.
Griffith, 8 R. P. C. 370; Cartmell, 344; Morgan Envelope Co. v. Wal-
ton, 82 Fed. Rep. 469; 81 Off. Gaz. 1615; Johnson & Johnson v. Bauer
& Black, 82 Fed. Rep. 662; Kann v. Diamond Steel Co., 89 Fed. Rep.
706.
13
194 LAW OF UNFAIR TRADE. [§90
crown, the initials "C. B.," the words "Seixo de Cima,"
and figures "1861." The defendants were enjoined not-
withstanding" the fact that the marks were not similar.
Under this rule, plaintiffs who made a certain beer to
which they applied the device of a bull-dog's head were
granted an injunction against the use by competing deal-
ers of a label similar in shape to the plaintiffs' and bear-
ing a terrier's head. There was no resemblance between
the labels beyond the similarity in shape, but the plaintiffs'
beer had come to be known as "Dog's Head Beer," and
the use of a dog's head upon similar merchandise by the
defendants was manifestly for the purpose of passing off
their beer as being the plaintiffs'.^ It is self-evident that
a trade-mark may be infringed by a mark entirely differ-
ent, but suggesting to customers and the public the same
word or idea. Thus when an English house had used in
India a trade-mark for yam which had led the natives to
call for it as "Bhe Hathi" (meaning "Two Elephant")
yarn, a competing firm was enjoined from exporting yarn
to India under a trade-mark of which the principal fea-
ture was the representation of two elephants.'^ On the
same reasoning the word "Sportsman's" accompanied by
a picture of two mounted huntsmen, used as a trade-mark
for cherry brandy, was held to be infringed by the pic-
ture of a huntsman standing beside his horse, and the
words "Huntsman's Cherry Brandy," where the proof
aliunde showed that the plaintiffs' liquor had become
known to the public as "The Hunter's Cherry Brandy."^
Judge Sanborn has well said that "every suit of this
character is founded on the fact that the action, or the
proposed action, of the defendant has deceived, or is cal-
culated to deceive, ordinary purchasers buying with usual
iRead v. Richardson, 45 L. T. N. S. 54; Cox, Manual, No. 698.
20rr-Ewing & Co. v. Johnston & Co., 40 L. T. N. S. 307; Seb. 646.
3Re Barker's Trade-mark, 53 L. T. N. S. 23; Cartmell, 72. Simi-
lar cases are Barlow v. Johnson, 7 R. P. C. 395; Cartmell, 73; Up-
per Assam Tea Co. v. Herbert, 7 R. P. C. 183; Cartmell, 333; Re
Worthington's Trade-mark, L. R. 14 Ch. D. 8; 49 L. J. Ch. 646; 42
L. T. N. S. 563; 28 W. R. 747; Cartmell, 351; Jerome v. Johnson, 59
N. Y. Supp. 859.
§90] INFRINGEMENT. 195
care, so that they have purchased, or will probably pur-
chase, the goods of the defendant under the mistaken be-
lief that they are those of the complainant."' So that
each case must turn upon the peculiar facts involved.
Thus where a plaintiff had for some time manufactured
tennis racquets uniformly stamped at a particular i)lace
uponthehandle with the words "The Demon,*' and the de-
fendant began to manufacture and sell racquets of a simi-
lar design, stamped, in the corresponding place upon the
handle, with the word "Demotic," the use of the word
"Demotic" was restrained.'^ So the word "Curative,"
applied to soap, has been held to infringe the word " Cuti-
cura," similarly applied;^ and a red Greek cross has been
held to be infringed by a maltese cross with a red center,
each being used as a mark upon medicinal plasters.*
Other instances in which the courts have declared a
word or words used as a trade-mark to be infringed by a
different word or words will be found instructive. For
the convenience of the reader they are tabulated in
alphabetical order.
The Trade-mark. Held to be infringed by
"Apollinaris." •'Apollinis."^
"Black Diamond." "Diamond Gem."^
"Bovilene." "Bovina."'
iKann v. Diamond Steel Co., 89 Fed. Rep. 706.
2Slazenger v. Feltham, 6 R. P. C. 531; Cartmell, 310. Thus where
an anchor had been registered in England as an umbrella trade-
mark, the word "Ancross " for umbrellas was refused registration.
Re Thewlis & Blakey's Trade-mark, 10 R. P. C. 369.
3 Potter Drug & Chemical Corp. v. Miller, 75 Fed. Rep. 657.
^Johnson & Johnson v. Bauer & Black, 82 Fed. Rep. 662; reversing
same case, 79 Fed. Rep. 954. In his opinion Judge Jenkins said:
"It sufficiently appeared by the testimony that the goods of the ap-
pellant have come to be known, and are offered, ordered and sold,
as 'Red Cross Plasters;' and we cannot but think that the maltese
cross adopted by the appellee, in so far as it contains a red circle, has
a tendency to promote confusion, and will interfere with the legiti-
mate trade of the appellant. . . . The red cross speaks to the
eye, and the article being known by that designation speaks also to
the ear by that name. "
*Apollinaris Co. v. Herrfeldt, 4 P. R. 478; Apollinaris Brunnen v.
Somborn, 14 Blatchf. 380; Fed. Case No. 496.
«Pike Mfg. Co. v. Cleveland Stone Co., 35 Fed. Rep. 896.
^Lockwood V. Bostwick, 2 Daly, 521.
196
LAW OF UNFAIR TRADE,
[§90
The Trade-mark.
Held to be infringed by
"Burgess."
' ' Canadian Club Whisky. "
"Celluloid."
"Chatterbox."
"Cocoaine."
"Cocoatina."
"Coe's Superphosphate
of Lime."
"Cottolene."
"Derby."
"Dyspepticure."
"El Destino."
"Electro-Silicon."
"Flor de Margaretta."
"Genuine Durham Smok-
ing Tobacco," with
the picture of a bull.
"German."
"German Household
Dyes."
"Germea."
"Gold Dust."
"Burgiss."!
"Canadian Rye Whisky."^
"Cellonite."^
"Chatterbook."'^
"Cocoine."^
"Cacaotine."^
"Andrew Coe's Superphos-
phate of Lime."^
"Cottoleo."«
"Derwent."'^
' ' Dyspepticide. " ^°
"El Divino" and "El Des-
tinacion."^^
"Electric-Silicon. "12
" Margarita. "1^
"The Durham Smoking To-
bacco," with the pic-
ture of a bull's head.i*
"Germania."^^
"Excellent German House-
hold Dyes."^«
"Germ."!^
"Gold Drop. "18
^Burgess v. Hills, 26 Beavan, 244.
2 Walker V. Mikolas, 79 Fed. Rep. 955.
^Celluloid Mfg-. Co. v. Cellonite Mfg. Co., 32 Fed. Rep. 94.
^Estes V. Leslie, 29 Fed. Rep. 91.
'Burnett v. Phalon, 9 Bos. 192.
« Schweitzer v. Atkins, 37 L. J. Ch. 847.
^Coe V. Bradley, 9 OfF. Gaz. 541.
8N. K. Fairbank Co. v. Central Lard Co., 64 Fed. Rep. 133.
9 Derby Dry Plate Co. v. Pollard, 2 Times L. R. 276.
WEx parte Foley & Co., 87 Off. Gaz. 1957.
"Pinto V. Trott, 8 P. R. 173.
12 Electro-Silicon Co. v. Trask, 59 How. Pr. 189.
i^Benedictus v. Sullivan, 12 P. R. 25.
"Blackwell v. Armistead, 3 Hughes, 163; Fed. Case No. 1474.
"Walter Baker & Co. v. Baker, 77 Fed. Rep. 181.
i«Oppermann v. Waterman, 94 Wis. 583; 69 N. W. Rep. 569.
i^Sperry v. Percival Milling Co., 81 Cal. 252.
i«N. K. Fairbank Co. v. Luckel, King & Cake Soap Co., 102 Fed.
Rep. 327; reversing s. c, 88 Fed. Rep. 694.
§90]
INFRINGEMENT.
197
The Trade-mark.
Held to he infringed by
"Golden Crown."
"Guinness."
"Home."
"Hostetter Bitters."
"Hostetter& Smith."
"Humphreys' Homoeo-
pathic Specifics."
" Lacto-Peptine. "
"Leopoldshall."
"Lightning Hay Knives."
"Maizena."
"Maryland Club Rye."
"Mechanics' Store."
''Miller's Chicken Cock
Whiskey."
"Momaja."
^'Morse's Compound
Syrup of Yellow Dock
Root."
"Mottled German Soap,"
with a circle, moon
and stars.
"Golden Chain. "^
"Genuine.'"^
"Home Delight."^
"Host-Style Bitters."*
"Holsteter & Smyte."''
"Reeves" Improved Homoe-
opathic Specifics."^
" Lactopepsine. " ^
"Leopoldsalt."^
"Lightning Pattern Hay
Knives."^
"Maizharina."!*'
"Maryland Jockey Club
Rye. "11
"Mechanical Store. "^^
"Miller's Game Cock
Rye. "13
"Mojava.""
"Dr. Morse's Improved
Yellow Dock and Sar-
saparilla Compound. " ^
"S. W. McBride's German
Mottled Soap," with a
crescent and star.i^
iParlett v. Gug-genheimer, 67 Md. 542; 10 Atl. Kep. 81.
2 Guinness v. Heap, Seb. 617.
^New Home Sewing Machine Co. v. Bloomingdale, 59 Fed. Rep.
284.
46.
<Hostetter v. Becker, 73 Fed. Rep. 297.
^Hostetter v. Vowinkle, 1 Dill. 329.
"Humphreys' Specific Med. Co. v. Wenz, 14 Fed. Rep. 250-253.
^Carnrick v. Morson, L. J. N. of C. (1877), p. 71.
»Radde v. Norman, L. R. 14 Eq. 348.
»Hiram Holt Co. v. Wadsworth, 41 Fed. Rep. 34.
i«Glen Cove Mfg. Co. v. Ludeling, 22 Fed. Rep. 823; 23 Blatchf.
5.
"Cahnv. Gottschalk, 2 N. Y. Supp. 13.
i^Weinstock, Lubin & Co. v. Marks, 109 Cal. 529.
i^G. G. White Co. v. Miller, 50 Fed. Rep. 277.
*^ American Grocery Co. v. Sloan, 68 Fed. Rep. 539.
'^Alexander v. Morse, 14 R. I. 153.
^*Proctor V. McBride, Fed. Case No. 11441.
198
LAW OF UNFAIR TRADE.
[§90
The Trade-mark.
"Moxie Nerve Food."
"Nickel-In."
"Old Crow."
"Portland."
"Pride."
"Pride of Rome."
"Roberts' Parabola Gold-
Burnished Sharps."
" Roy Watch-Case Co."
"Sanitas."
"Sawyer's Crystal Blue
and Safety Box."
"Shawknit."
"Shrewsbury, Marshall
& Co. Patent Thread."
"Six Little Tailors."
"Sorosis."
"Southern Company, St.
Louis."
"Star."
"Stark."
Held to be infringed by
"Standard Nerve Food.''^
"Nickel Saved. "2
"White Crow. "3
"Famous Portland."*
"Pride of Syracuse."^
"Pride of the Home."«
■ "William Clark & Sons'
Parabola Gold-Bur-
nished Sharps."'
"Camm-Roy Watch-Case
Co."«
"Condisanitas."^
"Sawin's Soluble Blue and
Pepper Box. "10
"Seamless.""
"Schrewsbury- March al
Patent Thread. "^2
"Six Big- Tailors. "13
"Sartoris."!*
"Southwestern, St.
Louis. "1^
"Lone Star."i«
"Star."!'
^ Moxie Nerve Food Co. v. Baumbach, 32 Fed. Rep. 205.
2Schendle v. Silver, 70 N. Y. Sup. Ct. 330.
3W. A. Gaines & Co. v. Leslie, 54 N. Y. Supp. 421; 25 Misc.
Rep. 20.
*Van Horn v. Coogan, 52 N. J. Eq. 380; 28 Atl. Rep. 788.
*Hier v. Abrahams, 82 N. Y. 519.
*Ft. Stanwix Canning Co. v. Wm. McKinley Canning Co., 63
N. Y. S. 704.
^Roberts v. Sheldon, 8 Biss. 398; Fed. Case No. 11916.
*Roy Watch-Case Co. v. Camm-Roy Watch-Case Co., 59 N. Y.
Supp. 979.
^Sanitas Co. v. Condy, 4 P. R. 195.
10 Sawyer v. Kellogg, 7 Fed. Rep. 721; 9 Fed. Rep. 601.
"Shaw Stocking Co. v. Mack, 12 Fed. Rep. 707; 21 Blatchf. 1.
12 Marshall v. Ross, L. R. 8 Eq. 651.
13 Mossier v. Jacobs, 65 111. App. 571.
"Little v. Kellam, 100 Fed. Rep. 353.
"Southern White Lead Co. v. Cary, 25 Fed. Rep. 125.
"Hutchinson v. Covert, 51 Fed. Rep. 829; 61 Off. Gaz. 1017.
"Gardner v. Bailey, Seb. 365; Fed. Case No. 5221.
§ 90] INFRINGEMENT. 199
Tlie Trade-mark. Held to he infringed by
"Steinway." " Steinberg-. "^
"Stephens." "Steel Pens. "^
"Stuart's Dyspepsia Tab- "Dr. Stewart's Dyspepsia
lets." Tablets."'''
"Sunlight." "American Sunlight."*
• • Swan. " « ' Black Swan. " »
"Tonge's." " Tung's. "«
"Trafford." " Stafford. "^
"Uneeda." "Iwanta.''^
"Vitae-Ore." "Vitalizing Ore."»
"Wamsutta." " Wamyesta."^o
"Warren." " Warranted, "ii
' ' Willoughby Lake. " " Willoughby Ridge. " ^^
It follows that a word may infringe a symbol, or vice
versa. Thus the figure of Columbia is an infringement
of the word "Columbia," previously applied to the same
class of merchandise.^^ But the use by a plaintiff of a
conventional diamond-shaped design has been held not
to confer a trade-mark right in the word "diamond,"
Judge Adams remarking: "If the complainant's goods
had ever been known in the trade as 'diamond steel,' or
generally as 'diamond' goods, it would undoubtedly be
protected in the use of the word ' diamond ' as a trade-name,
even though such word nowhere appeared in connection
with the symbol of a conventional diamond forming its
trade-mark. Its use by a competitor, either as its cor-
^ Steinway v. Henshaw, 5 P. R. 77.
2 Stephens v. Peel, 16 L. T. N. S. 145.
^Stuart V. F. G. Stewart Co., 91 Fed. Rep. 243.
^ Lever Bros. v. Pasfield, 88 Fed. Rep. 484.
■■'Ex parte Caire, 15 OflF. Gaz. 248.
fiTongev. Ward, 21 L. T. N. S. 480.
7 Smith V. Carron Co., 13 P. R. 108.
^National Biscuit Co. v. Baker, 95 Fed. Rep. 135.
9Noel V. Ellis, 89 Fed. Rep. 978.
'"Wamsutta Mills v. Allen, 12 Phila. 535.
"Frost V. Rindskopf, 42 Fed. Rep. 408.
'2 Pike Mfg. Co. V. Cleveland Stone Co., 35 Fed. Rep. 896.
i:' Morgan Envelope Co. v. Walton, 82 Fed. Rep. 469; 81 Off. Gaz.
1615. In this connection see Kann v. Diamond Steel Co., supra, and
Re Thewlis & Blakey's Trade-mark, supra.
200 LAW OF UNFAIR TRADE. [§90
porate name or trade-name for its product, under such
circumstances would undoubtedly tend to deceive, and
fall within the condemnation of the cases of complain-
ant's counsel. See, especially, Johnson v. Bauer, 82 Fed.
Rep. 662. "^
The addition of other symbols, words or initials to the
trade-mark of another will not operate to avoid a charge
of infringement. "No one who has counterfeited a legit-
imate trade-mark and applied the spurious symbol in
competition with the genuine can avoid the charge of
infringement by showing that the false mark has in prac-
tice been so accompanied, on labels, capsules or other-
wise, by trade-names, designations, descriptions or other
accessories, not forming part of it, as to render it un-
likely that the public has been deceived. Such a show-
ing, while it may affect the nature or measure of the
relief to be granted, cannot defeat a suit for infringe -
ment."2
In the absence of proof of any deception of the public,
the courts have not been inclined to declare a dissimilar
mark an infringement unless the similarity was close.
Thus it has been held that the word "Pudding" does
not infringe the word "Puddine;'"' that the word "Baco-
curo" does not infringe the word "No-to-bac;"* that the
mark "B. & S." does not infringe the mark "S. B.;"Hhat
the mark "Filolloss," applied to silk, is a valid trade-
mark notwithstanding the prior use of the mark "Filo-
selle " applied to silk of a different character;^ that the
mark "Beeshore One-Night Cough Cure" does not in-
fringe the mark "One Night Cure;"'' that the mark
"Elastic Tolu" does not infringe the mark "Sappota
1 Pittsburg Crushed Steel Co. v. Diamond Steel Co., 85 Fed. Rep.
637-642.
^Bradford, J., in Bass, Ratcliff & Gretton (Ltd.) v. Feig-enspan,
96 Fed. Rep. 206-212.
sciotworthy v. Schepp, 42 Fed. Rep. 62.
< Sterling Remedy Co. V. Eureka Chem. & Mfg. Co., 80 Fed. Rep. 105.
•■iBurtv. Smith, 71 Fed. Rep. 161-163.
«Rawlinson v. Brainard & Armstrong Co., 59 N. Y. Supp. 880;
28 Misc. Rep. 287.
"Kohler Mfg. Co. v. Beeshore, 59 Fed. Rep. 572-576.
§91] INFRINGEMENT. 201
Tolu;"i that the mark "Star" and an uncolored tin star
is not infring-ed by "Starlight " and a red paper star;'* that
"Everyday Soap" was not so clearly infringed by "Every-
body's Soap" as to warrant a preliminary injunction. ^
It is important to note in this connection the expres-
sion of Lord Cranworth, that "It would be a mistake to
suppose that the resemblance must be such as would de-
ceive persons who should see the two marks placed side by
side. The rule so restricted would be of no practical use. " *
And another rule is that a defendant cannot evade the
charge of infringement by "showing that the device or
inscription upon the imitated mark is ambiguous, and
capable of being understood by different persons in differ-
ent ways."^
?j91. Miscellaneous matters relating to infringe-
ment.— In the cases of infringement it is manifest that the
policy of the law is clear, and that difficulty in determin-
ing questions of infringement arises only out of the facts.
It was asked in the English House of Lords, "How can
observations of judges upon other and quite different
facts bear upon the present case, in which the only ques-
tion is what is the result of the evidence?"^ Analogies
will, however, frequently be found in the adjudicated
cases which may assist in classifying the character of
infringement under consideration.
Infringements which display the name or initials of the
defendant are none the less infringements if any sub-
stantial portion of the mark is taken from the plaintiff's
mark.^ This principle has been applied to a case where
the defendant had washed plaintiff's labels off his bot-
tles, leaving only the marks blown or moulded in the
1 Adams v. Heisel, 31 Fed. Rep. 279.
2 Liggett & Myers Tobacco Co. v. Finzer, 128 U. S. 182.
3 Proctor & Gamble Co. v. Globe Refining Co., 92 Fed. Rep. 357; 34
C. C. A. 405.
<Seixo V. Provezende, L. R. 1 Ch. D. 192.
*Lord Watson in Singer Mfg. Co. v. Loog (3). 8 App. Cas. 39.
^Lord Watson in Johnson v. Orr-Ewing, H. L. 7 App. Cas. 219.
'Sawj'cr Crystal Blue Co. v. Hubbard, 32 Fed. Rep. 388; Anheuser-
Busch Brewing Association v. Clarke, 26 Fed. Rep. 410; Garrett v.
T. H. Garrett »& Co., 78 Fed. Rep. 472; Anheuser-Busch Brewing
Association v. Piza, 24 Fed. Rep. 149; Hostetter v, Adams, 10 Fed.
202 LAW OF UNFAIR TRADE. [§92
glass, and had pasted his own labels upon the bot-
tles,^ although in similar cases, where the name of the
defendant was conspicuously displayed on the new label,
injunction was refused. ^ But the fact that the defend-
ant does display his name upon his goods is always to be
considered as a circumstance in his favor.^
Infringement applied to goods of equal quality. — It is set-
tled that the fact that the defendant's goods are equal in
quality to the plaintiff's is no defense to the action of in-
fringement. As said by Judge McLean: "To entitle a
complainant to protection against a false representation
it is not essential that the article should be inferior in
quality."* And in a English case involving the manu-
facture of metallic hones, Lord Denman instructed the
jury that "even if the defendant's hones were not in-
ferior, the plaintiff was entitled to some damages, inas-
much as his right had been invaded by the fraudulent
act of the defendant."^ It may be regarded as settled
that it is immaterial, in the language of Judge Morris,
whether the defendant's goods "be better or worse in
quality.""
§ 92. The use of letters and numerals. — The princi-
ple that there can be trade-mark in letters or numerals
cannot be considered as finally settled. Gillott v. Ester-
Rep. 838; Pepper v. Labrot, 8 Fed. Rep. 29; Shaw Stocking Co. v.
Mack, 12 Fed. Rep. 707; McCann v. Anthony, 21 Mo. App. 83; Bass,
Ratcliff & Gretton (Ltd.) v. Feigenspan, 96 Fed. Rep. 206.
iHostetter v. Anderson, 1 W. W. & A'B. Eq. 7; Seb. 652; Rose v.
Loftus, 47 L. J. Ch. 576; 38 L. T. N. S. 409; Seb. 608; Rose v.
Henly, Seb. 551.
2 Welch V. Knott, 4 K. & J. 747; Barret v. Gomm, 74 L. T. (Journal)
388.
3 "This is one of the important means of identification." Severens,
J., in Proctor & Gamble Co. v. Globe Refining Co., 92 Fed. Rep. 357-
362. And see Kann v. Diamond Steel Co., 89 Fed. Rep. 706; P Lor-
illard Co. v. Peper, 86 Fed. Rep. 956-959; Blackwell v. Crabb, 36
L. J. Ch. 504; Beard v. Turner, 13 L. T. N. S. 746.
^CofFeen v. Brunton (2), 5 McLean, 256.
'iBIofield V. Payne, 4 B. & Ad. 410; Seb. 50. See also Taylor v.
Carpenter (2), 2 W. & M. 1; Cox, 32; Taylor v. Carpenter (3), 2
Sandf. Ch. 603; Edelsten v. Edelsten, 1 DeG. J. & S. 185; Seb. 213.
''Sawyer v. Horn, 1 Fed. Rep. 24-38. To the same effect see Cut-
ter V. Gudebrod Bros. Co., 55 N. Y. Supp. 298.
§92] INFRINGEMENT. 203
brook,^ in which the defendant was enjoined from using^
the numerals "303," was for a time regarded as uphold-
ing their use as a trade-mark, but the case is known and
recognized as a case of unfair competition. ^ The leading
English case, Ainsworth v. Walmsley, is very similar to
Oillott V. Esterbrook, supra, in that while the imitation of
a series of numbers was considered as one of the elements
justifying injunction, Vice-Chancellor Wood carefully dis-
tinguished them as not being a technical trade-mark.^
There is no case, however, in England in which the
courts have recognized "a mere numeral or combination
of numerals, standing alone, as sufficiently arbitrary and
distinctive to constitute a trade-mark.'"*
Of course numerals may form a part of a trade-mark,
in combination or collocation with words, figures or de-
signs, and many cases in which their imitation has been
restrained turned upon this point; ^ they will also be pro-
tected when used in an arbitrary and distinctive manner
which conveys no idea of number, although they would
probably not be so used except in collocation with de-
signs or words.'' In one case it was held that a com-
plainant was entitled to the exclusive use of a trade-
mark consisting of the figures i, only in the form, size,
color and style in which it had been registered and used,^
The strongest case holding that numerals alone may
form a valid technical trade-mark is Shaiv Stocking Go. v.
Mack,^ in which Judge Coxe ably reviews the decisions
H7 Barb. 455; Cox, 340.
^Browne on Trade-marks (2ded.), sec. 228.
sAinsworth v. Walmsley, L. R. 1 Eq, 518-527.
^Sebastian on Trade-marks (4th ed.), p. 79.
^Boardman v. Meriden Britannia Co., 35 Conn. 402; Lawrence
Mfg. Co. V. Lowell, 129 Mass. 325; Humphreys' Specific Med. Co. v.
Wenz, 14 Fed. Rep. 250; Carver v. Pinto Leite, L. R. 7 Ch. App. 90;
Robinson v. Finlay, L. R. 9 Ch. D. 487; Broadhurst v. Barlow,
W. N. 1872, p. 212; Carver v. Bowker, Seb. 581; Ralli v. Fleming,
Ind. L. R. 3 Calc. 417.
''Kinney v. Basch, 16 Am. Law Reg. N. S. 596; Seb. 542 — properly
a case of unfair competition.
'Kenney v. Allen, 1 Hughes, 106; Seb. 557; Fed. Case No. 7826.
si2 Fed. Rep. 707. See also Smith & Davis Mfg. Co. v. Smith, 89
Fed. Rep. 486.
204 LAW OF UNFAIR TRADE. [ § 92
and argues that the rejection of numerals as trade-mark
was invariably because of their use indicating quality
rather than origin or ownership; but he finally bases the
reason of his decree of injunction flatly upon the defend-
ant's fraudulent competition.
The practical difficulty in the way of constructing- a
trade-mark from numerals alone is that the defendant
could always find a multiplicity of excuses for selecting
the same numerals, and the cases indicate that the courts
grant ample protection to their use as against their
fraudulent imitation.^
Even where numerals were originally indicative of ori-
gin and ownership, if they have come to be used to indi-
cate quality, any one having the right to make or sell
the article in connection wherewith such numerals are
so used may designate the article by the numerals.^
In regard to letters, standing alone or in initial combina-
tions, the English courts have from an early period treated
them as trade-marks,^ although it appears that under the
English act of 1875, 38 and 39 Vict., c. 91, Vice-Chancel-
lor Hall has held a single letter cannot be registered as
a trade-mark.*
The use of a single letter would appear to be at least
unsafe, although it might in the United States be re-
^Gillottv. Kettle, 3 Duer, 624; American Solid Leather Button Co.
V. Anthony, 15 R. I. 338; Collins v. Reynolds Card Mfg. Co., 7 Abb.
N. C. 17; India Rubber Comb Co. v. Jewelry Co., 45 N. Y. Sup.
Ct. 258; Sohl v. Geisendorf, 1 Wills. (Ind.) 60; Hazard v. Caswell,
57 How. Pr. 1; Glen & Hall Mfg. Co. v. Hall, 61 N. Y. 226; 19 Am.
Rep. 278; Seb. 443.
2 Smith & Davis Mfg. Co. v. Smith, 89 Fed. Rep. 486.
3Ransome v. Bentall, 3 L. J. Ch. 161; Motley v. Downman, 3 My.
& Cr. 1; Millington v. Fox, 3 My. & Cr. 338; Crawshay v. Thompson,
4 M. & G. 357; Kinahan v. Bolton, 15 Ir. Ch. 75; Hopkins v. Hitch-
cock, 14 C. B. N. S. 65; Hall v. Barrows, 4 DeG. J. & S. 150; Bar-
rows V, Pelsall, Seb. 530; Re Barrows, L. R. 5 Ch. D. 353; Cartier
V. Carlile, 31 Beav. 292; Cartier v. Westhead, Seb. 199; Cartier v.
May, Seb. 200; Moet v. Clybonn, Seb. 533; Moet v. Pickering, L. R.
8 Ch D. 372; Ex parte Young, Seb. 537; Ransome v. Graham, 51
L.J. Ch. 897; Bondier v. Depatie, 3 Dorion, 233; Re Brook, 26 W. R. 791.
^Re Mitchell, L. R. 7 Ch. D. 36; 46 L. J. Ch. 876; 26 W. R. 326;
Cartmell, 226.
§92] INFRINGEMENT. 205
garded as a trade-mark; and Judge Bradford in a recent
opinion sug^gests that a sinj^^le letter or figure may be "so
peculiar and unusual in form or ornamentation" as to be
a valid trade-mark.^
Combinations of letters, used as initials, have been fre-
quently approved as trade-marks in the American decis-
ions, ^ and in the case of Amoskeag Mfg. Co. v. Trainer,^
in the federal supreme court, the decision, which held
the letters "A C A" were not a valid trade-mark, was
based upon the theory that those letters as used by the
complainant were indicative of quality, and not of origin
or ownership, as Judge Coxe has pointed out.^ There
can scarcely be a doubt that both numerals and letters
of the alphabet may sometimes be technical trade-marks,
and the objection to their use in that capacity has been
well stated by Judge Colt in the supreme court of Massa-
chusetts to be "the difficulty of giving to bare numbers
the effect of indicating origin or ownership, and of show-
ing that the numbers used were originally designed for
that purpose."^ And the same practical suggestion was
offered by the supreme court of Connecticut in these
words: "It may be difficult to give to bare numbers the
effect of indicating origin or ownership, and it may be
still more difficult to show that they were originally
designed for that purpose; but if it be once shown that
that was the original design, and that they have had that
effect, it may not be easy to assign a reason why they
should not receive the same protection, as trade-marks,
as any other symbol or device."''
A review of the cases indicates that the use of nu-
merals or letters has been restrained sometimes on the
theory that they were technical trade-mark, but never
where they were merely used to indicate quality;^ and
iDennison Mfg. Co. v. Thomas Mfg. Co., 94 P"ed. Rep. 651-658.
^Geron v. Gartner, 47 Fed. Rep. 467; Frank v. Sleeper, 150 Mass. 583.
3101 U. S. 51.
^Shaw Stocking Co. v. Mack, 12 Fed. Rep. 707.
5 Lawrence Mfg. Co. v. Lowell, 129 Mass. 325; Price & Steuart, 418.
''Boardman v. Meriden Britannia Co., 35 Conn. 402; Cox, 490.
^Re Eagle Pencil Co., 10 Off. Ga2. 981; Amoskeag Co. v. Trainer,
101 U. S. 51.
206 LAW OF UNFAIR TRADE. [§93
where injunction has issued, the facts show that the
infringing figures or letters were used in fraudulent
competition,^
In this connection it is well to note that "there can be
no doubt, and indeed it is not disputed, that two letters
may constitute a trade-mark. "^ So the American courts
have uniformly held that monograms or groups of two
or more letters not indicative of quality constitute valid
trade-marks; thus we find that the following marks have
been held valid: "A. G." applied to cigars and coffee;^
"B. B. B." applied to a medicine;* "B. B. H." applied to
iron;^ "S. B." applied to cough-drops;*' "G. F." applied to
velvet ribbon;" "A. C. A." applied to ticking.^ And
we find that similar groups of letters and monograms
have been treated as valid by the later English decisions.^
§ 93. The judicial test of infringement. — It may be
said, generally, that the courts will apply to the facts,
in the class of cases that we are considering, any and all
tests which are necessary to determine whether or not
the competition established by the defendant is fraudu-
lent. In delivering the opinion of the federal supreme
court in Goats v. Merrick Thread Co., Mr. Justice Brown
observed: "The differences are less conspicuous than the
general resemblance between the two. At the same time,
iRansome v. Bentall, 3 L. J. Ch. N. S. 161; Gillott v. Kettle, 3
Duer, 624; Ainsworth v. Walmsley, L. R. 1 Eq. 518; Gillott v. Ester-
brook, 47 Barb. 455; Cox, 340; 48 N. Y. 374; 8 Am. Rep. 553; Broad-
hurst V. Barlow, W. N. 1872, p. 212; Seb. 411; Kinney v. Basch, Seb.
542; Avery v. Meikle, 81 Ky. 75.
-Kinahan v. Bolton, 15 Ir. Ch. 75.
^Godillot V. American Grocery Co., 71 Fed. Rep. 873.
♦Foster v. Blood Balm Co., 77 Ga. 216; 3 S. E, Rep. 284.
SHall V. Barrows, 4 DeG. J. & S. 150.
«Burt V. Smith, 71 Fed. Rep. 161.
7 Giron v. Gartner, 47 Fed. Rep. 467.
^Amoskeag- Mfg. Co. v. Trainer, 101 U. S. 51 (dissent of Mr.
Justice Clifford). To the same effect see Burton v. Stratton, 12 Fed.
Rep. 696; Smith v. Imus, 32 Alb. L. J. 455; Frank v. Sleeper, 150
Mass. 583.
»Hopkins v. Hitchcock, 14 C. B. N. S. 65; Paul v. Barrows, 4 DeG.
J. & S. 150; Re Barrows, L. R. 5 Ch. D. 353; Cartier v. Carlile, 31
Beavan, 292; Moet v. Pickering, L. R. 8 Ch. D. 372; Frankau v. Pope,
11 Cape of Good Hope, 209.
§93] INFRINGEMENT. 207
they are such as could not fail to impress themselves
upon a person who examined them with a view to ascer-
tain who was the real manufacturer of the thread."^
And in all cases the court will inspect not only the dif-
ferences but the resemblances, as both must be consid-
ered in ascertaining whether the competition between
the parties is fair or fraudulent. As said by Judge Sev-
erens: "It has been said that it is the resemblances that
should be looked at, rather than the differences. But
the existence of the latter negatives the former, and it is
necessary to take both into view, in order to get a cor-
rect picture of the whole. "^
Of course the defendant cannot avail himself of dis-
similarities which become apparent only upon compari-
son of the plaintiff's and defendant's packages or marks.
This is because purchasers do not have the opportunity
of making comparisons. "A specific article of approved
excellence comes to be known by certain catchwords
easily retained in memory, or by a certain picture which
the eye readily recognizes. The purchaser is required
only to use that care which persons ordinarily exercise
under like circumstances. He is not bound to study or
reflect. He acts upon the moment. He is without the
opportunity of comparison. It is only when the differ-
ence is so gross that no sensible man acting on the in-
stant would be deceived, that it can be said that the
purchaser ought not to be protected from imposition.
Indeed, some cases have gone to the length of declaring
that the purchaser has a right to be careless,^ and that
his want of caution in inspecting brands of goods with
which he supposes himself to be familiar ought not to be
allowed to uphold a simulation of a brand that is de-
signed to work fraud upon the public. However that may
be, the imitation need only be slight if it attaches to what
1 Coats V. Merrick Thread Co., 149 U. S. 562.
2Proctor & Gamble Co. v. Globe Refining Co., 92 Fed. Rep. 357-362.
''It has been held on circuit that the careless purchaser will not be
protected. N. K. Fairbank Co. v. Luckel, King & Cake Soap Co.,
88. Fed. Rep. 694; but the case was reversed on appeal: s. c, 102
Fed. Rep. 327-332.
208 LAW OF UNFAIR TRADE. [§93
is most salient; for the usual inattention of a purchaser
renders a good will precarious, if exposed to imposition. " ^
The foregoing extract very fully expresses the charac-
ter of supervision over fairness in trade exercised by our
courts of equity. When an article has become known by
a catchword or a peculiar package, any one seeking to
use that form of package, or a mark or name that sug-
gests the catchword, must take care to keep within the
bounds of fairness in trade in so doing. '^
Mere colorable distinctions, so arranged as to escape
notice,^ the use of labels which may be removed by
retail dealers, leaving the imitated marks free to effect
deception,^ and all the other devices and schemes of fraud-
ulent competition disclosed by the reports, are taken into
consideration in determining the right to equitable relief.
One of the most important tests is the existence of simi-
larities of detail, whether of design, form, size, color or
material. Relief will always be granted when "it is
manifest from a comparison (of the two articles in con-
troversy) that one was copied from the other. "^ The
court does not search for dissimilarities, but for points
of resemblance.**
1 Jenkins, J., in Pillsbury v. Flour-Mills Co., 64 Fed. Rep. 841-847.
2 Stuart V. F. G. Stewart Co., 91 Fed. Rep. 243. So the use of the
word "Iwanta" has been enjoined as being a fraud upon the owner
of the trade-mark "Uneeda," both words being applied to biscuit.
National Biscuit Co. v. Baker, 95 Fed. Rep. 135.
^Taylor v. Taylor, L. R. 2 Eq. 290; 23 L. J. Ch. 255.
4 Barlow v. Johnson, 7 R. P. C. 395.
^Shipman, J., in Dixon Crucible Co. v. Benham, 4 Fed. Rep.
527-530.
''Hostetter v. Adams, 10 Fed. Rep. 838-842. Thus Judge Lacombe,
in considering conflicting liquor labels, said: "Inspection of the labels
must carry conviction to any unbiased and unprejudiced mind that
the later label was prepared by some one who had seen the earlier
one, and that it was designed, not to differentiate the goods to which
it was affixed, but to simulate a resemblance to complainant's goods
sufficiently strong to mislead the consumer, although containing
variations sufficient to argue about should the designer be brought
into court. This is the usual artifice of the unfair trader. " Collins-
platt V. Finlayson, 88 Fed. Rep. 693. In another recent case the
same court says: "There are as usual a number of minor differences
between the form and the dress of the two packages, which are
§93] INFRINGEMENT. 209
No matter what minor differences may exist in the tests
of infringement applied by various courts, it has been
uniformly noted that the fact that purchasers have no
opportunity of comparison must be considered, and the
genuine and alleged infringing marks must be judged by
the court, therefore, in the light of that fact.^
In conclusion it is important to bear in mind that
courts of equity have always avoided laying down any
hard and fast rules by which to determine what consti-
tutes fraud. The reason for this absence of set rules has
been well stated as follows: "Were courts of equity to
once declare rules prescribing the limitations of their
power in dealing with it, the jurisdiction would be per-
petually cramped and eluded by new schemes which the
fertility of man's invention would contrive."^
expatiated upon in the afiBdavits and the brief; but no one can look
at both packages without perceiving that there are strong resem-
blances, which could easily have been avoided had there been an honest
effort to give defendants' goods a distinctive dress." National Bis-
cuit Co. V. Baker, 95 Fed. Rep. 135.
iPillsbury V. Pillsbury-Washburn Flour Mills Co., 64 Fed. Rep.
841-847; Manhattan Med. Co. v. Wood, 108 U. S. 218; Alleghany Fer-
tilizer Co. V. Woodside, 1 Hughes, 115; Sawyer v. Kellogg, 7 Fed.
Rep. 721; Sawyer v. Kellogg, 9 Fed. Rep. 601; 'Liggett & Myers
Tob. Co. V. Hynes, 20 Fed. Rep. 883; Hostetter v. Adams, 10 Fed.
Rep. 838-842.
•Weinstock, Lubin & Co. v. Marks, 109 Cal. 529-539.
14
CHAPTER IX.
REGISTRATION.
§94. Introductory. — The English Patents, Designs
and Trade-marks Act, 1883-1888, provides that there can
be no institution of proceedings to prevent or to recover
damages for the infringement of a trade-mark capable
of registration unless it has been registered.^ This pro-
vision does not occur in the act of congress of March 3,
1881, and could have no force or effect if it did, as there
can be no valid trade-mark legislation by congress except
under and by virtue of the commerce clause of the federal
constitution (clause 3 of sec. VIII). As stated by Mr.
Justice Miller: "When, therefore, congress undertakes to
enact a law which can only be valid as a regulation of
commerce, it is reasonable to expect to find on the face of
the law, or from its essential nature, that it is a regula-
tion of commerce with foreign nations, or among the
several states, or with the Indian tribes. If not so lim-
ited, it is in excess of the power of congress. "^
§ 95. The invalid registration acts. — In order to ob-
tain a substantial idea of the difficulties which have
attended our national legislation upon trade-marks, it is
only necessary to read the text of the several enactments
of congress, which are collated in the appendix to this
book. The act of July 8, 1870, was based upon an entire
misconception or disregard of the power resident in con-
gress. Both it and the subsequent penal act of August
14, 1876, were framed with the evident intention of pro-
viding a uniform trade-mark law for the several states.
As will be seen by reference to the annotations to those
acts, in the appendix, their validity was questioned and
H6 and 47 Vict., c. 57, sec. 77; Hazzopulo v. Kaufmann, 23 Sol. J.
819; Goodfellow v. Prince, L. R. 35 Ch. D. 9.
2Trade-mark Cases, 100 U. S. 82.
210
§96] REGISTRATION. 211
negatived upon circuit,^ and it was finally settled by the
supreme court that they were unconstitutional and there-
fore void.^
§ 96. The po-vver of congress to protect trade-
marks.— "The commerce clause of the federal consti-
tution presents the remarkable instance of a national
power which was comparatively unimportant for eighty
years, and which in the last thirty years has been so
developed that it is now, in its nationalizing tendency,
perhaps the most important and conspicuous power pos-
sessed by the federal government."^
It is fortunate that with the judicial determination
that the act of July 8, 1870, was void, came the realiza-
tion by congress that within the scope of authority con-
tained in the words "The congress shall have power
. . to regulate commerce with foreign nations, and
among the several states, and with the Indian tribes,"
lay the foundation for its future trade-mark legislation.
With this fact before it, congress proceeded to the enact-
ment of the act of March 3, 1881, now embodied in the
supplement to the Revised Statutes as section 322. No
reason appears for the fact that under that act protec-
tion and the benefits of registration were extended only
to "owners of trade-marks used in commerce with foreign
nations or with the Indian tribes," and not to owners
of trade-marks used in interstate commerce. But such
is the fact, which it was left to future legislation to
remedy.^
iLeidersdorf v. Flint, 8 Biss. 327,
2Trade-mark Cases, 100 U. S. 82.
3 Prentice & Egan, Commerce Clause of the Federal Constitution,
p. 1.
*"The laws of the United States now in force . . . relate only
to trade-marks specially used in commerce with foreign nations, or
with the Indian tribes. Act of March 3, 1881 (21 St. at Large,
ch. 137, sec. 1). They are particularly restricted so as not to give
cognizance to any court of the United States in an action or suit be-
tween citizens of the same state, unless the trade-mark in controversy
is used on goods intended to be transported to a foreign countr3', or
in lawful commercial intercourse with an Indian tribe. " Wheeler, J.,
in Luyties v. Hollender, 21 Fed. Rep. 281.
212 LAW OF UNFAIR TRADE. [§97
The full text of the present federal trade-mark act/ and
the rules of the Patent Office in reference to the regis-
tration of trade-marks, will be found in the appendix.
§97. The advantages of registration.— The local
registration statutes of the several states are too numer-
ous and involved to be treated here.^ As to federal reg-
istration, Judge Hawley has said that "registration
under the act of 1881 is of but little, if any, value, ex-
cept for the purpose of creating a permanent record of
the date of adoption and use of the trade-mark, or in
cases where it is necessary to give jurisdiction to the
United States courts. "^ Federal registration is, there-
fore, practically useless, owing to the failure of congress
to cover, in the purview of the act of 1881, trade-marks
employed in commerce between the states. As against a
citizen of the same state, a registrant under that act has
not even the right to sue in a court of the United States,
unless it can be shown that both the original and infring-
ing marks are being used in commerce with foreign na-
tions or the Indian tribes.*
Registration under that act is only prima facie evi-
dence of ownership of the trade-mark registered, and is
not conclusive or binding upon the courts as to the right
of a party to its exclusive use.^ The certificate of regis-
^This act has been usually treated as valid. South Carolina v.
Seymour, 153 U. S. 353; 67 Off. Gaz. 1191; Hennessy v. Braun-
schweiger & Co., 89 Fed. Rep. 664. But in a late case Judge Jenkins
said: "There has been no ruling upon the constitutionality of this
act, and it need only be said that its validity is fairly doubtful."
Illinois Watch Case Co. v. Elgin National Watch Co., 94 Fed. Rep.
667-669; 87 Off. Gaz. 2323.
2 Some of the state legislation is referred to post, pp. 231, 232.
3 Hennessy v. Braunschweiger & Co., 89 Fed. Rep. 664-668. Quoted
and followed in Sleepy Eye Milling Co. v. C. F. Blanke Tea & Coflfee
Co., 85 Off. Gaz. 1905. To the same effect see Einstein v. Sawhill,
65 Off. Gaz. 1918; Sherwood v. Horton, Cato & Co., 84 Off. Gaz. 2018.
* Ryder v. Holt, 128 U. S. 525; Luyties v. Hollender, 22 Blatchf.
413; Schumacher v. Schwenke, 26 Fed. Rep. 816; Gravely v. Gravely,
42 Fed. Rep. 265; Prince's Metallic Paint Co. v. Prince Mfg. Co.,
53 Fed. Rep. 493.
^Hennessy v. Braunschweiger, supra; Brower v. Boulton, 53 Fed.
Rep. 389; Glen Cove Mfg. Co. v. Ludeling, 22 Fed. Rep. 824-826.
In the latter case Judge Wallace observed: "The act of congress
§97] REGISTRATION. 213
tration is only prima facie evidence of an admission on
the part of the g^overnment that the applicant for regis-
tration is the owner of a valid trade-mark, is not a grant
of any right or privilege, and does not, therefore, con-
clude a third party; ^ but it is conclusive as against the
registrant, as limiting and restricting what he can claim
as his trade-mark. 2 Notwithstanding its registration
under the act, the trade-mark of an insolvent will be
conveyed by a general assignment for the benefit of
creditors.^
makes the registration of the mark only prima facie evidence of own-
ership. Sec. 7. The inquiry is therefore always open as to the valid-
ity of the title to a trade-mark evidenced by the registration. The reg-
istration could not confer a title to the trade-mark upon the complain-
ant if some other corporation or individual had acquired a prior
right by adoption and use; nor could it vest defendant with a title as
against the complainant's common-law title. In this view the only
oflfice of a registration is to confer jurisdiction upon the court to pro-
tect a trade-mark when the proprietor has obtained the statutory evi-
dence of title, and the only function of the commissioner of patents is
to determine whether an applicant has a presumptive right to the
trade-mark. "
'United States v. Braun, 39 Fed. Rep. 775.
^Kohler Mfg. Co. v. Beeshore, 59 Fed. Rep. 572; Richter v. Rey-
nolds, 59 Fed. Rep. 577; 8 C. C. A. 220; Adams v. Heisel, 31 Fed.
Rep. 279-281; Kohler Mfg. Co. v. Beeshore, 53 Fed. Rep. 262-264;
Richter V. Anchor Remedy Co., 52 Fed. Rep. 455; Pittsburgh Crushed
Steel Co. V. Diamond Steel Co., 85 Fed. Rep. 637.
^Sarrazin v. W. R. Irby Cigar Co., 93 Fed. Rep. 624.
CHAPTER X.
COURTS, PARTIES AND CAUSES.
§98. Introductory. — In the preceding chapters we
have discussed the rights of owners or assignees of trade-
marks, and the wrongs occurring when these rights are
infringed, or, as against persons not the owners of tech-
nical trade-marks, other methods of unfair competition
are resorted to. The remainder of this work will deal
with the means by which infringers are restrained from
a continuance of their wrongdoing and forced to make
reparation for the damage they have occasioned. In
this chapter we will confine our attention to the courts
whose power may be invoked, the parties who may seek
a remedy or against whom it may be sought, and the
causes of action which may properly be brought to
determine the rights of both parties.
§ 99. Jurisdiction of United States circuit courts.
Section 7 of the act of 1881 provides that courts of the
United States shall have original and appellate jurisdic-
tion in cases involving a registered trade-mark, without
regard to the amount in controversy. It has been held
in this connection (prior to the statutes of 1887 and 1888,
which raised the "amount in controversy" necessary to
federal jurisdiction from $500 to $2,000) that the federal
courts were not limited in their trade-mark jurisdiction
to cases in which the defendant's profits had exceeded
five hundred dollars.^ And a later decision has held
that "The statute of 1881, which gives them {i. e., own-
ers of registered trade-marks) the right to commence a
suit without alleging the amount in controversy, was not
repealed by the statutes of 1887 and 1888, which make it
necessary, in order to give jurisdiction to the United
iSymonds v. Greene, 28 Fed. Rep. 834.
214
§99] COURTS, PARTIES AND CAUSES. 215
States circuit court, that the amount involved be two
thousand dollars.'"
In cases where there is diverse citizenship it does not
appear to be necessary to allege that the plaintiff uses
his trade-mark on g-oods intended for commerce with
foreign nations or with the Indian tribes; but it has been
held that the federal courts have no jurisdiction in a
trade-mark action between citizens of the same state un-
less the pleadings affirmatively show that the complain-
ant uses his trade-mark on goods intended for commerce
with foreign nations or with the Indian tribes. ^ One de-
cision declares it necessary, where both parties are citi-
zens of the same state, to aver that the defendant has ap-
plied the simulated mark to goods intended to be used in
such foreign commerce, or trade with the Indian tribes.'
Such a requirement, however, would practically invali-
date the act of 1881, and the reasoning of one of the cases
tends to show that logically no such averment in the
pleadings is necessary.* It is not necessary to show that
either party has used the mark in commerce with foreign
nations or with the Indian tribes where the parties are
of diverse citizenshii3.^
Of course, in cases involving the right to an unregis-
tered trade-mark, jurisdiction can only be acquired by
the federal courts because of the diverse citizenship of
the parties,^ and the amount in controversy, which must
be over $2,000 exclusive of interest and costs; as to trade-
marks, their jurisdiction is concurrent with that of the
the state courts. By virtue of the act of congress of
iQlotin V. Oswald, 65 Fed. Rep. 151; Garland & Ralston, Federal
Practice, sec. 122; Hennessy v. Herrmann, 89 Fed. Rep. 669.
2 Ryder v. Holt, 128 U. S. 525; Glen Cove Mfg. Co. v, Ludeling, 22
Fed. Rep. 823; Gravely v. Gravely, 52 Off. Gaz. 1538; 42 Fed. Rep.
265; Schumacher v. Schwenke, 26 Fed. Rep. 818; Luyties v. Hol-
lender, 27 Blatchf. 413.
SGravely v. Gravely, 52 Off. Gaz. 1538; 42 Fed. Rep. 265.
<Glen Cove Mfg. Co. v. Ludeling, 22 Fed. Rep. 823.
''Hennessy v. Braunschv^eiger & Co., 89 Fed. Rep. 664.
^Battle V. Finlay, 50 Fed. Rep. 106; Burt v. Smith, 71 Fed. Rep.
161; Prince's Metallic Paint Co. v. Prince Mfg. Co., 53 Fed. Rep. 493.
216 LAW OF UNFAIR TRADE. [§99
March 3, 1887, ch. 373, as corrected by the act of August
13, 1888, ch. 866, suit cannot be brought against a cor-
poration for infringement of a trade-mark except in the
district where it is incorporated.^
Where a bill was brought to restrain infringement of
a registered trade-mark and to restrain the defendants
from unfair competition in simulating the form, size,
color and shape of cough-drops manufactured by the com-
plainants (both parties being citizens of the same state),
the United States circuit court of appeals for the second
circuit held that the fact that the trade-mark had not
been infringed deprived the circuit court of jurisdiction,
and that court had therefore erred in granting an injunc-
tion to restrain the unfair competition complained of.^
In a suit for injunction the "amount in controversy"
is the value of the object to be gained by the bill, and
not the amount of damages already suffered by the com-
plainant.^ In actions for infringement of trade-mark or
for unfair competition, therefore, the amount of profits
sought to be recovered does not determine this jurisdic-
tional question. In trade-mark cases it is the value of
the trade-mark that determines and fixes the "amount in
controversy."^ This must be specifically pleaded, be-
cause "the requisite value of the matter in controversy is
a jurisdictional fact, and it must necessarily be averred
in the declaration or bill. There are no presumptions
in favor of the jurisdiction of the federal courts, as they
are specially constituted with jurisdiction in certain
cases; and the facts upon which it rests must appear in
iRe Keasbey & Mattison Co., 160 U. S. 221; Garland & Ralston,
Federal Practice, sec. 161.
2 Burt V. Smith, 71 Fed. Rep. 161. To the same effect see Goldstein
V. Whelan, 62 Fed. Rep. 124; Luyties v. Hollender, 30 Fed. Rep.
632.
^Foster, Federal Practice (2d ed.), sec. 16. Citing Mississippi &
Mo. R. R. Co. V. Ward, 2 Black, 485; Market Co. v. Hoffman, 101
U. S. 112; Symondsv. Greene, 28 Fed. Rep. 834; Whitman v. Hubbell,
30 Fed. Rep. 81.
^Symonds v. Greene, 28 Fed. Rep. 834; Hennessy v. Herrmann, 89
Fed, Rep. 669.
§ 100] COURTS, PARTIES AND CAUSES. 217
some form in the record of all suits prosecuted before
them. They have no jurisdiction except such as the
statute confers."^
When the parties are citizens of different states, so
that the case comes within the general grant of jurisdic-
tion in the first part of the act of March 3, 1887, the de-
fendant, by entering a general appearance in a suit
brought against him in a district of which he is not an
inhabitant, waives the right to object that it is brought
in the wrong district. ^ But a corporation, by doing busi-
ness or appointing a general agent in a district other
than that in which it is created, does not waive its right,
if seasonably availed of, to insist that the suit should
have been brought in the latter district.^
The court of appeals of the District of Columbia has
no jurisdiction of trade-mark cases under section 3 of the
law of 1881.''
Federal jurisdiction in cases of unfair competition
must of course be predicated upon the general rules fix-
ing the jurisdiction of the federal courts, so that those
courts cannot entertain such an action arising between
citizens of the same state except in so far as the respond-
ent's wrongful acts affect commerce with foreign nations
or the Indian tribes; at least that is the express holding
of the circuit court of appeals for the seventh circuit.^
§ 100. Jurisdiction of the state courts. — The state
courts have a jurisdiction concurrent with that of the
federal courts in trade-mark cases. ^ It may, at times,
'Garland & Ralston, Federal Practice, sec. 122.
2 Re Keasbey & Mattison Co., 160 U. S. 221-229.
3 Re Keasbey & Mattison Co., 160 U. S. 221-229. This reverses
the ruling in Gray v. Taper-Sleeve Pulley Works, 16 Fed. Rep.
436-443, where it was held that the service of an agent of a foreign
corporation was binding, the infringement having been perpetrated
in the district where the action was instituted.
< Einstein v. Sawhill, 65 Off. Gaz. 1918.
J- IllinoisWatch Case Co. v. Elgin Nat. Watch Co. , 94 Fed. Rep.667-672.
"The supreme court of Indiana seems to have held at one time that
the jurisdiction of the state courts was exclusive. Small v. Sanders,
118 Ind. 105. It is well settled law that the jurisdiction of state
and federal courts over suits for infringement of trade-marks is con-
current. The act of March 3, 1881, conferring jurisdiction upon the
218 LAW OF UNFAIR TRADE. [§101
be advisable for a non-resident plaintiff who has secured
state registration for his mark or label to sue in the state
court in preference to the federal court; this will be de-
termined by the character of the matter for which state
registration has been secured. Several of the states
have by statute extended the definition of trade-mark to
include tickets, labels, wrappers, and other wrappings
or packages not properly trade-mark, and frequently it
will be a benefit to a complainant to avail himself of such
statutory provisions. ^ The courts of every state of the
Union have, with the exception of California, ^ always
been open to the owners of trade-marks seeking redress
and protection against piracy, without requiring state
registration as a prerequisite.
§ 101. The elements -whereon jurisdiction must be
predicated. — Lord Chancellor Brady, in the Irish high
court of chancery, in 1893, speaking of trade-mark causes,
said: "In such suits, in order to found the jurisdiction
of this court, there must be established, first, the exist-
ence of the trade-mark; next, the fact of an imitation,
whether a direct imitation, or one with such variations
that the court must regard them as merely colorable; and
thirdly, the fact that the imitations were made without
license, or anything that this court could regard as ac-
quiescence in their use."^ Mr. Sebastian refers to the
remark of Vice-Chancellor Bacon, in England, that "the
courts of the United States, in no way impaired the jurisdiction of
the state courts. Re Keasbey & Mattison Co., 160 U. S. 221; Reeder
V. Brodt, (C. P.) 4 Ohio N. P. 265; 6 Ohio Dec. 248.
i"The phrase trade-mark as used in this chapter includes every
description of word, letter, device, emblem, stamp, imprint, brand,
printed ticket, label or wrapper usually affixed by any mechanic,
manufacturer, druggist, merchant or tradesman, to denote any goods
to be imported, manufactured, produced, compounded or sold by him,
other than any name, word or expression generally denoting any
goods of some particular class or description or the designation or
name for any mill, hotel, factory or other business." And see sec.
366, Penal Code of New York, 1893; Montana Codes, 1895, vol. I, sec.
3160.
2 Whittier v. Dietz, 66 Gal. 78. This exception to the rule has since
been removed by statutory enactment.
^Kinahan v. Bolton, 15 Ir. Ch. 75-79. See also Thedford Medi-
cine Co. V. Curry, 96 Ga. 89.
§101] COURTS, PARTIES AND CAUSES. 219
law of Scotland does not in this respect differ from the
law of Eng-land"! (referring to trade-marks), as estab-
lishing, in conjunction with the above dicta of the learned
Irish chancellor, the fact that the iurisdictional princi-
ples in the three kingdoms are the same.^ The supreme
court of New York has held it error to dismiss a com-
plaint upon the pleadings and the opening of counsel
where the complaint showed the ownership of a tobacco
sample ticket used in trade by the plaintiffs, and the
wrongful use of an imitation thereof by the defendants.^
For reasons discussed elsewhere, it is not necessary to
confer jurisdiction that it be alleged that any one has
in fact been misled or deceived by the use of the simulated
mark. But the pleadings must be drawn to suit the exi-
gencies of the case; and where the facts plainly showed
that the simulated mark did not and could not deceive
either the jobber or retailer, and the fraud, if any, was
upon the ultimate purchaser, the consumer, it was proper
to aver the fact that the infringement was calculated to
deceive the consumer,* and it is probably always a better
course to aver that the imitation is calculated to deceive
the ultimate purchaser.
The real and simulated marks should be submitted
with the bill of complaint or accurately described in
appropriate terms, the main test of the alleged resem-
blance being inspection by the court ;'^ with the qualifica-
tion that the resemblance need not be such as to deceive
persons seeing the two marks side by side.*'
1 Singer Mfg. Co. v. Loog (3), L. R. 18 Ch. D. 395-404.
2 Sebastian, Trade-marks (4th ed.), 170.
sLinde v. Bensel, 22 Hun (29 N. Y. Sup. Ct.), 601.
<Drummond Tobacco Co. v. Tinsle.v Tobacco Co , 52 Mo. App. 10-
25. The court adds: "The consumer of the particular article is to be
considered almost exclusively in determining the question of infringe-
ment, because, in the case of an attempted deception, he is substan-
tially the only party likely to be deceived." Citing Sykes v. Sykes,
3 B. & Cr. 541; Farina v, Silverlock, 1 K. «fe J. 509; Rose v. Loftus,
47 L. J. Ch. 576; Singer Mfg. Co. v. Loog (3), 18 Ch. D. 395-412.
*Drummond Tobacco Co. v. Tinsley Tobacco Co., 52 Mo. App. 10-26.
6 Pike Mfg. Co. v. Cleveland Stone Co., 35 Fed. Rep. 896; McCann
V. Anthony, 21 Mo. App. 83; Drummond Tobacco Co. V. Tinsley
Tobacco Co., 52 Mo. App. 10; Hier v. Abrahams, 82 N. Y. 519.
220 LAW OF UNFAIR TRADE. [§102
§ 102. The parties plaintiff. — The action to protect a
trade-mark may be brought by its owner or a licensee.^
Trusts, constructive, implied or expressed, may arise,^ in
which case the name of the trustee would be necessary
in all suits at law affecting the legal title to the trade-
mark, and it would be his duty at all times to protect
and defend the title or allow his name to be used for that
purpose, under the established principles of law affecting
trusts.^
Individuals and corporations having a common interest
may join as parties complainant in a bill in equity to re-
strain an unfair competition in trade. Thus in a recent
case we find seven corporations located in the city of Min-
neapolis joined in a bill to restrain the fraudulent use of
names peculiar to their business and locality, by a dealer
in Chicago,* and the owners of two separate "Blue Lick
Water" springs in Kentucky joined in a bill to restrain
the use of the words "Blue Lick Water" by a third party
who had no right to their use.^ During the period of ad-
ministration the personal representative of the deceased
owner of a trademark holds the mark, as we have seen,
although it has been held in one case that it may pass
iKidd V. Johnson, 100 U. S. 617; Kidd v. Mills, 5 Off. Gaz. 337.
Where there is an exclusive licensee he must be made a party, or no
injunction can issue. Wallach v. Wigmore, 87 Fed. Rep. 469.
2 Re Mitchell, L. R. 28 Ch. D. 666. Thus where the use of a trade-
mark is improperly obtained by one member of a partnership for his
own use, he being bound to obtain it for the partnership, he is held
to be the trustee of the mark for the benefit of the firm. Webster v.
Ketcham (1), 39 N. Y. Sup. Ct. 54. Compare Ex parte Lawrence
Bros., 44 L. T. N. S. 98; 29 W. R. 392; Re Rust, 29 W. R. 393; Re
Farina, 29 W. R. 391. The three cases last named are cases in
which one partner registered a mark in his own name by mistake.
•'Perry, Trusts (4th ed.), sec. 520.
^Pillsbury -Washburn Flour Mills Co. v. Eagle, 86 Fed. Rep. 608.
See also Gravel Roofers' Exchange v. Turnbull, 64 Off. Gaz. 441.
^ Northcutt V. Turney, 101 Ky. 314; 41 S. W. Rep. 21. See also Society
of Accountants v. Corporation of Accountants, 20 Scot. Sess. Cas.
(4th ser.), 750, in which three chartered societies joined in an action
to prevent the use of the letters "C. A." (Chartered Accountants) by
the defendant, those letters having been used only to designate mem-
bers of the three complaining societies. See also Pratt's Appeal,.
117 Pa. St. 401.
§103] COURTS, PARTIES AND CAUSES. 221
without administration.^ Where there is an adminis-
trator, it is his duty to defend the trade-mark from in-
fringement, and he can recover all accrued profits and
damages from the infringer, as actions to restrain in-
fringement and recover profits and damages are held not
tocome within the rule actio personalis moritur cum persona.'^
The owner of real estate and improvements thereon may
have such a right in a trade-mark used to identify the
product of his tenants as to entitle him to prevent his
tenants from using the mark after they have removed to
other premises.^
Where copartners dissolve partnership, each retain-
ing the right to use the trade-marks of the firm, each can
assert his right to the exclusive use of such trade-marks
as to all persons except his associates in ownership.*
But in all cases where the right to a trade-mark is vested
severally in two or more persons, either of them will be
enjoined from advertising or claiming that his is the
■"only genuine" article.^
§ 103. The parties defendant. — We have seen in a
previous chapter that the liability for injunction against
infringement extends to the manufacturer of dies from
which counterfeits of the mark are to be made; and it
may accurately be said that every one who deals with
the simulated trade-mark or the means of producing it
will be restrained in equity.
In a case where a temporary injunction had been
granted against a person since deceased, without oppo-
sition, and the defendant in his life-time had never
moved to vacate it, it was held in New York that the
1 Pratt's Appeal, 117 Pa. St. 401. See Stewart v. Einstein, 64
OS. Gaz. 1533.
^Woerner, Administration, sec. 299; Oakey v. Dalton, L. R. 35
Ch. D. 700; 35 W. R. 709; Hatchard v. Mege, L. R. 18 Q. B. D. 771;
Gibblett v. Read, 9 Mod. 459; Croft v. Day, 7 Beav. 84.
3 Atlantic Milling Co. v. Robinson, 20 Fed. Rep. 217; Armstrong v.
Kleinhaus, 82 Ky. 803; Harper v. Pearson, 3 L. T. N. S. 547; Car-
michael v. Latimer, 11 R. I. 395; Motley v. Downman, 3 My. & Cr. 1;
Dickson v. McMaster, 18 Ir. Jur. 202.
^New York Cement Co. v. Coplay Cement Co., 45 Fed, Rep. 212.
5 Fish Bros. Wagon Co. v. Fish Bros. Mfg. Co., 87 Fed. Rep. 203.
222 LAW OF UNFAIR TRADE. [ § 103
cause would not be continued as against the administra-
trix of the defendant, because it was not shown that the
defendant had acquired any rights in the litigation or
that any prejudice would result to the estate by not con-
tinuing the action. 1
The question who may be parties defendant involves
necessarily a discussion of some of the principles applied
by the courts in infringement proceedings.
Where the plaintiff, the sole owner of a mineral spring,
leased it to one who adopted a name to indicate its waters,
the concessionaire was enjoined at the instance of the
owner from applying the name so used to water from
another spring;''^ and in a case where the owner of a
spring granted concessions to another conveying the
selling privileges in certain countries, the concessionaire
was enjoined from interfering with the sale in those
countries of water from the spring sold through parties
other than the concessionaire.^
A manufacturer may delegate the right to use his trade-
mark to sales merchants, giving them that right only so
long as they buy goods, of the class to which the trade-
mark belongs, from him. Upon their ceasing to so pur-
chase their goods they will be enjoined from the use of
the mark.^
A firm of shippers of merchandise who applied the
name "The Keystone Line" to vessels they did not own,
but of which they had the exclusive management in load-
ing and unloading, were held to have acquired such an
exclusive right in the name that the owners of the ves-
sels so used were enjoined from using the name when the
shippers transferred their business to other vessels, the
property of other ship-owners.-^
One who is merely a forwarding agent may be enjoined.
In an English case a firm of forwarding agents in London
^Republic of Peru v. Reeves, 40 N. Y. Sup. Ct. 316.
2Hill V. Lockwood, 32 Fed. Rep. 389.
^Apollinaris Co. (Ltd.) v. Scherer, 23 Blatchf. 459.
*Re Riviere, S3 L. T. N. S. 237. See also Lavergne v. Hooper,
Ind. L. R. 8 Mad. 149.
*Winsor v. Clyde, 9 Phila. 513.
§103] COURTS, PARTIES AND CAUSES. 223
received from foreig'n correspondents several packages
of cigars bearing forged brands. They were enjoined,
but costs were not assessed against them because they
had, prior to suit, given the makers of the brands so
counterfeited full information as to the consignees and
offered to return the cigars to the consignors or to erase
the brands.^
The managers of an infringing corporation, who are
themselves substantially the corporation, are properly
joined as co-defendants with the corporation in a bill to
restrain the infringement. ^ The directors of an infring-
ing corporation may be joined as co-defendants with it.^
Servants, agents, and employees generally, may be
joined as defendants; they are personally liable to in-
junction.* American agents of foreign houses will be
enjoined from selling counterfeits or imitation goods re-
ceived from their principals.^ The same rule obtains in
regard to English^ or Australian^ agents of foreign
principals, and in regard to commission merchants.*
The principal is, of course, liable for the acts of his
servants or agents, whether or not he can be shown to
have knowledge of those acts.'^
Difficulty arises in considering the rights and liabilities
of innocent parties through whose hands counterfeit
goods pass in transit, who hold them only as bailees and
have no actual or imputed knowledge of their fraudulant
»Upmann v. Elkan, L. R. 12 Eq. 140; L. R. 7 Ch. Ap. 130.
^California Fig Syrup Co. v. Improved Fig Syrup Co., 61 Off. GcLZ.
155; 51 Fed. Rep. 296.
^Armstrong & Co. v. Savannah Soap Works, 61 Off. Gaz. 1018.
<Estes V. Worthington (2), 30 Fed. Rep. 465; Sawyer v. Kellogg (1),
7 Fed. Rep. 721; Sawyer v. Kellogg (2), 9 Fed. Rep. 601.
'Carbolic Soap Co. v. Thompson, 25 Fed. Rep. 625; Roberts v.
Sheldon, 8 Biss. 398.
«Siegert v. Ehlers, Seb. 432; Siegert v. Findlater, L. R. 7 Ch. D.
801; Farina v. Cathery, L. J. N. C. 1867, p. 134.
^Siegert v. Lawrence, 11 Vict. L. R. 47.
8 Coats V. Holbrook, 2 Sandf. 586; Cox, 20; Twentsche Stoom Bleek-
ery Goor v. EUinger, 26 W. R. 70.
9Low V. Hart, 90 N. Y. 457; Atkinson v. Atkinson, 85 L. T. Jour.
229; Twentsche Stoom Bleekery Goor v. Ellinger, 26 W. R. 70; Tonge
V. Ward, 21 L. T. N. S. 480.
224 LAW OF UNFAIR TRADE. [§103
nature. In the case of wharfingers so situated, who of-
fered to act in regard to falsely marked wine in their pos-
session as the court might direct, but asked to have
their charges provided for, the court ruled that they
were entitled to a lien upon the wine for their charges;
that plaintiffs must pay defendant's costs; and if the
plaintiffs had any lien for their own costs as against the
wine, it must be subject to the lien of the wharfingers for
their charges.^
An innocent mortgagee of wines bearing a simulated
mark was held to have a valid lien thereon, and it was
directed that the spurious marks should be effaced and
the wines delivered to him.^
In no case, however, will relief in equity stop short of
protecting the owner of a trade-mark of which imita-
tions or counterfeits are found in the hands of a common
carrier or warehouseman.^ It is the duty of the bailee
so situated to give the owner of the trade-mark full in-
formation in regard to the goods which are or have been
in his hands by virtue of the bailment, and where he re-
fuses so to do, even after the goods have gone beyond
his control, it has been held that a bill will lie against
him to compel discovery.*
If, on the other hand, the bailee gives the owner of the
mark full information, he will be allowed costs if, not-
withstanding his disclosures, proceedings are instituted
against him.^ The wrongs of which this book treats
being torts, and all participants in torts being princi-
pals, a person who assists in conducting an unfair com-
petition by furnishing fraudulent packages or labels is
iMoet V. Pickering, L. R. 6 Ch. D. 770; L. R. 8 Ch. D. 372.
^Ponsardin v. Peto, 33 Beav. 642.
^Ponsardin v. Peto, 33 Beav. 642; Hunt v. Maniere, 34 Beav. 157;
Del Valle v. Mayer, Seton (4th ed.), 236; Seb. 326; Rivero v. Nonis,
Seton (4th ed.), 236; Seb. 299; Moet v. Pickering, L. R. 6 Ch. D.
770; L. R. 8 Ch. D. 372; Upmann v. Elkan, L. R. 12 Eq. 140.
*Orr V. Diaper, L. R. 4 Ch. D. 92. See also Carver v. Pinto Leite,
L. R. 7 Ch. D. 90; 41 L. J. Ch. 92; 25 L. T. N. S. 722; 20 W. R. 134.
* Upmann v. Currey, 29 Sol. J. 735; Upmann v. Forester, L. R. 24
Ch. D. 231; Moet v. Pickering, L. R. 8 Ch. D. 372; Upmann v. Elkan,
L. R. 12 Eq. 140.
§ 104] COURTS, PARTIES AND CAUSES. 225
liable for the injury resulting to the plaintiff from the
unfair competition.^
§ 104. Forms of action. — The most usual form of civil
action to secure redress for trade-mark piracy in this
country is by bill in equity, praying for an injunction,
discovery, account of profits, and damages. The remedy
at law is by an action on the case, for deceit; that form
of action being both the form known to the common law
and that prescribed by the act of March 3, 1881.
An action of deceit may be brought by a purchaser who
has been deceived by the vendor of the fraudulent arti-
cle, but such actions are seldom, if ever, brought, and are
practically unheard of.
One action in a federal court will lie for the infringe-
ment of a patent and the infringement of a trade-mark,
where the trade-mark and the patent were both in-
fringed together.^
iHildreth v. Sparks Mfg. Co., 99 Fed. Rep. 484.
2 "Walker, Patents (3d ed.), sec. 417; Jaros Underwear Co. v. Fleece
Underwear Co., 60 Fed. Rep. 622.
15
CHAPTER XI.
THE CRIMINAL PROSECUTION — FEDERAL AND STATE.
§ 105. The act of 1876. — The prosecutions under which
the decision styled the Trade-mark Cases'^ was rendered
were instituted under the act of congress of 1876. This
was a penal act applicable to infringers of trade-marks
registered under the registration act of 1870. Mr. Justice
Miller says, in the conclusion of his opinion: "While we
have, in our references in this opinion, had mainly in
view the act of 1870, and the civil remedy which that act
provides, it was because the criminal offenses described
in the act of 1876 are, by their express terms, solely ref-
erable to frauds, counterfeits, and unlawful use of trade-
marks which were registered under the provisions of the
former act. If that act is unconstitutional, so that the
registration under it confers no lawful right, then the
criminal enactment intended to protect that right falls
with it. "2
After the enactment of the act of March 3, 1881, some
able lawyers inclined to the belief that the act of 1876
was by the passage of a valid registration act given
new life, or, as stated by one eminent jurist: "This is
not an instance of revival; for the penal act was not
dead, but simply dormant. Its sleep was ended by the
birth of the act of 1881. No words were required in the
latter to set the penal law in motion. That which is 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. "3
This reasoning, however, has not been followed by
the courts. The proposition was first submitted to Judge
Thayer, but in his opinion he expressly refrained from
1100 u. s. 82.
2 Trade-mark Cases, 100 U. S. 82-99.
"Browne, Trade-marks (2d ed.), sec. 371.
236
§ 105 ] THE CRIMINAL PROSECUTION. 227
deciding it, sustaining demurrers to indictments based
upon the act of 1876 upon other grounds.^ Subsequently
the question was squarely presented to Mr. Justice
Brewer, sitting as circuit judge, who said in substance:
"While the act of 1870 was a nullity, it must be assumed
as a matter of fact that in framing the act of 1876 the
penalties imposed were with reference to the terras of
the statute of 1870. . . . Again, when the act of 1881
was passed, if congress had intended that penalty should
be imposed for a trespass upon the rights conferred by
that statute, or if it had intended that the act of 1876
should be revivified and operate upon the act of 1881, it
was very easy to say so. Its silence in this respect is
cogent evidence that it did not understand or intend that
the penal statute should be considered a part of pres-
ent and valid law. And that assumption is strengthened
by the fact that it had before it for consideration this
passage from the opinion of the supreme court (quoted
above) in which it is broadly stated that the act of 1876
had fallen with the act of 1870. Whatever may be true
as to the full meaning of that decision, or as to the gen-
eral power of congress to impose penalties for trespasses
upon rights having no existence, it had before it the gen-
eral affirmance by the court that the law of 1876 had
fallen, and it must be assumed that if it meant that it
should stand and be vivified, or that any penalties should
be imposed for violations of the law of 1881, it would
have so stated. These considerations convince me very
strongly that the act of 1876 has, as the supreme court
said, fallen with the act of 1870, and it is as much a dead
letter as the act of 1870, and was not vivified or given
operative force by the act of 1881. "^
The act of 1876, then, is no longer of force, and there is
no federal relief by criminal prosecution to be had; ex-
cept that under certain conditions, which we will examine
in the next section, the owners of trade-marks applied to
J United States v. Braun, 39 Fed. Rep. 775-777.
2 United States v. Koch, 40 Fed. Rep. 250-252.
228 LAW OF UNFAIR TRADE. [ § 106
spirituous liquors and wines may be measurably pro-
tected by federal prosecution under the internal revenue
laws.
§ 106. Section 3449, Revised Statutes. — In the last
paragraph of section 29 of the act of congress approved
July 13, 1866, and entitled "An act to reduce internal
taxation and to amend an act entitled 'An act to provide
internal revenue to support the government, to pay in-
terest on the public debt, and for other purposes,' ap-
proved June 30, 1864" (now section 3449, Revised Statutes
of the United States), it is provided as follows:
"Whenever any person ships, transports, or removes
any spirituous or fermented liquors or wines, under any
other than the proper name or brand known to the trade
as designating the kind and quality of the contents of
"the casks or packages containing the same, or causes
such act to be done, he shall forfeit said liquors or wines,
and casks or packages, and be subject to pay a fine of
five hundred dollars."
This enactment is constitutional, being within the
authority delegated to congress by the first clause of
section 8 of article 1 of the constitution, being to "levy
and collect taxes," and to "make all laws which shall
be necessary and proper for carrying into execution that
power." It is no objection to the validity of the act that
its enforcement incidentally protects the owners of trade-
marks. As stated by Mr. Justice Nelson in another con-
nection: "It will not do to say that the exercise of an
admitted power of congress conferred by the constitution
is to be withheld, if it appears, or can be shown, that the
effect and operation of the law may incidentally extend
beyond the limitation of the power. Upon any such in-
terpretation the principal object of the framers of the
instrument in conferring the power would be sacrificed
to the subordinate consequences resulting from its exer-
cise."^ It has therefore been held constitutional by
1 State of Pennsylvania V. Wheeling & Belmont Bridge Co., 59 U. S.
421-433.
§107] THE CRIMINAL PROSECUTION. 229
Judges Lacombe,^ Thayer, Sanborn, Caldwell* and Haw-
ley.^ Under this section the term "package" includes
every box, barrel, or other receptacle into which distilled
spirits have been placed for shipment or removal, either
in quantity or in separate small packages, as bottles or
jugs.* The phrase "proper name or brand" does not
refer to the trade-mark or make of a certain distiller, but
to a removal under an improper or misleading title, as
where the fraud on the government is attempted of re-
moving brandy under the name of whiskey.*
"What will constitute transportation or removal under
the terms of this act is not determined, and will probably
depend upon the facts in each particular case. The act
includes in its purview any person who ships, transports
or removes liquors in violation of its provisions.^
This act is capable of protecting to a great extent the
owners of trade-marks used in the liquor trade.
§ 107. Criminalliability at common la-w. — The coun-
terfeiter of a trade-mark is not guilty of forgery.^ His
offense is comprehended under some division of the vari-
ous fraud acts. Probably it will always be found to fall
within the limits of the acts defining the offense of ob-
taining money under false pretenses.^ But under the
English decisions it is not a forgery, even where the
trade-mark counterfeited consists of a signature.^ In
the United States, however, prosecutions have been very
1 United States v. Loeb, 49 Fed. Rep. 636.
'United States v. 132 Packages of Spirituous Liquors and "Wines,
76 Fed. Rep. 364; reversing same case, 65 Fed. Rep. 980.
3 United States v. Campe, 89 Fed. Rep. 697.
■•United States v. 132 Packages of Spirituous Liquors and Wines,
76 Fed. Rep. 364-368.
* United States v. 132 Packages of Spirituous Liquors and Wines,
76 Fed. Rep. 364-368.
« United States v. Campe, 89 Fed. Rep. 697-699.
^ White V. Wagar, 185 111. 195-202. He maj- be, where the counter-
terfeit mark contains a guarantj', expressed or implied. White v.
Wagar, 83 111. App. 592-596.
8Regina v. Smith, D. & B. 566; 8 Cox, 32.
9Regina v. Closs, D. & B. 460; 7 Cox, 494; Regina v. Smith, 8 Cox,
37; Regina v. Dundas, 6 Cox, 380; Regina v. Gray, Seb. 183; Regina
V. Sutter, 10 Cox, 577.
230 LAW OF UNFAIR TRADE. [ § 108
seldom resorted to. The prosecutor in actions sounding
in false pretenses should, of course, be the customer who
has been defrauded, and as a rule he is little inclined to
prosecute,
§ 108. The penal statutes of the several states. —
There are three general classes of state penal acts
relating to violations of trade-mark rights.^ The first
covers offenses against all trade-marks. Sometimes
these statutes are limited to offenses against trade-marks
registered in the state; while in other instances there
is no such limitation, and no registration is required.
In the foot-note is a list of statutes comprising examples
of the general penal legislation of the several states
affecting trade-marks.^
iThe so-called "flag" law of Illinois (Laws 1889, p. 234), prohib-
iting the use of the national flag or emblem for commercial pur-
poses, was held unconstitutional in Ruhstrat v. People, 185 111.
133.
^Arizona. — Revised Statutes, 1887. Penal Code, ch. 11, sees. 574-
578.
Arkansas. — Sandels & Hill's Digest of the Statutes, 1894, sec.
7352.
California.— Deering's Penal Code, 1897, sees. 350, 351.
Colorado. — Mills' Annotated Statutes, 1896, vol. Ill, sees. 298Sc,
2985(Z.
Connecticut.— General Statutes, 1898, sees. 3961-3963.
Delaware.— Act of March 29, 1893, ch. 699, vol. XIX, Laws, sees.
1-6.
Georgia.— Code, 1895, vol. Ill, sees. 252, 253.
Idaho. — Revised Statutes, 1887, sees. 6862, 6863.
Illinois.— Starr & Curtis, Annotated Statutes (2d ed.), 1896,
p. 1288, pars. 232, 233; p. 3955, par. 7; p. 3957, par. 10.
Indiana.— Burns, Annotated Statutes, 1894, sees. 8686, 8690-
8692.
Iowa.— Code, 1897, sees. 5047, 5048.
Kansas.— General Statutes, 1897, vol. II, ch. 100, sec. 421.
Maine.— Revised Statutes, 1883, ch. 126, sec. 7; Laws of 1893, ch.
276.
Massachusetts.— Acts 1895, ch. 462 (Supp. Public Statutes, 1897,
p. 1398), sees. 4, 5.
Michigan.— Act 1891, p. 39, sec. 3.
Minnesota. — General Laws, 1895, ch. 122, sec. 2.
Missouri.— Revised Statutes, 1889, sees. 8571-8574.
Montana. — Penal Code, 1894, sec. 636.
New York.— Penal Code, 1893, sec. 364.
§ 108] THE CRIMINAL PROSECUTION. 281
The second class of statutes comprehends the use of
trade-names, labels and trade-marks by trades unions.^
The third class of state penal legislation consists of
acts intended to protect the owners of syphons and bot-
tles from the refilling or malicious destruction of such
packages by others. A number of these acts are cited
in the foot-note.^
In several of the states there are statutory provisions
for the issuance of search-warrants in aid of prosecutions.^
The protection offered by these various state enact-
ments is inconsiderable. Practically without exception
it is necessary to prove fraudulent intent to sustain a
conviction. Such proof is difficult. Thus under the Illi-
nois acts it was held that the proof that two persons,
strangers to the defendant, had told him that the mark
or label on the goods he was selling was counterfeit, was
not necessarily sufficient to prove his guilty knowledge.^
'Illinois.— Laws 1891, p. 202. See Vogt v. People, 59 111. App. 684.
Kentucky. — Public Acts 1889, ch. 823, p. 99.
Maryland.— Acts 1892, ch. 357.
Massachusetts. — Statutes 1895, ch. 462, sec. 3. See Tracy v.
Banker, 170 Mass. 266.
Nebraska.— Laws 1891, ch. 15, p. 214.
New Jersey. — Acts 1889, p. 107. Held constitutional in Schmalz
V. Wooley, 57 N. J. Eq. 303.
New York.— Laws 1889, ch. 385, p. 533. Held valid in Perkins
V. Heert, 158 N. Y. 306; 53 N. E. Rep. 18.
Ohio.— Laws 1890, p. 141.
Wisconsin. — Laws 1891, p. 353.
2 Arkansas .— Acts 1895, p. 232.
California. — Deering's Penal Code, 1897, sec. 354.
Colorado.— Mills, Annotated Statutes, 1896, vol. Ill, sees. 2985(/-
2985t.
Connecticut.— Act of April 25, 1895, Acts 1895, p. 490.
^Illinois.- See White v. Wagar, 83 111. App. 592; affirmed s. c,
185 111. 195; holding warrant improperlj' issued under general
search-warrant act.
Indiana. — Burns, Annotated Statutes, 1897, sec. 8680t?.
Massachusetts. — Acts 1893, ch. 440, sec. 4.
Missouri. — Acts 1893, p. 259.
New York. — Penal Code, 1893, sec. 369. See People v. Hogan,
29 N. Y. State, 110.
*Vogt V. The People, 59 111. App. 684.
232 LAW OF UNFAIR TRADE. [§ 108
This fact, combined with the great uncertainty of trial by
jury in criminal causes, renders the owner of a trade-
mark very reluctant to intrust his trade-mark's protec-
tion to the criminal courts. The state of Massachusetts
has made a marked advance in this direction by an act
requiring- a defendant charged with the sale of goods
bearing a spurious mark to show that he bought them in-
nocently.^ There is no reason why these acts should in
any case require proof of fraudulent intent as a prerequi-
site to a conviction. 2
Illinois.— Act of May 2, 1873, Starr & Curtis, Annotated Statutes
(2d ed.), 1896, p. 3953, pars. 1-5.
Indiana. — Burns, Annotated Statutes, 1894, sees. 8678-8680; Burns,
Annotated Statutes, 1897, sees. 8680a-8680gi.
Iowa.— Code, 1897, sec. 5052.
Kansas. — General Statutes, 1897, vol. II, ch. 100, sec. 422.
Louisiana. — Acts 1896, p. 169.
Maine. — Acts 1891, ch. 125, sees. 1-3.
Massachusetts. — Acts 1893, ch. 440; Supplement to Public Stat-
utes, 1897, p. 909.
Missouri. — Acts 1893, p. 256.
New York. — Penal Code, 1893, sec. 369. Heydecker's Gen. Laws,
1900, ch. XXXIV, sec. 28. See Mullins v. People, 23 How.
Pr. 289; 24 N. Y. 399.
1 Massachusetts Acts of 1895, ch. 462, sec. 5.
2 Wood V. Burg-ess, L. R. 24 Q. B. D. 162; holding proof of fraudu-
lent intent immaterial in a prosecution under Merchandise Marks
Act, 1887 (50 and 51 Vict., c. 28).
CHAPTER XII.
ACTIONS AT LAW.
§ 109. The form of action. — An action of trespass on
the case is prescribed by the act of March 3, 1881, as the
proper legal remedy for infringements of trade-marks.^
It is against the policy of the law that the owner of a
valid trade-mark should lose by reason of its infringe-
ment. To prevent such a result, the action of trespass
on the case is well adapted, because it measures the
plaintiff's recovery by the plaintiff's loss. But it is also
against the policy of the law that an infringer should
gain by reason of his infringement. To prevent such a
result, the action of trespass on the case is not well
adapted, because an infringer may often gain much more
than the owner of the trade-mark loses by reason of the
infringement.
Section 914 of the Revised Statutes of the United
States provides that "The practice, pleadings, and forms
and modes of proceeding in civil causes, other than
equity and admiralty causes, in the circuit and district
courts, shall conform, as near as may be, to the practice,
pleadings, and forms and modes of proceeding existing
at the time in like causes in the courts of record of the
state within which such circuit or district courts are
held, any rule of court to the contrary notwithstanding."
The majority of the states have now abolished all
common-law forms of action. The provision of the act
of 1881 providing trespass on the case as the appropriate
remedy for trade-mark infringement is in apparent con-
flict with the section above recited. What form of action
must the pleader use? The law of trade-marks, in this
regard, is identically the same as the law of patents, for
the action of trespass on the case is provided by Revised
lAct of March 3, 1881, sec. 7.
L'33
234 LAW OF UNFAIR TRADE. [§109
Statutes, section 4919, as the remedy at law for patent
infring-ement. And it seems very clear that the rule laid
down by the federal courts in patent cases is the rule
which must govern actions at law in trade-mark cases,
namely, that the pleadings in an action at law for trade-
mark infringement must conform to the common-law
rules, even in a code state. ^
The history of this form of action has been succinctly
described by English jurists. Lord Blackburn said:
"The original foundation of the whole law is this: that
when one knowing that goods are not made by a particu-
lar trader sells them as and for the g-oods of that trader,
he does that which injures that trader. At first it was
put upon the g'round that he did so when he sold inferior
goods as and for the trader's; but it is established (alike
at law 2 and in equity^) that it is an actionable injury
to pass off goods known not to be the plaintiff's as and
for the plaintiff's, even though not inferior,"*
The development of the action on the case, and the
manner in which it became adapted to the exigencies of
trade-mark issues, are thus admirably stated by Mellish,
L. J. : "In my opinion all actions of this nature must be
founded upon false representations. Originally, I appre-
hend, the right to bring an action in respect of the im-
proper use of a trade-mark arose out of the common-law
right to bring an action for a false representation, which,
of course, must be a false representation made fraudu-
lently. It differed from an ordinary action for false
representation in this respect: that an action for false
representation is generally broug'ht by the person to
whom the false representation is made; but in the case
of the improper use of a trade-mark, the common-law
courts noticed that the false representation which is
made by putting another man's trade-mark, or the trade
name of another manufacturer, on the goods which the
^ Myers v. Cunningham, 44 Fed. Rep. 349.
^Blofield V. Payne, 4 B. & Ad. 410.
^Edelstenv. Edelsten, 1 DeG. J. & S. 185.
^Singer Mfg. Co. v. Loog (3), L. R. 8 A. C. 15-29.
§ 110] ACTIONS AT LAW. 235
wrong-doer sells, is calculated to do an injury, not only
to the person to whom the false or fraudulent represen-
tation is made, but to the manufacturer whose trade-
mark is imitated; and, therefore, the common-law courts
held that such a manufacturer had a right of action for
the improper use of his trade-mark. Then the common-
law courts extended that doctrine one step further; first,
if I recollect rightly, in the case of Sykes v. Sykes} There
it was held that although the representation was per-
fectly true as between the original vendor and the origi-
nal purchaser, in this sense, that the original purchaser
knew perfectly well who was the real manufacturer of
the goods and therefore was not deceived into believing
that he had bought goods manufactured by another per-
son, yet if the trade-mark was put on the goods for the
purpose of enabling that purchaser, when he came to re-
sell the goods, to deceive any one of the public into
thinking that he was purchasing the goods of the manu-
facturer to whom the trade-mark properly belonged, then
that was equally a deception, a selling of goods with a
false representation, which would give the original user
of the trade-mark a right of action. That was the com-
mon-law right. '"^
§ 110. The declaration. — On account of the provision
of the act of March 3, 1881, establishing the action of
trespass on the case as the proper remedy at law for in-
fringement of registered trade-marks, it becomes impor-
tant to give attention to the pleadings necessary in that
form of action.
The proper parts of a declaration in an action on the
case are, in their order, as follows:
1. The title of the court.
2. The title of the term.
3. The name.
4. The commencement.
5. The statement of the right of action.
6. The conclusion.
'3B. & Cr. 541.
« Singer Mfg. Co. v. Wilson, L. R. 2 Ch. D. 434-453.
236 LAW OF UNFAIR TRADE. [§ 110
The correct title of the United States circuit court
established in the northern district of California is "The
Circuit Court of the United States for the Northern Dis-
trict of California," and the titles of the various other
circuit courts are the same, except as to the name of the
district,^ to which should be added the name of the divi-
sion of the district, where the judicial districts are sub-
divided.
The term in which the declaration should be entitled is
the term to which the defendant is summoned.^ It is un-
necessary to entitle a declaration in the name of the case
in which it is filed; the style of the case may be indorsed
upon the back of the declaration as a matter of conven-
ience.^
The venue should be laid in the district where the dec-
laration is filed, regardless of the district or districts
wherein the infringement was committed.*
The commencement sets forth the names of the parties
and the capacity in which they respectively sue or are
sued, if it is other than a natural capacity.^
A corporation cannot be or become a citizen of a state, ^
and therefore an averment of its citizenship is improper.
When a corporation is a party the corporate name should
be set forth, followed by the averment that the said cor-
poration "is a corporation created under the laws of the
state of , and having its principal place of business
at ."^
The courts of the United States having a limited ju-
risdiction, the jurisdictional facts must be expressly
pleaded in the declaration. Diverse citizenship, if it ex-
ists, must be shown. If the trade-mark involved is reg-
1 Revised Statutes, sec. 608.
^Chitty, Pleading (15th Am. ed.), p. 263.
s Walker, Patents (3d ed.), sec. 422.
nbid.
*Ibid.
spaul V. Virg-inia, 8 Wall. 168; Ducat v. Chicago, 10 Wall. 410.
^Shiras, Equity Practice (2d ed.), sec. 34. Citing Lafayette Ins.
Co. V. French, 18 How. 404; Railroad Co. v. Harris, 12 Wall. 65; Ex
parte Schollenberger, 96 U. S. 369; Pennsylvania Co. v. Railroad
Co., 118 U. S. 290; Goodlet v. Railroad, 122 U. S. 391.
§ 110] ACTIONS AT LAW. 237
istered under the act of March 3, 1881, that fact must be
pleaded, because, first, it establishes a prima facie right
to the use of the mark, and second, confers jurisdiction
upon the federal court regardless of the amount in con-
troversy.'
If the action is between citizens of the same state,
even though involving a registered trade-mark, the dec-
laration must aver that the plaintiff uses the trade-mark
and the defendant the infringing mark upon goods in-
tended for commerce with foreign nations or with the
Indian tribes.''^ If the action is based upon a common-
law trade-mark, the declaration must set forth the
amount in controversy, which is not the amount sought
to be recovered, but the value of the trade-mark, and
that value must be not less than two thousand dollars.^
The commencement of the declaration should close with
a recital that the form of action is that of trespass on the
case.*
Fraud is essential to recovery at law. Lord Westbury
said, ' ' Proof of fraud on the part of the defendant is of
the essence of the action."^ Furthermore, at law it is
necessary to show, and plead, that an injury has actually
been done by the defendant's act of infringement,^
The averment of infringement should set forth, then,
in what the infringement consisted, and that it was done
wilfully and with fraudulent intent on the part of the
^Act of March 3, 1881, sec. 7. Symonds v. Greene, 28 Fed. Rep,
834; Glotin v, Oswald, 65 Fed, Rep. 151; Hennessy v, Herrmann, 89
Fed. Rep, 669; Re Keasbey & Mattison Co., 160 U. S. 221-227.
^Luytiesv. Hollender (1), 22 Blatchf. 413; Schumacher v. Schwenke
(1), 26 Fed. Rep. 818; Ryder v. Holt, 128 U. S. 525; Gravely v.
Gravely, 42 Fed, Rep, 265; Prince's Metallic Paint Co. v. Prince
Mfg. Co., 53 Fed. Rep. 493.
^Symonds v, Greene, 28 Fed, Rep. 834.
< Walker, Patents (3d ed.), sec. 422.
*Edelsten v. Edelsten, 1 DeG. J. & S. 185; Hargraves v. Smith,
Seb. 338; Lawson v. Bank of London, 18 C. B. 84; 25 L. J. C. P. 188;
2 Jur. N. S. 716; 27 L. T. 134; 4 W. R. 481; Seb. 140; Rodgers v,
Nowill, 6 Hare, 325; 5 C. B. 109; 17 L. J. C. P. 52; 11 Jur. 1039; 10
L. T. 88; Seb. 82; Crawshay v. Thompson, 4 Man. & G. 357; 5 Scott,
N. R, 562; 11 L, J. C, P. 301; Seb. 72.
« Singer Mfg. Co. v. Loog (3), L. R. 8 App. Cas. 15-30,
238 LAW OF UNFAIR TRADE. [§110
defendant. The statement of the right of action should
describe the trade-mark in exact and appropriate terms,
and where possible the real and simulated marks should
be reproduced in fac-simile.
The conclusion of the declaration should pray for the
actual damage sustained by the plaintiff and for puni-
tive damages if the facts justify. Some adjudications in
the past have held that there can be no recovery of puni-
tive damages,^ but such a conclusion is at variance with
the fundamental principles of the law of torts. The
more wholesome and better reasoned doctrine is to the
contrary. 2
The conclusion ends with the formal allegation of bring-
ing suit.
It is necessary at common law in drafting the declara-
tion to directly allege that the injury has been committed
by continuation from one given time to another or that
it was committed on divers days and times. Thus, one
pleader alleged in his declaration as follows: "Since the
1st day of November, 1888, knowingly, wilfully, and
fraudulently offered for sale, and is now selling, glue in
packages." Upon the trial, in the federal circuit court
for the district of Massachusetts, the complainant was
permitted to introduce proof of sales by the defendant
of infringing goods between November 1, 1888, and
November 30, 1889, amounting to $56,318.24. The circuit
court of appeals of the fourth circuit set aside a judg-
ment of $8,000, entered upon the verdict of a jury, saying,
by Putnam, J., "There is no continuando with reference
to the matter of selling; so that, according to the common
law, the plaintiff could properly prove only one actual
sale as an independent basis of damages. The defendant
insisted at all necessary points on the enforcement of
the rule, and exceptions were carefully taken and
allowed; so that this court, however much it may regret
it, is compelled to meet this issue. There is no doubt
1 Taylor V. Carpenter (2), 2 Wood. & M. l;Cox,32;9L. T. 514;Seb. 83.
2 Warner v. Roehr, Fed. Case No. 17189A; Day v. Wood worth. 13
How. 363; Browne, Trade-marks (2d ed.), sees. 519, 520.
§111] ACTIONS AT LAW. 239
that at common law the position of the defendant would
be correct on this point, and the Massachusetts statutes
relating- to pleading- have not chang-ed this rule."^
§111. Defenses. — The defenses to actions for trade-
mark infringement may be divided into two classes.
The first class embraces defenses which attack the plain-
tiff's rig-ht to sue. It may be that the owner of a trade-
mark who sues for infringement has conveyed the right
to use the mark to an exclusive licensee for a term of
years. In such a case no injunction can issue unless the
licensee joins in the action.- It may be advisable to set
up laches or acquiescence, or that there are facts to
justify a plea that whatever rights the complainant once
had he has lost by abandonment; which matters have
been discussed in a preceding chapter. In an exceptional
case the complainant's recovery may be precluded by an
estoppel,^ which should, of course, be pleaded. The
complainant's mark may have become invalid because its
assignment to him from its former owner has not been
sufficiently advertised, and tends to mislead the public
into a belief that the former owner is still the producer
of the goods. ^ The complainant's label may contain mis-
representations of fact,^ or his alleged trade-mark may
be a word that, once distinctive, has become puhlici jurist
It is a good defense to the action at law to show either
of these matters. The fact that the complainant's trade-
mark is registered does not deprive the public of the
right to use a similar mark which was common to the
trade before the registration. Thus, where "La Nor-
mandi " was registered as a mark for cigars, but ' ' La Nor-
manda" was alread}'- in common use for a like purpose,
^Le Page Co. v. Russia Cement Co., 51 Fed. Rep. 941-949.
2 Wallach v. Wigroore, 87 Fed. Rep. 469.
^Lavergne v. Hooper, Ind. L. R. 8 Mad. 149.
* Alaska Packers' Ass'n v. Alaska Imp. Co., 60 Fed. Rep. 103;
Siegert v. Abbott (1), 61 Md. 286.
*PisoCo. V. Voight, 4 Ohio N. P. 347; Krauss v. Jos. R. Peebles'
Sons Co., 58 Fed. Rep. 585.
« Siegert v. Abbott (4^^15 N. Y. Supp. 590; 72 Hun, 243.
240 LAW OF UNFAIR TRADE. [§111
injunction to restrain the use of the latter was denied.^
In fact the registration of a trade-mark does not prevent
its being' attacked as a word publici juris, or as being it-
self a colorable imitation of another trade-mark.^ The
English decisions upon this point are in harmony with
those of the courts of the United States.^
The defendant may plead a license from the owner of
the mark. This, of course, presumes that the license
was lawful, and that the licensee has not so used the
mark as to perjDetrate a fraud upon the public* Where
two or more persons have an equal right in the use of
the mark the defendant may plead a license from either
of them.^
The second class of defenses that may be interposed
are pleas that deny the infringement — either denying
that any infringement has been perpetrated by the de-
fendant, or, if the infringing mark has been handled or
dealt with by the defendant, denying that guilty knowl-
edge which the complainant must prove to sustain his
suit at law.
In the foregoing portion of this section we have noted
the defenses which, if sustained by the proof, will relieve
the defendant from liability at law. The action at law
is much easier of defense than that in equity, and in an-
other section, after we have considered the action in
equity, will be found enumerated a number of defenses
^Stachelberg v. Ponce, 23 Fed. Rep. 430; Price & Steuart, 967; 128
U. S. 686.
2 Moorman v. Hoge, 2 Sawyer, 78; Decker v. Decker, 52 How. Pr.
218; Glen Cove Mfg. Co. v. Ludeling, 22 Fed. Rep. 823; Cox, Manual,
695; 23 Blatchf. 46; Schumacher v. Schwenke (2), 36 Off. Gaz. 457.
3Re Palmer, L. R. 21 Ch. D. 47; Bodega Co. (Ltd.) v. Owens, 23 L.
R. Ir. 371; Wolfe v. Lang, 13 Vict. L. R. 752; Wolfe v. Alsop (2), 12
Vict. L. R. (E.), 421; Lewis v. Klapproth, 11 Vict. L. R. (E.), 214.
*The goods to which a licensee applies the mark must be equal in
quality to the goods to which the licensor applied them. Lawrence
Mfg. Co. V. Tennessee Mfg. Co., 31 Fed. Rep. 776; 138 U. S. 537;
Oldham v. James, 13 Ir. Ch. 393; 14 Ibid. 81; Bloss v. Bloomer, 23
Barb. 604; Cox, 200; Samuel v. Berger, 24 Barb. 163; Cox, 178; Rod-
gers V. Philp, 1 Off. Gaz. 29; Re Tolle, 2 Off. Gaz. 415.
'^Marshall v. Pinkham, 52 Wis. 572; Price & Steuart, 497.
§112] ACTIONS AT LAW. 241
which have proved ineffective in equity, many of which
would doubtless be adequate at law.
§ 112. Damages. — The courts of the United States
have sij^nally failed to a.gree upon any fixed rule as to
the measure of damag-es in actions at law for the in-
fring-ement of trade-marks. To the student of the de-
cisions the only apparent cause for this fact lies in two
practical reasons. The first, that the remedy offered by
equity is more complete. The second is that the bulk of
the trade-mark piracy, of this country at least, is con-
ducted by insolvents, who offer no inducement to the
vigilant prosecution which should be visited ui)on them.
In 1846, in the United States circuit court for the dis-
trict of Massachusetts, Woodbury, J., said: "In a case
like this (an action of trespass on the case for trade-
mark infringement), if in any, no reason exists for giving
greater damages than have actually been sustained, or
what have been called compensatory. There is nothing
peculiarly atrocious in the conduct of the defendant, to
be punished by damages, and in no other way, as a pub-
lic example, considering the blamable usages which ex-
ist on this subject."^ In a Missouri case, the St. Louis
court of appeals, by Lewis, P. J., held that it was error
in the trial court to instruct the jury that they might find
exemplary damages if from the evidence they believed
that the acts of the defendant were wilful or malicious.
The reasoning of the court is that "If the plaintiffs had
demanded an accounting of the profits made by the de-
fendants, on the equitable ground that those profits were
made by the use of the plaintiffs' property, the instruc-
tions might have been substantially applicable."'^
An eminent text-writer thus states the rule: "The
jury are to give actual damages which the plaintiff has
sustained — not vindictive or speculative damag^es, but
1 Taylor v. Carpenter (2), 2 Wood. & M. 1; Cox, 32; Fed. Case No.
13785. The passage quoted is a mere dictum, uttered in the course
of an opinion upon a motion for a new trial where a jury had been
directed that they might find punitive damages. The verdict was
not disturbed.
^Addington v. Cullinane, 28 Mo. xVpp. 238-241.
16
242 LAW OF UNFAIR TRADE. [§ 112
such as his proof has shown to their satisfaction he has
actually sustained by the infringement."^
To the author's mind the better rule is announced in
the case of Warner v. Boehr, in which the instructions of
Judge Blodgett to a jury said in part: "In cases of this
character, where you are satisfied from the proof and
from the admissions in the case that the fraud — the in-
tention to defraud — is at the bottom of the matter, . . .
the jury are not confined to the exact monetary damages,
but may give what are known as vindictive or exemplary
damages, for the purpose of deterring others from em-
barking in the same schemes of fraud and deception. "^
It is not to be doubted that this doctrine is more reason-
able and just, and better adapted to protect society from
the ravages of trade-mark infringers, than the rule stated
in Taylor v. Carpenter^ and Addington v. Gullinane.^ It is
difficult to see how the result stated in those cases has
been attained. They are wholly without precedent
and opposed to the rule of damages which obtained at
common law. What that rule was, and is, so far as our
federal courts are concerned, is nowhere more clearly
stated than by Mr. Justice Grier in an opinion in which
he speaks for the federal supreme court. He says:
"It is a well-established principle of the common law'
that in actions of trespass and all actions on the case for
torts a jury may inflict what are called exemplary, puni-
tive or vindictive damages upon a defendant, having in.
view the enormity of his olf ense rather than the measure
of compensation to the plaintiff. We are aware that the
propriety of this doctrine has been questioned by some
writers; but if repeated judicial decisions for more than a
century are to be received as the best exposition of what
the law is, the question will not admit of argument. By
the common as well as by statute law men are often pun-
1 Sutherland, Damages (2d ed.), vol. Ill, sec. 1202. Citing Ransom
V. Mayor, 1 Fisher, 252; Parker v. Hulme, 1 Fisher, 44; Addington
V. Cullinane, 28 Mo. App. 238.
2 Warner v. Roehr, Fed. Case No. 17189A.
' Supra.
* Supra.
§112] ACTIONS AT LAW. 243
ished for ajjgravated misconduct or lawless acts by means
of a civil action, and the damag-es, inflicted by way of pen-
alty or punishment, j^iven to the party injured. In many
civil actions, such as libel, slander, seduction, etc., the
wrong- done to the plaintiff is incapable of being meas-
ured by a money standard; and the damages assessed
depend on the circumstances, showing the degree of moral
turpitude or atrocity of the defendant's conduct, and may
properly be termed exemplary or vindictive rather than
compensatory.
"In actions of trespass where the injury has been
wanton and malicious, or gross and outrageous, courts
permit juries to add to the measured compensation of the
plaintiff which he would have been entitled to recover,
had the injury been inflicted without design or intention,
something further by way of punishment or example,
which has sometimes been called 'smart money.' This
has always been left to the discretion of the jury, as the
degree of punishment to be thus inflicted must depend
on the peculiar circumstances of each case."^
Judge Thayer has said: "Punitive damages maybe
awarded when a wrongful act is done wilfully, in a wan-
ton or oppressive manner, or even when it is done reck-
lessly,—that is to say, in open disregard of one's civil
obligations and of the rights of others."'^
We find the rule sanctioned and reaffirmed repeatedly by
the supreme court of the United States.'' It has been the
doctrine adhered to by that court ever since Mr. Justice
Story in a case of marine tort spoke of exemplary dam-
ages as "the proper punishment which belongs to such
lawless misconduct."* It is manifest that in a case of
1 Day V. Wood worth, 54 U. S. (13 Howard) , 363-371. See Press Pub.
Co. V. Monroe, 73 Fed. Rep. 196-201.
'Fotheringham v. Express Co., 36 Fed. Rep. 252-253.
^Philadelphia R. R. Co. v. Quigley, 62 U. S. (21 Howard), 213;
Milwaukee R. R. Co. v. Arms, 91 U. S. 487-492; Missouri Pacific
Railway v. Humes, 115 U. S. 512-521; Barry v. Edmunds, 116 U. S.
550-562; Denver Railway v. Harris, 122 U. S. 597-609. Exemplary
damages may be allowed even where no actual damage is proven.
Press Publishing Co. v. Monroe, 73 Fed. Rep. 196-201.
<The Amiable Nancy, 16 U. S. (3 Wheat.) 546-558.
244 LAW OF UNFAIR TRADE. [§112
deliberate counterfeiting of a trade-mark there should be
a recovery of punitive damages, or at least an opportu-
nity given the jury to assess punitive damages.
As to the award of actual damages at law, it has been
held that nominal damages will be awarded where a fraud-
ulent intent is shown, even though no specific injury i&
pleaded or proven.^ The St. Louis court of appeals has
said, by Bakewell, J., in an action of deceit based upon
trade-mark infringement: "As to the damages, the facts
present a case of fraud on plaintiff and violation of his
rights for which the action lies without proof of specific
damages. And the damage was not confined to the loss
of such actual sales as could be specifically shown to be
lost, but the jury might make such inferences as to the
loss and injury sustained by plaintiff as they might think
warranted by the whole evidence in the case."^ Much to
the same effect is the holding of the Massachusetts su-
preme court. ^
In California the rule of assessing damages would
seem to give the plaintiff the profits made by the defend-
ant in his sale of goods bearing the infringing mark.*
But it is very doubtful if that course is proper in a trial
at law. Damages were the appropriate, and indeed the
only, remedy at law, while the account of profits was pe-
culiar to courts of equity.^
Under the English practice a custom has grown up by
which a complainant in equity may pray for an account
of profits and an inquiry as to damages (and it has been
held in Wisconsin that this is the proper course in plead-
ing),^ but before any order for discovery can be made he
iLe Pag-e Co. v. Russia Cement Co., 51 Fed. Rep. 941-949; Taylor
V. Carpenter, 11 Paige, 292; 2 Sandf. 603; CofPeen v, Brunton, 4 Mc-
Lean, 516-520; Fed. Case No. 2946; Blofield v. Payne, 4 Barn. &
Ad. 410, 411; Marsh v. Billings, 7 Cashing, 322-331; Conrad v. Brew-
ing- Co., 8 Mo. App. 277-285; El Modello Cigar Co. v. Gato, 25 Fla..
886-915; 9 So. Rep. 23.
•-i Conrad v. Brewing Co., 8 Mo. App. 277-285.
SMarsh v. Billings, 7 Gushing, 322-332.
<Graham v. Plate, 40 Cal. 593-598.
* Sebastian, Trade-marks (3d ed.), p. 255.
^Leidersdorf v. Flint (2), 50 Wis. 401.
§112] ACTIONS AT LAW. 245
must elect between the accountinj^ of profits and the in-
quiry of damag-es. He cannot have both.' As said by
Cotton, L. J., in the Enj-lish court of appeal, in refusing
discovery asked by a complainant before he had elected
between profits and damages: "At the time when the
order was made, the plaintiil" had not elected to waive
his account of profits. Would it then be rig-ht to allow
the plaintiff to get a jury to determine what damages he
was entitled to before he had made his election between
damages and profits'? Should the jury award him a
large sum for damages, he would probably accept it; but
if they gave him a small sum only, then he might say ' No,
I would rather have an account of profits, as I see by the
defendant's books that he has made a much larger sum.'"^
It would seem that the damages at law must be based
upon the injury sustained by the complainant by loss of
sales and injury to the reputation of his trade-mark.
Evidence of the extent of the defendant's sales may be
proper,^ but only as proof of injury to the complainant,
and not with a view to measuring the plaintiff's damages
by the defendant's profits.
Of course the fact that the defendant has discontinued
his infringement is no defense to an action of damages,*
which would be barred only by the operation of the stat-
ute of limitations. It is competent to show that plain-
tiff's sales have fallen off because of the infringement.^
'Neilson v. Betts, L. R. 5 H. L. R. 1.
^Fennessy v. Clark, L. R. 37 Ch. D. 184-187.
3Le Page Co. v. Russia Cement Co., 51 Fed. Rep. 941-949.
<Lemoine v. Gauton, 2 E. D. Smith, 343; Cox, 142; Seb. 125.
5 Shaw V. Pilling, 175 Pa. St. 78-84. It is competent to show that
a diminution of plaintiff's sales occurred concurrently with defend-
ant's infringement. Whether the latter is the cause of the former is
a. question for the jury. Ibid.
CHAPTER XIII.
THE ACTION IN EQUITY.
§113. The basis of equitable jurisdiction.— Lord
Westbury said: "Imposition on the public occasioned by-
one man selling his goods as the goods of another can-
not be the ground of private action or suit. In the lan-
guage of Lord Thurlow in Webster v. Webster,'^ note, 'The
fraud upon the public is no ground for the plaintiff com-
ing into court.' It is, indeed, true, that, unless the mark
used by the defendant be applied by him to the same
kind of goods as the goods of the plaintiff, and be in itself
such that it may be and is mistaken in the market for
the trade-mark of the plaintiff, the court cannot interfere,
because there is no invasion of the plaintiff's right; and
thus the mistake of the buyers in the market, under
which they, in fact, take the defendant's goods as the
goods of the plaintiff, that is to say, imposition on the
public, becomes the test of the property in the trade-
mark having been invaded, and not the ground on which
the court rests its jurisdiction. "^
In quoting the extract given above, Vice-Chancellor
Van Vleet has said: "The rule as thus stated I under-
stand to be the established doctrine now in force on this
subject both in this country and in England.'"'
In the early English practice the chancellor had power
to refuse or postpone the application of equitable reme-
dies in trade-mark cases until the title to the trade-mark
13 Swanst. 490.
2Leather Cloth Co. v. American Leather Cloth Co., 4 DeG. J. & S.
137-141.
3 Schneider v. Williams, 44 N. J. Eq. 391-393. To the same effect
see Weener v. Brayton, 152 Mass. 101-103; Avery v. Meikle, 81 Ky.
73-91; Lig-gett & Myers Tobacco Co. v. Sam Reid Tobacco Co., 104
Mo. 53-60; McLean v. Fleming, 96 U. S. 245-251; Shaver v. Shaver,
54 Iowa, 208-209; Barrows v. Knight, 6 R. I. 434-438; Handy v. Com-
mander, 49 La. Ann. 1119.
246
§113] THE ACTION IN EQUITY. 247
had been determined in a court of law. This practice
continued until November 1, 1862, when the "Chancery
Regulation Act, 1862"^ went into effect. The first section
of that act provides that "In all cases in which any re-
lief or remedy within the jurisdiction of the said courts
of chancery respectively is or shall be sought in any cause
or matter instituted or pending in either of said courts,
and whether the title to such relief or remedy be or be
not incident to or dependent upon a legal right, every
question of law or fact, cognizable in a court of common
law, on the determination of which the title to such re-
lief or remedy depends, shall be determined by or before
the same court."
It is important to bear this enactment in mind in exam-
ining the earlier English trade-mark cases, as it explains
the many failures of equity to act, or the deferring of re-
lief by injunction until the determination of the right to
the use of the trade-mark by trial at law.
Equity first extended its beneficent protection to the
owners of trade-marks because of the inadequacy of the
remedy at law. This inadequacy arose from the absence
of the power in courts of law to act in personam — the
injunctive power. But there were other reasons why
cognizance of trade-mark causes belonged peculiarly to
equity. Prominent among these was the power of the
chancellor in granting discovery — the right to discovery
being, as Mr. Bispham says, one of the peculiar advantages
of a complainant in equity, enjoyed by him in every case
in which he was entitled to come into chancery, either for
the purpose of asserting an equitable title, or setting up
an equitable right or applying an equitable remedy;*
though the right was always conditioned by the necessary
restriction that the person brought in on discovery need
not disclose matters tending to incriminate him or expose
him to penalty or forfeiture. And there was yet another
reason why this litigation found its way to the chan-
cellor. One of the most ancient forms of action at the
^25 and 26 Victoria, c. 42, p. 154.
^Bispham, Equity (4th ed.), p. 600, sec. 557.
248 LAW OF UNFAIR TRADE. [§ 114
common law was the action of account. "But," in the
words of Mr. Justice Story, "the modes of proceeding in
that action, although aided from time to time by statu-
table provisions, were found so very dilatory, inconven-
ient and unsatisfactory, that as soon as courts of equity
began to assume jurisdiction in matters of account, as
they did at a verj^ early period, the remedy at law began
to decline; and although some efforts have been made in
modern times to resuscitate it, it has in England fallen
into almost total disuse."^ So, when it became apparent
that an account of profits must be sought as, at least, the
basis of a proper money judgment against an infringer,
the parties litigant were forced to enter the domain of
equity. But, above all, there was that power in equity
described by Blackstone as the power "to detect latent
frauds and concealments, which the process of the courts
of law is not adapted to reach. "^ While not exclusive of
the courts of law, the courts of equity had original, inde-
pendent and inherent jurisdiction to relieve against every
species of fraud. ^
§ 114. The bill in equity. — The bill for an infringe-
ment of a trade-mark or unfair competition properly con-
sists of six parts:
1. The title of the court.
2. The introduction.
3. The statement.
4. The prayer for relief.
5. The interrogating part.
6. The prayer for process.
By the twenty-first federal equity rule, the plaintiif is
given libert}'^ to omit, at his option, the jurisdiction
clause {i. e., that the acts complained of are contrary to
equity, and that the complainant is without any remedy
at law), the charging part of the bill, setting forth the
matters or excuses which the defendant is supposed to
intend to set up by way of defense to the bill, and the
^ Story, Equity Jurisprudence (13th ed.), sec. 442.
*1 Blackstone, Commentaries, 92.
•■'Kerr, Fraud and Mistake (Bump's ed.), p. 43.
§114] THE ACTION IN EQUITY. 249
common confederacy clause. The title of the court is
given substantially as indicated in the preceding section
on declarations at law, and rule 20 of the federal equity
rules prescribes the form of the introductory part, which
is a formal address to the judges of the court in which
the bill is tiled, together with the names and averments
of the citizenship of the parties.
The stating part of the bill should show: (1) The
ownership of the trade-mark, describing it and the mode
of its application to merchandise. (2) The registration
of that trade-mark under the act (if registered), and the
value of the trade-mark. (3) The facts in relation to the
infringement of the trade-mark by the respondent. This
part of the bill differs from the corresponding part of the
declaration at law in this, that it need not be averred
that the defendant had guilty knowledge,^ although that
fact should be averred where it is true. Where profits
are sought to be recovered there should be a direct aver-
ment that such profits have been realized by the defend-
ant on account of the infringement.
In every case where the value of the complainant's
trade-mark is over two thousand dollars, that fact should
be pleaded, ■'' as a jurisdictional safeguard, independent of
the fact of registration under the act of congress. A
matter of paramount importance where the parties are
citizens of the same state is an averment that the com-
plainant uses his trade-mark in application to merchan-
dise intended for commerce with foreign nations or with
the Indian tribes,^ and one court has held that it must be
averred and proven in such a case that the defendant
has used the infringement in commerce with foreign na-
tions or with the Indian tribes.* Where the parties are
of diverse citizenship no such averment is necessary.'^
iMcLeau v. Fleming, 96 U. S. 245.
2 Glen Cove Mfg-. Co. v. Ludeling, 22 Fed, Rep. 823.
s Ryder v. Holt, 128 U. S. 525; Luyties v. Hollender (1), 22 Blatchf.
413; Schumacher v. Schwenke (1), 26 Fed. Rep. 818; Schumacher v.
Schwenke (2), 36 Off. Gaz. 457; Gravely v. Gravely, 42 Fed. Rep. 265.
* Gravely v. Gravely, 42 Fed. Rep. 265; 52 Off. Gaz. 1538.
^Hennessy v. Braunschweij^er & Co., 89 Fed. Rep. 669.
250 LAW OF UNFAIR TRADE. [§114
The prayer for relief should be both special and gen-
eral, under the directions given in the twenty-first federal
equit}'' rule. The special portion of the prayer should
ask for a preliminary injunction (if it is desired), a per-
petual injunction, for an account of the defendant's prof-
its, and for an assessment of the damages sustained by
the complainant by reason of the injuries he has sus-
tained through the loss of reputation of his trade-mark or
otherwise. A bill is not demurrable on the ground that
it prays for damages in addition to profits, because both
can be recovered where fraudulent intent is established.^
But punitive or exemplary damages should not be prayed
for, as they cannot be assessed in equity.'-^
The prayer for general relief should be in the form
usual in equity pleading.^
The form to be used in the interrogating part of the
bill is prescribed by the forty-third federal equity rule.
Rule 41 provides that the interrogatories be separated
and numbered consecutively, and the interrogatories
which each defendant is required to answer must be
specified in a note at the foot of the bill. And that rule
further provides that where the complainant in his bill
waives an answer under oath, or only requires an answer
under oath with regard to certain specified interrogato-
lEl Modello Cig-ar Co. v. Gato, 25 Fla. 886-915; 7 So. Rep. 23;
Benkert v. Feder, 34 Fed. Rep. 534.
^Hennessy v. Wilmerding-Loewe Co., 103 Fed. Rep. 90.
^A hill to enjoin unfair competition must expressly charge that the
defendant has attempted or intended to practice fraud upon the pub-
lic. Lament v. Leedy, 88 Fed. Rep. 72-74. But this rule is hardly
broad enough. The better doctrine would seem to be that the bill
need only charge that the defendant's merchandise is calculated to
deceive the public. Judge Lacombe, referring to the practice of the
federal courts in cases of unfair trade, has said: "Nor do these
courts require specific proof of purchases by individuals actually
deceived, when the labels themselves show an attempt at deception
which appears to be well calculated to deceive. " Collinsplatt v. Fin-
layson, 88 Fed. Rep. 693. And the same learned court indicates the
same rule in Burnett v. Hahn, 88 Fed. Rep. 694.
A bill to enjoiyi the manufacturer or vendor of spurious labels must con-
tain an express charge that the defendant is actually engaged in as-
sisting third persons to palm off their goods upon the public as the
§ 114] THE ACTION IN EQUITY. 251
ries, the answer of the defendant, though under oath, ex-
cept such part thereof as shall be directly responsive to
such interrogatories, shall not be evidence in his favor
unless the cause be set down for hearing on bill and an-
swer only.
The twenty-third federal equity rule provides that the
prayer for process of subpoena shall contain the names
of the defendants named in the introductory part of the
bill, and if any of them are known to be infants under
age, or otherwise under guardianship, shall state the
fact so that the court may take order thereon, as justice
may require, upon the return of the process.
The bill must contain the signature of counsel, as pro-
vided in the twenty-fourth federal equity rule.
Unless a preliminary injunction is prayed for the bill
need not be verified.
These suggestions for the most part relate to bills in
the federal circuit courts. The decisions of those courts
are so harmonious that the great bulk of the trade-mark
litigation is before them. As to the state courts, refer-
ence must necessarily be had to the local forms of action
(or absence of such form) created by legislative enact-
ment.
goods of the complainant's, or a substantially equivalent averment.
De Kuyper v. Witteman, 23 Fed. Rep. 871; Hennessy v. Herrmann,
89 Fed. Rep. 669.
A bill to enjoin the infringement of a technical trade-mark must
set up facts showing an exclusive right to the use of the mark in the
plaintiff. He "must recover upon the strength of his own title, and
not upon the weakness of the defendant's." Brown, J., in O'Rourke
V. Central City Soap Co., 26 Fed. Rep. 576-579.
Improper joinder of causes of action. — A bill is multifarious that
joins with a charge of unfair competition by the use of a trade-name
a claim for damages under the Sherman anti-trust act of July 2,
1890. Block V. Standard Distilling & Distributing Co , 95 Fed. Rep.
978.
A bill is multifarious that joins with a charge of unfair competi-
tion (by passing off the defendant's goods in unmarked packages as
and for plaintiff's goods) a charge of patent infringement. Ball
& Socket Fastener Co. v. Cohn, 90 Fed. Rep. 664.
252 LAW OF UNFAIR TRADE. [^15
S 115. The defenses in equity. — All defenses good in
the action at law are good in the action in equity except
that of the innocence of the defendant of wrongful intent.
In a case where both parties have the right to use the
trade-mark, the defendant will be enjoined from using
the words "the only genuine" in connection with the
trade-mark. 1 The plaintiff must, of course, be actually
entitled to use the trade-mark having applied it com-
mercially. Thus Sir James Clark's application to re-
strain one Freeman from advertising or selling pills under
the name of "Sir J. Clark's Consumption Pills" was de-
nied because the plaintiff was not engaged in the sale of
pills.2 The plaintiff may not be entitled to recover be-
cause of his not having an exclusive right to the mark;
or because he has, without authority, used the words
"patent" or "patented" in connection with or as a part
of what he claims as his trade-mark. Or he may have
made fraudulent representations in connection with his
trade-mark which will prevent his recovering the relief
sought for. A single act done at the suggestion of the
plaintiff's agent will not be treated as an infringement.^
It often happens that the defendant may plead by way
of mitigation of damages or so as to avoid his liability
1 James v. James, L. R. 13 Eq. Cas. 421; Cocks v. Chandler, L. R.
11 Eq. Cas. 446.
^Clark V. Freeman, 11 Beav. 112. This decision is criticised in
Maxwell v. Hogg, L. R. 2 Ch. App. 307; but it is manifestly correct
in principle, considered as a trade-name case. Lord Justice Cairns
says (L. R. 2 Ch. App. 310): "It has always appeared to me that
Clark V. Freeman might have been decided in favor of the plaintiff
on the ground that he had a property in his own name," i. e., a right
of privacy, which involves a discussion which it would be aside
from our purpose to enter upon here. Lord Chancellor Selborne has
criticised Clark v. Freeman from another standpoint, saying: "That
case has been seldom cited but to be disapproved. Could not a pro-
fessional man be injured in his profession by having his name asso-
ciated with a quack medicine?" Re Riviere's Trade-mark, L. R.
26 Ch. D. 53.
^Hennessy v. Kennet, Seb. 556; Gorham Mfg. Co. v. Emery-Bird-
Thayer Co., 92 P^ed. Rep. 774.
§ 115] THE ACTION IN EQUITY. 253
for an accounting' or for costs. Thus, in an Enj^lish
case, the defendants purchased five hundred cig'arettes,
worth only 17s. 6d., and which bore a mark which was
an infringement of the plaintiff's. The court granted the
application for injunction, but refused to order the de-
fendants to pay costs, saying by Sterling, J. : "I confess
I think this is not a sort of action that ought to be en-
couraged. If persons find a trade-mark is being pirated,
surely it is not the small retailers who ought to be pun-
ished. ... I cannot think that it is the duty of the
court in every case in which a small dealer who has inno-
cently happened to purchase a small quantity of the spu-
rious goods, to fix him with the costs of an action."^ A
defendant who was printing labels for a third party did
not know that the labels bore counterfeits of plaintiff's
trade-marks. On being notified of the fact of infringe-
ment, defendant offered to surrender the lithograph stone
and promised to desist from further printing the counter-
feit labels. The court adopted the same course as that
taken by the English court in the last named case —
granted an injunction but at complainant's costs.- This
case shows that it is not wise to notify a defendant before
suing. It has been expressly and repeatedly held that
the defendant is not entitled to notice,^ and it is related
by Chitty, J., that when that very learned jurist, the late
Sir G. Jessel, master of the rolls, was at the bar, it was
his custom to advise his clients in trade-mark actions
not to "give any notice but to move at once.'*
These suggestions are given here to call the attention
of the practitioner whose duty is to defend the alleged
infringer to the very serious question of avoiding costs.
It may be possible to defend successfully on the ground
that, although the plaintiff has applied his trade-mark in
1 American Tobacco Co. v. Guest, 9 R. P. C, 218; L. R. (1892) 1 Ch.
D, 630; 61 L. J. Ch. 242; 66 L. T. 257; 40 W. R. 364; Cartmell, 45.
^Bass V. Guggenheimer, 69 Fed. Rep. 271.
sUpmann v. Forester, L. R. 24 Ch. D. 231; 52 L. J. Ch. 946; 49
L. T. 122; 32 W. R. 28.
^Upmann v. Forester, L. R. 24 Ch. D. 231-235.
254 LAW OF UNFAIR TRADE. [§115
commerce, he has not applied it to the same character or
class of merchandise as that to which the defendant is
applj^ing it. We have touched upon this question before,
but a more extended consideration of it may be advis-
able. To answer the question of whether the defendant's
use of the complainant's trade-mark is such an unlawful
use that it should be restrained, "the extent of the
owner's property in a trade-mark, and the character of
the act which is held to injuriously affect his property
rights, and to call for the interposition of a court of
equity, must be ascertained. . . . The deceit of the
public and the subsequent injury to it are as much to be
regarded by a court of equity as an injury to a plaintiff's
business. It therefore follows that the right of an owner
of a trade-mark is not a right to its exclusive use every-
where and under all circumstances."^ Thus, an iron
manufacturer using a lion's head as his trade-mark cannot
enjoin a linen manufacturer from using a lion's head as
his mark. 2 It was held that "Fruit Salt" as a trade-
mark for an effervescing drink, a registered mark, might
be interfered with by the words "Fruit Salt" designat-
ing a baking powder. In this case it was shown that the
"Fruit Salt" used in producing the effervescing drink
had been used as a baking powder, in exceptional cases;
but the court remarked that if it were proposed to so
employ the words "Fruit Salt" that "no reasonable per-
son could suppose that they had reference to the appel-
lant's preparation, such a use would be perfectly unob-
jectionable. For example, I cannot conceive any one
imagining that a "Fruit Salt Umbrella" was in any way
connected with the article manufactured by Mr. Eno (the
effervescing drink). "^ So it has been held in this coun-
try that the word "Celluloid" is a valid trade-mark as
applied to articles actually composed of celluloid,* but
'Shipman, J., in Celluloid Mfg. Co. v. Read, 47 Fed. Rep. 712-714.
2Ainsworth v. Walmsley, 35 L. J. Ch. 352.
^Lord Herschell in Eno v. Dunn, L. R. 15 App. Cas. 252-260.
< Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. Rep. 94.
§115] THE ACTION IN EQUITY. 255
that the use of the word "Celluloid" to designate a
starch is not an iiifrinj^^ement, because celluloid had
never been used in making starch and there was no tes-
timony to show that the plaintiff had intended ever to
use it in making starch. There was expert testimony to
the effect that it was highly probable that a method
might be devised by which celluloid could be converted
into a starch-like body fit for use as a substitute for
starch, but the court held this statement of probabilities
"too indefinite to be the foundation of an injunction."^
The whole question depends upon how closely related
are the classes of goods to which the complainant and
respondent apply the mark.-
The other defenses, beside those thus far indicated,
such as license from the owner or his co-proprietor in the
mark, delay, acquiescence or abandonment, have been
treated in connection with the defenses at law. But it is
proper to note here that where the complainant has been
guilty of serious laches his relief will be limited to the
injunction, and an accounting will be refused.^
Where the bill of complaint makes profert of the plain-
tiff's trade-mark and exhibits the alleged infringement, a
demurrer will be sustained if an inspection of the exhib-
its satisfies the court that there is no infringement.^
But the courts are not inclined to sustain demurrers
upon the ground that the plaintiff's mark is not a valid
technical trade-mark, where the bill contains the specific
charge that the defendant has, by its conduct in the
premises, deceived and misled the public into buying its
goods as and for the plaintiff's goods.^ A defect upon
the face of the bill, such as a failure to show a title to
^Celluloid Mfg-. Co. v. Read, 47 Fed. Rep. 712-716.
^Collins Co. V. Ames, 20 Blatchf. 542; 18 Fed. Rep. 561; Amoskeag-
Mfg-. Co. V. Garner, 54 How. Pr. 297; Carroll v. Ertheiler, 1 Fed.
Rep. 688; Hecht v. Porter, 9 Pac. C. L. J. 569; Osgood v. Rockwood,
11 Blatchf. 310; Smith v. Reynolds, 10 Blatchf. 100; 13 Blatchf. 458.
SRolt V. Menendez, 23 Fed. Rep. 869-871.
^Collins Chemical Co. v. Capital City Mfg. Co., 42 Fed. Rep. 64.
« Putnam Nail Co. v. Bennett, 43 Fed. Rep. 800.
256 LAW OF UlSTFAIR TRADE. [ § 115
the mark in a complainant, must be met by demurrer and
cannot be raised by a plea.^
There are a number of lines of defense which have been
ineffective. Among them are to be particularly noted the
following- :
A. Infancy.^
B. The registration of defendant's mark, because regis-
tration is only prima facie evidence of ownership.^
C. Laches or delay, except in unusual cases.*
D. Showing that defendant always placed his own ad-
dress upon his goods, in conjunction with the in-
fringing mark.^
E. Showing that defendant has always used his own
name or initials in conjunction with the infringing
mark. This is not, of itself, a good defense.^
F. Showing that defendant has always used the word
"Improved" in addition to the alleged infringing
words. ^
G. Showing that the defendant's goods are not inferior
in quality to the complainant's.^
'Hostetter Co. v. E. G, Lyons Co., 99 Fed. Rep, 734.
2 Chubb V. Griffiths, 35 Beav. 127.
^Glen Cove Mfg. Co. v. Ludeling (or Ludeman), 22 Fed. Rep. 823;
23 Blatchf. 46; Bass, Ratcliff & Gretton (Ltd.) v. Feigenspan, 96
Fed. Rep. 206, 209, 212.
^McLean v. Fleming, 96 U. S. 245; Lee v. Haley, L. R. 5 Ch. App.
155. See ante, g 57.
'Gray v. Taper-Sleeve Pulley Works, 16 Fed. Rep. 436-442.
«Menendezv. Holt, 128 U. S. 521; Battle v. Finlay, 50 Fed. Rep.
106; N. K. Fairbank Co. v. Central Lard Co., 70 Off. Gaz. 635; 64
Fed. Rep. 133; Boardman v. Meriden Britannia Co., 35 Conn. 402;
Hier v. Abrahams, 82 N. Y. 519; Fleischmann v. Schuckmann, 62
How. Pr. 92; Lea v. Wolff, 15 Abb. Pr. N. S. 1; Carroll v. Ertheiler,
1 Fed. Rep. 388; Hegeman v. O'Byrne, 9 Daly, 264; Pratt's Appeal,
117 Pa. St. 401; Walter Baker & Co. v. Baker, 87 Fed. Rep. 209;
Bass, Ratcliff & Gretton (Ltd.) v. Feigenspan, 96 Fed. Rep. 206-210;
Leonard v. White's Golden Lubricator Co., 38 Fed. Rep. 922.
^Russia Cement Co. v. LePage, 147 Mass. 206; Gage v. Canada
Pub. Co., 11 Can. S. C. R. 306; Improved Fig Syrup Co. v. Cali-
fornia Fig Syrup Co., 54 Fed. Rep. 175; 4 C. C. A. 264.
''Cleveland Stone Co. v. Wallace, 52 Fed. Rep. 431-436; Taylor v.
Carpenter (3), 11 Paige, 292; Coats v. Holbrook, 2 Sandf. Ch. 586;
§ 115] THE ACTION IN EQUITY. 257
H. Showing that the goods sold are goods made by the
complainant, if they are goods to which the com-
plainant did not intend the mark to be applied. >
I. Showing that the defendant did not intend to sell
the goods bearing the infringing mark.^
J. Showing that the complainant's mark has been used
by others without his knowledge, consent or ac-
quiescence.^
K. Showing that the same mark has been used by others
on goods of another class.'*
L. Showing that a third person used the trade-mark
prior to its appropriation by the complainant,
when that third person has been refused relief in
equity against infringers, because of fraudulent
representations made by him in using the mark.''
M. Showing that the infringing act was done by the de-
fendant's servants, agents or employees without
his knowledge.^
Partridge v. Menck, 2 Sandf. Ch. 622; Cook v. Starkweather, 13
Abb. Pr. N. S. 392; Shaver v. Shaver, 54 Iowa, 208; Coffeen v. Brun-
ton, 5 McLean, 256; Gillott v. Esterbrook, 47 Barb. 455; 48 N, Y. 374;
Singer Mfg. Co. v. Loog (3), L. R. 8 App. Cas. 15; Edelsten v. Edel-
sten, 1 DeG. J. & S. 185; Blofield v. Payne, 4 B. & Ad. 410.
^Krauss v. Jos. R. Peebles' Sons Co., 58 Fed. Rep. 585; Hennessy
V. White, 6 W. W. & A'B. Eq. 216; Hennessy v. Hogan, 6 W. W. &
A'B. P:q. 225; Gillott v. Kettle, 3 Duer, 624; Hennessy v. Kennett,
Seb. 556.
2Upmann V. Forester, L. R. 24 Ch. D. 231; Upmann v. Curry, 29
Sol. J. .735.
3 Cuervo v. Jacob Henkell Co., SO Fed. Rep. 471; Filley v. Fassett,
44 Mo. 173; Cox, 530; Taylor v. Carpenter (1), 3 Story, 458; Cox, 14;
Seb. 78; Ford v. Foster, L. R. 7 Ch. App. 611.
< Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. Rep. 94; Colman
V. Crump, 70 N. Y. 573; Hegeman v. O 'Byrne, 9 Daly, 264; Somer-
ville V. Schembri, L. R. 12 App. Cas. 453-^57; Ains worth v. Walms-
ley, L. R. 1 Eq. 518; Hall v. Barrows, 4 DeG. J. & S. 150; George v.
Smith, 52 Fed. Rep. 830.
^Parlett v. Guggenheimer, 67 Md. 542-544. The rights of the third,
party had been so adjudicated in Palmer v. Harris, 60 Pa. St. 156.
^Low v. Hart, 90 N. Y. 457; Twentsche Stoom Bleekery Goor v.
Ellinger, 26 W. R. 70; Tonge v. Ward, 21 L. T. N. S. 480; Atkin-
son V. Atkinson, 85 L. T. Jour. 229. But see Leahy v. Glover, 10
R. P. C. 141, where a single sale by defendant's clerk was held in-
sufficient to warrant injunction.
17
258 LAW OF UNFAIR TRADE. [§115
N. Showing- that defendant partners have incorporated
after the institution of the suit.^
O. Showing- that the complainant gave the defendant
no notice of his intention to bring suit,'^
P. Showing that a jjroper name alleged to be an in-
fringement is the name of a person connected
with defendant's business, when in fact such per-
son has only g-iven defendant permission to use his
name as a means of attracting trade from the com-
plainant, in pursuance of defendant's scheme to
fraudulently take away complainant's business.^
Q. Showing that plaintiff has added words, figures or
designs, such as a coat-of-arms, to the trade-mark
as reg-istered.*
R. Showing that the complainant's trade-mark or pack-
age is only partially copied or imitated in defend-
ant's mark or package.^
'American Fibre Chamois Co. v. De Lee, 67 Fed. Rep. 329.
«Coat? V. Holbrook, 2 Saudf. Ch. 586; Cox, 20; Sawyer v. Kellog-g",
9 Fed. Rep. 601-602; Upmanu v. Forester, L. R. 24 Ch. D. 231-235;
Cartmell, 331; Upmann v. Elkan, L. R. 12 Eq. 140; L. R. 7 Ch. App.
130; Burg-ess v. Hately, 26 Beav. 249; Seb. 169; Field v. Lewis, Seton
(4th ed.), 237; Seb. 280; Re Kuhn, 53 L. J. Ch. 238; Barrett v. Goom,
74 L. T. Jour. 388; Fennessy v. Day, 55 L. T. N. S. 161; Siegert v.
Lawrence, 11 Vic. L. R. 47. See, contra, Wallis v. Wallis, 4 Dr.
458; Twentsche Stoom Bleekery Goor v. Ellinger, 26 W. R. 70; Chap-
pell V. Davidson, 2 K. «& J. 123; Williams v. Osborne, 13 L. T. N. S.
498; Gorham Mfg. Co. v. Emery-Bird-Thayer Dry Goods Co., 92 Fed.
Rep. 774-778.
^Sawyer v. Kellogg-. 7 Fed. Rep. 720; Price & Steuart, 493; 9 Fed.
Rep. 601; Rogers Mfg. Co. v. Rogers Mfg. Co., 11 Fed. Rep. 495;
Williams v. Brooks, 50 Conn. 278; Meriden Britannia Co. v. Par-
ker, 39 Conn. 450,- 12 Am. Rep. 401; Garrett v. T. H. Garrett & Co.,
78 Fed. Rep. 472; Phalon v. Wright, 5 Phila. 464; Cox, 307; Wolfe v.
Barnett, 24 La. Ann. 97; 13 Am. Rep. Ill; Melachrino v. Melach-
rino Cigarette Co., 4 R. P. C. 215; Cartmell, 223; Perks v. Hall,
W. N. 1881, p. Ill; Williams v. Johnson, 2 Bos. 1.
4 Melachrino v. Melachrino Cigarette Co., 4 R. P. C. 215; Cartmell,
223; Newman v. Pinto, 4 R. P. C. 508; 57 L. T. N. S. 31; Cartmell,
242; Carroll v. Ertheiler, 1 Fed. Rep. 688-691.
f'McCann v. Anthony, 21 Mo. App. 83; Enoch Morgan's Sons Co.
V. Edler, Cox, Manual, 714; Taendsticksfabriks Aktiebolaget Vulcan
V. Myers, 139 N. Y. 364; Pillsbury v Pillsbury-Washburn Mills
Co., 64 Fed. Rep. 841; Centaur Co. v. Killenberger, 87 Fed. Rep. 725.
§115] THE ACTION IN EQUITY. 259
S. Showing" that complainant has been guilty of mis-
representation in connection with his use of the
trade-mark, where that misrepresentation consists
only in harmless exagj^-eration of the merits of his
product (puffing-);^ or in purely collateral represen-
tation, as by newspaper advertising; ^ or in regard
to the size of packages used by him, where the
sizes of those packages are the ordinary sizes known
to the trade, the capacity of which is generally
understood.^
T. Showing that the infring-ement has ceased.*
U. Showing- that the complainant has made a third
party his licensee for the territory in which the
infringement was committed.^
V. Showing that the defendant has made no sales of
goods bearing the infringing mark, where it ap-
pears that he would have done so had the suit not
been instituted.^
W. Showing that the defendant is merely a dealer who
has purchased from the originator of the infringe-
ment,' or merely the agent of another in the sale
of the infringing goods. ^
X. Showing that the defendant once held a license from
the plaintiff, permitting the use of the mark, when
that license has been revoked for failure to pay
royalties and other breaches of the licensing con-
tract.9
iComstock V. White, 18 How. Pr. 421; Cox, 232; Metzler v. Wood,
L. R. 8 Ch. D. 606; Seb. 587; Holloway v. Holloway, 13 Beav. 209;
Seb. 106; Ellis v. Zeilen, 42 Ga. 91.
^Curtis V. Bryan, 36 How. Pr. 33; 2 Daly, 212; Cox, 434; Seb. 291.
3Hennessy v. Wheeler, 51 How. Pr. 457; 69 N. Y. 271; 15 Alb. L. J.
454; Seb. 483.
*Frese v. Bachof, 13 Blatchf. 234; Burnett v. Hahn, 88 Fed. Rep.
694; Hutchinson v. Blumberg, 51 Fed. Rep. 829-831.
*Moxie Nerve Food Co. v. Baumbach, 32 Fed. Rep. 205.
^Cuervo v. Landauer, 63 Fed. Rep. 1003.
^Burnett v. Hahn, 88 Fed. Rep. 694.
8 Walter Baker & Co. v. Sanders, 80 Fed. Rep. 889.
'Martha Washington Creamerj' Buttered Flour Co. v. Martien, 44
Fed. Rep. 473.
260 LAW OF UNFAIR TRADE. [§116
Y. Showing- that there has been an adjudication against
the plaintiff in a court of a foreign country. The
subject-matter, in cases of the classes treated in
this work, is a tort. Such subjects are not con-
cluded by foreign adjudications, even when the
acts referred to are the same identical acts.^
§ 116. The relief in equity. — In regard to making an
application for a preliminary injunction in cases of unfair
trade or trade-mark infringement, it should be remem-
bered that wherever there is any doubt as to the plain-
tiff's right or the defendant's infringement, the applica-
tion pendente lite will be denied. ^ Accordingly the courts
have refused to grant the preliminary injunction where
it appeared probable that the plaintiff had never ac-
quired the exclusive right to use the mark, but held it as
a tenant in common with another;^ where there existed
a doubt whether the words claimed as trade-marks by the
plaintiff ("Pile Leclancha" and "Disque," applied to
electric batteries) were or were not merely descriptive
words;* where the facts indicated that the complainant
was possibly guilty of laches;^ and where the defend-
ant's affidavits created a doubt in the mind of the court
iHohner v. Gratz, 50 Fed. Rep. 369; City of Carlsbad v. Kutnow,
68 Fed. Rep. 794.
2 ' 'An interlocutory injunction operates somewhat in the nature of
judgment and execution before trial. Without question it is at times
an appropriate remedy in the prevention of great wrong, but to
authorize its issuance there must exist a pressing necessity. The
right to it must be clear, and the apprehended injury must be griev-
ous, and generally, where the injury may be measured in money, the
alleged wrong-doer should be shown to be unable pecuniarily to
respond." Jenkins, J., in American Cereal Co. v. Eli Pettijohn
Cereal Co., 76 Fed. Rep. 372-374.
In refusing to grant a preliminary injunction Mr. Justice Bradley,
on circuit, said: "My great reluctance to grant a preliminary injunc-
tion for suppressing the use of a business name or trade-mark, in
3 American Cereal Co. v. Eli Pettijohn Cereal Co., 76 Fed. Rep. 372.
4 Leclancha Battery Co. v. "Western Electric Co., 21 Fed. Rep. 538.
Same of "air-cell" and "fire-board" applied to fire-proofing ma-
terial. New York Asbestos Mfg. Co. v. Amber Asbestos Air-cell
Covering Co., 99 Fed. Rep. 85.
sEstes V. Worthington, 22 Fed. Rep. 822.
§ 116] THE ACTION IN EQUITY. 261
as to whether the plaintiff had been the exclusive user
of the symbols claimed by him as his trade-mark. ^ A
preliminary injunction will not be awarded on ex iiarte
affidavits unless in a clear case."^ A mandatory injunc-
tion pending- the suit is not granted except in extreme
cases where the right thereto is clearly established and
it appears that irreparable injury will follow from its
refusal.''
So when the court has reason to doubt that the defend-
ant has been guilty of acts amounting- to an invasion of
the plaintiff's trade rights, a preliminary injuction will
not be issued.^ But while refusing the interlocutory in-
junction, the court may, in its discretion, require the de-
fendant to keep an account, pending the suit, of all his
dealings in g-oods bearing- the alleged infringing mark;
as Judge Treat said in making such an order: "It will not
hurt him to keep an account. "■'''
It is sufficient to sustain the application for the pre-
liminary injunction (so far as the plaintiff's title to the
mark is concerned) if he has established his right to the
trade-mark in a former proceeding.^ While the decision
in such former proceeding is not conclusive and binding
upon the court in the later case, it is persuasive and of
great weight, and on the motion for a preliminary in-
junction, especially where it sustains the impression of
any case in which the matter in issue is a subject for fair dis-
cussion, induces me to withhold the order." Celluloid Mfg. Co. v.
Cellonite Mfg-. Co., 32 Fed. Rep. 94-102. And to the same effect see
Van Camp Packing- Co. v. Cruikshanks Bros. Co., 90 Fed. Rep. 814;
33 C. C. A. 280; Charles E. Hires Co. v. Consumers' Co., 100 Fed.
Rep. 809-813; Goldstein v. Whelan, 62 Fed. Rep. 124.
"French V. Alter & Julian Co., 74 Fed. Rep. 788; Leclancha Battery-
Co. V. Western Electric Co., 21 Fed. Rep. 538; Portuondo v. Monne,
28 Fed. Rep. 16; Davis v. Davis, 27 Fed. Rep. 490.
2 New York Asbestos Mfg-. Co. v. Amber Asbestos Air-cell Covering-
Co., 99 Fed. Rep. 85; Lare v. Harper & Bros., 86 Fed. Rep. 481;
30 C. C. A. 373.
SHagen v. Beth, 118 Cal. 330.
* Goodyear Rubber Co. v. Day, 22 Fed. Rep. 44.
5 Goodyear Rubber Co. v. Day, 22 Fed. Rep. 44.
•^Symondsv. Greene, 28 Fed. Rep. 834, 835; Moxie Nerve Food Co. v.
Beach, 33 Fed. Rep. 248.
262 LAW OF UNFAIR TRADE. [§116
the court upon the hearing, is decisive.^ Where a de-
murrer is interposed to the bill, upon the application for
preliminary injunction, the allegations of fraud in the
bill are confessed thereby; and if the demurrer is over-
ruled the complainant is entitled to the preliminary in-
junction.-
It is a fundamental principle in the law of unfair trade,
as well as in patent law, that where the infringement is
admitted or proven the plaintiff is entitled to a reference
for an accounting as a matter of right. ^ But "cases fre-
quently arise where a court of equity will refuse the
prayer of the complainant for an account of gains and
profits, on the ground of delay in asserting his rights,
even when the facts proved render it proper to grant an
injunction to prevent future infringement."*
"In England the rule is stringent in trade-mark cases
that lack of diligence in suing deprives the complainant
in equity of the right either to an injunction or an account.
Our courts are more liberal in this respect. A long lapse
of time will not deprive the owner of a trade-mark of an
injunction against an infringer, but a reasonable dili-
gence is required of a complainant in asserting his rights,
if he would hold a wrong-doer to an account for profits
and damages. This rule, however, applies only to those
cases where there has been an acquiescence after a
knowledge of the infringement is brought home to the
complainant."-''
It is now the rule in England, as we have seen in our
discussion of the question of damages at law, that upon
the injunction being entered in the action in equity the
complainant is compelled to elect between profits and
damages; he cannot have both. If he elects to take his
1 Price Baking Powder Co. v. Fyfe, 45 Fed. Rep. 799.
2 Enoch Morgan's Sons Co. v. Hunkele, 16 Off. Gnz. 1092, 1093.
•'Oakes v. Tonsmierrc, 49 Fed. Rep. 447-453; Campbell Printing-
Press Co. v. Manhattan R. Co., 49 Fed. Rep. 930-932; Fisk v. Mah-
ler, 54 Fed. Rep. 528.
<Mr. Justice Clifford in McLean v. Fleming, 96 U. S. 245-257. To
the same effect see Low v. Fels, 35 Fed. Rep. 361-363.
^Nixon, J., in Sawyer v. Kellogg, 9 Fed. Rep. 701.
§ 116] THE ACTION IN EQUITY. 263
damages, the issue is sent to the Queen's Bench division
to be tried by a jury.^ In our federal courts, however,
there is no provision for transferrin*^ the case from the
equity side to the law side after the entry of the inter-
locutory decree, nor any other provision for submitting
the issue of damages, in an equity case, to a jury. The
plaintiff is not comi:)elled to elect between profits and
damages, but the reference is made to the master in
chancery to take an account of the defendant's profits
and to make an assessment of the damages sustained by
the plaintiff.'^ In assessing damages the master will con-
sider the extent to which plaintiff's sales have fallen off,
if the defendant's acts are the cause of such falling off.^
It was held in one case that the profits due to the use
of the trade-mark only were the subject of inquiry.^ But
this was clear error, and the court laying down this rule
cited in support of it only one precedent and that a
patent case.^ This question was considered very care-
fully by the supreme court of California, and its conclu-
sion is as follows: "Every consideration of reason, jus-
tice and sound policy demands that one who fraudulently
uses 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 im-
possible 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 held, therefore, that
the trial court had not erred in awarding the plaintiff
the whole profit made by the defendant." In treating the
same subject. Judge Sawyer said: "To adopt as the
measure of compensation for such injuries the difference
between the price for which the spurious goods would
iFennessy v. Rabbits, 56 L. T. 138; Cartmell, 125.
2 The Collins Co. v. Oliver Ames & Son Corporation, 18 Fed. Rep.
561-571; Benkert v. Feder, 34 Fed. Rep. 534, 535; Sawyer v. Kellogg-,
9 Fed. Rep. 601, 602; Sawyer v. Horn, 1 Fed. Rep. 24-39.
^Hostetter v. Vowinkle, Fed. Case No. 6714; 1 Dill. 329; Cox, Man-
ual, No. 207.
^Atlantic Milling Co. v. Rowland, 27 Fed. Rep. 241.
SQarretson v. Clark, 111 U. S. 120.
^Graham v. Plate, 40 Cal. 593-599.
264 LAW OF UNFAIR TRADE. [§116
sell without the trade-mark and for which they would
sell with it imprinted thereon, would be a mockery of
justice. In my judgment the infringer should at least
account for the entire profits made upon the goods wrong-
fully sold with the trade -mark impressed upon them."^
This now appears to be the accepted rule. Punitive
damages cannot be assessed inequity.^
Where the defendant carried on the infringing traffic
in connection with his regular business, the master in
chancery will not make any deduction for expenses in
taking the account of profits.^
In jurisdictions where the master is permitted to assess
damages, he may do so even in the absence of any direct
proof of loss of profit.* As all participants in torts are
principals, one who participates in unfair trade by fur-
nishing fraudulent labels is liable in equity to the party
injured for the whole damage resulting from the unfair
competition.^
The United States circuit courts of appeals will review
the action of the circuit courts in granting or refusing
preliminary injunctions, for the purpose of reviewing the
discretion of the court below and correcting error in its
exercise. In a proper case it will enlarge the scope of a
preliminary injunction which falls short of protecting the
complainant's rights.^
iBenkert V. Feder, 34 Fed. Rep. 534.
^Hennessy v. Wilmerding--Loewe Co. , 103 Fed. Rep. 90.
•'Societe Anonyme v. Western Distilling- Co., 46 Fed. Rep. 921.
■*Thus in a chancery case in New Zealand the court said: "First
as to damages, I am of opinion that there has been no direct proof
of loss of profit by Messrs. Littlejohn & Son, consequent upon the
sale of the watches which improperly have their name inscribed
upon them, but, as I have intimated during- the course of the argu-
ment, it appears to me that, apart from any direct proof of loss of
profit, there arises in cases of this class an inference of possible
damcige to the manufacturer whose name is improperlj' used — damage
to his well established reputation. It is impossible that the quantum
of damage in cases of this class can be mathematically ascertained;
no account can possibly reach such a matter. It must always be a
matter of discretion for the court and jury." Littlejohn v. Mulligan,
3 New Zealand Rep. 446.
^Hildreth v. Sparks Mfg. Co., 99 Fed. Rep. 484.
^Charles E. Hires Co. v. Consumers' Co., 100 Fed. Rep. 809-813.
CHAPTER XIV.
MATTERS OF PRACTICE AND EVIDENCE.
Ml 7. Matters of -which courts -will take judicial
notice. — This subject is of practical importance in the
trial of trade-mark causes. The courts of the United
States will take judicial notice of the statutes of the
several states,^ and of the decisions of the state courts
upon the constitutionality of such statutes.'^ All courts
will take judicial notice of the treaties or conventions
with a foreign government or power.'* It has been ex-
pressly held that judicial notice will be taken of the
convention concerning" trade-marks, of April 16, 1869, be-
tween the United States and Prance.^ As in other classes
of cases, the courts take judicial notice of political facts,
legal facts, official facts, public history, natural history
and the vernacular language, and all matters of common
and ordinary knowledge, including matters of science.
;j 1 18. Expert evidence on the question of infringe-
ment.— Inspection by the court is the main, and indeed
the tinal, test of the alleged resemblance in trademark
cases.-' The courts, as a rule, give little weight to expert
testimony on questions of similitude.®
iRe Jordan, 49 Fed. Rep. 238; Gormley v. Bunyan, 138 U. S. 623,
-Knox V. Columbia Libertj' Iron Co., 42 Fed. Rep. 378.
•■'Ex parte McCabe, 46 Fed. Rep. 363.
••La Croix v. Sarrazzin, 15 Fed. Rep. 489.
*Von Mumm V. Frash, 56 Fed. Rep. 830-838; Filley v. Fassett, 44
Mo. 173; Gail v. Wackerbarth, 28 Fed. Rep. 286; Drummond v. Ad-
dison-Tinsley Tob. Co., 52 Mo. App. 10; Collins Chemical Co. v.
Capitol City Mfg. Co., 42 Fed. Rep. 64; Liggett & Myer Tob. Co. v.
Hynes, 20 Fed. Rep. 883; Joseph Dixon Crucible Co. v. Benham, 4
Fed. Rep. 527.
"Cook V. Starkweather, 13 Abb. Pr. N. S. 392; Popham v. Wilcox,
66 N. Y. 69; Re Jelley, Son & Jones, 51 L. J. Ch. 639; Radam v.
Destroyer Co., 81 Texas, 122; 16 S. W. Rep. 990; P. Lorillard Co. v.
Paper, 86 Fed. Rep. 956.
Lord Esher, Master of the Rolls, has tersely said: "If a man was
266 LAW OF UNFAIR TRADE. [§118
Testimony of skilled witnesses to the effect that in
their opinion the public is likely to be deceived by the
similarity of two trade-marks, although valuable in a
doubtful case,^ is not of itself sufficient evidence of in-
fringement.^ When technical trade or scientific questions
are involved, however, expert evidence is highly desir-
able,^ and especially when the probability of the ultimate
consumer being deceived by the defendant's goods rests
on the character and habits of the people who use the
product,* or the manner in which the goods are usually
sold or exhibited by the retailer.^
Where the complainant's case rested on the testimony
of hired witnesses that they had drunk bitters sold them
by the defendant in his saloon as being complainant's
bitters and that said bitters were imitation, the bill was
dismissed on the conflicting testimony offered in defense,
the court remarking that hired witnesses are not disin-
terested and their testimony for that reason should be
scrutinized with unusual caution." In dismissing a bill
to come and tell me that a horse was like a cat, he might swear it,
and you might get fifty persons to swear it, but I should not act on
such evidence, because it is pure nonsense." Re Christiansen, 3
R. P. C. 54-61.
1 Celluloid Mfg. Co. v. Read, 47 Fed. Rep. 712-716.
^Columbia Mill Co. v. Alcorn, 40 Fed. Rep. 676; Cope v. Evans,
L. R. 18 Eq. 138. But in one case such evidence was admitted and
approved (Williams v. Brooks, 50 Conn. 478; 47 Am. Rep. 642), while
in another its propriety was questioned (Radam v. Capital Microbe
Destroyer Co., 81 Texas, 122; 26 Am. St. Rep. 783).
3 Mitchell V. Henry, L. R. 15 Ch. D. 181; 43 L. T. 186; Cartmell,
227; Re Worthington, 14 Ch. D. 8; 49 L. J. Ch. 646; Cartmell, 351;
Re Christiansen, 3 R. P. C. 54; Cartmell, 95; Gorham Co. v. White,
14 Wall. 511; Williams v. Brooks, 50 Conn. 278; Price & Steuart,654;
Celluloid Mfg. Co. v. Read, 47 Fed. Rep. 712-716.
•*Drummond v. Addison-Tinsley Tob. Co., 52 Mo. App. 10; Sperry
V. Percival Milling Co., 81 Cal. 252-260.
5 Re Worthington, L. R. 14 Ch. D. 8.
*Hostetter Co. v. Bower, 74 Fed. Rep. 235. The quantity of proof
adduced, and its weight, necessarily must be fixed by the attendant
circumstances of each case. Thus, in one case it was held that a
single sale of the infringing article by the defendant's clerk was in-
sufficient to warrant injunction. Leahy v. Glover, 10 R. P. C. 141.
And in a patent ca.se it was held that a single sale was not per se an
§119] MATTERS OF PRACTICE AND EVIDENCE. 267
in which a defendant was charg^ed with refilling genuine
packages, where the evidence was conflicting, Judge
Coxe remarked that "the burden is strongly upon the
complainant to prove fraud by a fair preponderance of
evidence."*
Expert testimony on other issues. — A witness familiar
with the trade may testify to the catch-word or other pe-
culiar designation by which an article is known to the
trade,''' or to consumers;^ and of course other witnesses
similarly qualified may testify to the contrary.^
Testimony of witnesses properly qualified is admissi-
ble to show that owing to the defendant's infringement,
plaintiff's sales have fallen otf; this is true both at law^
and in equity.^ In the action at law it is competent for
the plaintiff's proof to show that his sales fell off con-
currently with the defendant's infringement, from which
the jury may infer that the falling off was the result of
the defendant's acts.^
§ 119. Exhibits. — It is particularly desirable that the
conflicting marks be at all times easily accessible to the
court, and that they be filed as exhibits whenever pos-
sible. The practice of the courts of several states does
not permit exhibits, other than documentary, to be filed
as exhibits, as no provision has been made for their ac-
commodation and safe-keeping. In Missouri, where this
condition prevails, the St. Louis court of appeals has
infring-ement. Byam v. Bullard, 1 Curt. 100; Fed. Case No. 2262.
But evidence of a single sale "may, in connection witli other proof,
be persuasive evidence of other sales, and convincing proof of an in-
tention to sell whenever the opportunity of doing so without detection
is presented." Lacombe, J., in Lever Bros. (Ltd.) v. P-asfield, 88
Fed. Rep. 484. Citing De Florez v. Raynolds, 14 Blatchf. 505.
^Hostetter Co. v. Comerford, 97 Fed. Rep. 585.
2 Pollen V. LeRoy, 30 N. Y. 549-561.
3 Johnson & Johnson v. Bauer & Black, 82 Fed. Rep. 662; Read v.
Richardson, 45 L. T. N. S. 54; Cox, Manual, No. 698.
nVilkinson v. Greely, Fed. Case No. 17671; 1 Curt. 63.
iShaw V. Pilling, 175 Pa. St. 78-84; 34 Atl. Rep. 446.
^Hostetter v. Vowinkle, Fed. Case No. 6714; 1 Dill. 329; Cox,
Manual, No. 207.
'Shaw v. Pilling, supra.
268 LAW OF UNFAIR TRADE. [§120
recommended the preservation of the brands or labels
as a part of the record on appeal.^
The federal courts, however, afford every facility re-
quired for the care of exhibits, and the following- rule is
in effect in all the federal circuit courts of appeals:
"1. Models, diag-rams and exhibits of material forming
part of the evidence taken in the court below, in any
case pending- in this court on writ of error or appeal,
shall be placed in the custody of the marshal of this
court at least ten days before the case is heard or
submitted.
' ' 2. All models, diag-rams and exhibits of material placed
in the custody of the marshal for the inspection of the court
on the hearing of a case must be taken away by the parties
within one month after the case is decided. When this is
not done, it shall be the duty of the marshal to notify the
counsel in the case, by mail or otherwise, of the require-
ments of this rule, and, if the articles are not removed
within a reasonable time after notice is given, he shall
destroy them or make such other disposition of them as
to him may seem best."^
§ 120. Discovery. — The resistance of discovery is
usually met with by complainants in trade-mark causes.
Lord Romilly compelled a defendant to make a full
discovery of all his sales, the prices, profits realized and
the names of the purchasers, notwithstanding the objec-
tion of the defendant that he would thereby disclose his
business secrets;^ and full discovery has been compelled
in other cases.* The power to compel discovery is in-
herent in equity, but is not vested in courts of law in the
absence of statutory enactment.^
In actions at law production of books and papers is
fully provided for, in federal practice, by section 724 of
^Alden v. Gross, 25 Mo. App. 123.
2 The above rule is numbered rule 34 in each court of appeals but
that of the seventh circuit, where it is numbered rule 32.
"Howe V. McKernan, 30 Beav. 547.
* Leather Cloth Co. v. Hirschfeld (2), 1 H. & M. 295; Seb. 224;
Orr V. Diaper, L. R. 4 Ch. D. 92; 46 L. J. Ch. 41; Seb. 519.
^Colgate V. Compag-nie Francaise, 23 Fed. Rep. 82-85.
§121] MATTERS OF PRACTICE AND EVIDENCE. 269
the Revised Statutes. It has been held that inspection of
books or writing's may be ordered to be made before the
trial. ^ Its provisions, when affording an adequate rem-
edy, preclude resorting to equity to compel discovery ,2 and
render the issuance of siibpoe^ia duces tecum unnecessary.^
In equitable proceedings discovery will not be enforced
when it may tend to incriminate the person against whom
discovery is sought;^ and the same rule applies to the
enforced production of books and papers by such person.^
Subject to this restriction discovery of material facts
will be comj^elled.*'
"When a defendant professes to answer, he must answer
fully. If he desires protection against discovery he must
seek such protection by plea.^
§ 121. Evidence of recognition by others of plain-
tiff's right to the mark. — The rule is well settled
that a former adjudication establishing- a trade-mark,
where there has been an adjudication after a bona fide con-
test on the merits, and the same issues were presented as
in the later suit, is of persuasive if not binding force
in a later case.^ But a mere showing that the claim-
ant of the trade-mark has by threats of legal prosecu-
iLucker v. Phoenix Assurance Co., 67 Fed. Rep. 18; Exchange
Bank v. Wichita Cattle Co., 61 Fed. Rep. 190; United States v. Na-
tional Lead Co., 75 Fed. Rep. 94.
2 Washburn & Moen Mfg. Co. v. Freeman Wire Co., 41 Fed. Rep.
410; Paton v. Majors, 46 Fed. Rep. 210. But see Colgate v. Com-
pagnie Francaise, 23 Fed. Rep. 82.
^Kirkpatrick v. Pope Mfg. Co., 61 Fed. Rep. 46.
"•Byass v. Sullivan, 21 How. Pr. 50; Cox, 278.
5 Ibid. See also Union Paper Collar Co. v. Metropolitan Collar
Co. (Ltd.), 3 Daly, 171.
«Benbow v. Low, L. R. 16 Ch. D. 93; Byass v. Sullivan, 21 How.
Pr. 50; Cox, 278.
^Howe V. McKernan, 30 Beav. 547; Slater v. Banwell, 50 Fed. Rep.
150.
«Moxie Nerve Food Co. v. Beach, 33, Fed. Rep. 248; Symonds v.
Greene, 28 Fed. Rep. 834; La Republique Francaise v. Saratoga
Vichy Springs Co., 99 Fed. Rep. 733. But a decision of the English
high court of chancery adverse to the claimant of a mark is not a bar
to a suit for infringement of the mark brought in the United States.
City of Carlsbad v. Kutnow, 68 Fed. Rep. 794. And to the same
effect see Hohner v. Gratz, 50 Fed. Rep. 369.
270 LAW OF UNFAIR TRADE, [§122
tion compelled or induced others to enter into undertak-
ings to desist from the use of the name, or that others
have submitted to injunctions without a contest, is very
slight, if any, evidence of the plaintiff's right to use the
mark. In a recent case before the House of Lords, Lord
Davey said in regard to evidence of cases in which other
persons had submitted to injunctions and had paid the
costs: "That does not appear to me to be very strong
evidence in favor of the pursuers. Of course, a shop-
keeper or a person in that position would hesitate a
long time before he incurred the expense, which in the
case of a trade-mark or in a patent case is not slight,
of defending an action of this character; probably the
value to him of the trade he would lose would not in
any way compensate for the risk he would incur. There-
fore, as evidence of the fact, I do not attach much im-
portance to those cases. "^ An interlocutory decree of
one court appears to be entitled to but little weight in a
proceeding before another.^
S 122. Contempts. — It has been held that a plaintiff
who circulates matter prejudicial to the defense of a
pending action for trade-mark infringement is guilty of a
contempt,^ as has also been held of a plaintiff who pub-
lished a false and perverted construction of the purpose
and effect of an injunction.*
By far the greater number of applications to commit
for contempt in the class of cases under consideration are
based upon the failure of the party enjoined to comply
with the injunctive decree. Where no attempt has been
made toward compliance with the decretal order, the re-
spondent is, of course, in contempt and liable to commit-
ment, like any other contemnor.^ But where some effort
has been made to comply with the order, but to an ex-
tent not satisfactory to the complainant, an issue of fact
1 Cellular Clothing Co. v. Maxton, L. R. (1899) A. C. 326-346.
2 Walter Baker & Co. v. Sanders, 80 Fed. Rep. 889.
sCoats V. Chadwick, L. R. (1894) 1 Ch. D. 347.
*Gorham Mfg. Co. v. Emery-Bird-Thayer Dry Goods Co., 92 Fed,
Rep. 774-779.
«Rodgers v. Nowill (2), Cox, Manual, No. 115; 3 DeG. M. & G. 614.
§122] MATTERS OF PRACTICE AND EVIDENCE. 271
is raised for the determination of the trial court, and as
a rule its finding's and judgment will not be reviewed on
appeal;^ and where the contempt proceeding's are re-
ferred, the court is reluctant to disturb the findings of
fact made by the referee. ■'
It is a contempt, after decree, to offer the infringing
goods for sale, even though no sale is actually effected;^
nor does it exempt the defendant from commitment to
show that he intended to comply with the decree, if in
fact he has not complied with it.* But wherever the
court determines that the defendant has so altered his
marks or packages that there is no longer any danger of
the public mistaking- his goods for those of the plaintiff,
he will be discharged.^ Where, however, the chang^e is
only sufficient to avoid the letter of the decree, and the
defendant's mark or package is still calculated to pro-
mote deception, under the English practice the injunc-
tion may be enlarged upon the hearing- of the contempt
proceedings so as to cover the new fraud, even though
the motion to commit must be refused.^ The rulings of
the courts in this regard have taken a wide range. There
have been cases in which the court has declined to com-
mit upon the defendant making an offer to devise such
changes in his mark as would meet with the approval of
the court,' and others where the court has directed the
defendant to make such changes with the alternative of
being committed.*^ Where an injunction is in part man-
datory and in part prohibitive, and the mandatory por-
tion is suspended by an appeal, the court cannot punish
the defendant for contempt for the violation of such
mandatory portion, although his act is a joint violation
of both portions."
1 Devlin v. Devlin, 69 N. Y. 212; Cox, Manual, No. 4G3.
2Henne.ssy v. Budde, 82 Fed. Rep. 541.
^Marcovitch v. Bramble, Wilkins & Co., Cox, Manual, No. 595.
* Devlin v. Devlin. 69 N. Y. 212; Cox. Manual. No. 463.
«Sv(rift v. Dey, 4 Robertson, 611; Cox, 319.
*Cartier v. May, Cox, Manual, No. 200.
^Croft v. Day (2), Cox, Manual, No. 77.
SRodgers v. Nowill (2), Cox, Manual, No. 115; 3 DeG. M. & G. 614.
»Schwarz v. Superior Court. Ill Cal. 106.
272 LAW OF UNFAIR TRADE. [§123
The foregoing rulings have been made in unfair trade
cases. It would be foreign to our purpose to go into an
extended discussion of the law governing contempts,
which applies to this as to all other classes of cases. It
is well to note, however, that in the federal courts, at
least, while proceedings in contempt are not reviewable
on error or appeal, they may be reached by certiorari^
§ 123. Affidavits. — Applications for restraining orders
and preliminary injunctions are usually founded upon and
resisted by affidavits. A preliminary injunction will not
be awarded on ex parte affidavits unless in a clear case.^
The complainant's affidavits in chief must show all the
facts necessary to establish a prima facie right to the in-
junction sought.^ The defendant's affidavits may be by
way of traverse, in which case no counter affidavits can be
offered by the complainant; or they may set up matter
by way of confession and avoidance, in which case the
complainant may produce affidavits in reply. But where
such affidavits are offered by the complainant in reply, no
further affidavits can be offered by the defendant by way
of rejoinder.^
All affidavits so used must be entitled in the cause;
otherwise they are mere extrajudicial oaths, perjury could
not be assigned upon them, and they cannot be consid-
ered as evidence.^
iRe Chetwood, 165 U. S. 443-462; Schwarz v. Superior Court, 111
Cal. 106.
^Lare v. Harper & Bros., 86 Fed. Rep. 481; 30 C. C. A. 373; New-
York Asbestos Mfg. Co. v. Ambler Asbestos Air-cell Covering Co.,
99 Fed. Rep. 85.
^Leclancha Battery Co. v. Western Electric Co., 21 Fed. Rep. 538.
4 Day V. New England Car Spring Co., 3 Blatch. 154-159.
^Hawley v. Donnelly, 8 Paige, 415; Buerk v. Imhaeuser, Fed.
Case No. 2107a,- 10 Off. Gaz. 907; Goldstein v. Whelan, 62 Fed. Rep.
124.
CHAPTER XV.
COSTS.
§ 124. Generally. — In cases of unfair trade the same
rules as to costs obtain as in other actions. The general
rule is that costs follow the event. A successful plain-
tiff will be awarded costs, ^ and costs will be refused to
one who is unsuccessful.^
So costs will be awarded to the successful plaintiff, even
though he is denied damages,^ and against an infant,*
or a married woman having a separate estate.^
§ 126. Avoiding costs by submission.— We have
had occasion elsewhere to refer to the rule laid down by-
Sir George Jessel, that the complainant in actions of the
character now under consideration should not give notice
to the infringer before suit;^ and it has been held in this
country that no demand or notice is necessary.^ It is of
J Coats V. Holbrook, 2 Sandf. Ch. 586; Cox, 20; Seb. 79; Pierce v,
Franks, 15 L. J. Ch. 122; Seb. 81; Rodgers v. Nowill, 6 Hare, 325;
Seb. 82; Burgess v. Hately, 26 Beav. 249; Seb. 169; Burgess v. Hills,
26 Beav. 244; 28 L. J. Ch. 356; Seb. 170; Collins Co. v. Walker, 7
W. R. 222; Seb. 171; Jurgensen v. Alexander, 24 How. Pr. 269;
Cox, 298; Seb. 211; Edelsten v. Edelsten, 1 DeG. J. & S. 185; Seb.
213; McAndrews v. Bassett, 4 DeG. J. & S. 380; Seb. 234; Chubb v.
Griffiths, 35 Beav. 127; Seb. 255; Field v. Lewis, Seton (4th ed.), 237;
Seb. 280; Weed v. Peterson, 12 Abb. Pr. N. S. 178; Seb. 387; Com-
pagnie Laferme v. Hendrick, Seb. 512; Sawyer v. Kellogg, 9 Fed. Rep.
601; Cox, Manual, 682; McLean v. Fleming, 96 U. S. 245; Chappell
V. Davidson, 2 K. & J. 123; Seb. 136; Re Kuhn & Co's. Trade-mark,
53 L. J. Ch. 238.
2Bass V. Dawber, 19 L. T. N. S. 626; Seb. 310; Appeal of the Put-
nam Nail Co., Cox, Manual, No. 725; Weener v. Brayton, 152 Mass.
101.
3Weed v. Peterson, 13 Abb. Pr. N. S. 178; Seb. 387.
< Chubb V. Griffiths, 35 Beav. 127; Seb. 255; Cory v. Gertcken, 2
Madd. 49; Woolf v. Woolf, 43 Sol. J. 127.
*Nicholls V. Kimpton, 3 Times L. R. 674.
eUpmann v. Forester, L. R. 24 Ch. D. 231.
^Sawyer v. Kellogg, 9 Fed. Rep. 601.
18 2-3
274 LAW OF UNFAIR TRADE. [§126
the gravest importance to the practitioner to bear this
rule in mind, whether he be for the plaintiff or defendant.
A failure to observe it will oftentimes involve an innocent
and injured client in the payment of costs which would
otherwise fall upon the other party; for it is no defense
to an assessment of costs against the defendant that no
demand was made or notice served before suit.^ A de-
fendant who makes a full submission will not be mulcted
in costs. Thus, a label manufacturer who had innocently
made labels upon the order of a customer evaded costs
bj'^ promising to desist from the manufacture, and offering"
to surrender the lithograph stone with which the work
was done.^ Lord Romilly, in a leading case in which the
defendants were forwarding agents holding as bailee
g-oods bearing a spurious mark, gave the doctrine this
succinct expression: "It is his (the defendant's) duty
at once to give all the information required, and to
undertake that the goods shall not be removed or dealt
with until the spurious brand has been removed, and to
offer to give all facilities to the person injured for that
purpose, [f, after that, the person injured files a bill,
though he will be entitled to all that he asks in the
shape of relief, as he might have got it all without suit,
he will not get from such defendant the costs of the suit,
and he may have to pay them."^
This rule has been uniformly followed.* A defendant
may make such an offer of submission, by answer or
otherwise, at any stage of the proceedings, and so throw
upon the plaintiff all costs subsequently accruing.^
§ 136. Submission to avoid costs must be complete.
It is the necessary correlative of the rule stated in the
preceding section that no submission can avail a defend-
'Ibid.
^Bass, Ratcliff & Gretton v. Guggenheimer, 69 Fed. Rep. 271.
sUpmann v. Elkan, L. R. 12 Eq. 140; Seb. 369.
^Millington v. Fox, 3 Myl. & Cr. 338; Seb. 63; Burnett v. Leuchars,
13 Jj. T. N. S. 495; Seb. 253; Wharton v. Thurber, Cox, Manual, 663;
Nunn V. D 'Albuquerque, 34 Beav. 595.
'^"If the defendant had offered the plaintiffs all they were entitled
to, and after that the plaintiffs had proceeded in the suit, I most cer-
§127] COSTS. 275
ant unless it is full, adequate and complete. Thus a
submission, otherwise good, was rendered ineffective be-
cause the defendant did not couple with it an offer to
pay all costs accrued.' An offer of submission on condi-
tion that each party pay his own costs was held ineffec-
tive.'^ Further adjudication in support of the general
doctrine of this section will be found in the note.^
ij 127. Costs refused successful defendant. — There
are a number of instances wherein a defendant against
whom the plaintiff has been denied relief has been left to
pay his own costs. These cases are not always predi-
cated upon the defendant's absolute fraud, for, even
where fraud could not be established, he may have been
guilty of conduct so suspicious as to justify the imposi-
tion of his own costs.* Thus where the defendant had
dealt in bitters, and assented to suggestions that they
might be passed off on the public as the "Hostetter's
Bitters" of the plaintiff, the court thought the facts did
not warrant an injunction, but that the defendant had
invited the litigation by his conduct and ought not to
have his costs. ^
tainly should not have g-iven the plaintiffs a penny of the costs incurred
after that period; indeed, I should have endeavored to make them
pay them." Lord Romilly in Burgess v. Hills, 26 Beav. 244; Seb. 170.
And to the same effect see the opinion of the same Master of the
Rolls in Moet v. Couston, 33 Beav. 578; Seb. 235,
1 Hutchinson v. Blumberg-, 51 Fed. Rep. 829; Mc Andrews v. Bassett,
4 DeG. J. & S. 380; Seb. 234; Burgess v. Hately, 26 Beav. 249; Seb.
169; Burgess v. Hills, 26 Beav. 244; Seb. 170; Collins Co. v. Walker,
7 W. R. 222; Seb. 171; Coats v. Holbrook, 2 Sandf. Ch. 586; Weed v.
Peterson, 12 Abb. Pr. N. S. 178.
^^Moet v. Couston, 33 Beav. 578.
STonge v. Ward, 21 L. T. N. S. 480; Seb. 321; Coats v. Holbrook,
2 Sandf. Ch. 586; Cox, 20; Seb. 79; Fennessy v. Day, 55 L. T. N. S.
161.
♦Talcottv. Moore, 6 Hun, 106; Seb. 478; Rose v. Loftus, 47 L. J.
Ch. 576; Seb. 608. Thus, where both plaintiff and defendant made
cigars falsely marked "Habana, " the English court of appeals dis-
missed the bill without costs and adjudged the costs of the appeal
against the defendant. Newman v. Pinto, 4 R. P. C. 508; 57 L. T.
N. S. 31.
fiRostetter v. Van Vorst, 62 Fed. Rep. 600.
276 LAW OF UNFAIR TRADE. [§128
§ 128. Miscellaneous matters. — Innocent wharfingers
in whose possession was found champagne bearing a false
brand, and who were made parties defendant to an action
but at once submitted to act as the court might direct,
were awarded their costs, and given a lien for their
warehouse charges, and that lien given priority over the
plaintiffs' claim for costs. ^
Where the defendant is a retail dealer, who has acted
innocently and handled only a small quantity of the in-
fringing goods, a plaintiff may not be awarded costs
even though the injunction issues. ^ Some courts apply
this rule where it appears that the defendant's sales have
not been large enough to justify the expense of taking
an account.^
Where it appeared that the defendant had adopted
plaintiff's trade-mark (which consisted of words under-
stood by many simply to indicate quality), and did so in
ignorance of the plaintiff's existence, the plaintiff was
granted an injunction but without costs.* A plaintiff
may be denied costs because of his delay in instituting
suit.^
If in his bill the plaintiff makes specific charges against
the defendant which he is unable to substantiate with
^Moet V. Pickering", L. R. 8 Ch. D. 372.
2 Thus where a small retailer was charged with infringing a
cigarette trade-mark, and it was shown that the transaction related
only to five hundred cigarettes, valued at 17s. 6d., which the defend-
ant had bought in ignorance of the infringement, it was said: "I
think that this is not the kind of action which ought to be encouraged.
If the owner of a trade-mark finds that it is being pirated, surely it
is not the small retailer who ought to be punished, but an endeavor
ought to be made to prosecute those who place the spurious goods on
the market; and although I agree that the plaintifi"s are entitled to
an injunction, yet I cannot think it is the duty of the court in every
case in which a small retail dealer who has innocently (and I think
that the defendants in this case have acted innocently) happened to
purchase a small quantity of the spurious goods, to say that he
ought to be fixed with the costs of the action." Shilling, J., in
American Tobacco Co. v. Guest, L. R. (1892) 1 Ch. D. 630-632.
^Saxlehner v. Eisner & Mendelson Co., 88 Fed. Rep. 61-70.
^Millington v. Fox, 3 Myl. & Cr. 338; Cox, Manual, 642.
^Amoskeag Mfg. Co. v. Garner (2), 51 How. Pr. 298.
§ 128 J COSTS. 277
proof, he may, under the English practice, obtain an in-
junction with costs, but be adjudged to pay all of the
defendant's costs occasioned by the making- of the un-
founded charge.^
Where the infringement was not innocent, but the
defendants offered to pay costs and publish any reason-
able advertisements announcing that they had no con-
nection with the plaintiffs, it was held that by ignoring
this offer the plaintiffs had lost their right to relief, and
the action was dismissed. It is doubtful if this decision
would be given much consideration by an American
court. •^
One who procures the preparation of an article being
an infringement of another's trade-mark will be liable to
refund to the manufacturer such reasonable sum as he
may pay to the owner of the trade-mark in compromise
of an action for the infringement, together with the
costs of such action.^
In regard to appeals, the same general rules as to
costs obtain as are applied by the inferior courts. Thus
on an appeal from a committal for contempt, based on the
violation of an injunction in a trade-mark case, the upper
court sustained the ruling of the lower, but, because the
violation seemed open to dispute, gave no costs of the
appeal.^
In the leading case of McLean v. Fleming the defend-
ant appealed from a decree awarding the plaintiff an
injunction and accounting. The supreme court reversed
the decree as to the accounting, on the ground that the
plaintiff was guilty of laches, but let the decree of in-
junction stand. It then gave plaintiff his costs in the
lower court, and the defendant the costs of the appeal. ^
The costs of an unsuccessful motion to commit for
contempt will be taxed against the moving party.® The
^Saxlehner v. Apollinaris Co., L. R. (1897) 1 Ch. 893.
^Valentine v. Valentine, 31 L. R. Ir. 488.
3 Dixon V. Fawcus, 3 Ell. & Ell. 537.
< Devlin v. Devlin, 69 N. Y. 212.
*McLean v. Fleming, 96 U. S. 245.
*,Hennessy v. Budde, 82 Fed. Rep. 541.
278 LAW OF UNFAIR TRADE. [ § 128
costs of contempt proceedings can be taxed against a
defendant only where, upon the facts, he might have
been committed.^ While it would seem the better prac-
tice to make no order as to costs upon the entry of inter-
locutory decrees, and to withhold such order until the
entry of final decree upon the master's report, we find
very respectable authority for the contrary practice.^
iDence v. Brand, W. N. 1881, p. 31.
'The Collins Co. v. Oliver Ames & Son Corporation, 18 Fed. Rep.
561-571.
APPENDIX.
CONTENTS OF APPENDIX.
A. Trade-mark Rules of the Patent Office. Annotated.
B. Trade-mark Provision of the Tariff Act of 1897. Annotated.
C. Trade-mark Act of July 8, 1870. Annotated. (In the annotation
of this act free use has been made of the excellent work of
Mr. Sebastian.)
D. Label Registration Act of June 18, 1874. Annotated.
E. Trade-mark Act of August 14, 1876. Annotated.
F. Trade-mark Act of March 3, 1881. Annotated.
G. Trade-mark Act of August 5, 1882, and War Department Cir-
culars.
H. Bills of Complaint and Answers. Judicially Approved.
I. Forms of Injunction — Interlocutory and Final Decrees.
J. Unofficial Trade-mark Classification. (Suggested by Commis-
sioner of Patents, January 1, 1897.)
K. American and English Bibliography.
L. International Convention of March 20, 1883.
APPENDIX A.
RULES OF THE PATENT OFFICE RELATING TO
TRADE-MARK REGISTRATION.
(Edition of November 1, 1898.)
rules governing the registration of trade-
marks under the act approved march 3, 1881.
United States Patent Office,
Washington, D. C, November 1, 1898.
The following rules, designed to be in strict accordance
with the provisions of the act approved March 3, 1881,
for the registration of trade-marks, are published for
gratuitous distribution.
Applicants for registration and their attorneys are
advised that their business will be facilitated by the
observance of the forms on pages 19-22 (293-297).
C. H. DUELL,
Commissioner of Patents.
CORRESPONDENCE.
1. All business with the office should be transacted in
writing. Unless by the consent of all parties, the action
of the office will be based exclusively on the written
record. No attention will be paid to any alleged oral
promise, stipulation, or understanding in relation to
which there is disagreement or doubt.
2. Applicants and attorneys will be required to con-
duct their business with the office with decorum and
courtesy. Papers presented in violation of this require-
ment will be returned. But all such papers will first be
submitted to the commissioner, and only returned by his
direct order.
3. All letters should be addressed to "The Commis-
sioner of Patents;" and all remittances by postal order,
check, or draft should be to his order.
281
282 APPENDIX A.
4. A separate letter should in every case be written
in relation to each distinct subject of inquiry or applica-
tion. A complaint against the examiner of trade-marks,
assignments for record, fees, and orders for copies or
abstracts must be sent to the office in separate letters.
5. Letters relating to pending applications should
refer to the name of the applicant and date of filing.
Letters relating to registered trade-marks should refer
to the name of registrant, number or date of certificate,
and the class of merchandise to which the trade-mark is
applied.
6. The personal attendance of applicants at the Patent
Office is unnecessary. Their business can be transacted
by correspondence.
7. When an attorney shall have filed his power of at-
torney duly executed, the correspondence will be held
with him.
8. A double correspondence with an applicant and his
attorne}^ or with two attorneys, cannot generally be
allowed.
9. The ofiice cannot undertake to respond to inquiries
propounded with a view to ascertain whether certain
trade-marks have been registered, or, if so, to whom, or
for what goods; nor can it give advice as to the nature
and extent of the protection afforded by the law, or act
as its expounder, except as questions may arise upon
applications regularly filed. A copy of these rules with
this paragraph marked is intended to be a courteous
answer to all such inquiries.
10. Express charges, freight, postage, and all other
charges on matter sent to the Patent Office must be pre-
paid in full; otherwise it will not be received.
ATTORNEYS.
11. An applicant may prosecute his own case, but he
is advised, unless familiar with such matters, to employ
a competent attorney. The office cannot aid in the se-
lection of any attorney. An applicant may be repre-
sented by any person who is registered under the provi-
RULES OF PATENT OFFICE REGISTRATION. 283
sions of rule 17 of the Rules of Practice of the Patent
Office to prosecute applications for patents.
12. Before any attorney, original or associate, will be
allowed to inspect papers or take action of any kind, his
power of attorney must be tiled. But general powers
given by a principal to an associate cannot be considered
In each application the written authorization must be
filed. A power of attorney purporting to have been
given to a firm or copartnership will not be recognized,
either in favor of the firm or of any of its members,
unless all its members shall be named in such power of
attorney.
13. No power of attorney, either original or associate,
will be recognized unless it has revenue stamps to the
value of twenty-five cents affixed thereto and canceled
as provided for by the "Act to provide ways and means
to meet war expenditures, and for other purposes," ap-
proved June 13, 1898.
14. Substitution or association can be made by an at-
torney upon the written authorization of his principal;
but such authorization will not empower the second
attorney to appoint a third.
15. Powers of attorney may be revoked at any stage
in the proceedings of a case upon application to and
approval by the commissioner; and when so revoked
the office will communicate directly with the applicant,
or such other attorney as he may appoint. An attorney
will be promptly notified by the docket clerk of the rev-
ocation of his power of attorney.
16. For gross misconduct the commissioner may re-
fuse to recognize any person as an attorne}^ either
generally or in any particular case; but the reasons for
such refusal will be duly recorded and be subject to the
approval of the secretary of the interior.
WHO MAY REGISTER A TRADE-MARK.
17. A trade-mark may be registered by any person,
firm, or corporation domiciled in the United States or
located in any foreign country which, by treaty, conven-
284 APPENDIX A.
tion, or law, affords similar privileg-es to citizens of the
United States,^ and who is entitled to the exclusive use
of any trade-mark and uses the same in commerce with
foreign nations or with Indian tribes.
Also by any citizen or resident of this country wishing
the protection of his trademark in any foreign country
the laws of which require registration in the United
States as a condition precedent upon the payment of the
fee required by law and other due proceedings had.
18. Owners of trade-marks for which protection has
been sought by registering them in the Patent Office
under the act of July 8, 1870 (declared unconstitutional
by the supreme court of the United States, 16 O. G. 999),
may register the same for the same goods without fee.
With each application of this character a specific refer-
ence to the date and number of the former certificate is
required.
19. Applicants whose cases were filed under the act of
1870, either prior to or since the decision of the supreme
court declaring it unconstitutional, which are now pend-
ing before the office, must prepare their applications in
conformity with the present law and rules. On the
receipt of such an application, referring to the date of
the one formerly filed, all fees paid thereon will be duly
applied. Those who have paid only $10 as a first fee are
advised that the law does not provide for a division of
the legal fee of $25, and that the remainder of the entire
fee is required before the application can be examined.
20. No trade-mark will be registered unless it shall be
made to appear that the same is used as such by the ap-
plicant in commerce between the United States and some
foreign nation or Indian tribe, or is within the provisions
of a treaty, convention, or declaration with a foreign
power, or which is merely the name of the applicant, or
which is identical with a known or registered trade-mark
owned by another and appropriated to the same class of
merchandise, or which so nearly resembles some other
1 Treaties and laws are tabulated in notes to sec. 1, act of 1881,
appendix F. For list of the countries having- treaties with the United
States at this time see page 326, and for foreign laws see page 327.
RULES OF PATENT OFFICE REGISTRATION. 285
person's lawful trade-mark as to be likely to cause con-
fusion in the minds of the public or to deceive purchasers,
or which is merely descriptive in its nature.
THE APPLICATION.
21. An application for the registration of a trade-mark
must be made to the commissioner of patents and must
be signed by the owner of the trade-mark.
22. A complete application comprises:
(a) A brief letter of advice requesting registration,
signed by the applicant. (See form 1 on page 293.)
(b) A statement or specification which, in addition to
the requirements of section 1 of the statute on pages
323-331, must also discriminate between the essential
and the non-essential features of the trade-mark, and if
the applicant be a corporation it must set forth under the
laws of what state or nation incorporated. (See forms
2, 4 and 6, on pages 293-296.)
(c) A declaration or oath complying with section 2 of
the statute on pages 331, 332. (See forms 3, 5 and 7, on
pages 294-297.)
(d) A fac-simile or drawing of the mark. (See rules
27 and 28 and form on page 295.
(e) A fee of twenty-five dollars.
28. The letter of advice, the statement, and the decla-
ration must be in the English language and written on
one side of the paper only.
24. Pending applications are preserved in secrecy, and
no information will be given without authority of the
applicant respecting the filing of an application for the
registration of a trade-mark by any person, or the subject-
matter thereof, unless it shall, in the opinion of the com-
missioner, be necessary to the proper conduct of business
before the office.
DECLARATION OR OATH.
25. The declaration or oath may be made before any
person in the United States authorized by law to admin-
ister oaths, or, when the applicant resides in a foreign
country, before any minister, charge d'affaires, consul or
286 APPENDIX A.
commercial agent holding" commission under the govern-
ment of the United States, or before any notary public
of the foreign country in which the applicant may be,
who is authorized by the laws of said country to admin-
ister oaths, the oath being attested in all cases, in this
and other countries, by the proper official seal of the
officer before whom the oath or affirmation is made.
When the person before whom the oath or affirmation is
made is not provided with a seal, his official character
shall be established by competent evidence, as by a cer-
tificate from a clerk of a court of record or other proper
officer having a seal.
26. The declaration cannot be amended. If that filed
with the application is faulty or defective, a substitute
declaration must be filed.
FAC-SIMILE OR DRAWING.
27. If for any reason a drawing does not constitute a
satisfactory fac-simile of the trade-mark, two copies of
the trade-mark as actually used must be deposited in ad-
dition to the required drawing, to be preserved in the
office for reference.
28. (1) The drawing must be made upon pure white
paper of a thickness corresponding to three-sheet bristol
board. The surface of the paper must be calendered
and smooth. India ink alone must be used to secure
perfectly black and solid lines.
(2) The size of a sheet on which a drawing is made
must be exactly 10 by 15 inches. One inch from its edges
a single marginal line is to be drawn, leaving the
"sight" precisely 8 by 13 inches. Within this margin
all work and signatures must be included. One of the
shorter sides of the sheet is regarded as its top, and,
measuring downwardly from the marginal line, a space
of not less than li inches is to be left blank for the
heading of title, name, number, and date. (See specimen
of drawing on page 295.)
(3) All drawings must be made with the pen only.
Every line and letter, signatures included, must be abso-
lutely black. This direction applies to all lines, how-
RULES OF PATENT OFFICE REGISTRATION. 287
ever fine, and to shading". All lines must be clean,
sharp, and solid, and they must not be too fine or
crowded. Surface shading, when used, should be open,
(4) The signature of the proprietor of the trade-mark
must be placed at the lower right-hand corner of the
sheet and the signatures of the witnesses at the lower
left-hand corner, all within the marginal line, but in no
instance should they encroach upon the drawing.
(5) When the view is longer than the width of the
sheet, the sheet should be turned on its side, and the
heading will be placed at the right and the signatures at
the left, occupying the same space and position as in an
uprig-ht view, and being horizontal when the sheet is
held in an upright position.
(6) Drawings should be rolled for transmission to the
office — not folded.
An agent's or attorney's stamp, or advertisement, or
written address will not be permitted upon the face of a
drawing, within or without the marginal line.
29. The office, at the request of applicants, will furnish
the drawings at cost.
EXAMINATION OF APPLICATIONS.
30. All applications for registration are considered in
the first instance by the trade-mark examiner. When-
ever on examination of an application reg"istration is
refused for any reason whatever, the applicant will
be notified thereof. The reasons for such rejection will
be stated, and such information and references will be
given as may be useful in aiding the applicant to judge
of the propriety of prosecuting his application.
31. The examination of an application and the action
thereon will be directed throughout to the merits; but in
each letter the examiner shall state or refer to all his
objections.
AMENDMENTS.
32. The statement may be amended to correct infor-
malities or to avoid objections made by the office, or for
other reasons arising in the course of examination; but
288 APPENDIX A.
no amendments will be admitted unless warranted by
something in the statement or fac-simile as originally
filed.
33. In every amendment the exact word or words to be
stricken out or inserted in the statement must be speci-
fied, and the precise point indicated where the erasure
or insertion is to be made. (See form 8, on page 297.)
All such amendments must be on sheets of paper sepa-
rate from the papers previously filed, and written on but
one side of the paper.
Erasures, additions, insertions, or mutilations of the
papers and records must not be made by the applicant.
34. When an amendatory clause is amended, it must
be wholly rewritten, so that no interlineation or erasure
shall appear in the clause, as finally amended, when the
application is passed to issue. If the number or nature
of the amendments shall render it otherwise diflicult to
consider the case, or to arrange the papers for printing
or copying, the examiner may require the entire state-
ment to be rewritten.
35. Amendments will not be permitted after the notice
of allowance of an application, and the examiner will
exercise jurisdiction over such an application only by
special authority from the commissioner.
Amendments not affecting the merits may be made
after the allowance of an application, if the case has not
been printed, on the recommendation of the examiner,
approved b}'^ the commissioner, without withdrawing the
case from issue.
36. After the completion of the application the ofl&ce
will not return the papers for any purpose whatever.
If the applicant has not preserved copies of the papers
which he wishes to amend, the office will furnish them on
the usual terms.
INTERFERENCES.
37. In case of conflicting applications for registration,
or in any dispute as to the right to use which may arise
between an applicant and a prior registrant, the office
will declare an interference, in order that the parties
RULES OF PATENT OFFICE REGISTRATION. 289
may have an opportunity to prove priority of use, and
the proceedings on such interference will follow, as
nearly as practicable, the practice in interferences upon
applications for patents.
APPEALS OK PETITIONS.
38. Prom an adverse decision of the examiner of trade-
marks upon an applicant's right to register a trade-mark,
or upon any interlocutory matter, or from a decision of
the examiner of interferences, the case will be reviewed
by the commissioner, on petition or appeal, without fee.
ISSUE, DATE, AND DURATION OF CERTIFICATE.
39. When the requirements of the law and the rules
have been complied with, and the office has adjudged a
trade-mark lawfully registrable, a certificate will be
issued by the commissioner, under seal of the interior
department, to the effect that applicant has complied
with the law, and that he is entitled to the protection of
his trade-mark in such case made and provided. At-
tached to the certificate will be a fac-simile of the trade-
mark and a printed copy of the statement and decla-
ration.
40. Before a trade-mark certificate will be delivered,
the applicant must furnish a revenue stamp to the value
of 10 cents, to be affixed thereto and canceled as required
by the "Act to provide ways and means to meet war ex-
penditures, and for other purposes," approved June 13,
1898.
41. The weekly issue closes on Thursday, and the cer-
tificates of registration of that issue bear date as of the
third Tuesday thereafter.
42. A certificate of registry shall remain in force for
thirty years from its date, except in cases where the
trade-mark is claimed for and applied to articles not
manufactured in this country, and in which it receives
protection under the laws of a foreign country for a
shorter period, in which case it shall cease to have any
force in this country by virtue of this act at the time
19
290 APPENDIX A.
that such trade-mark ceases to be exclusive property
elsewhere.
At any time during" the six months prior to the expira-
tion of the term of thirty years such registration may
be renewed on the same terms and for a like period.
ASSIGNMENTS.
43. The right to the use of any trade-mark is assign-
able by an instrument in writing, and provision is made
for recording such instrument in the Patent Office. But
no such instrument or conveyance will be recorded unless
it is in the English language, and unless an application
for the registration of a trade-mark shall have first been
filed in the Patent Office, and such instrument must
identify the application by serial number and date of
filing, or, where the mark has been registered, by its
certificate number and the date thereof. No particular
form of instrument is prescribed.
COPIES AND PUBLICATIONS.
44. After a trade-mark has been registered printed
copies of the statement and declaration in each case,
with a fac-simile of the trade-mark, can be furnished by
the office upon the payment of the fee.
45. An order for a copy of an assignment must give the
liber and page of the record, as well as the name of the
proprietor; otherwise an extra charge will be made for
the time consumed in making any search for such assign-
ment.
46. The Official Gazette of the Patent Office will con-
tain a list of all trade-marks registered, with the name
and address of the registrant in each case, an illustra-
tion of the trade-mark, a brief statement of its essential
features, and the particular description of goods to which
it is applied,
FEES.
47. On filing an application for registration of a
trade-mark $25.00
RULES OF PATENT OFFICE REGISTRATION. 291
For abstracts of title:
For the certificate of search ^ 1.00
For each brief from the dij^ests of assign-
ments .20
For copies of matter in any foreign language, for
every 100 words or fraction thereof .10
For translation, for every 100 words or fraction
thereof 50
For recording every assignment, agreement, power
of attorney, or other paper, of 300 words or
less 1.00
For recording every assignment, agreement, power
of attome3% or other paper of more than 300
words and less than 1,000 words 2.00
For recording every assignment, agreement, power
of attorney, or other paper of more than
1,000 w^ords 3.00
For assistance to attorneys and others in the ex-
amination of records, one hour or less .50
Each additional hour or fraction thereof 50
For single printed copy of statement, declaration,
and fac-simile 05
If certified, for the certificate, additional .25
48. The person ordering any such certificate as speci-
fied in rule 46 must furnish a revenue stamp to the value
of 10 cents to be affixed to the certificate and canceled
as provided for by the "Act to provide ways and means
to meet war expenditures, and for other purposes," ap-
proved June 13, 1898.
49. Money required for office fees may be paid to the
commissioner, or to the treasurer, or any of the assistant
treasurers of the United States, or to any of the deposi-
taries, national banks, or receivers of public money
designated by the secretary of the treasury for that pur-
pose, who shall give the depositor a receipt or certificate
of deposit therefor, which shall be transmitted to the
Patent Office. When this cannot be done without incon-
venience, the money may be remitted by mail, and in
every such case the letter should state the exact amount
292 APPENDIX A.
inclosed. All money orders should be made payable to
the "Commissioner of Patents."
50. All money sent by mail, either to or from the
Patent Office, will be at the risk of the sender. All pay-
ments to the office must be made in specie, treasury
notes, national-bank notes, certificates of deposit, post-
office money orders, postal notes, or certified checks.
REPAYMENT OF MONEY.
51. Money paid by 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, will be refunded;
but a mere change of purpose after the payment of
money, as when a party desires to withdraw his applica-
tion for the registration of a trade-mark, will not entitle
a party to demand such a return.
FORMS.
The following- forms illustrate the manner of preparing
papers for applications for registration of trade-marks.
Applicants will find their business facilitated by follow-
ing them closely:
(1) LETTER OF ADVICE.
To the Commissioner of Patents:
The undersigned presents herewith a fac-simile of his lawful trade-
mark, and requests that the same, together with the accompanying
statement and declaration, may be registered in the United States
Patent Office in accordance with the law in such cases made and
provided.
A. B.
Dated , 19—.
(2) STATEMENT BY AN INDIVIDUAL.
To all whom it may concern:
Be it known that I, A. B., a citizen [or subject, us the case may
be] of the , residing at , , and doing busi-
ness at No. street, in said city, have adopted for my use a
trade-mark for molasses, of which the following is a full, clear and
exact description. My trade-mark consists of the word "Dove" and
the representation of a dove. These have generally been arranged
as shown in the accompanying fac-simile, in which the dove is repre-
sented as flying, and above it are arranged, on a curved line, the
words "The Dove Brand" in plain block letters. The position of
the dove may be changed and different styles of letters used, and
the words "The" and "Brand" may be omitted, without altering
the character of the trade-mark, the essential features of which are
the word "Dove" and the representation of a dove. This trade-
mark has been continuously used in my business since ,
18 — . The class of merchandise to which this trade-mark is appro-
priated is groceries, and the particular description of goods com-
prised in said class upon which I use the said trade-mark is mo-
lasses. It is usually displayed on heads of barrels or packages,
and on cans containing the goods, by placing thereon a printed label
on which the described trade-mark is shown.
A. B.
Witnesses:
C. D.
E. F.
293
294 APPENDIX A.
(3) DECLARATION FOR AN INDIVIDUAL.
State of , County of , ss:
A. B., being duly sworn, deposes and says that he is the appli-
cant named in the foregoing statement; that he verily believes that
the foregoing statement is true; that he has at this time a right to
the use of the trade-mark therein described; 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 it is used by him in commerce between the United
States and foreign nations or Indian tribes, and particularly with
[here name one or more foreign nations or Indian tribes, or both,
as the case may he] ; and that the descriptions and fac-similes pre-
sented for record truly represent the trade-mark sought to be reg-
istered.
A. B.
Sworn and subscribed before me, a , this day of ,
19—.
[L. S.] G. H.
(4) STATEMENT BY A FIRM.
To all whom it may concern :
Be it known that we, C. D. «& Co., a firm domiciled in ,
county of , state of ■ — , and doing business at No.
street, in the said city, have adopted for our use a trade-mark for
molasses, of which the following is a full, clear, and exact descrip-
tion. Our trade-mark consists of the word "Dove" and the repre-
sentation of a dove. These have generally been arranged as shown
in the accompanying fac-simile, in which the dove is represented as
flying, and above it are arranged, on a curved line, the words "The
Dove Brand" in plain block letters. The position of the dove may
be changed and different styles of letters used, and the words "The "
and "Brand " may be omitted, without altering the character of the
trade-mark, the essential features of which are the word "Dove"
and the representation of a dove. This trade-mark has been con-
tinuously used in our business since , 18 — . The class of
merchandise to which this trade-mark is appropriated is groceries,
and the particular description of goods comprised in said class upon
which we use the said trade-mark is molasses. It is usually dis-
played on heads of barrels or packages, and on cans containing the
goods, by placing thereon a printed label on which the described
trade-mark is shown.
C. D. & Co.
By C. D.,
Witnesses: A member of the firm.
E. F.
G. H.
FORMS.
295
^^^^^^^D
TYz/rvesses-
rr. .O.
jpcr
jr _JB..>-
O. C
296 APPENDIX A.
(S) DECLARATION FOR A FIRM.
State of , County of , ss:
C. D., being duly sworn, deposes and says that he is a member of
the firm of C. D. & Co., the applicant named in the foregoing- state-
ment; that he verily believes that the foregoing statement is true; that
the said firm at this time has a right to the use of the trade-mark
therein described; that no other person, firm, or corporation has the
right to such use, either in the identical form or in any such near re-
semblance thereto as might be calculated to deceive; that the trade-
mark is used by the said firm in commerce between the United States
and foreign nations or Indian tribes, and particularly with
[here name 07ie or more foreign nations or Indian tribes, or both, as the
case may be] ; and that the description and fac-similes presented for
record truly represent the trade-mark sought to be registered.
C. D.
Sworn and subscribed before me, a , this day of ,
18—.
[L. s.] E. F.
(6) STATEMENT BY A CORPORATION.
To all whom it may concern:
Be it known that The E. & F. Company, a corporation duly or-
ganized under the laws of the state of , and located in the city
of , county of , in said state, and doing business in said
city of , has adopted for its use a trade-mark for molasses, of
which the following is a full, clear and exact description. The trade-
mark consists of the word "Dove" and the representation of a dove.
These have generally been arranged as shown in the accompanying
fac-simile, in which the dove is represented as flying, and above it
are arranged, on a curved line, the words "The Dove Brand" in
plain block letters. The position of the dove may be changed and
different styles of letters used, and the words "The" and "Brand"
may be omitted, without altering the character of the trade-mark, the
essential features of which are the word "Dove" and the representa-
tion of a dove. This trade-mark has been continuously used in the
business of the said corporation since , 18 — . The class of
merchandise to which this trade-mark is appropriated is groceries,
and the particular description of goods comprised in said class upon
which the said trade-mark is used is molasses. It is usually dis-
played on heads of barrels or packages, and on cans containing the
goods, by placing thereon a printed label on which the described
trade-mark is shown.
The E. & F. Company,
Witnesses; By G. H., Secretary.
I. J.
K. L.
FORMS. 297
(7) DECLARATION FOK A CORPORATKJN.
State of , County ok , ss.
G. H., being duly sworn, deposes and says that he is secretary [or
Other officer] of the corporation The E. & F. Company, the applicant
named in the foregoing statement; that he verily believes that the
foregoing statement is true; that the said corporation at this time has
a right to the use of the trade-mark therein described; 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 the trade-mark is used by the said corpo-
ration in commerce between the United States and foreign nations or
Indian tribes, and particularly with [here name one or more
foreign nations or Indian tribes, or both, as the case may be], and that
the description and fac-similes presented for record truly represent
the trade-mark sought to be registered.
G. H., Secretary* [or other officer ]
Sworn and subscribed before me, a , this day of ,
18—.
[L. s.] I. J.
*If the corporation have a seal, it may be used to authenticate the
signature of the officer.
(8) AMENDMENT.
To the Commissioner of Patents:
In the matter of my application for the registration of trade-mark
for molasses. No. , filed , 18 — , I hereby amend my
statement as follows:
Page , line , cancel the words "The Dove Brand," and
insert in place thereof the following: "Dove" and the representation
of a dove.
Same page, line , erase the words "about ten years" and
insert, "since , 18 — . "
A. B.,
By J. K. , His Attorney.
Dated , 18—.
APPENDIX B.
TRADE-MARK PROVISION OF THE TARIFF
ACT OF 1897.
(30 Statutes at Large, 151.)
Section 11 of this chapter provides: "That no article
of imported merchandise which shall copy or simulate
the name or trade-mark of any domestic manufacture or
manufacturer, or which shall bear a name or mark, which
is calculated to induce the public to believe that the
article is manufactured in the United States, shall be
admitted to entry at any custom-house of the United
States. And in order to aid the officers of the customs
in enforcing this prohibition, any domestic manufacturer
who has adopted trade-marks may require his name and
residence and a description of his trade-marks to be re-
corded in a book which shall be kept for that purpose in
the department of the treasury, under such regulations
as the secretary of the treasury shall prescribe, and may
furnish to the department fac-similes of such trade-
marks; and thereupon the secretary of the treasury shall
cause one or more copies of the same to be transmitted
to each collector or other proper officer of the customs."
(30 Stats, at Large, p. 207.)
In this connection the following circular has been
issued by the treasury department:
[1897. Department Circular No. 116. Division of Customs.]
Trkasurv Department, Office of the Secretary,
Washington, D. C, August 3, 1897.
To Officers of the Customs and Others:
The attention of officers of the customs and others is invited to the
following provision of section 11 of the act of July 24, 1897: [quoting
above section.]
Applications for the recording of names or trade-marks in this de-
partment w^ill state the name and residence of the domestic manufac-
298
TRADE-MARK PROVISION OF ACT OF 1897. 299
turer, and furnish a description of the mark and the names of the
ports to which the fac-similes should be sent. No such name or trade-
mark will be received unless accompanied by the proper proof of
ownership and proof that the owner is a domestic manufacturer,
which must consist of the affidavit of the owner or one of the owners,
certified by a notary public, or other officer entitled to administer
oaths, and having- a seal.
On the receipt by a customs officer of any such fac-similes, with
information from the department that they have been recorded therein,
he will properly record and file them, and will exercise care to pre-
vent the entry at the custom-house of any article of foreig^n manufac-
ture copying or simulating such mark.
No fees are charged for recording trade-marks in the department
and custom-houses.
A sufficient number of fac-similes should be forwarded to enable the
department to send one copy to each port named in the application
with ten additional copies for the files of the department.
Especial attention is invited to the provision in said section pro-
hibiting the entry of articles "which shall bear a name or mark
which is calculated to induce the public to believe that the article is
manufactured in the United States," and collectors and other officers
of the customs are instructed to use due diligence to prevent violations
of this provision.
W. B. Howell,
Assistant Secretary.
No fees are charged for recording trade-marks under
this section. Applicants must state the name and resi-
dence of the domestic manufacturer and specify the ports
to which facsimiles are to be sent. Synopsis Treasury
Decisions, 1895, p. 926; Id., 1896, p. 70. The treasury de-
partment cannot determine the validity of a trade mark.
Its powers are limited to the exclusion of articles which
copy or simulate trade-marks filed for record with the
department. Synopsis Treasury Decisions, 1895, p. 929.
Compare sec. 6, Tariff Act of Aug. 27, 1894; and sec. 7
of the Act of Oct. 1, 1890.
APPENDIX C.
ACT OF CONGRESS OF JULY 8, 1870. ^
Section 77.^ And be it further enacted, that any per-
son or firm domiciled in the United States, and any cor-
poration created by the authority of the United States, or
of any state or territory thereof, and any person, firm, or
corporation resident of or located in any foreig"n country
which by treaty or convention affords similar privileges
to the citizens of the United States, and who are entitled
'Although this act is no longer in force, having been held un-
constitutional, and the act of 1881 having been since enacted, it is
thought advisable to set forth the earlier act, in order that the decis-
ions under it may be understood. In Leidersdorf v. Flint (1), 8 Biss.
327, the validity of the act of 1870 was questioned by the United
States circuit court, on the ground that the constitution of the United
States did not authorize legislation by congress on the subject of
trade-marks, except such as had been actually used in commerce
with foreign nations and among the several states, or with the Indian
tribes; and in Trade-mark Cases, 100 U. S. 82, the act was formally
declared by the supreme court to be on this ground unconstitutional
and invalid. But this does not entitle persons having marks regis-
tered under the invalid act to recover back the fees paid by them
(Woodman v. United States, 15 Ct. of CI. 541), though they will be
credited with such fees when applying for registration under the new
act. See Act of 1881, sec. 6, infra. Nor does the invalidity of the
act justif3' the disregard of injunctions granted under the general
jurisdiction of the court. United States v. Roche, 1 McCrary, 385.
And it has been held that registration of a mark under the invalid
act, even without re-registration under the act of 1881, is sufficient to
prevent registration of a similar mark under the new act of 1881.
Ex parte Lyon, Dupuy & Co., 28 Off. Gaz. 191. Since the passing
of the act of 1870, it has been considered in the Patent Office that
while, on the one hand, the benefits of registration as trade-marks
were to be reserved for trade-marks, and for trade-marks only (e. g. ,
in Re Parker, 13 Off. Gaz. 323, registration as a trade-mark was
refused to that which could at most amount to a design), so, on the
other hand, it was only by registering them as trade-marks, and not
by patenting them as designs (Ex parte King, Comm. Decis., 1870,
2 See Act of 1881, sees. 1, 2.
ACT OF CONGRESS OF JULY 8, 1870. 301
to the exclusive use' of any lawful trade-mark, or who
intend to adopt and use any trade-mark, '-^ for exclusive
use within the United States, may obtain protection for
such lawful trade-mark'* by complying with the follow-
ing requirements,* to wit:
p. 109; Re Whyte, id. 1871, p. 304), or registering^ them as labels (Re
Godillot, 6 OflF. Gaz. 641; Re Simpson & Sons, 10 id. 333; Ex parte
Davids & Co., 16 id. 94; Ex parte Schumacher & Ettlinger (1), 19 id.
791 ), that the benefits of the statute could be obtained for trade-marks.
Descriptive words not registrable as trade-marks were properly
allowed to be registered as labels. Ex parte Waeferling. 16 id. 764;
Ex parte Brigham, 20 id. 891; Ex parte Lutz, 33 id. 1389; and see
^In McElwee v. Blackwell, 15 Off. Gaz. 658, it was held that
although where registration had been wrongfully granted to one, it
might subsequentlj' be properly granted to another who was really
entitled to the exclusive use, yet it would not be granted to another
who was not entitled to the exclusive use, even though he might be
entitled to use the mark to some extent. And see Wright v. Simpson,
IS id. 968; also Sorg v. Welsh, 16 id. 910, as to admisions of
right in another; and Yale Cigar Manufacturing Co. v. Yale, 30
id. 1183. Under the act of 1881 registration will be refused where
it appears that the applicant is only one of several who have a right
to use the mark. Ex parte Langdon, 61 Off. Ga/. 286.
2 Under these words a new trade-mark might be registered prior
to any actual use. Re Rothschild, 7 Off. Gaz. 220; and see Hoosier
Drill Co. V. Ingels, 14 id. 785. This is not the case under the act
of 1881. Sec sees. 1 and 2, notes, and Ex parte Strasburger & Co.,
20 Off. Gaz. 155.
'""As to what is a lawful trade-mark, see infra, sec. 79. Regis-
tration cannot make a lawful trade-mark out of that which does not
contain the necessar_v elements (Moorman v. Hoge, 2 Sawy. 78; Schu-
macher & Ettlinger v. Schwenke (2), 36 Off. Gaz. 457); but by sec. 7
of the act of 1881 registration is pHma facie evidence of ownership.
It has been doubted whether the use of a registered trade-mark can
be restrained (Decker v. Decker, 52 How Pr. 218); but in Glen Cove
Manufacturing Co. v. Ludeman, 23 Blatchf. 46, an injunction was
granted in such a case. See also Schumacher & Ettlinger v.
Schwenke (2), 36 Off. Gaz. 457. Separate registration must be ob-
tained for each mark which differs from another b\' the addition of a
sj'mbol: e. (/., "X." "XX," "XXX," were held to require separate
registration. Re English, Comm. Decis. 1870, 142: and see Re Eagle
Pencil Co.. 10 Off. Gaz. 981.'
••Absolute compliance with these requirements is necessary on
the part of applicants. Re Hankinson, 8 Off. Gaz. 89. But it is not
necessary that the very words of the act should be cited, so long as
the spirit of it is satisfied. Re Vidvard & Sheehan, 8 id. 143.
302 APPENDIX C.
First. By causing" to be recorded in the Patent Office,^
the names of the parties and their residence and place of
business,'- who desire the protection of the trade-mark.
Second. The class of merchandise''^ and the particular
description of g"oods* comprised in such class, by which
the trade-mark has been or is intended to be appro-
priated.
Re Park, 12 id. 2, in which it was sought to register as part of a
label a device for which the applicant had previously sought regis-
tration as a trade-mark. In United States v. Marble, 22 id. 1366,
however, the supreme court of the District of Columbia held that the
commissioner of patents had no authority to refuse registration to a
label merely on the ground that it might have been registered as a
trade-mark; but in the later case of Ex parte Schumacher & Ettlin-
ger (2), 22 id. 1291, the commissioner again refused registration as
labels to what he considered to be trade-marks; and in Ex parte
Moodie, 28 id. 1271, and Ex parte Wiesel, 36 id. 689, the commis-
sioner repeated this decision, and his course was in the former case
upheld on appeal bj^ the supreme court of the District of Columbia in
Ex parte Moodie, 28 id. 1271. The federal courts have also held
that a trade-mark must be registered as such, and not copyrighted
as a label. Schumacher & Ettlinger v. Wogram, 35 Fed. Rep. 210.
It is for the commissioner to decide whether what is presented to him
is a trade-mark or label. Ex parte Moodie, 28 Off. Gaz. 1271.
'In Lacroix v. Escobal, 37 La. Ann. 533, it was held that a
French citizen, who had not deposited his mark in the United States
patent office, as required by the convention of 1869 between the
United States and France, was not entitled to maintain an action for
infringement. But see Societe, etc. de la Benedictine v. Micalovitch,
36 Alb. L. J. 364.
2 The registration of the name of a firm has been held to be suf-
ficient, without giving the particulars as to each of the partners.
Smith v. Reynolds (2), 3 Off. Gaz. 213; 10 Blatchf. 100.
"This requirement has been interpreted to exclude from registra-
tion the marks of persons other than manufacturers or merchants:
e. (J., a carpet cleaner. Re Hankinson, 8 Off. Gaz. 89.
^It has been held that a description of the class and goods as
"paints" is sufficient (Smith v. Reynolds (2), 10 Blatchf. 100), and
so with "alcoholic spirits" (Re Boehm & Co., 8 Off. Gaz. 319);
but that "fancy goods" is insufficient, as being too general a term.
Re Lisner, 13 id. 455. Different persons may register the same
trade-mark for different descriptions of goods even in the same class.
Sorg v. Welsh, 16 id. 910. In Smith v. Reynolds (2), 10 Blatchf.
100, and S. C. (3), 3 id. 213, it was held that a firm which had reg-
istered a trade-mark for "paints" was not entitled to restrain the
use of the mark on white lead by another firm which had used the
ACT OF CONGRESS OF JULY 8, 1870. 303
Third. A description of the trade-mark itself with
fac-similes thereof'' and the mode in which it has been
or is intended to be applied and used.^
Fourth. The len^'-th of time, if any, during which the
trade-mark has been used.*
Fifth. The payment of a fee of twenty-five dollars, in
the same manner and for the same purpose as the fee
required for patents.^
Sixth. The compliance with such regulations as may
be prescribed by the commissioner of patents.'''
Seventh. The filing- of a declaration,' under the oath
of the person or of some member of the firm or officer of
the corporation, to the effect that the party claiming
protection for the trade-mark has the right to the use of
the same, and that no other person, firm or corporation
has the right to such use, either in the identical form, or
having such near resemblance thereto as might be calcu-
mark on that variety of paint before the plaintiffs had used or regis-
tered their mark; and in the former case it was held that the regis-
tration being bad as to white lead was bad in toto, though but for
that it might have been good.
^The trade-mark must be suflBciently described for it to be pos-
sible to clearly distinguish between the essential and non-essential
elements. Re Volta Belt Co., 8 Off. Gaz. 144; and see rule 22 ante,
p. 285.
2 The fac-simile limits the verbal description of the mark. Duke
V. Green, 16 Off. Gaz. 1094.
^The previous user of the applicants or their derivative title
must be stated. Ex parte Consolidated Fruit Jar Co., 16 Off'. Gaz.
679. Only one example of the mode of use will be admitted. Re
Kimball, 11 id. 1109. And see Smith v. Reynolds (2), 10 Blatchf. 100.
<See Ex parte Consolidated Fruit Jar Co., 16 Off. Gaz. 679.
*A fee paid can only be recovered when it was paid by actual
mistake: e. g., a payment in excess, or one not required by law.
When, therefore, an application has failed because the proposed
mark was not registrable, the fee paid cannot be recovered, although
a renewed application for the registration of an essentiallj- different
mark has proved successful. Re Block & Co., 14 Off. Gaz. 235. See
note 1, p. 300, t>upra, as to crediting fees paid under this invalid act.
''See sec. 81, infra, and note thereto.
^As to the necessity for the filing of this declaration, and for the
production of sufficient evidence of it, on a trial for infringement, see
Smith V. Reynolds (1), 10 Blatchf. 85, where an injunction was re-
fused on the ground of the deficiency of such evidence.
^^^ APPENDIX C.
lated to deceive,^ and that the description and fac-
similes presented for record are true copies of the trade-
mark soug"ht to be protected.
Section 78.2 ji^^^ i^g [^ further enacted, that such
trade-mark shall remain in force for thirty years from
the date of such registration, except in cases where such
trade-mark is claimed for and applied to articles not
manufactured in this country, and in which it receives
protection under the laws of any foreig-n country for a
shorter period, in which case it shall cease to have any
force in this country by virtue of this act, at the same
time that it becomes of no effect elsewhere, and during-
the period that it remains in force it shall entitle the
person, firm, or corporation registering the same to the
exclusive use thereof, so far as regards the description
of goods to which it is appropriated in the statement
filed under oath as aforesaid, and no other person shall
lawfully use the same trade-mark, or substantially the
same, or so nearly resembling it as to be calculated to
deceive, upon substantially the same description of
goods. ^ Provided that six months prior to the expira-
tion of the said term of thirty years, application may be
made for a renewal of such registration, under regula-
tions to be prescribed by the commissioner of patents,
and the fee for such renewal shall be the same as for the
original registration certificate of such renewal shall be
issued in the same manner as for the original registra-
tion, and such trade-mark shall remain in force for a
further term of thirty years; And provided further, that
^A declaration that no other person, firm or corporation has a
rig-ht to the use of the same, or substantially the same, mark, is a
sufficient compliance with this requirement. Re Vidvard & Sheehan,
8 Off. Gaz. 143.
2 See Act of 1881, sees. 5, 7, 11.
"An illegal registration by a part owner not entitled to exclusive
use, was held not to justify issuing another certificate to another
part owner of the same mark, in order to put him on an equal foot-
ing in court. McElwee v. Blackwell, 15 OS. Gaz. 658. In an inter-
ference, the applicant was granted registration as against a prior
registrant whose user had been experimental and interrupted.
Sternberger v. Thalheimer, 3 Off. Gaz. 120.
ACT OF CONGRESS OF JULY 8, 1870. 305
nothing in this section shall be construed by any court as
abrid<,anf:r or in any manner affecting- unfavorably the
claim of any person, firm, corporation, or company to
any trade-mark after the expiration of the term for which
such trade-mark was rej^istered.
Section 79. ^ And be it further enacted, that any per-
son or corporation who shall reproduce, copy, counter-
feit, or imitate any such recorded trade-mark, and affix
the same to goods of substantially the same description,
properties and qualities as those referred to in the regis-
tration,'^ shall be liable to an action on the case for
damages for such unlawful use of such trade-mark at the
suit of the owner thereof in any court of competent juris-
diction in the United States, and the party aggrieved
shall also have his remedy according to the course of
equity to enjoin the wrongful use of his trade-mark, and
to recover compensation therefor in any court having
jurisdiction over the person guilty of such wrongful
use.^ The commissioner of patents^ shall not receive
and record any proposed trade-mark which is not and
cannot become a lawful trade -mark,-' or which is merely
J See Act of 1881, sees. 3, 7.
2 See Osgood v. Rockvvood, 11 Blatchf. 310; Fed. Gas. No. 10605,
where it was held that persons who had reg-istered a trade-mark for
prints made according to a patented process were not entitled under
this act to an injunction against a person who had used the mark on
prints not made in accordance with the patent.
SThe United States circuit courts had jurisdiction under this act
in cases of infringement of trade-mark, even when both parties were
citizens of the same state. Duwel v. Bohmer, 14 OfiF. Gaz. 270; but
see sees. 7 and 11 of the act of 1881.
■•The validity of the decisions of the acting commissioner was up-
held in Simpson v. Wright (2), 15 OS. Gaz. 293.
•'The question what may be registered as being a "lawful trade-
mark " has been considered in many cases. The device of a crown
is a good trade-mark. Smith v. Reynolds (2), 10 Blatchf. 100. The
arms of one of the states could not be registered as a trade-mark.
Ex parte Davids & Co., 16 Off. Gaz. 94. And it has been held that
the same is the case with the Freemasons' square and compass. Re
Tolle,2 id. 415; and the word "Masonic," Ex parte Smith (3), 16 id.
764. In Re Thomas, 14 id. 821, the Freemasons' symbols were allowed
to be registered in combination, and Re Tolle. supra, was over-
ruled. In Ex parte King (2), 46 id. 119, the decision in Re Thomas,
20
306 APPENDIX C.
the name of a person, firm, or corporation only,^ unac-
companied by a mark sufficient to distinguish it from the
same name where used by other persons, or which is
identical with the trade-mark appropriated to the same
14 id. 821, was followed, and the design of the badge adopted by the
Grand Army of the Republic was allowed to be registered as a
trade-mark for writing paper by a person who had no connection
with that society, and it was said that, that society not having used
their badge as a mark on writing paper, they would be infringing
the applicant's rights if they were to begin to do so. The words
"Knights of Labor " were refused registration as a mark for whisky
on this ground and because deceptive. Ex parte Bloch & Co., 40 Off.
Gaz. 443. A word which has become common, e. g., "Calhoun"
plow, cannot be registered. Re Hall & Co., 13 id. 229. Registra-
tion has been refused to the following words and expressions, on the
ground of descriptiveness: "Beeswax oil," Re Hauthaway (1),
Comm. Decis. 1871, 97; s. c. (2), id. 284; "Razor Steel," Re Rob-
erts (4), id. 100; "Invisible" face powder, Ex parte Palmer, id.
289; "A. Richardson's Patent Union Leather Splitting Machine,"
Re Richardson, 3 Off. Gaz. 120; "Fiir Familien-Gebrauch," and
"Lawrence Feiner Familien-Flannel," Re Lawrence, 10 id. 163;
"Iron Stone" drain pipes. Re Rader & Co., Comm. Decis., 1878, 67;
"Croup Tincture, "Re Roach, 10 Off. Gaz. 333; "Crack-proof" India
rubber. Re Goodyear Rubber Co., 11 id. 1062; "Evaporated" articles
of food. Ex parte Alden, 15 id. 389; "Standard A" cigars. Ex parte
Cohn (1), 16 id. 680; "Druggists' Sundries," Ex parte Cohn (2), 16 id.
680; "Safety" powder. Ex parte Safety Powder Co., 16 id. 136; "Medi-
cated Prunes," Ex parte Smith (2), 16 id. 679; "Satin Polish,"
shoe polish. Re Brigham, Comm. Decis. 1881, 38; "Swing" scythe
sockets, Ex parte Thompson, Derby & Co., 16 Off. Gaz. 137; "Granu-
lated Dirt Killer" soap. Ex parte Waeferling, 16 id. 764; "Famous,"
merchandise generally. Re Brand Stove Co., 62 Off. Gaz. 588; and
' ' Splendid ' ' flour. Ex parte Stokes, 64 Off . Gaz. 437. And the same has
been the case with respect to the figure of a fish for fishing lines. Re
Pratt & Farmer, 10 id. 866; and the representation of a twig with three
iThus, in Re Rowe & Post, 9 Off, Gaz. 496, the name "The
New York Cutlery Co. " was refused registration as a new mark. As
to the registration of names as old marks, see post, note 2, p. 308.
See also Re Porter Blanchard's Sons, Comm. Decis. 1871, 97; Re
Roberts (1), id. 113; S. c. (2), id. 100; s. C. (3), id. 101; Re India-
rubber Comb Co., 8 Off. Gaz. 905; Re Consolidated Fruit Jar Co., 14
id. 269; Ex parte Davids & Co., 16 id. 94; Re Creedmore Cartridge
Co., 56 id. 1333. The prohibition does not extend to the registration
of the name of a person other than the applicant, and such names
may be registered, at all events with their owners' consent, if living.
Ex parte Sullivan & Burke, 16 id. 765; Ex parte Pace, Talbott &
Co., 16 id. 909.
ACT OF CONGRESS OF JULY 8, 1870. 307
class of merchandise and belongin|j^ to a different owner
and already reg^istered or received for registration, or
which so nearly resembles such last mentioned trade-
leaves and a plum, for prunes, Ex parte Smith (2), 16 id. 679; and
see Popham v. Wilcox, 66 N. Y. 69. On the other hand, "The
Blanchard Churn," Re Porter Blanchard's Sons, Comm. Decis.
1871, 97; "Beaverine" boots and shoes, Re Francis & Mallon, id.
283; and "Dr. Lobenthal's Essentia Antiphthisica, " Re Rohland,
10 Off. Gaz. 980, have been admitted to registr^ition as being non-
descriptive. In a series of cases reg^istration has been refused on
the g-round that the term claimed, if properly applicable to the goods
with respect to which it was used, was descriptive, but if not, was
deceptive: e. g., "Bromo-Quinine, " Re Grove, 67 Off. Gaz. 1447;
"American Sardines," Re American Sardine Co., 3 id. 495; "Egg
Macaroni," Re Bole Bros., 12 id. 939; "Cachemire Milano, " Re
Warburg & Co., 13 id. 44; "French Paints," Ex parte Marsching
& Co., 15 id. 294; "London" animal foods. Ex parte Knapp, 16
id. 318; but see Re Green, 8 id. 729, where registration was
granted to "German Syrup. " On the latter ground of deceptiveness,
the word "patent" cannot be registered as a part of a mark for an
article made under an expired patent. Re Richardson, 3 id. 120.
A geographical name is not usually registrable. Armistead v.
Blackwell, 1 id. 603, "Durham" tobacco; Re Tolle, 2 id. 415,
"Cherry Street Mills," and "Market Street Mills;" Ex parte
Knapp, 16 id. 318, "London" animal foods; Ex parte Marsching &
Co., 15 id. 294, "French Paints;" Ex parte Farnum & Co., 18
id. 412, "Lancaster" goods. But such a name may be registered
when arbitrarily selected. Re Cornwall (2), 12 id. 312, "Dublin"
soap. Similarly, numerals may be registered when arbitrarily se-
lected. Kinney v. Allen, 1 Hughes, 106; Ex parte Dawes & Fanning,
1 Off. Gaz. 27; American Solid Leather Button Co. v. Anthony, 15
R. I. 338. But not otherwise. Re Eagle Pencil Co., 10 Off. Gaz. 981.
It has been held that a peculiarity in the form of a barrel is not reg-
istrable as a trade-mark, Moorman v. Hoge, 2 Sawj'. 78; nor repre-
sentation of such barrel when applied to the goods contained in it.
Ex parte Halliday Bros., 16 Off. Gaz. 500; nor is a special kind of
barrel-hoop registrable. Re Kane & Co., 9 id, 105. But see Cook v.
Starkweather, 13 Abb. Pr. N. S. 392. A special collar box was held
not to constitute a trade-mark, Carrington v. Libby, 14 Blatchf. 128;
and a sampler pattern was refused registration. Re Parker, 13 Off.
Gaz. 323; and a strip of tobacco intended to be wrapped around the
mouthpiece of cigarettes, on the ground that it was intended to serve
purposes of convenience rather than of identification. Re Gorden, 12
id. 517; and the use of a tin tag or ticket on the goods, irrespective
of shape and design, is no trade-mark, Lorillard v. Pride, 28 Fed.
Rep. 434; though a tin tag of special shape, size and color may
be, Lorillard v. Wight, 15 Fed. Rep. 383. There is no trade-mark
308 APPENDIX C.
mark as to be likely to deceive the public:^ Provided,
that this section shall not prevent the reg^istry of any
lawful trade-mark rightfully used at the time of the pas-
sage of this act/^
in the shape of a plug- of tobacco, Lig-gett & M3'ers Tobacco Co. v.
Hymes, 20 Fed. Rep. 883; or of a box, Sawyer v. Horn, 4 Hughes,
239; Ball V. Siegel, 116 111. 137; or of sticks of chewing gum, Adams v.
Heisel, 31 Fed. Rep. 279; or of the frame of a sewing machine orig-
inally made under a patent, Wilcox & Gibbs Sewing Machine Co. v.
Gibbons' Frame, 21 Blatchf. 431; Brill v. Singer Manufacturing Co.,
41 Ohio St. 127; nor in a manner of arranging in boxes cakes of soap
wrapped in differently colored paper wrappers, Davis v. Davis, 27
Fed. Rep. 490; nor in a nom de plume, Clemens v. Belford, 11 Biss.
459. But registration has been granted to a peculiarly shaped stick
intended to be so placed in a roll of carpet as to show an octagonal
ring at each end, Lowell Manufacturing Co. v. Larned, Fed. Cas.
No. 8570. Registration cannot be granted to minor and non-essential
features in a compound mark. Ex parte Coats, 16 Off. Gaz. 544. Occa-
^Thus, in Re American Lubricating Oil Co., 9 Off. Gaz. 687, reg-
istration was refused to the word "Star" as a trade-mark on oil,
the device of a star having already been registered for the same
article; so in Re Coggin, Kidder & Co., 11 id. 1109, to a device in
which the principal feature was the name "Haxall," which had
long been the trade-mark of another firm; so in Re Bush & Co., 10
id. 164, to a combination mark consisting of the applicant's own
registered trade-mark and two other devices appropriated bj- other
firms; so in Ex parte Claire, 15 id. 248, to the words "Black
Swan," the word "Swan" being already registered; so in Ex parte
Smith (1), 16 id. 679, to "A. S. California Family tV Soap," "Cali-
fornia" and " il^ " being already separately on the register; and see
Ex parte Weisert Bros., 16 id. 680. On the other hand, in Re
Imbs, 10 id. 463, registration was granted, notwithstanding that
two other marks contained somewhat similar features; and in Re
Cornwall (1), 12 id. 138, a device of a star and a crescent was reg-
istered, although a star had previously been registered.
2 Under this proviso registration was granted to a name used as
a trade-mark before 1870, e. g., "The India-rubber Comb Co. of New
York,"" Re India Rubber Comb Co., 8 Off. Gaz. 905; "The Rubber
Clothing Co.," Re Rubber Clothing Co., 10 id. 111. See Re Dole
Bros., 12 id. 939; Re Consolidated Fruit Jar Co., 14 id. 269; Ex
parte Consolidated Fruit Jar Co., 16 id. 679. This saving proviso
is, however, omitted from the act of 1881, so that the prohibition as to
names, etc., is universal. See Act of 1881, sec. 3, and Ex parte Fair-
child, 21 Off. Gaz. 789, in which case registration was refused to a
name which had been used as a trade-mark for twenty years, and
had been registered under the act of 1870.
ACT OF CONGRESS OF JULY 8, 1870. 309
Section FO.' And be it further enacted, that the
time of the receipt of any trade-mark at the Patent
Office for rej4istration shall be noted and recorded, and
copies of the trade-mark and of the date of the receipt
thereof, and of the statement filed therewith, under the
seal of the Patent Office, certified by the commissioner,
shall be evidence in any suit in which such trade-mark
shall be broug-ht into controversy.
Section 81. ^ And be it further enacted, that the com-
missioner of patents is authorized to make rules and
regulations'* and to prescribe forms for the transfer of
sionally a mark has been allowed to be registered in alternative forms,
e. g., "The Star Shirt," the same words with the figure of a star,
and "The -tr Shirt," Morrison v. Case, 9 Blatchf. 548; the figure of
a lion, the word "Lion," or both. Re Weaver, 10 Off. Gaz. 1; and
see Re Park, 12 id. 2; Re Thomas, 14 id. 821; Ex parte Peper,
16 id. 678. A bad trade-mark does not become a good one by the
addition of unobjectionable elements, Re Blakeslee & Co., Comm.
Decis. 1871, 284, "Cundurango Ointment Co.;" Re Dick & Co., 9 Off.
Gaz. 538, "D. D. & Co. tasteless" drugs; Re Rader & Co., 13 id.
596, "Iron Stone" in an oval border. But it appears to be possible
for two marks, which separately are not good trade-marks, to form
one in combination. Ex parte Davids & Co., 16 id. 94. A trade-
mark cannot be registered for the purpose of being used by all the
members of an association on goods of any quality, nor can a mark
which is intended to be used in furtherance of a scheme for the re-
straint of trade, Ex parte Cigar Makers' Association, 16 id. 958;
and in Schneider v. Williams, 44 N. J. Eq. 391, the court refused to
protect such a mark at the instance of a member of the association.
In Strasser v. Moonelis, 108 N. Y. 611; People v. Fisher, 57 N. Y.
Sup. Ct. 552; Allen v. McCarthy, 37 Minn. 347; and Bloete v. Simon,
49 Abb. N. C. 88, however, a different view was taken of the pro-
priety of such a mark. It seems that the decision of a competent
court as to the validity of a mark is binding upon the patent office.
Re India-rubber Comb Co., 8 Off. Gaz. 905. If an application is
refused on the ground that the proposed mark is not registrable, a
renewed application for the registration of a mark not open to objec-
tion must be treated as a new application, and it cannot be treated
as an amendment of the original application, nor can the fee origi-
nally paid be returned. Re Block & Co., 14 id. 235.
iSee Act of 1881, sees. 3, 4.
2 See Act of 1881, sec. 12.
3 It was formerly decided that the authority given to the commis-
sioner by section 81 to make regulations empowered him to declare
an interference in a trade-mark case, for the purpose of deciding a
310 APPENDIX C.
the right to use such trade-marks, conforming as nearly
as practicable to the requirements of the law respecting
the transfer and transmission of copyrights.
Section 82. ^ And be it further enacted, that any per-
son who shall procure the registry of any trade-mark,
or of himself as the owner thereof, or an entry respect-
ing a trade-mark, in the Patent Office under this act, by
making any false or fraudulent representations or decla-
ration verbally or in writing, or by any fraudulent means,
shall be liable to pay damages in consequence of any
such registry or entry to the person injured thereby, to
be recovered in an action on the case in any court of
competent jurisdiction within the United States.
question of title to the trade-mark, on the analogy of the practice in
patent cases. Lautz Bros. & Co. v. Schultz & Co., 9 Off. Gaz. 791;
Duke V. Green, 16 id. 1094. And though it was thought in Swift v.
Peters, 11 id. 1110, that the question whether a registered proprietor
of a mark was entitled to the exclusive use of it against an ex-partner
was a question for a court of law, and not for the office, it was held
in Hoosier Drill Co. v. Ingels, 14 id. 785, that, in investigating the
title of the mark, all matters relating to the ownership should be gone
into; and in Hanford v, Wescott, 16 id. 1181, Fed. Cas No. 6022, it
was held that a decision of the examiner of interferences, unappe.iled
from, was conclusive as to the right to a mark; and see Josselyn v,
Swezey & Dart, 15 Off. Gaz. 702, as to reopening the evidence taken
on an interference, and Simpson v. Wright (1), 15 id. 248, and S. C. (2),
IS id. 293, as to rehearing an interference. After the case of United
States V. Steffens, 100 U. S. 82, it was held that the Patent Office
has no longer any authority to decide questions of disputed titles to
trade-marks, or to declare interferences in such cases. Braun & Co.
V. Blackwell, 19 Off. Gaz. 481; and see Ex parte Strasburger & Co.
20 id. 155, and Jacoby & Co. v. Lopez & Co., 23 id. 342. And in Yale
Cigar Mfg. Co. v. Yale, 30 id. 1183, it was decided that a declaration
of interference is authorized by section 3 of the act of 1881. In such
cases the only duty of the office is to decide whether the opponent has
or has not a better title than the applicant, not to decide any further
question. Ibid. If, on an interference between an applicant and a
registered owner with respect to the same mark, the right to regis-
tration is adjudged to the applicant, notwithstanding the opposition
of the registered owner, the result is, while strictly giving the appli-
cant merely the right to register, practically to displace the regis-
tered owner, though his mark is not removed from the register. Ibid.
For the present rule as to interferences see note 7 to sec. 3 of the Act
of 1881.
^See Act of 1881, sec. 9.
ACT OF CONGRESS OF JULY 8, 1870. 311
Section 83.^ And be it further enacted, that nothing
in this act shall prevent, lessen, impeach or avoid, any
remedy at law or in equity which any party ag-grieved
by any wronj^-ful use of any trade-mark might have had
if this act had not been passed. ^
Section 84.=* And be it further enacted, that no
action shall be maintained under the provisions of this
act by any person claiming the exclusive right to any
trade-mark which is used or claimed in any unlawful
business or upon any article which is injurious in itself,
or upon any trade mark which has been fraudulently
obtained, or which has been formed and used with the
design of deceiving the public in the purchase or use of
any article of merchandise.^
iSee Act of 1881, sec. 10.
2See Osg^ood v. Rockwood, 11 Blatchf. 310; Fed. Gas. No. 10605;
United States v. Roche, 1 McCrary, 385; Fed. Gas. No. 16180.
sSee Act of 1881, sec. 8.
^It seems that this act provided no means for removing from
registration a mark which was wrongfully registered, e. g., a. mark
which did not contain an^- of the essential particulars. See Armi-
stead V. Blackwell, 1 Off. Gaz. 603; McElwee v. Blackwell, 15 id.
658; Wright v. Simpson, 15 id. 968; Yale Gigar Mfg. Go. v. Yale, 30
id. 1183.
APPENDIX D.
LABEL ACT OF JUNE 18, 1874. ''
(18 Statutes at Large, 78.)
An act to amend the law relating- to patents, trade-marks
and copj'rights.
Section 3. That in the construction of this act the
words "engraving," "cut" and "print" shall be applied
only to pictorial illustrations or works connected with
the fine arts, and no prints or labels designed to be used
for any other articles of manufacture shall be entered
under the copyright law, but may be registered in the
Patent Office. And the commissioner of patents is hereby
charged with the supervision and control of the entry or
registry of such prints or labels, in conformity with the
regulations provided by law as to copyright of prints,
except that there shall be paid for recording the title of
any print or label not a trade-mark, six dollars, which
shall cover the expense of furnishing a copy of the
record under the seal of the commissioner of patents, to
the party entering the same.^
^This law can be sustained only under the constitutional delega-
tion of authority to congress to legislate upon copyrights.
The provision quoted has reference only to such writings as are the
result of intellectual labor and are founded in the creative powers of
the mind.
"It does not have any reference to labels which simply designate
or describe the articles to which they are attached, and which have
no value separated from the articles, and no possible influence upon
science or the useful arts." Mr. Justice Field in Higgins v. Keuffel,
140 U. S. 428.
No action at law or in equity can be maintained for the infringe-
ment of a label so registered (copyrighted) unless the provision of the
copyright law in regard to the notice has been complied with, i. €.,
"by inscribing upon some visible portion thereof, or of the substance
on which the same shall bemounted, thefollowing words, viz. : ' Entered
according to Act of Congress, in the year , by A. B., in the
oflBce of the Librarian of Congress, at "Washington; ' or (at the option
312
LABEL ACT OF JUNE 18, 1874. 313
of the reg-istrant) the word 'Copyri^^ht, ' together with the year the
copyright was entered, and the name of the party by whom it was
taken out;" thus, " Copyright, 18 — , by A. B." Higgins v. Keuffel,
140 U. S. 428.
It is manifest that under this decision the act affords no protection
to labels, and registration under it is idle. Luby, Patent Office
Practice, p. 121. But until there is a decision declaring the law
unconstitutional the Patent Office is open for this class of registration.
Ex parte H. J. Heinz Co. , 62 Off. Gaz. 1064. It is held, however, that a
label will not be admitted to registry unless it has the same degree of
artistic excellence as would entitle it to copyright in the oflRce of the
librarian of congress. Ex parte Palmer, 58 Off. Gaz. 383. And
labels containing or consisting of matter constituting trade-marks
will not be registered until such trade-mark matter has been regis-
tered as trade-mark. Ex parte Diamond Laboratory Co., 44 MSS.
Dec. 19; Ex parte Ruckstuhl, 56 Off. Gaz. 927. A label bearing
the name and address of the owner, the name of the article to which
it is applied, with the price and directions for use, exhibiting no
attempt at artistic or literary merit, will not be registered. Ex parte
Eldredge Co., 55 OflF. Gaz. 1278. The same ruling has been made
as to a label purely descriptive of the articles to which it is in-
tended to be applied. Ex parte C. G. Mainline & Co. , 58 Off. Gaz. 947.
Pnnts and labels defined. — "Registered labels or prints and trade-
marks are recognized by the terms of the law and decisions of the
courts as applicable only to some kind of merchandise; labels, as
giving the names of the manufacturers, place of manufacture, nature
or quality of goods, directions for use, and the like." Doolittle, As-
sistant Commissioner, in Ex parte Parker, 13 Off. Gaz. 323.
Long prior to the decision of Higgins v. Keuffel, 140 U. S. 428
(supra), Judge Blatchford had held, that this section was purely a
copyright act, and that under the general copyright regulation of
congress (sec. 4956, R. S.) no person could claim protection for a label
so registered unless "before publication " he had deposited a printed
copy of the title of the article in respect of which the cojjyright was
claimed, in the Patent Office. Marsh v. "Warren, 14 Blatchf. 263;
14 Off. Gaz. 678; Fed. Cas. No. 9121; 16 Fed. Cas. 821.
It has been held that the mere fact that words or designs which
appear upon the label might be used as trade-marks does not prevent
registration under this act. Ex parte Orcutt & Son, 8 Off. Gaz. 276;
and in another early case the applicant's label was admitted to
registry, but certain "arbitrary words" and "fanciful figures"
were first refused or stricken out of the label, and the commissioner
suggested that they should be registered ;is trade-marks. Ex parte
W. Simpson & Sons, 10 Off. Gaz. 334. But as indicated in the first
portion of this note, the prevailing doctrine was that "the presence in
a label of matter registrable as a trade-mark excludes the whole
from registration." Ex parte Thaddeus Davids & Co., lo Off".
Gaz. 94. It has been held bj' the supreme court of the District of
Columbia, however, that the commissioner of patents has no discre-
314 APPENDIX D.
tion to determine whether a particular label should be classed as a
trade-mark or as only a label. That his duties as respects this
act are purely ministerial, and vudidamus will lie to compel him to
register any label properly presented for registration. United States
ex rel. Wilcox & Gibbs Sewing Machine Co. v. Marble, 1 Mackey, 284;
22 Off. Gaz. 1366; United States ex rel. Schumacher v. Marble,
3 Mackej', 32. And it is now settled that a print will not be refused
registration "even though it may contain matter capable of sequestra-
tion as a trade-mark, not in fact registered as a trade-mark."
Greeley, Commissioner, in Ex parte United States Playing Card
Co., 82 Oflt. Gaz. 1209, 1210.
In regard to this act, the Patent Office has adopted the following
rule: "These sections of statutes (referring to sections 3, 4 and 5 of
the act of June 18, 1874) are construed as authorizing the registry of
'prints' and 'labels.' A label is a device or representation not
borne by an article of manufacture or vendible commodity. A print
is a device or representation not borne by an article of manufacture
or vendible commodit3', but in some fashion pertaining thereto — such,
for instance, as a pictorial advertisement thereof. A label canno
be registered if it bear a device capable of registration as a trade-
mark, until after such device is registered as a trade-mark. Both
labels and prints, in order to be entitled to registry, must be intel-
lectual productions in the degree required by the copyright law."
The restriction contained in this rule as to the registration of
labels containing a device capable of sequestration as a trade-mark
does not apply to a print containing such a device, and it will be ad-
mitted to registration, even though it may contain a device so cajiable
of sequestration as a trade-mark, and that device has not been regis-
tered. Ex parte United States Playing Card Co., 82 Off. Gaz. 1209.
The Patent Office has furnished the following information to ap-
plicants for the registration of prints and labels under this act, and
forms for use in making application for such registration:
"The so-called print and label section of the copyright statute, ap-
proved June 18, 1874, is construed to provide for the registration of
any print or label without examination as to its novelty.
■'An adverse decision by the examiner who has charge of the reg-
istration of prints and labels, upon an applicant's right to have a
print or label registered, will be reviewed by the commissioner in
person, on petition, without fee.
"The word 'print,' as used in this act, so far as it relates to reg-
istration in the Patent Office, is defined as an artistic representa-
tion or intellectual production not borne by an article of manufacture
or vendible commodity, but in some fashion pertaining thereto — such,
for instance, as an advertisement thereof.
"The word 'label,' as used in this act, so far as it relates to regis-
tration in the Patent Office, is defined as an artistic representation
or intellectual production 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
LABEL ACT OK JUNE 19, 1874. 315
to bottles, boxes, and packages containing them, to indicate the con-
tents of the package, the name of the manufacturer, or the place of
manufacture, the quality of goods, directions for use, etc.
"By the words 'articles of manufacture' (to which such print or
label is applicable by this act) is meant all vendible commodities
produced by hand, machinery, or art.
"No print or label can be registered unless it properly belongs to
an article of commerce and is as above defined.
"To entitle the proprietor of any such print or label to register
the same in the Patent Office, the application for the registration
thereof must be made to the commissioner of patents, and said appli-
cation should be signed by the proprietor or his agent. There must
also be filed in the Patent Office five copies of the print or label, one
of which, when the print or label is registered, shall be certified
under the seal of the commissioner of patents and returned to the
proprietor.
"Before a print or label certificate will be delivered, the applicant
must furnish a revenue stamp to the value of 10 cents, to be affixed
thereto and canceled, as required by the 'Act to provide ways and
means to meet war expenditures, and for other purposes,' approved
June 13, 1898.
"The certificate of such registration will continue in force for
twenty-eight years.
"The certificate may be continued for a further term of fourteen
years upon filing a second application within six months before the
expiration of the term of the original certificate, and complying with
all other regulations with regard to original applications. Within
two months from the date of said renewal, the applicant must cause
a copy of the record thereof to be published for four weeks in one or
more newspapers printed in the United States.
"The fee for registration of a print or label is $6, to be paid in
the same manner as fees for trade-marks.
"The attention of persons contemplating the registrj' of a print or
label in the Patent Office is called to the decision of the United
States supreme court in Higgins v. Keuffel, 55 O. G. 1139; 140 U. S.
428; to the decision of the United States circuit court in Marsh et al.
V. Warren et al., 14 O. G. 678, and to the decisions of the commis-
sioner of patents in Ex parte United States Playing Card Co., 82
O. G. 1209, and Ex parte Mahn, 82 O. G. 1210."
FORMS.
The application for registration should be made by the proprietor
or his agent, and the following are suggested as the proper forms to
be used in the preparation of applications for prints and labels
when filed by the proprietor. When filed by an agent they should
be changed accordingly.
FORMS OP APPLICATIONS FOR REGISTRATION
OF PRINTS.
(1) FOR AN INDIVIDUAL.
To the Commissioner of Patents:
The undersigned, A. B., of the city of , county of , and
state of , and a citizen of the United States [or resident therein,
as the case may be], hereby furnishes five copies of a print which
has never been published and which is to be used for advertising
purposes for . The title of said print is , and the said
print consists of the words and figures as follows, to wit: [de-
scription] .
And he hereby requests that the said print be registered in the
Patent Office, in accordance with the act of congress to that eflfect
approved June 18, 1874.
Dated , 18—.
A. B.,
Proprietor.
(2) FOR A FIRM.
To the Commissioner of Patents:
The undersigned, C. D. & Co., a firm domiciled in the city of
, county of , state of , and doing business at No.
street, in said city, hereby furnish five copies of a print
which has never been published and which is to be used for adver-
tising purposes for . The title of said print is , and the
said print consists of the words and figures as follows, to wit:
[description] .
And they hereby request that the said print be registered in the
Patent Office, in accordance with the act of congress to that effect
approved June 18, 1874.
C. D. & Co., Proprietors,
By C. D., a member of the firm.
Dated , 18—.
31G
FORMS. 317
(3) FOR A CORPORATION.
To the Commissioner of Patents:
The applicant, a corporation duly created by authority of the laws
of the state of [or other authority, as the case may be], and doing
business at , in said state, hereby furnishes five copies of a
print which has never been published and which is to be used for
advertising purposes for . The title of said print is ,
and the said print consists of the words and figures as follows, to
wit: [description].
And it is hereby requested that the said print be registered in the
Patent Oflfice, in accordance with the act of congress to that effect
approved June 18, 1874.
The E. F, Company,
By G. H., President [or other officer].
Dated , 18—.
FORMS OP APPLICATIONS FOR REGISTRATION
OF LABELS.
(1) FOR AN INDIVIDUAL.
To the Commissioner of Patents:
The undersigned, A. B., of the city of , county of , and
state of , and a citizen of the United States [or resident therein,
as the case may be], hereby furnishes five copies of a label which has
never been published and which is to be used on , of which he
is the sole proprietor. The title of said label is , and the said
label consists of the words and figures as follows, to wit:
[descnpti07i] .
And he hereby requests that the said label be registered in the
Patent Office, in accordance with the act of congress to that effect
approved June 18, 1874.
A. B., Proprietor.
Dated , 18—.
(2) FOR A FIRM.
To the Commissioner of Patents:
The undersigned, C. D. & Co., a firm domiciled in the city of
, county of , state of , and doing business at No.
street, in said city, hereby furnish five copies of a label
which has never been published and which is to be used on ,
of which they are the sole proprietors. Tlie title of said label is
, and the said label consists of the words and figures as fol-
lows, to wit: [description].
And they hereby request that the said label be registered in the
Patent Office, in accordance with the act of congress to that effect
approved June 18, 1874.
C. D. & Co., Proprietors,
By CD., a member of the firm.
Dated , 18—.
318 APPENDIX D.
(3) FOR A CORPORATION.
To the Commissioner of Patents:
The applicant, a corporation duly created by authority of the laws
of the state of [or other authonty, as the case may be], and doing
business at , in said state, hereby furnishes five copies of a
label which has never been published and which is to be used on
, of which it is the sole proprietor. The title of said label is
, and the said label consists of the words and figures as fol-
lows, to wit: [description].
And it is hereby requested that the said label be registered in the
Patent Office, in accordance with the act of congress to that effect
approved June 18, 1874.
The E. F. Company,
By G. H., President [or other officer].
Dated , 18—.
APPENDIX E.
PENAL ACT OP AUGUST 14, 1876.
(19 Statutes at Larg-e, 141.)
Be it enacted by the Senate and Htm.se of Represent ativen of the
United States of America in Congress assembled:
Section 1. That every person who shall, with intent
to defraud, deal in or sell, or keep or otfer 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
statutes 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 counter-
feit, or not the genuine goods referred to in said regis-
tration, shall, on conviction thereof, be punished by a
fine not exceeding one thousand dollars, or imprisonment
not more than two years, or both such fine and imprison-
ment.
Section 2. That every person who fraudulently affixes,
or causes or procures to be fraudulently affixed, any
trade-mark registered pursuant to the statutes of the
United States, or any colorable imitation thereof, calcu-
lated to deceive the public, to any goods of substantiall}''
the same descriptive properties as those referred to in
said registration, or to the package in which they are
put up, knowing the same to be counterfeit, or not the
genuine goods referred to in said registration, shall, on
conviction thereof, be punished as prescribed in the first
section of this act.
Section 3. That every person who fraudulently fills,
or causes or procures to be fraudulently filled, any pack-
age to which is affixed any trade-mark, registered pur-
suant to the statutes of the United States, or any color-
320 APPENDIX E.
able imitation thereof, calculated to deceive the public,
with an}^ goods of substantially the same descriptive
properties as those referred to in said registration, know-
ing the same to be counterfeit, or not the genuine goods
referred to in said registration, shall, on conviction
thereof, be punished as prescribed in the first section of
this act.
Section 4. That any person or persons who shall,
with intent to defraud any person or persons, knowingly
and wilfully cast, engrave, or manufacture, or have in
his, her, or their possession, or buy, sell, offer for sale, or
deal in, any die or dies, plate or plates, brand or brands,
engraving or engravings, on wood, stone, metal, or other
substance, moulds, or any false representation, likeness,
copy, or colorable imitation of any die, plate, brand, en-
graving or mold of any private label, brand, stamp,
wrapper, engraving on paper or other substances or
trade-mark, registered pursuant to the statutes of the
United States, shall, upon conviction thereof, be pun-
ished as prescribed in the first section of this act.
Section 5. That any person or persons who shall,
with intent to defraud any person or persons, knowingly
and wilfully make, forge or counterfeit, or have in his, her,
or their possession, or buy, sell, offer for sale, or deal in,
any representation, likeness, similitude, copy, or color-
able imitation of any private label, brand, stamp, wrap-
per, engraving, mold or trade-mark, registered pursuant
to the statutes of the United States, shall, upon convic-
tion thereof, be punished as prescribed in the first section
of this act.
Section 6. That any person who shall, with intent to
injure or defraud the owner of any trade-mark, or any
other person lawfully entitled to use or protect the same,
buy, sell, offer for sale, deal in, or have in his possession
any used or empty box, envelope, wrapper, case, bottle,
or other package, to which is affixed, so that the same
may be obliterated without substantial injury to such
box or other thing aforesaid, any trade-mark, registered
pursuant to the statutes of the United States, not so de-
PENAL ACT OF AUGUST 14, 1876. 321
faced, erased, obliterated, and destroyed as to prevent
its fraudulent use, shall, on conviction thereof, be pun-
ished as prescribed in the first section of this act.
Section 7. That if the owner of any trade-mark, reg-
istered pursuant to the statutes of the United States, or
his ag-ent, make oath, in writing, that he has reason to
believe, and does believe, that any counterfeit dies,
plates, brands, engravings on wood, stone, metal, or
other substance, or moulds, of his said registered trade-
mark, are in the possession of any person with intent to
use the same for the purpose of deception and fraud, or
make such oaths that any counterfeits or colorable imi-
tations of his said trade-mark, label, brand, stamp,
wrapper, engraving on paper or other substance, or empty
box, envelope, wrapper, case, bottle, or other package,
to which is affixed said registered trade-mark not so de-
faced, erased, obliterated, and destroyed as to prevent
its fraudulent use, are in the possession of any person
with intent to use the same for the purpose of deception
and fraud, then the several judges of the circuit and
district courts of the United States, and the commis-
sioners of the circuit courts may, within their respective
jurisdictions, proceed under the law relating to search-
warrants, and may issue a search-warrant authorizing
and directing the marshal of the United States for the
proper district to search for and seize all said counterfeit
dies, plates, brands, engravings on wood, stone, metal, or
other substance, moulds, and said counterfeit trade-
marks, colorable imitations thereof, labels, brands,
stamps, wrappers, engravings on paper, or other sub-
stance, and said empty boxes, envelopes, wrappers,
cases, bottles or other packages that can be found; and
upon satisfactory proof being made that said counterfeit
dies, plates, brands, engravings on wood, stone, metal,
or other substance, moulds, counterfeit trade-marks,
colorable imitations thereof, labels, brands, stamps,
wrappers, engravings on paper or other substance,
empty boxes, envelopes, wrappers, cases, bottles, or
other packages, are to be used by the holder or owner
21
322 APPENDIX E.
for the purpose of deception and fraud, that any of said
judges shall have full power to order all said counter-
feit dies, plates, brands, engravings on wood, stone,
metal, or other substance, moulds, counterfeit trade-
marks, colorable imitations thereof, labels, brands,
stamps, wrappers, engravings on paper or other sub-
stance, empt}'^ boxes, envelopes, wrappers, cases, bottles,
or other packages, to be publicly destroyed.
Section 8. That any person who shall, with intent to
defraud any person or persons, knowingly and wilfully
aid or abet in the violation of any of the provisions of
this act, shall upon conviction thereof, be punished by a
fine not exceeding five hundred dollars, or imprisonment
not more than one year, or both such fine and imprison-
ment.^
*This act is important because of its connection with the Trade-
mark Cases, 100 U. S. 82. In that case the supreme court declared
the act of 1870 to be unconstitutional because this act was by its ex-
press terms confined to frauds, counterfeits, and unlawful use of trade-
marks which were registered under the provisions of the former act.
The registration act being invalid, the criminal enactment intended
to protect the rights of registrants fell with it. Trade-mark Cases,
100 U. S. 82-99.
It was held that there could be no conviction under this act unless
the certificate of registration contained words to show that the alleged
owner acquired an exclusive property in the mark claimed. United
States V. Braun, 39 Fed. Rep. 775.
This statute having been judicially declared void could not be and
was not made operative by the enactment of the statute of 1881.
United States v. Koch, 40 Fed. Rep. 250.
APPENDIX F.
TRADE-MARK ACT OP MARCH 3, 1881.'
An act to authorize the registration of trade-marks
and protect the same.
Be it enacted by the Senate and House of Representatives oj.
the United States in Congress assembled :
%1.^ That owners^ of trade-marks* used in commerce
with foreign nations or with the Indian tribes,-' pro-
iThis act has been usually treated as valid. South Carolina v.
Seymour. 153 U. S. 353; 67 Off. Gaz. 1191; L. H. Harris Drug Co.
V. Stucky, 46 Fed. Rep. 624; Hennessy v. Braunschweiger, 89 Fed.
Rep. 664. But in a late case Judge Jenkins said: "There has been
no ruling upon the constitutionality of this act, and it need only be
said that its validity is fairly doubtful." Illinois Watch Case Co.
V. Elgin National Watch Co., 94 Fed. Rep. 667-669; 87 Off. Gaz. 2323;
35 C. C. A. 237.
2 See Notes, Act of 1870, sec. 77, ante, p. 300.
'Ownership is a prerequisite. A carpet cleaner was refused
registration for the mark used by him on his wagons and upon car-
pets cleaned by him, because he could not comply with the clause of
the act of 1870 requiring a statement of the class of merchandise and
the particular description of goods to which he applied the mark.
Re Hankinson, 8 Off. Gaz. 89. An official fish inspector has no
trade-mark in the official brand used by him, because he has no
private ownership therein. Chase v. Mays, 121 Mass. 343. A cer-
tificate of registration of trade-mark will not be issued to the appli-
cant and his assignee jointly. Ex parte Spinner, 35 MSS. D., July,
1887. A trade-mark adopted by a real-estate dealer for use in the
course of his business cannot be registered. Ex parte Roy, 54 Off.
Gaz. 1267. When it appears that several parties have the right to
the use of the mark, independent registration will not be granted to
either of them. Ex parte Langdon, 61 Off. Gaz. 286. A certificate
will not be issued to the assignee of the applicant. Ex parte
Roasted Cereals Co., 57 MSS. D. 455. Even when the assignment has
been recorded. Ex parte Bassett, 55 Off. Gaz. 997; Ex parte Spin-
ner, 35 MSS. D. 15.
Thus registration was refused where the facts showed that "appli-
cant is a voluntary association or league of flour manufacturers, all
members of which use the mark upon their product and have an in-
terest severally and in common in its protection; and the present
application for registration is made by the association through its
323
324 APPENDIX F.
vided such owners shall be domiciled in the United
secretarj', an officer duly authorized to that end. The applicant is
not a corporation, nor is it, in strict use of the term, a partnership;
but it is a voluntary association or league or union of the kind recog-
nized by the laws and courts of the state of its domicile, and by the
laws and courts of nearly all the states of the Union, as lawful and
of the kind to which they extend protective and other relief in proper
cases. As an association it does not itself make, brand, or sell the
flour to which its mark is applied; but its members by its authority
use the selected mark on wheat flour of their own manufacture. The
league states its objects to be: 'To oppose the adulteration of flour,
to assist in enforcing the law, to protect its honest millers from dis-
honest competition, to expose fraud, to maintain the integrity of the
American milling trade, and to afford buyers a guarantee that they
can obtain from members of this league absolutely pure flour. ' As
to its membership, the rule is: 'Any miller who does not adulterate
flour can join this league upon the payment of ten dollars member-
ship fee, and executing the affidavit and contract which are condi-
tions of the membership. ' . . . But the ownership of the mark is,
by agreement of all interested parties, vested in the association, and
the right to its use by any individual arises only from permission of
the association and is subject to forfeiture upon failure to comply
with the prescribed terms. " The commissioner saying: "I can find
no authority in the trade-mark act permitting this office to register a
trade-mark, the right to use which is farmed out and which ia not
actually used by the would-be registrant. While the verified dec-
laration accompanying the statement in this case sets forth that no
other person, firm, or corporation has any right to use the mark, yet
the brief of counsel shows that all of the members of the association,
which is stated to be composed of a majority of the principal flour
manufacturers of the United States, have a right, under certain con-
ditions, to use the mark." Duell, Commissioner, in Ex parte The
Anti-Adulteration League, 86 Off. Gaz. 1803.
A word to be used as the name of or mark for a patented article
will not be admitted to registration. In so ruling the commissioner
has said : " In view of the fact that under the trade-mark act of 1881 a
certificate of registry remains in force for thirty years from its date,
I do not think this office should register trade-marks which, though
lawful trade-marks at the date when registry is sought, will become
public property before the expiration of the thirty years. By so doing
the patent office would be placed in the light of attempting to aid in
prolonging a monopoly, which manifestly, under the decisions of the
courts, is unwarranted. To thus attempt to give the petitioner a
monopoly for many years longer than is given by the patent would
be a fraud upon the public." Duell, Commissioner, in Ex parte
Velvril Co., 84 Off. Gaz. 807. To the same effect see Ex parte F. H.
Gilson Co., 83 Off. Gaz. 1992.
TRADE-MARK ACT OF MARCH 3, 1881. 325
States or located in any foreif^n country or tribe, which,
by treaty, convention, or law,^ affords similar privi-
<" Under the statute of March 3, 1881, 'owners of trade-marks,'
under certain conditions as to use and upon compliance with certain
requirements which need not now be considered, are entitled to ob-
tain registration therefor. The phrase 'owners of trade-marks'
manifestly limits the right of registration to such person or persons,
natural or artificial, as possess the legal title to that for which
registration is sought, and it further limits the right of registration
to that which is a trade-mark. It is therefore incumbent upon the
various tribunals of the office having in charge the registration of
trade-marks, when an application for registration is filed, to decide
at the outset two questions: (1) Is applicant the owner, and (2) is
that which he seeks to register a trade-markf Manifestly the tribu-
nals of this office, in deciding the question of ownership, are not pre-
cluded by the statement and declaration of ownership, made by the
applicant from considering and deciding whether he is or is not the
owner of the thing sought to be registered. It is not unusual to re-
fuse registration because of the absence of legal title in the appli-
cant—for example, when it appears that before applicant adopted
and used his alleged mark the identical thing has been adopted and
used by another. Equally is it the province and duty of the tribu-
nals of the office having jurisdiction of the registration of trade-marks
to decide whether the thing presented for registration is a trade-mark.
An applicant may be the owner of the thing alleged to be his trade-
mark, and yet the thing presented for registration may not be a
trade-mark. The statement and declaration of applicant that the
thing presented for registration is a trade-mark are not conclusive.
The question is what the thing is, and not what it is called. That
the statute vests in this office the power to pass upon these two ques-
tions I believe, and to pass upon such questions has been the uniform
practice of my predecessors ever since the enactment of the trade-
mark law of 1881." Duell, Commissioner, in Ex parte The Bronson
Co , 87 Off. Gaz. 1782; and in Ex parte Buffalo Pitts Co., 89 Off.
Gaz. 2069.
^Commerce with the Indian tribes may be conducted wholly within
the limits of a single state. "The power of congress is not deter-
mined by the locality of the traffic, but extends wherever inter-
course with Indian tribes, or with any member of an Indian tribe, is
found, although it may originate and end within the limits of a
single state." Prentice & Egan, Commerce Clause of the Federal
Constitution, p. 346, citing United States v. Holliday, 3 Wall. 407;
Territory v. Guyott, 9 Mont. 46.
'The fact that a mark is lawful in a foreign country is no
test of its registrability here. Re Moet & Chandon, 18 MSS. D.
259. In that case registration was refused although the mark had
been registered in France. On the other hand, the words "Ger-
326 APPENDIX F.
leges to citizens of the United States, may obtain regis-
mania " and "Goliath" have been registered in the United States
by citizens of Germany, notwithstanding the fact that the words could
not be registered in Germany as trade-mark, because it appeared
that citizens of the United States had been permitted to register
marks in Germany for which German citizens would not be allowed
registration. Re Manske & Co., 64 Oflf. Gaz. 858; Re Schmidt, 52
MSS. D. 7, Under this act a foreigner is entitled to no other or
further rights than a citizen of the United States. Ex parte Buffalo
Pitts Co., 89 Oflf. Gaz. 2069.
The distinction between the terms "treaty" and "convention" is
purely artificial. "A treaty is primarily a contract between two
or more independent nations." Mr. Justice Field, in Whitney v.
Robertson, 124 U. S. 190-194.
The International Convention for the Protection of Industrial
Property, signed at Paris, March 20, 1883, and acceded to by presi-
dential proclamation on behalf of the United States, March 29, 1887>
cannot become operative in the absence of federal legislation. Opin-
ions of the Attorney-General, 1889, p. 253; 47 OS. Gaz. 398; Ex parte
Zwack & Co., 76 Off. Gaz. 1855.
The following is a list of the existing international arrangements,
by treaty or convention between the United States and foreign na-
tions, with the date upon which such arrangements were severally
consummated, and the appropriate references where they are given
in extenso:
COUNTRY.
Austria-Hungary
Belgium (now obsolete)
Belgium
Brazil
Denmark
France
Germany
Great Britain
Italy
Japan
Russia
Servia
Spain
Switzerland
The Netherlands
July
1,
1872.
July
30,
1869.
July
9,
1884.
June
17,
1879.
Oct.
12,
1892.
July
6,
1869.
June
1,
1872
July
17,
1878.
March
19,
1884.
March
9,
1897.
Oct.
15,
1868.
Nov.
24,
1874.
Dec.
27,
1882
April
19,
1883
May
16,
1883
Feb.
16,
1883
REPORTED.
17 Stat, at L. 917.
16 Stat, at L. 765.
29 Off. Gaz. 452.
21 Stat, at L. 659.
16 Stat, at L. 771.
17 Stat, at L. 921.
14 Off. Gaz. 233.
27 Off. Gaz. 304.
16 Stat, at L. 725.
22 Stat, at L. 966.
25 Off. Gaz. 98.
23 Off. Gaz. 2237.
23 Off. Gaz. 1334.
Note. — For treaties and conventions, 1776-1887, see "Treaties and
Conventions Between the United States and Other Powers:" Gov-
ernment Printing Office, 1889.
The declaration with Great Britain is drawn so as to confer mutual
trade-mark rights upon the subjects and citizens of each of the con-
TRADE-MARK ACT OF MARCH 3, 1881.
327
tration' of such trade-marks by complying; with the fol-
lowing requirements:
1st. By causing to be recorded in the Patent Office a
trading- parties throughout the dominions and possessions of the
other. Citizens or residents of British colonies are therefore per-
mitted to register their trade-marks under this treaty whenever it is
satisfactorily shown that in the respective colonies similar protection
is afforded to citizens of the United States.
LIST OF TRADE-MARK LAWS OF FOREIGN NATIONS.
The trade-mark laws of the following- countries have been pub-
lished in the Official Gazette:
COUNTRY.
VOL-
UME.
PAGE.
DATE.
42
333
January
24,
1888
52
1539
September
2,
1890
59
1611
June
14,
1892
65
137
October
3,
1893
45
235
October
9,
1888
54
1419
March
10,
1891
31
1447
June
23,
1885
71
145
April
2,
1895
69
126
October
2,
1894
24
102
July
3,
1883
48
1402
September
3.
1889
70
1503
March
12,
1895
88
1899
September
5,
1899
51
809
May
6,
1890
23
1334
April
3,
1883
66
174
January
2,
1894
66
321
January
16,
1894
70
279
January
8,
1895
55
1653
June
23,
1891
75
1035
May
12,
1896
23
2237
June
5,
1883
33
501
October
27,
1885
Argentine Republic
Austria-Hungary ....
Bulg-aria
Brazil
Denmark
Germany
Greece
Italy
Japan
< <
Mexico
Netherlands
(<
Portugal
Roumania
Servia
Switzerland
Victoria
^"Registration under the act of 1881 is of but little, if any,
value, except for the purpose of creating a permanent record of the
date of adoption and use of the trade-mark; or in cases where it is
necessary to give jurisdiction to the United States courts. " Hawley,
J., in Hennessy v. Braunschweiger, 89 Fed. Rep. 664. To the same
effect see Waukesha Hygeia Mineral Springs Co. v. Hygeia Dis-
tilled Water Co., 70 Off. Gaz. 1319; 63 Fed. Rep. 438; 11 C. C. A. 277;
Sarrazin v. W. R. Irby Cigar & Tobacco Co., 93 F'ed. Rep. 624-627;
Brower v. Boulton, 53 Fed. Rep. 889; Adams v. Heisel, 31 Fed. Rep.
279-281.
TTie act does not define trade-marks. — "It will be observed that the
statute (referring to the act of 1870) does not define the term 'trade-
mark,' or say of what it shall consist. The term is used as though
328 APPENDIX F.
Statement specifying name/ domicile, ^ location, ^ and
citizenship* of the party applying; the class of mer-
chandise and the particular description of goods com-
prised in such class to which the particular trade-mark
has been appropriated;* a description of the trade-mark
its sigfnification was already known to the law. It speaks of it as
an already existing thing, and protects it as such. The thing to be
protected must be an existing lawful trade-mark, or something that
may then for the first time be adopted as a lawful trade-mark inde-
pendent of the statute. There must be a lawful trade-mark adopted
without reference to the statute, and then, by taking the prescribed
steps, that trade-mark, so already created and existing, may receive
certain further protection under the statute." Moorman v. Hoge, 2
Sawy. 78. The reasoning of this opinion is equally applicable to
the act of 1881. L. H. Harris Drug Co. v. Stucky, 46 Fed. Rep.
624-628; Ex parte M. Block & Co., 40 Off. Gaz. 443.
^See Trade-mark Rules 21, 22, 23 and 24 of the Patent Office,
omte, p. 285. The christian name of the applicant should be given
in all cases, instead of the initial only. Monroe Cattle Co. v. Becker,
147 U.S. 47.
^Domicile, i. e., the place of residence of the applicant; "that
place in which he has fixed his habitation, without any present in-
tention of departing therefrom." Gordon, J., in Carey's Appeal, 75
Pa. St. 201-205.
2 Where an application shows the applicant to be a citizen of one
foreign country and located in another, his application will be gov-
erned by the existing treaty, convention or law of the country of his
location. By location is meant the situs of the factory or other place
of business of the applicant. Re Haggenmacher, 60 Off. Gaz. 438.
*What the applicant's citizenship may be is wholly immaterial.
His right to registration is governed by the country of his location,
which may or may not be identical with that of his citizenship.
Re Haggenmacher, supra.
Citizenship defined. — Citizenship means "residence with intention
of remaining permanently at that place. A man may reside in a state
for an indefinite period of time without becoming a citizen, but the
moment a man lakes up his residence in a state different from that
where he formerly was domiciled or was a citizen, with intent and
purpose of making the new place of residence his future home, that
moment he loses his former domicile, and becomes domiciled in the
new place; or, in other words, he ceases to be a citizen of the former
place of residence and becomes a citizen of the state of his adoption."
Turner, J., in Winn v. Gilmer, 27 Fed. Rep. 817.
^The fact that the Amoskeag Manufacturing Company had applied
its mark to cotton goods except prints did not give it an exclusive
right to its use on all cotton goods including prints. Amoskeag Mfg.
Co. V. Garner, 55 Barb. 151. The term "Fancy Goods" includes too
TRADE-MARK ACT OF MARCH 3, 1881. 329
itself^ fac-similes thereof,'^ and a statement of the mode
many sub-classes to be allowed in one registration. Ke Lisner,
Comm. Decis. 1878, p. 46. Registration has been refused for a mark
to cover an indurated blood compound and the various articles, such
as door knobs, to be made from it. Re Dibble Mfg. Co., 18 MSS. D.
428. Application for registration of a mark to be used upon drug-
gists' sundries was refused because the words were too indefinite.
Re Maw, Son & Thompson, 22 MSS. D. 403.
What one registration may cover. — A single trade-mark may be regis-
tered to be applied to all goods made of hard rubber. Re India Rub-
ber Comb Co., 16 MSS. D. 38. Bourbon, wheat and rye whiskies,
wines, brandies and gins, may be included in one registration. Re
Boehm & Co., Comm. Decis. 1875, p. 103; as may "agricultural im-
plements," Re Manny & Co., 17 MSS. D. 155; "canned goods," Re
Fitzpatrick, Davis & Co., 18 MSS. D. 278; and "cutlery," Re Kampfe
Bros., 58 MSS. D. 306; as well as proprietary medicinal and toilet
compounds, Re Knight, 38 MSS. D. 341. The Patent Office has
published a classification, not of an official character. Supplement
to Official Gazette, Jan. 1, 1897, division 33. One registration may,
however, cover all the classes of goods upon which the trade-mark
has been used. Ex parte Clark- Jewell- Wells Co., 83 Off. Gaz. 915.
But a picture and a word cannot be embodied in the same registra-
tion unless they are true alternatives. Ex parte J. D. Richards
& Sons, 54 MSS. D. 425; Ex parte Adam Roth Gro Co., 62 Off. Gaz.
315; Ex parte Kinney, 72 Off. Gaz. 1349; Ex parte Muir, 87 Off. Gaz.
357; Ex parte Lazarus Schwarz & Lipper, 64 Off. Gaz. 1396.
'The description must distinguish the essential from the non-
essential features of the mark. Re Volta Belt Co., 8 Off. Gaz. 144.
The essential features being those serving to distinguish the goods
of the applicant, an essential feature cannot be anything that is
not a valid trade-mark, such as the geographical word "Lancaster."
Re Farnum & Co., Comm. Decis. 1880, p. 155; 18 Off. Gaz. 412; Re
Adriance, Piatt & Co., Comm. Decis. 1881, p. 52; 20 Off. Gaz. 1820;
Re Pierce, 23 MSS. D. 16. The description and fac-simile incorpor-
ated in the certificate of registration are evidence to show the extent
of the owner's claim of trade-mark, when he sues for its protection
as a common-law trade-mark. Richter v. Reynolds, 59 Fed. Rep.
577; Kohler Mfg. Co. v. Beeshore, 53 Fed. Rep. 262; S. C, 59 Fed.
Rep. 215. The essential feature of a trade-mark is not that which
the registrant elects to designate as such, but that which would strike
the public mind as its most salient feature. Ex parte Standard
Fashion Co., 89 Off. Gaz. 189.
2 This section does not contemplate registration of form, material,
or color. Materials are not subject to appropriation as trade-mark;
it has been so held in regard to tin used as tags upon i)lug tobacco,
Lorillard v. Pride, 28 Fed. Rep. 434; nor is a method of bronzing
horse-shoe nails, Putnam Nail Co. v. Bennet, 43 Fed. Rep. 800; 59
Fed. Rep. 909; 8 C. C. A. 362; nor the form of sticks of chewing gum.
330 APPENDIX F.
in which the name is applied and affixed to goods, ^ and
the leng-th of time during which the trade-mark has
been used.^
Adams v. Heisel, 31 Fed. Rep. 279; nor the method in which goods-
are arranged in packages, Ibid., and Davis v. Davis, 27 Fed. Rep. 490.
For further discussion of form, color, etc., see ante, pp. 166-172.
A fac-simile need not contain any unessential portion of the mark
sought to be registered. Re Watson, 16 MSS. D. 467; Re Arm-
strong & Co., 26 MSS. p. 260.
One fac-simile only is sufficient to illustrate the mode of using the
mark. Re Kimball, Comm. Decis. 1887, p. 54.
Fac-simile defined. — "A fac-simile is an exact counterpart of an
original, and a fac-simile represented by a drawing is an exact
counterpart of an original, so far as the nature of a drawing per-
mits. A close adherence to the language of the statute would seem
to require that in each case the trade-mark and nothing but the trade-
mark should be represented by the drawing, and while, perhaps, it
would be going too far to apply in all cases a rule so rigorous, it is
certainly within the discretion of the office to insist upon it in cases
where . . . legitimate doubts arise as to whether protection should
not be sought through the law relating to designs. In my judgment
the cases are very rare in which the registration of a trade-mark
under the statute requires or should permit of any other matter than
the fac-simile of the trade-mark." Mitchell, Commissioner, in Ex
parte Hudson, 55 Off. Gaz. 1401. Applicants are restricted to sym-
bols which conform to their fac-similes as well as to their verbal
descriptions. Duke v. Green, 16 Off. Gaz. 1094.
J The statement of the mode of application must be given. Ex
parte Hudson, 55 Off. Gaz. 1401. It must appear that the trade-mark
is intended to be used upon "goods or manufactured articles, the
general objects of commerce." Ex parte Roy and Nourse, 54 Off.
Gaz. 1267. The use of a trade-mark upon bill-heads, letter-heads,
cards and circulars used in a business does not come within the con-
templation of the statute; although it would be properly a trade-mark
if used thereon as articles of commerce and not as mere vehicles of
communication between a dealer and other persons. Ibid. The
things to which a trade-mark may be affixed so as to be entitled to
registration are goods, wares and merchandise — articles that may
be transported, in contradistinction to those fixed species of property
which the law includes under the term real estate. Ibid. Registra-
tion under this act is limited to marks used upon manufactures or
merchandise. Re Hankinson, 8 Off. Gaz. 89. It is a sufficient ap-
plication if the mark is used in advertising, and a lithographed repro-
duction of it inserted in each box containing the merchandise. Hay
& Todd Mfg. Co. v. Querns Brothers, 86 Off. Gaz. 1323.
2The language of the Act of 1871 was "the length of time, if any,
during which the trade-mark has been used." This was construed
TRADE-MARK ACT OF MARCH 3, 1881. 331
2d. By paying- into the treasury of the United States
the sum of twenty-five dollars,' and complying with
such regulations as may be prescribed by the Commis-
sioner of Patents.
§ 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 ofiicer 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 resera-
to admit marks to registration that never had been used in com-
merce. Re Rothschild, 7 Off. Gaz. 220. It must now be shown as
a prerequisite to registration that there has been actual application
of the mark to merchandise and actual user in commerce. United
States V. Seymour, 66 Off. Gaz. 1167. Registration under this statute
avails nothing if the name or symbol is never used. Siegert v.
Abbott, 72 Hun, 243.
It was held in one case that a citizen of France who had not depos-
ited his mark in the Patent Office under the provisions of the treaty
of 1869 between the United States and France could not maintain an
action for infringement. Lacroix v. Escobal, 37 La. Ann. 533. But
in a later case it is held that a registration under the Act of 1881 by
a French citizen renders the deposit of the mark under the terms of
that convention unnecessary. Societe de la Benedictine v. Micalo-
vitch, 36 Alb. L. J. 364. The dates of adoption set forth in the appli-
cations of two rival registrants are not conclusive. Einstein v.
Sawhill, 61 Off. Gaz. 287. Where actual user appears to have been
first made after application for registry, the mark may be admitted
to registration upon the filing of a supplemental application. Ein-
stein v. Sawhill (2), 64 Off. Gaz. 1333.
■ The fee cannot be refunded because registration is refused.
Re Thayer, 54 Off. Gaz. 957. Where the domestic branch of a house
having offices in the United States and abroad, filed an application
in ignorance of the fact that an identical application had been made
by one of the foreign offices, the fee paid on the second application
was refunded. Re Finlayson, Bousfield »& Co., 61 Off. Gaz. 152.
^See Act of 1870, sec. 77, ante, p. 300.
^An application of a partnership cannot properly be made by
one not a member of the firm but merely a so-called "director. " Ex
parte Kirker, Greer & Co. (Ltd.), 37 MSS. D. 392.
332 APPENDIX F.
blance thereto as might be calculated to deceive,^ that
such trade-mark is used on commerce with foreign na-
tions or Indian tribes, as above indicated,^ and that the
description and fac-similes presented for registry truly
represent the mark sought to be registered.^
§3.^ That the time of the receipt of any such appli-
cation shall be noted and recorded. But no alleged
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
^Registration will be refused whenever in tlie opinion of the com-
missioner the marli offered is so similar to a registered mark as to
be likely to lead to mistake or confusion. Ex parte Coon, 58 Oflf.
Gaz. 946. In case of doubt concerning such similarity, that doubt
will be resolved against the applicant. Re Bowe, SO MSS. D. 168;
Re Bogardus. 50 MSS. D. 2.
2 The declaration on oath that there has been a user of the mark
in the classes of commerce specified is insisted on by the Patent
Office. Ex parte Strasburger & Co., 20 Off. Gaz. 155.
3 A word and a figure which are true alternatives constitute a
single mark. Morrison v. Case, 9 Blatchf. 548; 2 Off. Gaz. 544.
Hence they may be covered by one registration. Re Weaver, 10 Off.
Gaz. 1; Ex parte Kinney, 72 Off. Gaz. 1346. But where they are not
true alternatives, as in the case of the word '"Crescent" and the
figure of the crescent moon, and the word and figure might convey
wholly different meanings to the observer, they will not be registered
upon a single application. Ex parte Lazarus Schwarz & Lipper,
64 Off. Gaz. 1396; Ex parte Roth Grocery Co., 62 Off. Gaz. 315.
* See Act of 1870, sees. 79, 80, ante, pp. 305-309. The fact that this act
does not expressly exclude descriptive words from registration does not
raise a presumption that descriptive words should be admitted to regis-
tration. L. H. Harris Drug Co. v. Stucky, 46 Fed. Rep. 624-627,
^See cases cited in note 5 to sec. 79 of the Act of 1870, ante, p. 305.
A mark that is deceptive in its nature will not receive registra-
tion. Ex parte Bloch & Co., 40 Off. Gaz. 443; Re Chichester Chemical
Co., 52 Off. Gaz. 1061; Re American Sardine Co., Comm. Decis. 1873,
p. 82; Re Grove, 67 Off. Gaz. 1447. The coat-of-arms of the United
States, or either of the states, will not be admitted to registration.
Ex parte Schmachtenberg Bros., 51 MSS. D. 204.
Nor will a descriptive word: as "Albany Beef," for canned stur-
geon, Re Ames, 23 Off. Gaz. 344; "Chili Colorow, " for table sauce,
Re Railton, 25 MSS. D. 321; "Time-Keeper," for watches, Ex parte
TRADE-MARK ACT OF MARCH 3, 1881. 333
name of the applicant,^ nor which is identical with a
registered or known trade-mark^ owned by another and
appropriated to the same class of merchandise, or which so
nearly resembles some other person's lawful trade-mark
as to be likely to cause confusion or mistake in the mind
Strasburger & Co., 20 Off. Gaz. 155; "Cristalline, " for artificial
jewels, Ex parte Kipling, 24 Off. Gaz. 899.
Nor a picture or word that is descriptive or deceptive. Ex parte
Martin, 89 Off. Gaz. 2258; Ex parte Wolf, 80 Off. Gaz. 1271; Ex parte
Grove, 67 Off. Gaz. 1447.
Nor a geographical word: as "Cromartj'," for dried fish, Re Proc-
tor, Jr., 51 Off. Gaz. 1785; "Trenton," for saws. Re American Saw
^This prohibition is strictly enforced. Even a name used as a mark
for twenty years, and admitted to registration under the act of 1870
has been refused registration under this statute. Re Falrchild, 21
Off. Gaz. 789. Congress by an enactment under date of August 5,
1882, provided: "That nothing contained in the law (of March 3, 1881),
shall prevent the registry of any lawful trade-mark rightfully used
by the applicant in foreign commerce or commerce with Indian tribes
at the time of the passage of said act." 22 Stats, at Large, p. 298.
This proviso has admitted to registration names of corporations, as
for example, the words "Union Metallic Cartridge Co.," which were
in use as merchandise marks prior to March 3, 1881. But no name
of a corporation not used prior to that time as a mark can now be ad-
mitted to registration. Ex parte Creedmore Cartridge Co., 56 Off.
Gaz. 1333. And see note to the act of August 5, 1882. Registration has
been refused to a name as part of a trade-mark which also included
a device. Ex parte Adriance, Piatt & Co., 20 Off. Gaz. 1820. But a
name used as part of an old combination trade-mark has been ad-
mitted to registry. Ex parte Frieberg & Workum, 20 Off. Gaz.
1164. A proper name joined to a geographical name does not consti-
tute a valid trade-mark, therefore "Buffalo Pitts" was refused
registration as a trade-mark for threshing machines. Ex parte Buf-
falo Pitts Co. , 89 Off. Gaz. 2069.
^Registration has been refused where the applicant's mark, "Tri-
umphant" for flour, had been registered by another under the act
of 1870, and not re-registered under the act of 1881. Ex parte Lyon,
Dupuy & Co., 28 Off. Gaz. 191; Dyrenforth, Acting Commissioner,
tersely observing that "To decide otherwise would be to open Pan-
dora's box and turn loose fraud upon individuals and imposition ujx)n
the public." The fact that the applicants used the mark in foreign
commerce while the record did not show the registrant to have done
so was held immaterial. Ibid; and to the same effect, Yale Mfg. Co.
V. Yale, 30 Off. Gaz. 1183. A trade-mark consisting of a design will
not be admitted to registration, where the same design has been
embodied in a design patent granted to another. Ex parte Lee &
Shepard, 24 Off. Gaz. 1271.
334 APPENDIX F.
of the public, or to deceive purchasers.^ In an appli-
cation for registration the commissioner of patents shall
decide the presumptive lawfulness of claim to the alleged
Co., 58 OflF. Gaz. 521; "Cloverdale, " Re Hendley, 72 OflF. Gaz. 1654.
In many instances, however, where the commissioner has deemed
the geographical word to be used in a purely arbitrary sense it has
been admitted to registration. Re Cornwall & Bros., 12 Off. Gaz.
312; Ex parte Tietgens& Robertson, 87 OflF. Gaz. 2117. The following
extracts from leading rulings of the Patent Ofl&ce may serve as
guides for applicants seeking registration for geographical words.
Their registrability'^ "is to be determined in view of the circum-
stances of each particular case. . . . One geographical name might
be either descriptive or deceptive; another geographical name applied
to the same article might be neither." Thus, it was held that it
having become a common practice to apply the words "Irish,"
"Limerick," etc., to soap, there was no objection to registering the
word "Dublin," as applied to soap; in view of the state of the trade
and the nature of the article, "Dublin" applied to soap manufac-
tured in this country, was neither descriptive nor deceptive. This
doctrine was announced in a decision of Acting Commissioner Doo-
little, refusing registration for the word "French" as applied to
American made paints on the ground that it was deceptive. Re J.
Marsching & Co., 15 Off. Gaz. 294. In a later decision, refusing
registration to the word "Cloverdale" as a trade-mark for canned
fruits and vegetables, Acting Commissioner Fisher announced the
following classification: "Geographical names may for convenience
^The commissioner must decide, "first, if the applicant has act-
ually used the trade-mark in lawful commerce with foreign nations
or with the Indian tribes, and then if he has the right to the use of it at
all. If hefindsthatthe alleged trade-mark is the nameof the applicant
or any other name which cannot lawfully be converted into a trade-
mark at common law, or that it is identical with the trade-mark of
another, registered or unregistered, or is a deceptive imitation of
another, or that it is not the property of the applicant, he cannot
admit it to registration, though he may be satisfied that the applicant
has used it in regular commerce with foreign nations or the Indian
tribes." Court of Appeals, District of Columbia, by Sheppard, J.,
in United States v. Seymour, 66 OS. Gaz. 1167-1169. Where a part
of the applicant's mark was the word "Railway," which word had
been registered by another, the application was refused. Ex parte
Strasburger & Co., 20 Off. Gaz. 155. The question presented to the
commissioner upon an issue of anticipation is "whether the trade-
mark sought to be registered is so similar to any trade-mark already
registered for use upon the same class of articles as to be calculated
to deceive purchasers using ordinary caution. " Frothingham, Assist-
ant Commissioner, in Ex parte George B. Hurd & Co., 59 OS. Gaz.
1763; and to the same effect. Ex parte Coon, 58 Off. Gaz. 946.
TRADE-MARK ACT OF MARCH 3, 1881. 335
trade-mark;^ and in any dispute between an applicant
and a previous rejj;"istrant, {3r between applicants, he shall
follow, so far as the same may be applicable, the prac-
tice of courts of equity of the United States in analogous
cases. 2
be divided into three classes; first, those that are well known and in
common use — such, for example, as 'United States,' 'New York,'
'San Francisco,' etc. The law is settled that words coming under
this class ought not to be registered. The second class includes
words which in their primary significance are not geographical,
even though they may appear in the Postal Guide or similar publi-
cations. Such words as 'trilby,' 'creole,' 'puritan' and 'volun-
teer,' are good examples of this class. These words, it seems to me,
ought not to be refused registration on the ground that they are geo-
graphical, since it cannot fairly be said that they are 'words in com-
mon use as designating locality or section of a country.' The third
class would logically occupy a position between the two classes men-
tioned above, and it consists of words which primarily have a geo-
graphical meaning — for example, terms ending or compounded with
such words as 'city,' 'town,' 'shire,' 'mount,' or 'mont. ' Such
words, I think, should not be registered, for the reason that they are
clearly geographical in their primary significance, even if it cannot
be said that they are widely enough known to come strictly under
the first class. It seems to me that the word in question, 'Clover-
dale,' clearlj- comes under the third class." Ex parte Hendley, 72
Off. Gaz. 1654. A geographical word does not become properlj'^
registrable by being enclosed in a geometrical figure. So the word
"Yucatan" was refused registration as a mark for leather, even
thougn enclosed in a square figure. Ex parte Weil, 83 Off. Geiz.
1802.
^No court can grant registration nor direct the action of the com-
missioner by mandamus. His duties are not ministerial, but require
the exercise of judgment and discretion. His performance of those
duties will not be reviewed on or controlled by mandamits. United
States v. Seymour, 66 Off. Gaz. 1167-1172.
2 Under this provision the commissioner has power to declare an
interference, even between a partnership and one of its members.
If the applicant shows better title he will be admitted to registration
notwithstanding a prior registry. Yale Mfg. Co. v. Yale, 30 Off.
Ga2. 1183. In such a case the burden of proof to establish priority
is upon the applicant. Manitowoc Mfg. Co. v. Dickerman, 57 Off.
Gaz. 1721. In cases of interference the question presented to the
commissioner is substantially' the same as would arise in a court of
equitj' if either of the parties were seeking to enjoin the other from
the use of the mark. Ibid. In interferences the issue is as broad as
the broadest claim. S. Hernsheim Bros. & Co. (Ltd.) v. J. H. Har-
grave & Son, 81 Off. Gaz. 503; Joseph Banigan Rubber Co. v.
336 APPENDIX F.
§ 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, together with printed copies of the
specifications, shall be kept in books for that purpose.
Copies of trade-marks and of statements and declara-
tions filed therewith, and certificates of registry so signed
and sealed, shall be evidence in any suit in which such
trade-marks shall be brought in controversy.^
§ 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
manufactured in this country, and in which it receives
protection under the laws of a foreign country for a
shorter period, in which case it shall cease to have any
force in this country by virtue of this act at the time that
such trade-mark ceases to be exclusive property else-
Bloomingdale, 89 Off. Gaz. 1670. By section 9 of the act establish-
ing the court of appeals of the District of Columbia that court is
given the determination of appeals from the decision of the commis-
sioner of patents "in any interference case." That court has held
that this clause does not refer to or include trade-mark interferences.
Einstein v. Sawhill, 65 Off. Gaz. 1918. An applicant presented for
registration a mark substantially the same as one registered by
another under the act of 1870, which had not been re-registered under
the act of 1881. Registration was refused by the examiner. The
applicant then sought to institute an interference; this was refused
because the former registration was void. Under all the facts the
commissioner notified the registrant under the act of 1870 that an
application for registry was pending with which his registry would
interfere if it were a registry under the act of 1881, and that sixty
days would be allowed wherein the former registrant might make an
application under the act of 1881 with a view to interference. Ex parte
American Lead Pencil Co., 61 Off. Gaz. 151. The decision of the
commissioner of patents upon interference proceedings renders the
issues presented to him res oMjudicaia and they cannot be reopened
in a subsequent proceeding between the parties. Hanford v. Westcott,
16 Off. Gaz. 1181. It is the privilege of the applicant for registration
to withdraw his application as soon as the interference is declared,
and seek redress in the courts. If he elects to proceed before the
commissioner he is bound by the decision of the commissioner. Ibid.
iSee Act of 1870, sec. 80, ante, p. 309.
TRADE-MARK ACT OF MARCH 3, 1881. 337
where. At any time during" the six months prior to the
expiration of thirty years, such registration may be re-
newed on the same terms and for a like period.'
§ 6. That applicants for registration under this act
shall be credited for any fee or part of a fee heretofore
paid into the treasury of the United States with intent
to procure protection for the same trade-mark.^
§ 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 de.scriptive
properties as those described in the registration,^ 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 com-
merce or commerce with Indian tribes, as aforesaid, and
to recover compensation therefor in any court having
jurisdiction over the person guilty of such wrongful act;
and courts of the United States shall have original and
appellate jurisdiction in such cases without regard to the
amount in controversy.^
' See Act of 1870, sec. 78, ante, p. 304.
=^The fee for reg-istration under the act of 1881 is required to be
paid upon filing the application. See PatentOfficeRules,a?i?e, rule22,
p. 285.
The sum of $10 paid as a first fee under the act of 1870 is credited
upon this payment on applications pending- in the Patent Office when
the act of 1881 went into effect. See Patent Otfice Rules, ante, rule 19,
p. 284.
But all persons to whom registration was granted under the act of
1870 are entitled to register under this act without additional charge.
Jacoby & Co. v. Lopes & Co., 23 Off. Gaz. 342.
^Thus the registration of a mark by another throws the burden of
proving priority upon one who subsequently applies for registration
for the same mark. Manitowoc Mfg. Co. v. Dickermau, 57 Off. Gaz.
1720. See Act of 1870, sees. 78, 79; ante, pp. 304, 305.
*As to what is "merchandise of substantially the same descriptive
properties," see Air-Brush Mfg. Co. v. Thayer, 84 Fed. Rep. 640;
Bass, Ratcliff & Gretton (Ltd.) v. Feigenspan, 96 Fed. Rep. 206.
'•Registration of a mark common to the trade does not confer an ex-
clusive right to its use. Stachelberg v. Ponce, 128 U. S. 686. Rep-
22
338 APPENDIX F.
§ 8. That no action or suit shall be maintained under
the provisions of this act in an}^ case when the trade-
mark is used in any unlawful business, or upon any arti-
cle injurious in itself, or which mark has been used with
the design of deceiving- the public in the purchase of
merchandise, or under any certificate of registry fraudu-
lently obtained.^
§ 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 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, shall be liable to pay any damage
sustained in consequence thereof to the injured party, to
be recovered in an action on the case.^
§10. That nothing in this act shall prevent, lessen,
impeach or avoid any remedy at law or in equity which
any party aggrieved by any wrongful use of any trade-
mark might have had if the provisions of this act had
not been passed,^
§ 11. That nothing in this act shall be construed as
unfavorably affecting a claim to a trade-mark after the
term of registration shall have expired; nor to give cog-
nizance to any court of the United States in an action or
suit between citizens of the same state, unless the trade-
istration of a mark is not conclusive. It may be restrained at the
suit of one who has a prior right to its use. Glen Cove Mfg. Co.
V. Ludeman, 23 Blatchf. 46; 22 Fed. Rep. 824, 826; Schumacher v.
Schwenke (2), 36 Off. Gaz. 457; Hennessy v. Braunschweiger, 89 Fed.
Rep. 664.
The registrant vi^ill not be protected in the use of his trade-mark
if it is found to contain a material false representation. Seabury v.
Grosvenor, 14 Blatchf. 262.
Jurisdictional amount.— The amount in controversy is the value of
the trade-mark. Symonds v. Greene, 28 Fed. Rep. 834; Hennessy v.
Herrmann, 89 Fed. Rep. 669.
'This provision is merely in declaration of the common law^. See
Act of 1870, sec. 84, ante, p. 311.
2 See Act of 1870, sec. 82, ante, p. 310.
3See Act of 1870, sec. 83, ante, p. 310. "T-he present act does not
abridge or qualify the common-law right, but by the express term
of section 10 preserves it intact." Wallace, J., in LaCroix v. May,
15 Fed. Rep. 236.
TRADE-MARK ACT OF MARCH 3, 1881. 339
mark in controversy is used on ^oods intended to be
transported to a foreign country, or in lawful commercial
intercourse with an Indian tribe. •
§ 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
recording such transfers in his office.'^
§ 13. That citizens and residents of this country wish-
ing the protection of trade-marks in any foreign country,
the laws of which require registration here as a condi-
tion precedent to getting such protection there, may reg-
ister their trade-marks for that purpose as is above
allowed to foreigners, and have certificate thereof from
the Patent Office.'*
iSee Act of 1870, sec. 78, ante, p. 304.
Where both parties are citizens of the same state the averments of
the complaint must show that both the parties are using the mark in
commerce with foreign nations or with the Indian tribes. Ryder v.
Holt, 128 U. S. 525; Luyties v. Hollender (1), 21 Fed. Rep. 231; Schu-
macher V. Schwenke, 26 Fed. Rep. 818; Luyties v. Hollender (2), 30
Fed. Rep. 632; Gravely v. Gravely, 42 Fed. Rep. 265; Prince's Me-
tallic Paint Co. v. Prince Mfg. Co., 53 Fed. Rep. 493. Such an
averment is necessary only where the proceeding is between citizens
of the same state. It is not necessary where the complainant is an
alien. Hennessy v. Braunschweiger, 89 Fed, Rep. 664.
2 See Act of 1870, sec. 81. This section provides for transfers only
being registered. An instrument affecting the use of a trade-mark,
but not amounting to a transfer or assignment thereof, cannot legally
be registered in the Patent Office. Waukesha Springs Co. v. Hygeia
Water Co., 63 Fed. Rep. 438-442.
3 "One reading the section would infer that foreigners have been
allowed under the preceding sections some privilege; but a careful
reading of the act fails to disclose that a foreigner is entitled to any
other or further rights than those given to citizens of the United
States. The phrase 'as is above allowed to foreigners' renders the
section meaningless." Duell, Commissioner, in Ex parte Buffalo
Pitts Co., 89 Off. Gaz. 2069.
APPENDIX G.
ACT OF AUGUST 5, 1882.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled:
That nothing contained in the law entitled "An act
to authorize the reg-istration of trade-marks and protect
the same," approved March third, eighteen hundred and
eighty-one, shall prevent the registry of any lawful
trade-mark rightfully used by the applicant in foreign
commerce or commerce with Indian tribes at the time of
the passage of said act.^
Approved August 5, 1882.
PROTECTION OF TRADE-MARKS IN TERRITORY SUB-
JECT TO MILITARY GOVERNMENT BY
UNITED STATES FORCES.
Circular No. 12. — Division of Customs and Insular Affairs.
War Department,
Washington, D. C, April 11, 1899.
The following is published for the information and
guidance of all concerned :
In territory subject to military government by the mil-
itary forces of the United States, owners of patents,
including design patents, which have been issued or
which may hereafter be issued, and owners of trade-
marks, prints and labels, duly registered in the United
States Patent Office under the laws of the United States
relating to the grant of patents and to the registration
iThis act applies only to such marks as were lawful trade-marks
prior to March 3, 1881, and only such marks can be admitted to reg-
istration. Long- prior to 1881 it had been established that no one
could exclusively appropriate a surname as a trade-mark. There-
fore a surname cannot be registered under the act of 1881. Ex parte
Gale Mfg. Co., 85 Off. Gaz. 1907.
340
ACT OF AUGUST 5, 1882. 841
of trade-marks, prints and labels, shall receive the pro-
tection accorded them in the United States under said
laws; and an infringement of the rig^hts secured by law-
ful issue of a patent or by registration of a trade-mark,
print or label, shall subject the person or party guilty of
such infringement to the liabilities created and imposed
by the laws of the United States relating to said matters:
Provided, that a duly certified copy of the patent or of
the certificate of registration of the trade-mark, print or
label, shall be tiled in the office of the governor-general
of the island wherein such protection is desired; and
provided further, that the rights of property in patents
and trade-marks secured in the islands of Cuba, Porto
Rico, the Philippines and other ceded territory, to per-
sons under the Spanish laws, shall be respected in said
territory, the same as if such laws were in full force and
effect.
G. D. Meiklejohn,
Acting Secretary of War.
(87 OfiF. Gaz. 361.)
Circular No. 21. — Division of Customs and Insular Affairs.
War Department,
Washington, D. C, June 1, 1899.
The following is published for the information and
guidance of all concerned:
Parties who desire protection in territory under gov-
ernment of the military forces of the United States for
patents, trade-marks, prints or labels, as provided in
Circular No. 12, division of customs and insular affairs,
war department, should forward a certified copy of the
patent or of the certificate of registration of the trade-
mark, print or label, together with a letter of transmit-
tal to the governor-general, requesting that such copy
be filed in his oftice for reference.
Upon the receipt of such certified copy the governor-
general will issue his formal receipt therefor and for-
ward it to the party filing the same.
342 APPENDIX G.
A fee of one dollar will be charged for filing such copy
and should be inclosed with the letter of transmittal to
the governor- general.
The requirements for filing under the provisions of
Circular No. 12, above referred to, apply only to patents
duly issued, and to trade-marks, prints or labels duly
registered in the United States Patent Ofiice under the
laws of the United States. The only certification
required is that issued by the commissioner of patents.
Communications should be addressed to the Governor-
General of Cuba, Havana, Cuba; or Governor-General of
Porto Rico, San Juan, Porto Rico; or Governor- General
of the Philippine Islands, Manila, Philippine Islands.
G. D. Meiklejohn,
Assistant Secretary of War.
(88 Off. Gaz. 1.)
APPENDIX H.
FORMS OF BILLS AND ANSWERS.
DECLARATION.
(Warner V. Roehr, Fed. Case No. 17189A.)
In the Circuit Court of the United States in and for the
Northern District of Illinois.
HuLBKRT H. Warner, trading and '
doing business under the name
and style of H.H. Warner & Co., ■
vs.
Frank Roehr.
No. 18765.
Case. Damages, $25,000.
H. H. W., a citizen of the state of New York, trading and doing
business under the firm name and style of H. H. W. & Co., at the
city of Rochester, in the county of Monroe, in said state of New
York, plaintiff, by W. H. B. and J. F. L., his attorneys, complains
of F. R., a citizen of the state of Illinois, and residing and doing
business at the city of Chicago, in the county of Cook, in the said
state of Illinois and in the district aforesaid, defendant, of a plea of
trespass on the case.
For that whereas, the said plaintiff shows that for several j'ears
last past he has been engaged, at the said city of Rochester, in the
manufacture and sale of a certain medicinal preparation known as
"Warner's Safe Kidney and Liver Cure," which preparation has
become widely known through the domain of commerce, and espe-
cially in all parts of the United States, as a valuable medicine for
various kinds of diseases of human beings.
That in the introduction of said medicinal preparation, and to
bring it to the attention of the public, lie expended in advertising the
sum of about five hundred thousand dollars (8500,000), and in vari-
ous waj's has expended enormous sums of money to that end; that
for a better protection of his right as proprietor, manufacturer and
vendor of said medicine he has caused peculiar bottles to be manu-
factured to contain the same, which bottles have blown into the glass
thereof the name of said medicine, and which name contains a word-
symbol, to wit, the word "Safe," as the essential element of a trade
mark, and also the symbolic "trade-mark" consisting of the repre-
sentation of a fire-proof safe; which said "trade-mark" is his sole
propert}', no other person, firm or corporation having a right to thj
343
344 APPENDIX H.
use of the same, either in the identical form or in any such near re-
semblance thereto as might be calculated to deceive, nor to affix to
medicine or merchandise of substantially the same descriptive prop-
erties as his medicine aforesaid.
That being the owner of said "trade-mark," by virtue of priority
of adoption, in connection with said medicine, this plaintiff caused
the same to be recorded in the Patent Office of the United States, with
a statement specifying his name, domicile, location and citizenship;
the class of merchandise and the particular description of goods
comprised in the class to which the particular "trade-mark" had
been appropriated by him; also 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 dur-
ing which the said "trade-mark" has been used by him for the
purpose aforesaid.
Plaintiff further shows that he paid into the treasury of the United
States the sum of twenty-five dollars ($25.00) and complied with the
regulations prescribed by the commissioner of patents as provided in
the act of congress entitled "An act to authorize the registration of
trade-marks and protect the same," approved March 3, 1881, as will
more fully appear by reference to the certificate of registry of said
trade-mark, numbered 9597, dated the 8th day of August, 1882,
signed by E. M. Marble, commissioner of patents, and attested by
the seal of the Department of the Interior, which certificate is hereto
attached and made part of this declaration.
Plaintiff further shows that said "trade-mark" is applied and
affixed to goods by blowing it in the glass, as aforementioned, and by
printing it on paper, which in the form of labels is afterwards pasted
on the bottles containing the medicine, and it is also printed on wrap-
pers, or otherwise affixed to packages to be used in any manner cal-
culated to notify purchasers of the contents and to guard against
fraud.
This plaintiff shows that he is the sole owner by right of priority
of adoption and use of a certain other trade-mark consisting of a fac-
simile of his firm signature, "H. H. Warner & Co.," which said
latter-mentioned "trade-mark" is printed on a separate label, and
pasted over the cork of each bottle, after the same has been filled
with said medicine.
Plaintiff further shows that he is the sole owner by right of pri-
ority of adoption and use of a certain other trade-mark entitled
"Book of $2,000.00 Prize Enigmas," containing the representation
of a man, representing a botanist standing beside a palm tree ex-
amining a plant through a magnifying glass, and other matters
not necessary to be here mentioned, all the same being printed on the
cover of a pamphlet.
Plaintiff further shows that he is the sole owner by right of pri-
ority of adoption and use of a certain other trade-mark representing
the front of a fire-proof safe, in the central part of which is shown a
negro, on one knee gathering herbs, above whom are the words,
FORMS OF BILLS AND ANSWERS. 345
*' Warner's Safe," and below him are the words, "Kidney and
Liver Cure. "
Plaintiff further shows that for the purpose of guarding against
fraudulent imitations of his said medicine, and to authenticate the
genuineness of goods of his manufacture, he caused, and still causes,
each bottle of the same to have wrapped about it a pamphlet bearing
his said trade-marks with loose circulars between the leaves of said
pamphlet, and wrapped about the same another printed circular,
printed in several different languages; which said pamphlet con-
tained a great many testimonials of the intrinsic value of said medi-
cine as a remedy for various diseases and disorders, and also fac-
similes of the signatures of the signers of said testimonials; and said
pamphlet containing, among other matters, a great many enigmas for
the solution of which large prizes were offered by the plaintiff.
That as a further precaution against fraud, and as a means of iden-
tification, the said medicine is packed in wooden boxes, which boxes
contain each one dozen bottles of plaintiff's medicine labeled and
wrapped as aforesaid, and bearing upon one side of the boxes the fol-
lowing printed words: "One Dozen Warner's Safe Kidney and Liver
Cure, Manufactured by H. H. Warner & Co., Rochester, N. Y."
And the said plaintiff further shows that he has ever since the
dates of the adoption of the said trade-marks been and now is solely
entitled to all the rights, interests and privileges thereby so secured
unto him; and that the said medicine with the accompanying trade-
marks has been extensively introduced to public use, and that large
quantities thereof, to wit, several millions of bottles, have been pur-
chased and consumed by the public for which he has received sev-
eral millions of dollars, and that he would but for the wrongful acts
of the said defendant, Frank Roehr, have made further large gains,
profits and advantages from the manufacture and sale of said medi-
cine. And plaintiff' further shows that heretofore, to wit, on or about
the day of October, A. D. 1883, at the city of Chicago, in the
district aforesaid, the said defendant Frank Roehr, well knowing the
premises, and the rights and privileges theretofore secured unto him
the said plaintiff, and in order to deprive him of his profits, benefits
and advantages which might and otherwise should and would have
accrued to him at the said district, and elsewhere, unlawfully, un-
justly, and wrongfully simulated the various aforesaid trade-marks,
circulars, labels, wrappers, packages and boxes, in which said gen-
uine medicine of this plaintiff has been put up for the purposes of
commerce, and for the purpose of carrying into execution his nefari-
ous enterprise in that respect, the said defendant, F. R., employed
large capital, and a large number of assistants, including printers,
electrotypers, photographers, and other persons skilled in the arts
necessary for the accomplishment of his unlawful purpose aforesaid,
and did make exact representations of the genuine trade-marks,
labels, etc., hereinbefore described, so closely resembling the genuine
as to be calculated to deceive purchasers, and which in many in-
stances did actually deceive purchasers, who supposed that thej'
346 APPENDIX H.
were buj-ing- theg-enuine medicine manufactured as aforesaid by tliis
plaintiff, when in fact the simulated packages contained only a base
fluid, colored to resemble the genuine medicine of the plaintiff.
Plaintiff' further shows that said defendant, F. R., manufactured
large quantities of packages made in exact representation of this
plaintiff's genuine packages, and containing inside thereof the sim-
ulated labels, wrappers, etc., hereinbefore described, and bottles
filled with a fluid purporting to be this plaintiff's genuine medicine,
but which in fact was not so, but only a base imitation thereof, and
offered for sale at the district aforesaid and elsewhere, and did sell
large quantities of the same, all of which said wrongful acts of said de-
fendant, F. R., were done without the knowledge, consent or acqui-
escence of the said plaintiff, and with the intent to injure and de-
fraud him, to the damage of this plaintiff of twenty-five thousand
dollars ($25,000), and therefore he brings this suit.
W. H. B.,
J. F. L.,
Plaintiff's Attornej's.
Indorsed: Filed Dec. 6, 1883, Wm. H. Bradley, Clerk.
BILL OF COMPLAINT.
(Taylor v. Carpenter, 3 Story, 458.)
To the Judges of the Circuit Court of the United States for the Dis-
trict of Massachusetts:
J. T. and W. T., of the borough of Leicester, in that part of the
United Kingdom of Great Britain and Ireland called England, man-
ufacturers, subjects of Victoria the First, queen of said kingdom,
and aliens to each and all of the United States of America, and the
territories and districts thereof, bring this bill of complaint against
D. C, of F., in the said district of Massachusetts, manufacturer, a
citizen of the said state of Massachusetts. And thereupon the said
J. T. and W. T., complaining, say that for many years past they have
been very extensively engaged in manufacturing cotton thread at
Leicester aforesaid, and vending the same in large quantities, not
only in England, but throughout the United States, and in particular
in the city of B., in said district. That their said thread is, and for
many years has been, put up for sale on spools, and labeled on the
top of the spools "Taylor's Persian Thread" in a circle, in the cen-
ter of which is the number of the thread, and on the bottom of some
of the spools "J. «& W. Taylor, Leicester," and on the bottom of
others, "J. & W. Taylor," with the number of yards of thread on
each spool, each spool usually containing two hundred yards or three
hundred yards of thread, and the spools containing two hundred
yards being black and labeled "200 yds. " on the bottom of the spool,
and those containing three hundred yards being red, and labeled "300
yds." on the bottom of the spools. And on the center of some of the
FORMS OF BILLS AND ANSWERS. 347
said labels on the bottom of each spool is stamped the symbol or print
of the head and forepart of a lion rampant. And on the center of
other of said labels is stamped a coat-of-arms, the shield whereon
contains a lion rampant, and over the same three balls with the
motto "In Deo Confido. " And your orators further say that their
spools so marked, stamped, colored, or labeled as aforesaid, are put
up for sale in paper envelopes, each containing- one dozen of spools;
which said envelopes are prepared and stamped by your orators for
said purpose, and some of said envelopes bear in raised letters
stamped on them the inscription, "The Persian Thread, made by
J. & W. Taylor, labeled on the top of each spool, Taylor's Persian
Thread, and on the bottom J. & W. Taylor, Leicester. The above
is for the protection of buyers ag-ainst certain piratical articles of
inferior qualit}', fraudulently labeled with the name of Taylor."
And on other of the said envelopes is stamped a coat-of-arms repre-
senting- a shield, the upper division of which is gilt, and contains
three red balls, and the lower division thereof is red and contains
the effigy of a lion rampant, with the motto under the same, "In Deo
Confido." Your orators further show unto your honors that their
said thread has been and is manufactured of various sizes and num-
bers, to meet the wants of the trade; and by means of the care, skill
and fidelity with which your orators have conducted the manufacture
thereof for a series of years, their said thread has acquired a great
reputation in the trade throughout the United States, and large quan-
tities of the same are constantly required from j'our orators to sup-
ply the regular demand for the consumption of the country. And your
orators have established agencies for the sale thereof to the wholesale
dealers and jobbers in the cities of B., N. Y., P. and N. O., and in
addition thereto your orators employ B. W., now residing in said city
of N. Y., as their general agent for the United States, in relation to
the sale of their said spool sewing cotton thread; and a mercantile
firm of H. & C. are the agents of your orators for the sale of the same
in the city of B. ; and your orators further show unto your honors that
their said thread is known and distinguished by the trade and the
public as "Taylor's Persian Thread," and that your orators were
the original manufacturers thereof, and the first who introduced the
same to the public. That your orators' said general agent, on or
about the first day of March last past, hearing that complaints were
made of the quality of "Taylor's Persian Thread," proceeded to
investigate the cause of said complaint, and thereupon ascertained
that a spurious article of spool sewing cotton thread was ofi^ered for
sale bj' sundr}' jobbers in the said city of B., as and for your orators'
"Persian Thread," and that such complaints had arisen from the
fraudulent imposition of such spurious article on the public. Your
orators further show unto your honors that their said agent further as-
certained, upon inquiry, and your orators charge the facts to be, that
the said spurious thread so sold and offered for sale in the said city
of B., or some of it, was furnished to the said jobbers by D. C. either
by him personally or by one F. D. E., of B., his agent in that behalf.
348 APPENDIX H.
and your orators are informed and believe that the said D. C. has
sold the said thread, put up, marked and designated as aforesaid,
in the said city of B. ; that the said D. C, disregarding the rights of
your orators, and fraudulently designing to procure the custom and
trade of persons who are in the habit of vending or using your
orators' said ''Persian Thread," and to induce them and the public
to believe that his said thread was in fact manufactured by your
orators, had engaged extensivelj' in the manufacture of sewing cot-
ton thread, and caused the same to be put up for sale in envelopes
and on spools similar to those used by your orators, and so colored
and stamped and labeled as to resemble exactly the said spools and
envelopes used by your orators. And the said spool sewing cotton
thread, prepared bj' the said D. C. and sold by him, and which he
is engaged in selling as aforesaid, is an exact imitation of the same
article which your orators had been manufacturing as aforesaid, and
selling in the United States for many years before the said D. C.
commenced his said fraudulent imitation thereof. And the said spuri-
ous article, although inferior in quality to the genuine Persian Thread
manufactured by your orators, can only be distinguished therefrom,
so exact is the said D. C. 's imitation as aforesaid, by a careful ex-
amination of its quality, and by its falling short in the number of
yards contained on each spool from the number marked thereon as
the contents thereof. And that the general appearance of the spuri-
ous article is the same as that of your orators' genuine thread, and
well calculated to deceive those dealing in the purchase and sale
thereof. Your orators further show unto your honors that their said
general agent has obtained specimens of the said spurious Persian
Thread so sold by the said D. C. That in some of the specimens
thus obtained, the thread is put upon black spools, and in other of
said specimens the thread is put upon red spools, and said black and
red spools are of the same size and appearance with those used by
your orators, on the top of which spurious spools there is pasted a
round paper label, partly gilt, on which is printed in a circle the
words "Taylor's Persian Thread," and in the center of the circle
the number of the thread; and on the other end on the bottom of such
spurious spools there is pasted a round paper label on some of which
is printed in a circle the words, "J. & W. Taylor, Leicester," and
on others, "J. & W. Taylor," with the number of yards of thread
on the spools, and across others of the labels on. said black spools the
letters and figures "200 yds.," and on said red spools the letters and
figures "300 yards" are printed, and in the center of the said labels
there is impressed the figure or symbol of the head and forepart of a
lion rampant. And in other of said specimens the thread is put on
spools corresponding in all particulars to those herein just before
described, except that the labels on the bottom thereof bear a coat-of-
arms, the center of the shield whereof contains a lion rampant, with
three balls over the same, and with the motto under, "In Deo Con-
fide." Your orators have also obtained specimens of the envelopes
in which said D. C. 's spurious thread is put up and sold by him or
FORMS OF BILLS AND ANSWERS. 349
his ag-ents, which bear the same inscriptions, letters and stamps that
those used and employed by your orators bear. And in all these
particulars of the labels on each end of the said spurious spools of
thread, and the envelopes in which they are put up, they are exactly
like the envelopes and the labels on the respective ends of the spools
of your orators' g-enuine Persian Thread, as hereinbefore stated.
Your orators further show unto your honors that they have not yet
ascertained the extent to which the said D. C. has carried his said
fraudulent imitation and sale of your orators' said thread. But your
orators' said g-eneral ag'ent has found the same offered for sale to the
trade in at least six wholesale or jobbing- houses in the city of B.,
as "Taylor's Persian Thread" — from which your orators believe,
and they therefore charge, on their belief, that the said D. C. has
been and is eng-aged in selling- his said fraudulent and spurious
imitation of your orators' "Persian Thread" to a large extent in
various places in the United States, with intent that the same should
circulate and be received and used by the public as Taylor's genuine
' • Persian Thread. ' ' And your orators further show unto your honors
that the fraudulent and inequitable conduct of the said D. C. is not
only injuring- them in the sales of their said genuine "Persian
Thread," and the profits which they would otherwise reasonably
make thereon, but by the inferior quality and false measure the
said spurious "Persian Thread" is greatly prejudicing tlie reputa-
tion of your orators' said "Persian Thread" in the market, and,
unless the said imitation is discontinued or prevented, will ultimately
destroy the character and standing of the genuine article. And your
orators also charge that the said spurious article is a fraud and
deception upon such of the citizens of the state of Massachusetts, and of
the United States, as purchase the same, believing it to be the genuine
article manufactured by your orators. And your orators further
show unto 3'our honors that in the month of March last past, having
discovered a portion of the aforesaid fraudulent conduct of the said
D. C, your orators did file their bill of complaint before the chan-
cellor of the state of New York, wherein they set forth many of the
facts which are in substance hereinbefore stated, and prayed for an
injunction to restrain the said D. C. from the aforesaid fraudulent
use of the name and trade-marks of your orators, and the same was
granted by the court; and the said D. C. having appeared and filed
his answer to the said bill, did therein admit that he had used the
name and trade-mark of your orators in manner set forth in the bill
aforesaid; but denied that the article manufactured by him was of
inferior quality to that manufactured bj' your orators; and after-
wards an application was made to the chancellor to dissolve the
injunction aforesaid, which last mentioned motion is now before the
said chancellor, and by reason of the great number of causes depend-
ing before him, the aforesaid cause cannot be decided without great
delay. And your orators are informed and believe it to be true that
the said D. C, residing out of the jurisdiction of the chancellor of
the state of New York, can, with impunity, disregard the injunction
aforesaid, and that he has continued to make sales in the city of B.
350 APPENDIX H.
and elsewhere of the said thread, put up, labeled, and appearing
precisely like that made, put up, and sold by j^our orators, and your
orators continue to be greatly injured thereby.
In consideration whereof, and for as much as your orators are reme-
diless in the premises at common law, and cannot have adequate
relief save bj- the aid and interposition of this court, to the end, there-
fore, that the said D. C, if he can, show why your orators should not
have the relief hereby prayed, and may upon his corporal oath, and
according to the best and utmost of his knowledge, remembrance, in-
formation and belief, full, true, direct and perfect answers make to
the several interrogatories hereinafter numbered and set forth; and
the said D. C. and his attorneys, solicitors, counselors, agents and
servants maybe enjoined and restrained from manufacturing, selling
or offering for sale, directly or indirectly, any spool cotton sewing
thread manufactured by him or any person other than your orators,
under the denomination of "Taylor's Persian Thread," or on spools
with the words, "Taylor's Persian Thread," or "J. & W. Taylor,
Leicester," or "J. & W. Taylor," printed, painted, written, or
stamped, or attached or pasted thereon, or with your orators' said
device of a lion rampant, or with their said coat-of-arms thereon; or
on spools so made or having any label, printing or device thereon, in
such manner as to be colorable imitations of your orators' said spool
thread, usually known as "Taj'lor's Persian Thread," and that the
said D. C. may be decreed to account to your orators for all the
profits which he has made by the sale of his said fraudulent imita-
tion of your orators' thread, and all the profits which your orators
would have made on the sales of their genuine thread but for the
said D. C. 's inequitable and wanton piracy of their said name,
spools and labels; and that 3'^our orators may have their costs and
charges in this behalf paid by the said D. C. ; and that your orators
may have such other and further relief in the premises as to your
honors shall seem meet, and shall be agreeable to equity and good
conscience.
May it please your honors to grant unto your orators a writ of
injunction, issuing out of and under the seal of this court, to be
directed to the said D. C, his attorneys, solicitors, counselors, agents
and servants, therein and thereby commanding and enjoining them,
under a certain penalty in the said writ to be expressed, according
to the foregoing prayer of your orators.
May it also please your honors to grant unto your orators a writ
of subpoena, issuing out of and under the seal of this court, to be
directed to the said D. C, commanding him on a certain day and
under a certain penalty in the said writ to be inserted, personally to
be and appear before your honors in this honorable court, then and
there to answer the premises, and to stand to, abide by, and perform
SHch order and decree therein as to your honors shall seem meet, and
shall be agreeable to equity and good conscience.
C. P. C, of Counsel. J. & W. T.,
C. P. and B. R. C, By W. B., their Agent
Solicitors. and Attorney.
FORMS OF BILLS AND ANSWERS. 351
United States of America, }
District of Massachusetts, f
Personally appeared before me the above-named B. W., on this
second day of December, A. D. 1843, and made oath that this bill in
equity by him signed, in as far as it states matters within his knowl-
edge, is true to his knowledge, and in as far as it states matters
within his belief, is true to his best belief.
W. W. S., Commissioner, etc.
Interrogatories to be answered by D. C. :
1. Whether or not have you manufactured and sold, in Massachu-
setts or elsewhere, thread put upon black spools, on one end of each
of which spools is pasted, or otherwise fastened, a circular paper
label partly gilt, on which is printed in a circle the words "Taylor's
Persian Thread," and in the center thereof the number of the thread,
and on the other end of each of said spools is pasted or otherwise fast-
ened a circular white paper label, on which is printed in a circle the
words "J. & W. Taylor, Leicester," and across the same label
"200 yds.," and in the center of the same label there is impressed
the figure or symbol of a lion rampant?
2. Whether or not you have manufactured and sold, in Massachu-
setts or elsewhere, thread put upon red spools, corresponding in all
respects to the black spools described in the preceding interrogator^',
except in the color of the spool and in the quantity of thread thereon;
and in the letters and figures "300 yds." printed across the said
white paper label?
3. What number of each kind of the said spools of thread have
you manufactured and sold? State the same accurately, and distin-
guish the kind and number of the thread, and the number of black
spools and the number of red spools so sold bj' you since you
commenced selling the same, and the times when and the places where
the same have been sold.
4. What have been the profits made or realized by j'ou on the man-
ufacture and sale of thread put upon spools colored, decorated and
fitted up in the manner described in the first and second interrog-
atories?
5. To whom and what persons in particular have you .sold the said
thread put up in the manner described in the first and second inter-
rogatories?
6. Who is, and who has been, j'our agent in Boston for the sale of
your thread put upon spools fitted up in the manner described in the
first and second interrogatories?
7. Whether or not did you admit in an answer signed, sworn to and
filed by you in the court of chancery in and for the state of New
York, to a bill of complaint therein pending wherein the said J. T.
and W. T. are comphiinants, and yourself is defendant, that you
have engaged in the manufacture of sewing cotton thread, which you
have caused to be put up for sale on spools similar to those used by
the complainants, and so colored, stamped and labeled as to resemble
352 APPENDIX H.
exactly or as nearly as the same could be done, the said spools used
by the complainants, and the said spool sewing cotton, which has
been prepared and sold by you, is an exact imitation of the same
article which the complainants had been selling in the United States
many j'ears before you commenced manufacturing j'our thread?
8. Whether or not have you manufactured and sold in Massachu-
setts sewing cotton thread upon black spools and upon red spools, on
one end of each of which is fastened a circular paper label, described
as in interrogatory numbered 1, and on the other end is fastened a
circular paper label on which is stamped a coat-of-arras, the shield
whereof contains a lion rampant, and over the same three balls, with
the motto under the shield, "In Deo Confido, " and around said
shield is printed in some of said labels, "J. & W. Taylor, Leicester,"
and in others, "J. & W. Taylor," with the number of yards on said
spools?
9. Whether or not have you put up and sold your sewing cotton
thread, colored, stamped and labeled in all or some of the modes
described in this bill in envelopes or wrappers, some bearing in
raised letters the inscription, "The Persian Thread, made by
J. & W. Taylor, labeled on top of each spool Taylor's Persian Thread
and on the bottom J. & W. Taylor, Leicester. The above is for the
protection of buyers against certain piratical articles of inferior
quality, fraudulently labeled with the name of Taylor," and others
bearing a coat-of-arms, the upper division of which is in gilt, and
has three red balls thereon, and the lower division is red, and has a
lion rampant thereon. C. P. and B. R. C,
Solicitors.
BILL OF COMPLAINT.
(Carson v. Ury, 39 Fed, Rep. 777.)
In the Circuit Court of the United States for the Eastern Division
of the Eastern Judicial District of Missouri.
James Carson, Complainant,
vs.
Henry Ury, Harriet Ury, Richard
Ury, Erskine Mansfield and A.
Beliner, Defendants.
> In Equity.
J. C, a resident and citizen of the city of New York, in the state of
New York, files this his amended bill of complaint, under leave
of court had and obtained, against the above defendants, H. U.,
H. U., R. U., E. M. and A. B., all of whom are citizens of the state
of Missouri and residents of the city of St. Louis, in the eastern
division of the eastern judicial district of the said state, and there-
upon your orator complains and says:
First. Tnat your orator for more than seven years has been and
FORMS OF BILLS AND ANSWERS. 3o3
now is a member of the Cigar Makers' International Union of Amer-
ica; that the membersof said union are severally cigar makers residing
in the United States, and said union is a voluntarj' unincorporated
association of practical cigar makers formed for the purpose of pro-
moting the mental, moral and physical welfare of the members, by
assisting them to obtain labor at remunerative wages, by affording
them pecuniary aid in case of sickness and providing money in case
of death, and generally to maintain a high standard of workmanship
and fair wages of cigar makers.
Second. That the question which is the subject of this action is one
of common and general interest to all members of the Cigar Makers'
International Union of America, and that they are very numerous,
being over twenty-five thousand in number, and that it is impracti-
cable, therefore, to bring them all before the court in this action.
Third. That as your orator is informed and believes, for the pur-
pose of designating the manufacture of members of the Cigar Makers'
International Union of America, the said union through its delegates
in convention assembled in Chicago in the month of September, 1880,
devised and adopted a trade-mark or label to which they gave the
name of '"Union Label," a fac-simileof which is annexed hereto and
marked "Exhibit A;" that prior to the adoption of said label the
same had not been known or in use in this country or elsewhere, and
ever since said adoption the members of the Cigar Makers' Interna-
tional Union of America have exclusively used said labels, and the
same have been conspicuously posted on the outside of cigar boxes
containing cigars made by the membersof said Cigar Makers' Inter-
national Union of America.
Fourth. That the members of said union are by the constitution and
laws of said union allowed to make and sell cigars, and to use on
such cigars so made and sold by them labels like said "Exhibit A,"
provided they do not employ others to make said cigars; and that
your orator for about two years last past has been making and selling
cigars in the city of New York aforesaid and has used there the
labels like said "Exhibit A," and has built up a profitable trade
for himself under said label, and that your orator was the owner of
the cigars which he thus made and sold under said label to the
public.
Fifth. That the said label affixed to cigar boxes is intended as a
guaranty that the cigars therein contained are manufactured by
members of the Cigar Makers' International Union of America, and
that good and clean workmanship has thereby been secured; and
that the cigars were not made in tenement houses or state prisons or
by coolies, and for these reasons the cigars so labeled command a
higher price in the market than cigars of similar appearance, but
without such label, can command; that there is a large demand among
the public for cigars having said label, which demand has been
growing everj' j-ear since the organization of said union, and the use
of said label has been and is a source of great profit and advantage
to j'our orator and to the other members of said union.
23
354 APPENDIX H.
Sixth. That it is the practice of said union to furnish gratuitously
copies of the genuine label marked "Exhibit A" to all manufac-
turers of cigars in the United States who employ' exclusively mem-
bers of the said union, who themselves own and sell the cigars which
they make.
Seventh. That the wages demanded and received by the members
of said union, are about three dollars higher per one thousand cigars
than the wages demanded and received by other workmen, and that
union-made cigars, that is, boxes of cigars carrying the said labels,
bring in the market about three dollars more per thousand than such
cigars would bring without such labels; that this is the case because
the cigars bearing said labels are known to the public to be made by
competent workmen in clean and healthj^ shops.
Eighth. That by the use of said genuine labels as aforesaid, your
orator and other members of said union have made great profits and
the public is protected from impure and unhealthy cigars.
Ninth. That said union does not issue labels to manufacturers em-
plo3nng tenement house labor, or prison labor, or coolie labor, or
who do not pay the required scale of wages demanded by said union,
and that said union does not sell any such labels either to manu-
facturers or to the public.
Tenth. That as your orator is informed and believes, since the
adoption and use of said label by said union, and since the time when
your orator commenced to sell cigars bearing said genuine label,
the said defendants have conspired and federated together to cheat
and defraud your orator and the members of said union so using said
label as aforesaid, and fraudulently impose upon manufacturers and
dealers in cigars and upon the public by manufacturing and offer-
ing for sale and selling and giving away for use on cigar boxes, labels
which are spurious and counterfeits of said genuine labels, and in
furtherance of this fraudulent and illegal business have adopted the
name "B. Alberts." That your orator is informed and believes that
the said name of B. Alberts is fictitious and that there is no person
of that name, but that the same was first adopted by defendant B. ;
but however this may be, your orator further says that said defend-
ants under said name have manufactured, offered for sale and sold
spurious and counterfeit labels for use as aforesaid — a copy of which
said spurious and counterfeit label is hereto annexed, marked " Ex-
hibit B. " That the spurious label so offered and given away and
sold by said defendants under the said name of B. Alberts is a
close imitation and counterfeit of the genuine adopted by said union
as aforesaid. That the said defendants have also lately inserted an
advertisement in the United States Tobacco Journal, a newspaper
published in the city of New York, state of New York, and in other
publications, representing to the public that they had for sale copies
of said genuine label, issued by authority of said Cigar Makers' In-
ternational Union of America, and containing a representation of
such label. All of which acts of said defendants are done without
the authority or permission of 5^our orator or the officers and mem-
FORMS OF BILLS AND ANSWERS. Soj
bers of said union, and against its will and protest. That in further-
ance of said fraudulent and illegal purposes, and with the intent to
cheat and defraud as aforesaid, said defendants have published a
fictitious address, in said name of B. Alberts as aforesaid, to wit:
No. 222 Pine street, in the city of St. Louis, there being no person
by the name of B. Alberts at said address, and have caused all
mail there received in answer to their advertisements to be delivered
to the place of business of said defendants, H. U. and H. U., with
whom, as your orator is informed, the other defendants are associated
at No. 304 North Main street, in the city of St. Louis.
Eleventh. That said wrongful and fraudulent acts of said defend-
ants, and their continuation, are calculated to deceive and mislead
and do deceive and mislead the public into the belief that said de-
fendants have authority from said union to sell or give away said
genuine labels, and further tend to deceive the public into the belief
that the cigars thus labeled by the purchasers of said labels from
the defendants are the cigars made and sold by j'our orator and such
other makers of cigars as have authority to use the genuine label of
said union; and they further tend to deceive the public into the belief
that the false and spurious labels sold and offered for sale, or given
away bj'^ said defendants, are the genuine labels of said union.
Twelfth. That your orator has, and the other members of said
Cigar Makers' International Union of America have, a valued and
pecuniary interest in the genuine labels issued by said union, and
used by the members thereof, and that he has, and they have, suffered
irreparable damage by the wrongful acts of said defendants, and
that, if suffered to continue, the wrongful acts of said defendants will
tend to produce further irreparable damage to your orator and to the
other members of said Cigar Makers' International Union of America.
Thirteenth. That your orator has no adequate remedy at law for
said injury.
Fourteenth. That said injury cannot be adequatelj' compensated
in money, but your orator alleges that the matters in dispute and
injury to him, exclusive of interest and costs, exceed the sum of two
thousand dollars.
Fifteenth. That as your orator is informed and believes, one or
more of said defendants, prior to the commencement of said wrongful
acts, were members of said union and well acquainted with its con-
stitution, by-laws and practice, but are not now members of said
union.
Sixteenth. And your orator further shows unto your honors on in-
formation and belief, that said defendants have made and sold, and
caused to be made and sold, large quantities of said labels and have
large quantities on hand, which they are now offering for sale, and
have made and realized large profits and advantages therefrom; but
to what extent and how much exactly your orator does not know and
prays a discover}'^ thereof; and that said labels have been used by
many manufacturers of cigars in the sale of cigars which were not
356 APPENDIX H.
made by j'our orator or hy any member of the Cigar Makers' Interna-
tional Union of America.
Seventeenth. And your orator further says that the use and sale
of said labels by said defendants, and their preparation for and
avowed determination to continue the same, and their other aforesaid
and unlawful acts in disregard and defiance of your orator, have the
effect to and do encourage and induce others to disregard your orator's
rights in the premises.
And your orator prays that said defendants, H. U., H. U., R. U.,
E. M. and A. B., their servants, agents, attorneys and workmen,
and each and every of them, may be restrained and enjoined pro-
visionally and perpetually, by the order and injunction of this hon-
orable court, from directly or indirectly making, using, vending, de-
livering or in anywise counterfeiting or imitating said genuine label
of the Cigar Makers' International Union of America, or from making,
selling or offering for sale or giving away any labels like or similar
to those issued by said Cigar Makers' International Union of America,
and that the defendant may be decreed to pay the costs of this suit,
and that your orator may have such further or such other relief as to
this honorable court shall seem meet and as shall seem agreeable
to equity.
An answer under oath is hereby expressly waived.
May it please your honors to grant unto your orator the writ of in-
junction, as well provisional as perpetual, issuing out of and under
the seal of this honorable court, commanding, enjoining and restrain-
ing said defendants, H. U., H. U., R. U., E. M. and A. B., com-
manding them by a certain day and under certain penalty to be and
appear in this honorable court then and there to answer the premises
and to stand to and abide such order and decree as may be made
against them.
And your orator will ever pray, etc.
A. K., of Counsel. B., S. & K ,
Complainants' Solicitors,
with whom are H. O. & J.
State of New York, ]
Southern District of New York, > ss.
City and County of New York, J
J, C, being duly sworn, says that he is the complainant named in
the foregoing complaint, that he has read said complaint, and that
the allegations contained therein are true except those which are
stated therein to be alleged on information and belief, and as to those
he believes said complaint to be true. J- C.
Sworn to before me this 23d day of March, 1889.
H. M. T.,
Notary Public of New York County.
FORMS OF BILLS AND ANSWERS. 357
BILL OF COMPLAINT.
(Buck's Stove & Range Co. v. Kiechle, 76 Fed. Rep. 758.)
[Ca2)tion and facts showing jurisdicti(yn.]
That many years ago, to wit, in or about 1866, the complainant
adopted, as a distinguishing characteristic for its cooking stoves and
ranges, white enamel lining — that is to say, alining of white enamel
for the inside of the doors of its cooking stoves and ranges — to the
end that the trade and jiublic might come to recognize the cooking
stoves and ranges of complainant's manufacture by this peculiarity,
as a characteristic which would distinguish the cooking stoves and
ranges of comjilainant's manufacture from the cooking stoves and
ranges of all other manufacturers of cooking stoves and ranges; the
fact being that, at the time the complainant adopted the aforesaid
distinguishing characteristics, and for years thereafter, and until
the actions of the defendants hereinafter comphiined of, no other
cooking stove manufacturer in the United States had or has made
and .sold cooking stoves and ranges with oven doors having the
inside thereof lined with white enamel. That the similarity in
general style, shape and design of cooking stoves and ranges made
by different stove manufacturers in the United States is, and has
been during all the time hereinafter referred to, so very similar that,
to the average purchaser buying a stove or range for use in the
household, it is difficult to distinguish the stove or range of one manu-
facturer from the stove or range of another; especially so in view of
the fact that the plates comprising the different parts of the stove or
range can be and readily are taken ajnirt and used by a rival manu-
facturer as patterns from which to mould a stove or range of its own
in close similitude to the stove or range of the manufacturer who has
obtained celebrity in the market for his goods. That complainant,
since in or about 1866, has used great skill and fidelity in the manu-
facture of its stoves or ranges, always enameling with white enamel
the inner face of its stove and range doors, with the result that for
years last past, and long prior to the action of defendants hereinafter
complained of, its stoves and ranges had obtained great celebritj' in
the market of the United States, especially in the middle, northern,
southern and western states, and in the citj^ of Evansville, Ind.,
as "White Enamel" stoves and ranges, and were so known by
the trade and public in all the territory aforesaid, and distin-
guished by the trade and public from the stoves and ranges of
other stove manufacturers as "White Enamel" stoves and ranges.
That, in exposing stoves and ranges for sale, it is the custom and
demand to show the intending purchaser the oven of the stove or
range, and to open the oven door to that end, or (what is also common)
to leave at least one of the oven doors open, so that the oven is in plain
view; and that in recognition of this custom and demand, as an effec-
tive way of impressing on the mind of the trade and public complain-
ant's stoves and ranges, and characterizing by a distinguishing feature
its stoves and ranges from all others, it has, since 1866, continuously
used, and now uses, white enamel lining for the oven doors of its
358 APPENDIX H.
cooking stoves and ranges, with the result intended and desired as
hereinbefore set forth. That its trade in the manufacture and sale of
cooking stoves and ranges, with white enamel used, as aforesaid, as
a distinguishing feature, has steadily increased from year to year;
that it was the first to adopt the aforesaid white enamel for an inner
lining for oven doors of cooking stoves and ranges; and that, but for
the action of defendants hereinafter complained of, it would now
be in the undisturbed enjoyment of its celebrity which it has earned
with the trade and public for its cooking stoves and ranges as "White
Enamel ' ' stoves and ranges. That the good-will of complainant in the
manufacture and sale of cooking stoves and ranges under said name,
"White Enamel," because of said distinguishing characteristic, is
of the value of $100,000. That defendants, well knowing the prem-
ises, but seeking how they might trade on the reputation of complain-
ant, and find a ready sale for their products, without authority of
complainant, and in violation of its rights, and contrary to equity
and good conscience, have recently, before the filing of this bill, made
or caused to be made cooking stoves and ranges in general external
appearance similar to complainant's manufacture, enameling the
inside face of such cooking stoves and ranges with white enamel,
with the result that said cooking stoves and ranges can be, and in
fact are, sold to the trade, and by the trade to the public, as "White
Enamel" cooking stoves and ranges, to the manifest and irreparable
injury of complainant, the actions of said defendants hereinbefore set
forth being calculated to deceive, and resulting in actual deception
of, the trade and public. That by reason of such wrongful conduct
the complainant has suffered loss and damage in the sum of $10,000.
That complainant has called the attention of defendants to its afore-
said rights, and to defendants' wrongful conduct, and asked them to
desist, which they have refused to do. That complainant has no
adequate remedy at law, and it therefore brings this suit, and prays
for an injunction and for an accounting of damages.
BILL OF COMPLAINT.
(Hennessy v. Herrmann, 89 Fed. Rep. 669.)
In the Circuit Court of the United States for the Northern Judicial
District of the State of California.
Jacques Richard Maurice Hennessy,
Jacques Francis Henry Hennessy,
James Richard Charles Hennessy,
Armand Castillon and Emmanuel r ^^ Equity.
Castaigne,
ago.inst \
J. H. and C. S. J
To the Honorable Judges of the Circuit Court of the United States
for the Northern Judicial District of California:
First. J. R. M. H., J. F. H. H., J. R. C. H., A. C. and E. C, all
of Cognac in France, and citizens of the Republic of France, bring
FORMS OF BILLS AND ANSWERS. 359
this their bill of comiilaint ag-;iinst J. H. and C. S., of the city and
county of San Francisco, state of California, residents of the North-
ern Judicial District aforesaid, and citizens thereof, and thereupon
your orators complain and say:
Second. Complainants state that at all the times hereinafter men-
tioned they were copartners under the firm name and style of James
Hennessy and Company. That the complainants are, and for a long
time previous to the commission of the grievances hereinafter men-
tioned have been, exporters, bottlers and vendors of a cordial or
liquor known as Hennessy brandy, which the complainants and
their predecessors in the partnership business have for upwards of
thirty years last past produced, bottled and sold.
Third. That said brandy when bottled by these complainants is
put up in peculiar tall, dark colored bottles, to wit, twelve inches in
height, bearing (a) a rectangular label bearing the inscription,
"Jas. Hennessy & Co., Cognac," in gold letters on a white ground,
encircled by a wreath of vine leaves and grapes, in gold, said wreath
being surmounted by an arm bearing a battle axe, also in gold;
(6) a small oblong label of white with gold border lines, bearing the
word "France" in gold; (c) a crescent-shaped label; (d) a cork
branded with the words "James Hennessy & Co.;" (e) a metal cap-
sule; all with their own proper devices and trade-marks adopted by
the complainants for that purpose the year A. D. 1870, and all en-
cased in square wooden boxes holding twelve bottles each.
Fourth That complainants' trade-marks have been duly registered
under the provisions of the statute of the United States in the year
A. D. 1881. That by reason of the long experience and great care
of the complainants in their said business, and the good quality of
said brandy, distinguished as it was by its trade-marks, trade-
names, labels, corks, capsules, and the shape, size and color of its
bottles, the same has become widely known in the community imd
throughout the world as a useful and valuable cordial and iicquired
a high reputation as such, and has commanded and still commands
an extensive sale throughout the United States and Europe, which
is and has been a source of great profit to these complainants. That
your orators' trade-name and trade-marks are of a value of two
thousand dollars and upwards. That said brandy when bottled by
complainants is known as such brandy to the public, buj'ers and
consumers thereof b}' the said name of James Hennessy & Company's
brand}', or Hennessj' brand}', or Hennessy cognac, together with the
complainants' own proper devices, trade-names, and trade-marks
aforesaid, and by its straw wrappers or casings accompanying and
enclosing said bottles, and by the peculiar shape and color of the
bottles themselves.
Fifth. Complainants state that notwithstanding the long and quiet
use and enjoyment by the complainants of said trade-name and trade-
mark and to the form, device and descriptive matter of said labels,
the defendants, well knowing the premises and with the preconceived
intention to injure the comjilainants, and with the purpose to defraud
360 APPENDIX H.
them, and with the purpose to deprive these complainants of the
benefits and profits resulting from the great reputation acquired for
said brand}', and the consequent demand therefor, and with the
intent to acquire for themselves the benefits and profits of said rep-
utation, and with the intent to assist others to palm ofi" on the public
brand}' not being exported, sold or bottled by complainants, as the
goods of the complainants, and in wilful disregard of complainants'
rights in the premises, kept, offered for sale and sold, and advertised
for sale, and now keep, ofl'er for sale and sell in the city and county
of San Francisco and state of California, and elsewhere in the
United States of America, counterfeit labels in imitation of complain-
ants' labels under the name of " Hennessy <i Co.," using fac-similes
of complainants' trade-name, devices and labels, which with intent
to deceive and defraud the public and the buyers and consumers
thereof they have caused to be sold to dealers engaged in counter-
feiting the bottled brandy of your orators; that defendants sold said
labels for the purpose and wnth the intent that they should so be used,
and that in fact they have been so used, in fraud of your orators'
rights.
Sixth. That such imitation labels are calculated to deceive the pur-
chasers and consumers of said brandy, and are calculated to cause
the public and the buyers and consumers thereof to believe that the
brandy kept and offered for sale and sold by defendants' customers
is the brandy exported, bottled and sold by the complainants.
Seventh. That such imitation is calculated to deceive and mislead
the purchasers and consumers of the complainants' brandy, and has
actually deceived and misled and still does mislead many of them to
buy the brandy or liquor sold by the defendants' customers in the be-
lief that it is the brandy exported and bottled by the complainants,
to the great loss, injury and damage of the complainants. That the
article so put up and sold by the defendants' customers is of greatly
inferior quality to that of the complainants, and deleterious to the
health of the consumer, and the general esteem and reputation of the
brandy exported by the complainants has been and is now being in-
jured and damaged thereby.
Eighth. Forasmuch as your orators can have no adequate relief ex-
cept in this court, and to the end, therefore, that the defendants may,
if they can, show why your orators should not have the relief hereby
prayed, and may make a full disclosure and discovery of all the mat-
ters aforesaid, and according to the best and utmost of their knowl-
edge, remembrance, information and belief, full, true, direct and
perfect answer make to the matters hereinbefore stated and charged,
but not under oath, an answer under oath being expressly waived.
And that the defendants may be decreed to account for and pay over
adequate damages arising from their aforesaid acts in violation of
your orators' rights, your orators pray that your honors may grant a
writ of injunction issuing out of and under the seal of this honor-
able court, perpetually enjoining and restraining the said defendants,
their clerks, attorneys, agents and servants from keeping, offering
FORMS OF BILLS AND ANSWERS. 361
for sale, or selling' any brandy not being- the brandy exported and
bottled by your orators, put up in bottles of the fj^eneral form, shape
and color of complainants' bottles, and wrapped with labels of the
form, device and in the manner complained of, or in any other form
and device which shall be a colorable imitation of complainants'
brandy, or from applying to any such brandy the name "Hennessy
Brandy," or from using upon or in connection with said brandy or
any counterfeit of your orators' labels or cases the name "Hennessy,"
or any combination of such name or name of like sound, and that the
defendants deliver up to your orators all bottles having thereon said
false label, and also all such false labels in their possession or under
their control, to the end and purpose that the same may be destroyed.
And that your honors upon the rendering of the decree above prayed
may assess, or cause to be assessed, the damages your orators have
sustained by reason of the premises.
May it please j'our honors to grant unto your orators not only a
writ of injunction conformable to the prayer of this bill, but also a
writ of subpoena of the United States of America, directed to the said
J. H. and C. S., commanding them on a day certain to appear and
answer unto this bill otf complaint, and to abide and perform such
order and decree in the {)remises as to the court shall seem jiroper
and required bj'^ the principles of equity and good conscience.
J. L. H., of Counsel. A. L. P. and J. L. H.,
Solicitors for Complainants.
United States of America, )
y ss
Northern Judicial District of California, )
J. L. H., on behalf of the said complainants, Jacques Richard
Maurice Hennessy, Jacques Francis Henry Hennessy, James Richard
Charles Hennessy, Armand Castillon and Emmanuel Castaigne, and
duly authorized to act for them herein, being on his oath sworn, de-
poseth and says that he has read the above bill of complaint, and
that the matters therein set forth are true to his best knowledge, in-
formation and belief. J. L. H.
Subscribed and sworn to before me, this 19th day of Jul}', 1898.
S. H.,
Clerk U. S. Cir. Ct., N. D. C.
ANSWER.
(Benkert v. Feder, 34 Fed. Rep. 534.)
In the Circuit Court of the United States in and for the Ninth
Circuit and District of California.
William J. Benkert, Complainant,
r.s. ,
Morris Rosenthal and Samuel Feder, j ^°- 3^0/.
Defendants. I
The answer of M, R. and S. F. to the bill of complaint of W. J. B..
complainant.
These defendants, saving and reserving to themselves all right of
362 APPENDIX H.
exception to said bill of complaint on account of the many errors
therein contained, for answer thereto or to so much and such parts
thereof as they are advised by counsel it is necessary or important
for them to make answer unto, answering-, say:
That they have no knowledge or information other than from said
bill of complaint as to the partnership or business of the complain-
ant and Casper Benkert, or the continuance thereof , and cannot admit
or den}' the allegations of said bill relative thereto, and insist that
complainant make proof thereof.
Defendants say that they have no knowledge or information other
than from said bill of complaint as to the sale by Casper Benkert to
complainant of his interest in said alleged business and the carrying
on and ownership and proprietorship thereof, and cannot admit or
deny the allegations of said bill relative thereto, and insist that com-
plainant make proof thereof.
Defendants say that they have no knowledge or information other
than from said bill of complaint as to the business of the partnership
of C. Benkert & Son and of complainant, or of the boots and shoes
manufactured and sold by them or either of them, or of the quality,
quantity and price of such boots and shoes, or the mark or other
designation thereof or thereon, and cannot admit or deny the allega-
tions of said bill relative thereto, and insist that complainant make
proof thereof.
Defendants say that they have no knowledge or information other
than from said bill of complaint as to the placing as a trade-mark
upon said boots and shoes, and to indicate the ownership and origin
thereof, the words "C. Benkert & Son," and to the knowing of said
boots and shoes by the name of "C. Benkert & Son," and cannot
admit or deny the allegations of said bill relative thereto, and insist
that complainant make proof thereof.
Defendants sa}' that they have no knowledge or information other
than from said bill of complaint as to the name of "C. Benkert &
Son " being a trade-mark, or the ownership of said name, or the right
to use and place the same upon boots or shoes, and cannot admit or
deny the allegations of said bill relative thereto, and insist that com-
plainant make proof thereof.
These defendants and each of them deny that they have for more
than five years last past been partners in trade as set forth in said
bill of complaint, except as follows: for the four years previous to the
month of March, 1884, they, with one Bromberger, were partners in
tradeunder the firmnameof Rosenthal, Feder & Co., and insaid month
said Bromberger retired from the copartnership formed by them;
since said month these defendants have been partners in trade as set
forth in said bill of complaint.
These defendants and each of them deny that within five years or
at any time or times whatsoever they or either of them had manufac-
tured or sold, or are now manufacturing or selling, large or any
quantities of boots and shoes or boots or shoes, or each or either, on
any of which they have placed in plain or conspicuous letters, or at
all, the name "C. F. Benkert & Son," in imitation of the name of
FORMS OF BILLS AND ANSWERS. 368
"C. Benkert & Son," as alleged in said bill of complaint' or at
all.
Defendants and each of them deny that they or either of them have
stamped in sole-leather or buttons or any other part of said boots and
shoes, or any boots or shoes whatsoever, in plain conspicuous letters
or otherwise, the name or words "C. F. Benkert & Son, Phila."
Defendants deny that they have manufactured or are still manufac-
turing said boots and shoes or any boots or shoes marked with the
name of "C. F. Benkert & Son" in San Francisco, Hawaiian Islands,
other domestic or foreign markets or elsewhere, and admit and show
to this court that they have sold in San Francisco and elsewhere a
small quantity of boots and shoes marked "C. F. Benkert & Son,"
comprising not more than two hundred and fifty dozen pairs thereof;
and further state and show that the boots and shoes so sold were of
an entirely different class, style, nature and grade from the boots and
shoes alleged in said bill of complaint to be manufactured by the com-
plainant and as such were recognized by and sold to the customers
and patrons of these defendants.
Defendants say they have no knowledge or information other than
from said bill of complaint as to the relative quality, cost of manu-
facture and prices of sale of said boots and shoes and the boots and
shoes made by the complainant, and cannot admit or deny the alle-
gations of said bill relative thereto, and insist that complainant make
proof thereof.
Defendants and each of them deny that they have had manufac-
tured for them as set forth in said bill of complaint large or any
quantities of boots or shoes or any boots or shoes whatever on which
was printed the name "C. F. Benkert & Son" or stamped "C. F.
Benkert & Son, Phila.," as set forth in said bill of complaint, ex-
cepting not more than three hundred and twenty-one dozens thereof,
and the defendants and each of them deny that they have sold or are
still selling boots and shoos with said words printed or stamped
thereon in San Francisco or elsewhere, excepting that they have
heretofore sold not more than the two hundred and fifty dozens thereof
aforesaid.
The defendants and each of them deny that thej' have placed or
caused to be placed on said boots or shoes alleged to have been sold by
them or upon any other boots or shoes whatsoever said words, to wit,
"C. F. Benkert & Son," for the purpose of deceiving the public or
purchasers generally, or any other person, or causing them or any
of them to believe the said boots or shoes were manufactured bj' the
complainant or at all. They deny that the public or purchasers gen-
erally or any of them have been deceived or have believed on account
of said names being on said boots or shoes that the same were genuine
or other boots or shoes manufactured bj- the complainant, and that
being deceived as alleged in said bill of complaint, or being deceived
at all, have purchased or are now purchasing, or these defendants
have sold or are now selling, said boots or shoes as or for genuine or
other boots or shoes manufactured by the complainant. They deny
364 APPENDIX H.
that bj- anj- of the acts and doing-s set forth in said bill of complaint
the}- or either of them have unlawfully or otherwise greatly or at all
injured or depreciated the complainants' trade in fine or other boots
or shoes, or the good or other reputation or standing of said boots or
shoes, alleged in said bill of complaint to have been had by them.
Defendants and each of them deny that, unless restrained by in-
junction, they by using said name on the boots and shoes sold by
them will infringe on the alleged name and trade-mark of the com-
plainant and deny that they have already at any time been doing the
same.
The defendants state and show that they have sold not more than
two hundred and fifty dozens of boots and shoes marked "C. F. Benk-
ert & Son," and have realized therefrom a profit of about and not
more than five hundred (500) dollars.
The defendants and each of them deny that by reason of the said
alleged infringement, or of any other act or doing-of these defendants
or either of them, the complainant has suffered loss or damage to
a very large or other amount or any loss or damage whatsoever.
Without this that there is any other matter, cause or thing in the
said bill of complaint contained material or necessary for these de-
fendants or either of them to make answer unto and not herein and
hereby well and sufficiently answered, confessed, traversed and avoided
is true to the knowledge or belief of these defendants; all of which mat-
ters and things these defendants are ready and willing to aver,
maintain and prove as this honorable court shall direct, and humbly
pray to be hence dismissed with their reasonable costs and charges
in this behalf most wrongfully sustained.
M., B. & M.,
I. S. B., Solicitors for Defendants.
Of Counsel for Defendants.
No. 3507.
APPENDIX I.
FORMS OF INJUNCTION.
INTERLOCUTORY DECREE.
(Benkert v. Feder, 34 Fed. Rep. 534.)
In the United States Circuit Court, Northern District of
California, Ninth Judicial Circuit.
William J. Benkert, Complainant,
vs.
Samuel Feder and Aurelia Rosenthal,
Executrix of the Last Will and Testa-
ment of Morris Rosenthal, Deceased,
Defendants.
At a stated term, to wit, the February term, 1888, of the circuit
court of the United States of America of the ninth judicial circuit, in
and for the northern district of California, held at the court room
thereof, in the citj^ and county of San Francisco, on Monday, the 1st
day of June, A. D. 1888.
Present: The Honorable Lorenzo Sawyer, circuit judge.
This cause having come on to be heard upon the bill of complaint
herein, the answer of the defendants, and replication of the complain-
ant, the bill of revivor, the stipulation of the parties in regard
thereto, and the proofs, documentary and written, taken and filed in
said cause, and having been argued by counsel for the respective
parties and submitted to the court for consideration and decision:
Now, therefore, on consideration thereof, it is ordered, adjudged
and decreed, and the court doth hereby order, adjudge and decree,
as follows, to wit:
That the name of "C. Benkert & Son " has been a trade-name and
also a trade-mark upon boots and shoes for upwards of twenty-five
years last past, and as such trade-name and trade-mark is good and
valid in law.
That the complainant, William J. Benkert, is, and ever since the
year 1876 has been, the exclusive owner of said trade-name and
trade-mark, and during all said time, at the city of Philadelphia, in
the state of Pennsylvania, has carried on the business, under the
said trade-name, of manufacturing and selling boots and shoes, and
during all said time has stamped and printed, and used upon all
the said boots and shoes so made and sold by him, the said words "C.
Benkert & Son" as a trade-mark.
365
366 APPENDIX I.
That the orig-inal defendants herein, Samuel Feder and Morris
Rosenthal, have infringed upon the said trade-name and trade-mark
and upon the exclusive rights of the complainant under the same —
that is to say, bj' manufacturing and selling within the ten years
last past, and prior to the commencement of this suit, large quanti-
ties of boots and shoes upon each of which they have placed in plain,
conspicuous, printed letters the name "C. F. Benkert & Son "in im-
itation of the name "C. Benkert & Son" as charged in the bill of
complaint.
And it is further ordered, adjudged and decreed, that the com-
plainant do have and recover of and from the defendants, Samuel
Feder and Aurelia Rosenthal, executrix of the last will and testa-
ment of Morris Rosenthal, deceased, the profits, gains and advantages
which the said defendants or either of them have received or made,
or which have arisen or accrued to them, or either of them, from the
infringement of the said trade-name and said trade-mark of
"C. Benkert & Son " by the making, using and selling, or the making,
using or selling of said boots and shoes having placed thereon the
name "C. F. Benkert & Son" or any other name in imitation of
complainant's trade-name and trade-mark of "C. Benkert & Son."
And it is further ordered, adjudged and decreed, that the said
complainant do recover of the defendants his costs and charges and
disbursements in this suit to be taxed.
And it is further ordered, adjudged and decreed, that it be referred
to S. C. Houghton, Esq., the standing master in chancery of this
court, residing in the city and county of San Francisco, northern
district, and state of California, to ascertain and take, and state,
and report to this court, an account of the number of pairs of boots
and shoes manufactured and sold or manufactured or sold by the
original defendants, Samuel Feder and Morris Rosenthal, or either
of them, and also the gains, profits and advantages which the said
original defendants or either of them, or the estate of said Morris
Rosenthal, have received, or made, or which have arisen or accrued
to them or either of them, or it, from infringing the said exclusive
rights of the said complainant by the manufacturing and selling, or
manufacturing or selling, of boots and shoes having stamped and
placed upon them the infringing trade-mark in imitation of the trade-
mark of " C. Benkert & Son."
And it is further ordered, adjudged and decreed, that the com-
plainant on such accounting have the right to cause an examination
of the defendants, Samuel Feder and Aurelia Rosenthal, and each of
them, and their and each of their agents, servants, or workmen or
other witnesses as may be necessary to take said accounting, and
also the production of the books, vouchers and documents of which
said defendants, Samuel Feder or Aurelia Rosenthal, and their and
each of their attorneys, servants, agents and workmen may be pos-
sessed, and cause them to attend for such purposes before said master
from time to time as such master sliall direct.
And it is further ordered, adjudged and decreed, that a perpetual
FORMS OF INJUNCTION. 367
injunction be issued in this case, ag-ainst the said defendants Samuel
Feder and Aurelia Rosenthal, restraining- and perpetually enjoining
them and each of them, and their and each of their servants, ag-ents,
clerks and workmen, and all persons claiming or holding under or
through them, from manufacturing or using or selling, or in any way
disposing of, boots and shoes or boots or shoes having stamped, or
printed, or in any way marked thereon the name "C. F. Benkert &
Son , " or any other name in imitation or simulation of the said trade-
mark "C. Benkert & Son," pursuant to the prayer of the said bill of
complaint. Lorenzo Sawyer,
United States Circuit Judge, Ninth
Judicial Circuit.
WRIT OF INJUNCTION.
In the Circuit Court of the United States for the Ninth Judicial Cir-
cuit in and for the Northern District of California.
BOORD «& Son, Complainant, >
vs. • In Equity.
E. G. Lyons Company, Respondent. J
The President of the United States, To E. G. Lyons Company, its
clerks, agents, servants and employees, Greeting:
Whereas, It has been represented to us in the circuit court of the
United States for the northern district of California that Boord &
Son, a corporation, of London, England, have a valid trade-mark in
a device consisting of a cat standing upon a barrel, as applied to
bottled gin, and that you, the said E. G. Lyons Company, have in-
fringed said right by dealing in bottled gin bearing an imitation of
said trade-mark:
Now, therefore, you, the said E. G. Lyons Company, your clerks,
agents, servants and employees, are strictly commanded and enjoined
under the pains and penalties which ma3^ fall upon you, and each
of you, in case of disobedience, that you forthwith and until the further
order, judgment and decree of this court, desist from dealing in any
gin bottled in imitation of complainant's gin and bearing the device
of a cat standing upon a barrel.
Witness, the Honorable Melville W. Fuller, Chief Justice of the
United States, this 14th day of October, in the year of our
[SEAL] Lord one thousand eight hundred and ninety-eight, and of
our Independence the 123d.
Southard Hoffman, Clerk.
FINAL DECREE.
(Royal Baking Powder Co. v. Royal Chemical Co.,
Price & Steuart, 1.)
This cause having been tried at a special term of this court, before
the Hon. Hooper C. Van Vorst, one of the justices thereof, without a
368 APPENDIX I.
jurj', and the proofs and allegations of the parties having- been heard,
the said court gave its decision in writing in favor of the plaintiffs,
and against the defendants, with costs; which decision has been
filed with the clerk of this court:
Now, in pursuance thereof, it is hereby adjudged that the plain-
tiffs are entitled to judgment on all the issues, and judgment is
hereby rendered in favor of the plaintiffs, and against the defend-
ants thereon, and it is hereby also adjudged that the plaintiffs are
entitled to the exclusive use of the term "Ro3'al," as their trade-
mark, on labels attached to baking powder manufactured by them,
and in connection with the words "baking powder." And it is fur-
ther adjudged, that the use by the defendants of the word "Royal"
on labels affixed to baking powder, made by the defendants, or
printed or written on boxes, labels or otherwise howsoever, in con-
nection with baking powder made by them, was in violation of the
plaintiffs' rights.
And it is further adjudged, that the defendants, their agents,
clerks, workmen, servants and attorneys, perpetually refrain, and
they are hereby perpetually enjoined and restrained, from using the
term or designation "Roj'al" on, or around, or in connection with,
any cans, boxes or other packages, of any nature or kind whatever,
containing baking powder, or in any sign, invoice, billhead, card, cir-
cular, advertisement, in connection with baking powder, and from
using the name "Royal Baking Powder," and from selling and dis-
posing of any baking powder with the word "Royal" attached
thereto, except on such baking powder as is obtained from the plain-
tiffs.
And it is further adjudged, that the plaintiffs recover of the defend-
ants their costs and disbursements in this action.
INJUNCTION.
(Gillis V. Hall, 2 Brewst. 342.)
Defendants enjoined "from making and selling any preparations
as and for the preparations specified in plaintiff's label, and from
using the name of Hall, or R. P. Hall, or Reuben P. Hall, either
singly or in connection with others, upon any such preparation; or
from making or using any trade-mark, label or wrapper in imitation
of those now in use by plaintiff."
(Col ton V. Thomas, 2 Brewst. 308.)
Injunction against defendant "restraining the further use of the
cards and signs complained against in the bill; and also to restrain
the employment by him of any device by which the patients and
patrons of the plaintiff, witiiout the exercise of excessive care, will
be induced to suppose that the defendant's place of business is the
place of business of the Colton Dental Association."
FORMS OF INJUNCTION. 369
(Gillott V. Esterbrook, 47 Barb. 455.)
"Ordered and adjudged that the said defendants, R. E., R. E., Jr.,
J. C, Jr., and J. B., and each of them, their agents and servants, do
absolutely and perpetually desist and refrain from infringing or
using the said trade-mark of the plaintiff, and from making or sell-
ing pens with said numerals '303' impressed on the boxes or pack-
ages containing steel pens."
(Jurgensen v. Alexander, 24 How. Pr. 269; Cox, 298.)
Ordered: (1) "That the defendant, his agents, clerks, servants and
all others employed under or in connection with him be perpetually
enjoined and restrained from disposing of, selling-, or causing to be
disposed of or sold, any watches bearing the false, simulated and
spurious stamp or mark, 'Jules Jurgensen, Copenhagen.'"
2. "That the defendant do produce before Nathaniel Jarvis, Esq.,
appointed herein referee for such purpose, the said watches, which
at the time of the commencement of this suit were in defendant's
possession, and had upon them the said false, simulated and spuri-
ous trade-mark, to be erased or obliterated therefrom, by or under the
direction of the said referee, at the cost and expense of the said de-
fendant."
(Coffeen v. Brunton, 4 McLean, 516; Cox, 82.)
"To enjoin the defendant from using the label or directions accom-
panying the liniment he sells as aforesaid, or other labels or directions,
or any advertisements or handbills respecting the same words which
are used by the complainant on his label or directions, and which
tend to produce an impression on the purchaser and the public that
the liniment sold by the defendant contains the same ingredients as
the 'Chinese Liniment,' and is, in effect, the same medicine."
(N. K. Fairbank Co. v. R. W. Bell Mfg. Co., 77 Fed. Rep. 869.)
Defendant enjoined from putting up and selling or offering for sale
" The particular form of packages which has been referred to in the
bill and put in evidence as 'defendant's second package,' or any
other form of package which shall, by reason of the collocation of
size, shape, colors, lettering, spacing and ornamentation, present
a general appearance as closely resembling the ' complainant's
package,' referred to in the bill and marked in evidence, as does the
said 'defendant's second package.' This injunction shall not be
construed as restraining defendant from selling packages of the size,
weight, and shape of complainant's package, nor from using the des-
ignation 'Buffalo soap powder' nor from making a powder having
the appearance of complainant's ' Gold Dust,' nor from using paper
of a yellow color as wrappers for its packages, provided such pack-
ages are so differentiated in general appearance from said 'complain-
ant's package ' that they are not calculated to deceive the ordinary
purchaser. ' '
24
370 APPENDIX I,
MANDATE OF CIRCUIT COURT OF APPEALS, AFFIRMING
DECREE OF INJUNCTION.
(Feder v. Benkert, 76 Fed. Rep. 613.)
United States of America — ss.
The President of the United States of America, To the Hon-
orable the Judg-es of the Circuit Court of the United States for
the Northern District of California, Greeting-:
Whereas, lately in the circuit court of the United States for the
northern district of California, before you, or some of you, in a cause
between William J. Benkert, complainant, and Samuel Feder, and
Aurelia Rosenthal, executrix of the last will and testament of Morris
Rosenthal, deceased, respondents, a decree was duly entered in
favor of the said complainant, which said decree is of record in the
oflfice of the clerk of the said circuit court, to which record reference
is hereby made and the same is hereby expressly made a part hereof,
and as by the inspection of the transcript of the record of the said
circuit court, which was brought into the United States circuit court
of appeals for the ninth circuit, by virtue of an appeal agreeably to the
act of congress in such cases made and provided, fully and at large
appears.
And Whereas, in the year of our Lord one thousand eight hundred
and ninety-five, the said cause came on to be heard before the said
circuit court of appeals, on the said transcript of record, and was
argued by counsel:
On consideration whereof, it is now here ordered, adjudged and
decreed, that the decree of the said circuit court in this cause be,
and the same is hereby, affirmed, with costs.
You, therefore, are hereby commanded that such further proceedings
be had in said cause as according to right and justice, and the laws
of the United States, ought to be had, the said appeal notwithstanding.
Witness, the Honorable Melville W. Fuller, Chief Justice of the
United States, the 16th day of November, in the year of our Lord
one thousand eight hundred and ninety-five.
F. D. MONCKTON,
Clerk of the United States Circuit Court
of Appeals for the Ninth Circuit.
APPENDIX J.
UNOFFICIAL TRADE-MARK CLASSIFICATION.
(Suggested by Commissioner of Patents, January 1, 1897.)
DIVISION XXXIII.
Trade-marks.
This classification has no official character, but is a
grouping" of merchandise kindred in character to facili-
tate search by the Office. The parenthetical references
point to the titles of analogous groups into which the field
of search may extend, depending on the nature of the
merchandise.
Firearms, ammunition and
explosives.
Flour.
Food and relishes.
Fuel.
Games and toys.
Glassware.
Gloves.
Headwear.
Household articles.
Inks.
Iron, steel, and manufactures.
Jewelry and plated ware.
Lamps, lanterns, etc.
Lard and tallow.
Laundry articles.
Leather and saddlery.
Locks and hardware.
Machines.
Malt liquors.
Matches.
Medical compounds.
Miscellaneous.
Musical instruments.
Needles and pins.
1.
Agricultural implements.
24.
2.
Baking-powder and yeast.
3.
Beverages.
25.
4.
Blacking and leather dress-
26.
ing.
27.
5.
Boots, shoes, and lasts.
28.
6.
Brooms and brushes.
29.
7.
Buttons.
30.
8.
Canned goods.
31.
9.
Carpets, etc.
32.
10.
Cement, plaster, and bricks.
33.
11.
Cigars and cigarettes.
34,
12.
Cleaning and polishing prep-
35.
arations.
36.
13.
Coffee and tea.
37.
14.
Confectionery.
38.
IS.
Corsets.
39.
16.
Cured meats.
40.
17.
Cutlery and edge-tools.
41.
18.
Dairy products.
42.
19.
Dentistry.
43.
20.
Drugs and chemicals.
44.
21.
Dry-goods.
45.
22.
Fancy goods.
46.
23.
Fertilizers.
47,
371
372
APPENDIX J.
48. Oils and lubricants.
49. Optics and measuring instru-
ments.
50. Packing- (machinery).
51. Paints and painter's sup-
plies.
52. Paper and envelopes.
53. Poisons for animals.
54. Publications.
55. Receptacles.
56. Rope, cord, and twine.
57. Rubber goods.
58. Sewing-machines and attach-
ments.
59. Sewingsilk, cotton and thread.
60. Shirts, collars and cuffs.
61. Soap.
62. Spices, mustard and salt.
63. Spirituous liquors.
64. Starch, corn-starch and prod-
ucts.
65. Stationery miscellany.
66. Stoves and heaters.
67. Sugar, syrup, and molasses.
68. Surgical instruments and ap-
pliances.
69. Tailoring and clothing,
70. Time-keeping instruments.
71. Tobacco and snuff.
72. Toilet articles and prepara-
tions.
73. Tools and devices.
74. Umbrellas, parasols, and
canes.
75. Underwear and furnish-
ings.
76. Vehicles.
77. Wines.
Prints and Labels.
Not classified, but arranged in chronological order and preserved
lor reference in the Examiner's room.
One registration is sufficient to cover all the classes of goods upon
which the mark is used. The applicant should, however, state for
each class of goods the length of time for which the trade-mark has
been used for that class of goods. Ex parte Clark-Jewell- Wells Co.,
83 Off. Gaz. 915.
APPENDIX K.
BIBLIOGRAPHY.
American.
Browne. A Treatise on the Law of Trade-marks. Boston. 1885.
A Supplement to same. Boston. 1898.
Bump. Law of Patents, Trade-marks and Copyrights. (2d ed.)
Baltimore. 1884.
CODDINGTON. A Digest of the Law of Trade-marks. New York.
1878.
Cox. American Trade-mark Cases. A compilation of all the re-
ported Trade-mark Cases decided in the American courts prior
to 1871. Cincinnati. 1871.
Cox. A Manual of Trade-mark Cases including Sebastian's Di-
gest. (English.) (2d ed.) Boston. 1892.
Greely. Foreign Patent and Trade-mark Laws. Washington.
1899.
Newton. Digest of Patent Ofifice Trade-mark Decisions. Chicago.
1896.
Price & Steuart. American Trade-mark Cases reported between
1879 and 1887. Baltimore. 1887.
Upton. A Treatise on the Law of Trade-marks. Albany. 1860.
JEnglish.
Adams. Law of Trade-marks. London. 1886.
Allan. Law Relating to Good-will. London. 1889.
Barclay. Law of France Relating to Industrial Property. Lon-
don. 1889.
Cartmell. Abstract of Trade-mark Cases (1876-1892). London.
1893.
Edmunds. Patents, Designs and Trade-marks Acts. London. 1895.
Fulton. Treatise on Patents, Trade-m^irks and Designs. London.
1894.
Hart. Trade-marks. London. 1889.
Kerly. Law of Trade-marks. London. 1894.
Lawson. Law and Practice under the Patents, Designs and
Trade-marks Acts. London. 1889.
Payn. Merchandise Marks Act, 1887. London. 1888.
Sebastian. Digest of Cases of Trade-mark, etc. London. 1879.
Sebastian. Law of Trade-marks. London. (4th ed.) 1899.
Slater. Copyright and Trade-marks, with particular reference to
Infringement. London. 1884.
373
APPENDIX L.
INTERNATIONAL ARRANGEMENTS.
INTERNATIONAL CONVENTION FOR THE PROTECTION
OF INDUSTRIAL PROPERTY.
(Signed at Paris, March 20, 1883. Ratifications exchanged at
Paris, June 6, 1884.)
(Official Translation.)
His Majesty the King of the Belgians, His Majesty the Emperor
of Brazil, His Majesty the King of Spain, the President of the French
Republic, the President of the Republic of Guatemala, His Majesty
the King of Italy, His Majesty the King of the Netherlands, His
Majesty the King of Portugal and the Algarves, the President of the
Republic of Salvador, His Majesty the King of Servia, and the
Federal Council of the Swiss Confederation,
Being equally animated with the desire to secure by mutual agree-
ment complete and effectual protection for the industry and commerce
of their respective subjects and citizens, and to provide a guarantee
for the rights of inventors, and for the loyalty of commercial trans-
actions, have resolved to conclude a convention to that effect, and
have named as their plenipotentiaries, that is to say: [Here follow the
appointments of the plenipotentiaries.]
Who having communicated to each other their respective full powers,
found in good and due form, have agreed upon the following Articles:
Article I.
The governments of Belgium, Brazil, Spain, France, Guatemala,
Italy, Holland, Portugal, Salvador, Servia and Switzerland consti-
tute themselves into a union for the protection of industrial property.
Article II.
The subjects or citizens of each of the contracting states shall, in
all the other states of the union, as regards patents, industrial de-
signs or models, trade-marks and trade-names, enjoy the advantages
that their respective laws now grant, or shall hereafter grant, to their
own subjects or citizens.
Consequently they shall have the same protection as the latter, and
the same legal remedy against any infringement of their rights, pro-
vided they observe the formalities and conditions imposed on subjects
or citizens by the internal legislation of each state.
374
INTERNATIONAL ARRANGEMENTS. 375
Akticlk III.
Subjects or citizens of states not forming part of the union, who
are domiciled or have industrial or commercial establishments in the
territory of any of the states of the union, shall be assimilated to the
subjects or citizens of the contracting states.
Akticlk IV.
Any person who has duly applied for a patent, industrial design
or model, or trade-mark in one of the contracting states, shall enjoy,
as regards registration in the other states, and reserving the rights
of third parties, a right of priority' during the periods hereinafter
stated.
Consequentl}', subsequent registration in any of the other states of
the union before expiry of these periods shall not be invalidated
through any acts accomplished in the interval; either, for instance,
by another registration, by publication of the invention, or by the
working of it by a third party, by the sale of copies of the design or
model, or by use of the trade-mark.
The above mentioned terms of priorit\' shall be six months for pat-
ents, and three months for indiastrial designs and models and trade-
marks. A month longer is allowed for countries beyond sea.
Article V.
(Relates only to patents.)
Article VI.
Every trade-mark duly registered in the country of origin shall be
admitted for registration, and protected in the form originally regis-
tered in all the other countries of the union.'
That country shall be deemed the country of origin where the ap-
plicant has his chief seat of business.
If this chief seat of business is not situated in one of the countries
of the union, the country to which the applicant belongs shall be
deemed the country of origin.
Registration may be refused if the object for which it is solicited
is considered contrary to morality or public order.
Article VII,
The nature of the goods on which the trade-mark is to be used can,
in no case, be an obstacle to the registration of the trade-mark.
Article VIII.
A trade-name shall be protected in all the countries of the union,
without necessity of registration, whether it form part or not of a
trade-mark.
1 No effect can be piven to this or any other article of the convention by the
courts of Great Britain, except so far as it is embodied in section 103 of the
Patents Act, 18W. Re California Fig Syrup Co., -U) Ch. D. 620. And to be regis-
tered in Great Britain, a foreign mark must contain one of the essential partic-
ulars detlned in section 64 of said act. Re Carter Medicine Co., L. R. (1892), 3 Ch.
D. 472.
376 APPENDIX L.
Article IX.
All goods illegally bearing a trade-mark or trade-name may be
seized on importation into those states of the union where this mark
or name has a right to legal protection.
The seizure shall be effected at the request of either the proper pub-
lic department or of the interested party, pursuant to the internal
legislation of each country.
Article X.
The provisions of the preceding article shall apply to all goods
falsely bearing the name of any locality as indication of the place of
origin, when such indication is associated with a trade-name of a
fictitious character or assumed with a fraudulent intention.
Any manufacturer of, or trader in, such goods, established in the
locality falsely designated as the place of origin, shall be deemed an
interested partj\
Article XI.
The high contracting parties agree to grant temporary protection
to patentable inventions, to industrial designs or models, and trade-
marks, for articles exhibited at official or officially recognized inter-
national exhibitions.
Article XII.
Each of the high contracting parties agrees to establish a special
government department for industrial property, and a central office
for communication to the public of patents, industrial designs or
models, and trade-marks.
Article XIII.
An international office shall be organized under the name of
"Bureau International de I'Union pour la Protection de la Propriety
Industrielle " (International Office of the Union for the Protection
of Industrial Property).
This office, the expense of which shall be defrayed by the govern-
ments of all the contracting states, shall be placed under the high
authority of the Central Administration of the Swiss Confederation,
and shall work under its supervision. Its functions shall be deter-
mined by agreement between the states of the union.
Article XIV.
The present convention shall be submitted to periodical revisions,
with a view to introducing improvements calculated to perfect the
system of the union.
To this end conferences shall be successively held in one of the con-
tracting states by delegates of the said states. The next meeting
shall take place in 1885 at Rome.
INTERNATIONAL ARRANGEMENTS. 377
Article XV.
It is agreed that the high contracting parties respectively reserve
to themselves the right to make separately, as between themselves,
special arrangements for the protection of industrial property, in so
far as such arrangements do not contravene the provisions of the
present convention.
Akticlk XVI.
States which have not taken part in the present convention shall be
permitted to adhere to it at their request.
Such adhesion shall be notified officially through the diplomatic
channel to the government of the Swiss Confederation, and by the lat-
ter to all the others. It shall imply complete accession to all the
clauses and admission to all the advantages stipulated by the present
convention.
Article XVII.
The execution of the reciprocal engagements contained in the
present convention is subordinated, in so far as necessary, to the
observance of the formalities and rules established by the constitu-
tional laws of those of the high contracting parties who are bound to
procure the application of the same, which they engage to do with as
little delay as possible.
Article XVIII.
The present convention shall come into operation one month after
the exchange of ratifications, and shall remain in force for an
unlimited time, till the expiry of one year from the date of its denun-
ciation. This denunciation shall be addressed to the government
commissioned to receive adhesions. It shall onlj' affect the denouncing
state, the convention remaining in operation as regards the other
contracting parties.
Article XIX.
The present convention shall be ratified, and the ratifications
exchanged in Paris, within one year at the latest.
In witness whereof the respective plenipotentiaries have signed the
same, and have affixed thereto their seals.
Dated at Paris the 20th March, 1883.
(Signed by the Plenipotentiaries.)
FINAL PROTOCOL.
{Official Translatioti.)
On proceeding to the signature of the convention concluded this
day between the governments of Belgium, Brazil, Spain, France,
Guatemala, Italy, the Netherlands, Portugal, Salvador, Servia and
378 APPENDIX L.
Switzerland, for the protection of industrial property, the undersigned
plenipotentiaries have agreed as follows:
1. The words "industrial property" are to be understood in their
broadest sense; they are not to apply simply to industrial products
properly so called, but also to agricultural products (wines, corn,
fruits, cattle, etc.)> and to mineral products employed in commerce
(mineral waters, etc.)-
2. (Relates only to patents.)
3. The last paragraph of article II does not affect the legislation
of each of the contracting states, as regards the procedure to be fol-
lowed before the tribunals, and the competence of those tribunals.
4. Paragraph 1 of article VI is to be understood as meaning that
no trade-mark shall be excluded from protection in any state of the
union, from the fact alone that it does not satisfy, in regard to the
signs composing it, the conditions of the legislation of that state; pro-
vided that on this point it comply with the legislation of the country
of origin, and that it had been properly registered in said country of
origin. With this exception, which relates only to the form of the
mark, and under reserve of the provisions of the other articles of the
convention, the internal legislation of each state remains in force.
To avoid misconstruction, it is agreed that the use of public armor-
ial bearings and decorations may be considered as being contrary to
public order in the sense of the last paragraph of article VI,
5. The organization of the special department for industrial prop-
erty mentioned in article XII shall comprise, so far as possible, the
publication in each state of a periodical official paper.
6. [After providing for the common expenses of the international
ofl&ce, continues:]
The Swiss government will superintend the expenses of the in-
ternational office, advance the necessary funds, and render an annual
account, which will be communicated to all the other administrations.
The international office will centralize information of every kind
relating to the protection of industrial property, and will bring it to-
gether in the form of a general statistical statement, which will be
distributed to all the administrations. It will interest itself in all
matters of common utility to the union, and will edit, with the help
of the documents supplied to it by the various administrations, a
periodical paper in the French language dealing with questions
regarding the object of the union.
The numbers of this paper, as well as all the documents published
by the international office, will be circulated among the administra-
tions of the states of the union in the proportion of the number of con-
tributing units as mentioned above. Such further copies as may be
desired either by the said administrations, or by societies or private
persons, will be paid for separately.
The international office shall at all times hold itself at the service
of members of the union, in order to supply them with any special in-
formation they may need on questions relating to the internal system
of industrial property.
INTERNATIONAL ARRANGEMENTS. 379
The administration of the country in which the next conference is
to be held will make preparation for the transactions of the confer-
ence, with the assistance of the international office.
The director of the international office will be present at the meet-
ings of the conferences, and will take part in the discussions, but
without the privilege of voting.
He will furnish an annual report upon his administration of the
office, which shall be communicated to all the members of the union.
The official language of the international office will be French.
7. The present final protocol, which shall be ratified together with
the convention concluded this day, shall be considered as forming an
integral part of, and shall have the same force, validity, and dura-
tion as, the said convention.
In witness whereof the undersigned plenipotentiaries have drawn
up the present protocol.
(Signed by the Plenipotentiaries.)
ACCESSION OF GREAT BRITAIN AND IRELAND
TO THE CONVENTION.
The undersigned, ambassador extraordinary and plenipotentiary
of Her Majesty the Queen of the United Kingdom of Great Britain
and Ireland to the French Republic, declares that her Britannic Maj-
esty, having had the International Convention for the Protection of
Industrial Property, concluded at Paris on the 20th March, 1883,
and the protocol relating thereto, signed on the same date, laid be-
fore her, and availing herself of the right reserved by article XVI of
that convention to states not parties to the original convention, ac-
cedes, on behalf of the United Kingdom of Great Britain and Ireland,
to the said international convention for the protection of industrial
property, and to the said protocol, which are to be considered as in-
serted word for word in the present declaration, and formally en-
gages, as far as regards the President of the French Republic and
the other high contracting parties, to co-operate on her part in the
execution of the stipulations contained in the convention and protocol
aforesaid.
The undersigned makes this declaration on the part of Her Bri-
tannic Majesty, with the express understanding that power is re-
served to Her Britannic Majesty to accede to the convention on behalf
of the Isle of Man and the Channel Islands, and any of Her Maj-
esty's possessions, on due notice to that effect being given through
Her Majesty's government.
In witness whereof the undersigned, duly authorized, has signed
the present declaration of accession, and has affixed thereto the seal
of his arms.
Done at Paris, on the 17th day of March, 1884,
(Signed) Lyons.
[L.S.]
380 APPENDIX L,.
DECLARATION OF ACCEPTANCE OF ACCESSION
OF GREAT BRITAIN,
(Official Translation.)
Her Majesty the Queen of the United Kingdom of Great Britain and
Ireland, having- acceded to the International Convention relative to
the protection of industrial property, concluded at Paris, March 20th,
1883, tog-ether w^ith a protocol dated the same day, by the declaration
of accession delivered by her ambassador extraordinary and pleni-
potentiary to the government of the French Republic; the text of
which declaration is word for word as follows:
[Here is inserted the text of the declaration of accession in Eng-
lish.]
The President of the French Republic has authorized the under-
signed, President of the Council, Minister for Foreign Affairs, to
formally accept the said accession, together with the reserves which
are contained in it concerning the Isle of Man, the Channel Islands,
and all other possessions of Her Britannic Majesty, engaging as well
in his own name as in that of the other high contracting parties to
assist in the accomplishment of the obligations stipulated in the con-
vention and the protocol thereto annexed, which may concern the
United Kingdom of Great Britain and Ireland.
In witness whereof the undersigned, duly authorized, has drawn
up the present declaration of acceptance and has affixed thereto his
seal.
Done at Paris, the 2d April, 1884.
(Signed) Jules Ferry.
[L. S.]
This convention is not self-executing, but requires legislation to
make it effective in the United States. Opinion of Miller, Attorney-
General, 47 Off. Gaz. 397; Ex parte Zwack & Co., 73 Off. Gaz. 1855.
For a list of the existing treaties and conventions between the
United States and foreign nations see ante, p. 326.
INDEX.
References are to pages.
ABANDONMENT —
burden of proof in establishing, 128.
by adoption of new brand or label, 129.
by advertisement of sales agent, 131.
by dismissing bill for injunction, 126.
by owner, will not confer title on another fraudulently using
mark, 43.
by permitting infringements, 22.
by retiring partner, 22.
involuntarj-, 128.
of features of mark not registered, 131.
of mark owned jointly by independent dealers by termination of
joint business, 17.
proof of intention of, 125.
ABORIGINAL WORDS —
as trade-marks, 81.
"A. C. A." (cloth), 58, 206.
ACCOUNT —
pending the suit, may be ordered where preliminary injunction
refused, 261.
ACCOUNTING —
denied where defendant ignorant of plaintiflF's mark, 188.
plaintiif entitled to reference for, as matter of right, when in-
fringement confessed or proven, 262.
refused because of acquiescence, 122, 262.
refused because of laches, 122, 255.
"ACID PHOSPHATE," 58, 77.
ACQUIESCENCE —
a bar to relief against unfair competition, 32.
always question of fact, 123.
distinguished from laches, 123.
is revocable, 123, 124, n. 1.
may bar right to accounting, 122.
no bar to injunction, 122.
none without knowledge of facts, 123, 125
tantamount to agreement, 123.
ACQUISITION —
of trade-mark, generally, 36.
383
384 INDEX.
Beferences are to pages.
ACTION (see Action at Law; Suits in Equity) —
forms of, 225.
for trade-mark and patent infring-ement, may be joined, 225.
failure to prosecute may effect abandonment of trade-mark, 84.
for infringement survives owner's death, 221.
for invasion of good- will, 149.
ACTION AT LAW —
generally, 233.
trespass on the case, 234.
continuando must be pleaded in, 238.
form of declaration, 343.
ACT OF 1870, 300.
in full, 319.
ACT OF 1876 —
void because act of 1870 invalid, 322.
no conviction under, in absence of recital of exclusive ownership
in certificate, 322.
not revived by act of 1881, 226, 227, 322.
ACT OF 1881 —
in full, 323.
did not make act of 1876 operative, 322.
requirements of registration under, 40.
validity of, 323, n. 1.
ACT OF AUGUST 5, 1882, 340.
ADDED MATTER—
in use of false mark, no defense, 200, 201, 256, 258.
may tend to mitigate damages, 200.
ADMINISTRATION —
upon trade-mark, 220.
of good-will, 148.
trade-marks of deceased person should be conveyed by, 18.
may pass without, 18.
ADMINISTRATOR —
as plaintiff in suit for infringement, 221.
ADOPTION —
actual adoption of trade-mark indispensable, 12.
date of, stated in application, not conclusive, 331.
ADVERTISEMENT —
of fact of assignment, 239.
ADVERTISING —
an element of good-will, 27.
as assets, 173.
ADVERTISING SOLICITOR —
enjoined from using material for rival publication, 157.
INDEX. 385
References are to pages.
AFFIDAVITS —
ex parte, insufficient as basis of preliminary injunction except in
clear case, 261, 272.
in chief, in application for preliminary injunction, must establish
all necessary facts, 272.
must be entitled in the cause, 272.
proceeding- by, on application for preliminary injunction, 272.
AFFIXING —
mode of, immaterial, 39.
"A. G.," 206.
AGENT—
liability of, for handling infringing goods, 182, 223, 259.
act done iit suggestion of plaintiff's, not an infringement, 252.
liability of principal for infringement of, 223.
AGREEMENTS UPON DISSOLUTION —
how interpreted, 144, n. 3.
"AINSWORTH" (thread), 65, 100, 101.
"AIR-CELL," 260, n. 4.
ALIEN —
abandoning mark in United States, acquires no right by subse-
quent legislation in his own country, 11.
cannot have trade-mark right as against a citizen making prior
adoption in good faith, 11.
may register under act of 1881, 10.
need not aver that mark is used in foreign commerce, to come
within federal jurisdiction, 339.
trade-mark, rights of, 41, 42, 218.
' ' ALBANY BEEF, ' ' 332.
"ALCOCK'S POROUS PLASTER," 58.
"ALDERNEY" (oleomargarine), 65.
ALTERNATIVES —
registration of, 329, 332.
what may be registered as, 332.
AMBIGUITY —
as a defense, 200.
"AMERICAN" (sardines), 58.
"AMERICAN COLD JAPAN" (paint), 65.
"AMERICAN EXPRESS" (sealing wax), 65.
"AMERICAN VOLUNTEER" (shoes), 65.
"AMMONIATED BONE SUPERPHOSPHATE OF LIME," 58.
AMOUNT IN controversy-
Is value of trade-mark, 214, 216, 338.
in suit to restrain vendor of good-will from re-engaging in busi-
ness, 152.
25
386 INDEX.
Beferences are to pages.
ANALOGY—
value of, in determining- character of infringement, 201.
"ANATOLIA" (liquorice), 65.
"ANCHOR BRAND" (wire), 65.
"ANGLO-PORTUGO" (oysters), 58.
"ANGOSTURA" (bitters), 48, 58.
"A. N. HOXIE'S MINERAL" (soap), 65.
"ANNIHILATOR" (medicine), 65.
"ANSATZ" (bitters), 83.
ANSWER —
form of, 361.
ANTICIPATION —
what constitutes, 334.
"ANTIQUARIAN" (book store), 58.
"ANTI-WASHBOARD" (soap), 66.
"APOLLINARIS," 66, 195.
APPEAL—
does not lie from action in interference, 336.
"APPLE AND HONEY" (medicine), 58.
APPLICATION —
what is sufficient, of mark, 330.
"ARCTIC" (soda apparatus), 66.
ASSIGNMENT —
assignability of trade-marks, generally, 12, 22, 41.
assignee acquires trade-mark subject to necessity of continued
user, 21.
assignee must publish fact of assignment, when, 48, 239.
assignee can apply trade-mark only to same class of goods as
assignor, 20.
general, in insolvency, conveys trade-marks without special men-
tion, 213.
general, of business, conveys trade-marks without special men-
tion, 13.
of mark containing name and portrait of former owner, 15.
of right to use proper name cannot be reassigned, 148, n. 2.
of trade-mark by implication, 127.
right of assignee of trade-mark to use name of assignor, 14.
tinder English statute, 13, 21.
"ASTRAL" (oil), 58.
ATTACHMENT—
action for damages for injury to good-will through wrongful, 151.
INDEX. 387
Beferences are to pages.
ATTORNEY—
gcx>d-will of, 135, 136.
"ATWOOD'S GENUINE PHYSICAL JAUNDICE BITTERS,"
48.
"BACCO-CURO" (remedy), 66.
"BAFFLE" (safes), 66.
BAILEE —
of infringing goods, duty of to make discovery, 224, 276.
of infringing goods, liable to injunction, 222.
"BALM OF THOUSAND FLOWERS" (cosmetic), 46, 47, 58, 66.
"BARBER'S MODEL" (razors), 58.
"BAZAAR" (patterns), 58.
"B. B. B.," 66, 206.
"B. B. H." (iron), 66
"BEATTY'S HEADLINE" (copy-book), 66.
"BELL OF MOSCOW" (wine), 66.
"BENEDICTINE" (liqueur), 66.
BEQUEST—
of trade-mark, 12.
"BETHESDA" (water), 66.
"BETTER THAN MOTHER'S" (mince meat), 58.
"BHE HATHI," 194.
BIBLIOGRAPHY—
American and English, 373.
BILL IN EQUITY —
orderly parts of, 248.
1. title of court, 249.
2. introduction, 249.
3. statement, 249.
4. praj'er for relief, 250.
5. interrogating part, 250.
6. prayer for process, 251.
averments of citizenship of parties, 339.
defect on face of, must be met by demurrer and not by plea, 255.
form of interrogatories, 351.
form of trade-mark infringement, 346.
form of unfair competition, 352.
not demurrable because praying for both profits and damages, 250.
should show application of mark in foreign commerce, 249.
to restrain dealing in fraudulent labels, 251.
to restrain unfair competition, 250.
388 INDEX.
References are to pages.
"BISMARK" (collars), 66, 101.
"BLACK DIAMOND," 195.
"BLACK PACKAGE" (tea), 58.
"BLACKSTONE" (cigars), 66.
"BLOOD SEARCHER" (medicine), 66.
"BLUE LICK WATER," 66, 220.
"BOKER'S STOMACH BITTERS," 66.
"BOKOL" (beer), 80.
BOOK—
device of, not trade-mark, 58.
title of, as trade-mark, 115.
BOOKS AND PAPERS —
discovery and inspection of, 268.
"BORAX" (soap), 58.
BOTTLES—
refilling- enjoined, 202.
"BOVILENE," 66, 196.
" BOVRIL " (meat extract), 66.
"BRAIDED FIXED STARS" (cigar lights), 58.
"BROMIDIA" (medicine), 66, 78.
"BROMO-CAFFEINE," 66, 78.
"BROMO CELERY," 77.
"BROMO-QUININE," 77.
"BROWN DICK" (tobacco), 66.
"BUFFALO PITTS," 333.
BULK GOODS—
purchaser of, cannot use manufacturer's trade-mark used on his
own packages, 192.
BURDEN OF PROOF—
in establishing abandonment, 128.
in establishing priority against existing registration, in appli-
cation to register, 337.
on applicant in interferences, 335.
strongly upon complainant in refilling cases, 267.
"BURGESS," 196.
c.
"C. A." 220, n. 5.
"CACHEMIRE MILANO " (cloth), 58.
"CALIFORNIA SYRUP OF FIGS" (laxative), 59, 85, 86.
"CAMEL HAIR BELTING" (case), 87, 88, 89.
"CANADIAN CLUB WHISKEY," 196.
INDEX. 389
References are to pages.
CARE —
degree of, expected of consumers, 207.
CARRIERS —
liable for infringement, 223.
"CASHMERE BOUQUET" (toilet soap), 67.
"CASTORIA" (medicine), 59.
CATALOGUE—
improper use of, restrained, 158.
CATCH-WORDS —
by which goods known to trade, how proven, 267.
suggested by a trade-mark, protected, 193, 207.
"CELEBRATED STOMACH BITTERS," 59.
CELEBRITY—
name of, as trade-mark, 101.
registration of name of, as trade-mark, 165.
"CELLULAR CLOTHING" (case), 59, 88, 89.
"CELLULOID," 67, 111, 196, 254.
"CENTENNIAL" (clothing, etc.), 67.
CERTIORARI —
to review contempt proceedings, 271.
"CHAMPION " (flour), 67.
"CHARLEY'S AUNT" (farce title), 67.
"CHARTER OAK" (stoves), 67.
"CHATTERBOX" (periodical), 67, 196.
"CHERRY PECTORAL" (medicine), 59.
"CHICAGO WAISTS" (corsets), 67.
"CHICKEN COCK" (whiskey), 67, 197.
"CHILI COLOROW," 83, 332.
"CHILL STOP" (medicine), 59.
"CLIMAX" (stoves), 67.
"CHINESE LINIMENT," 67.
"CHLORODYNE" (medicinal compound), 59, 84.
"CHRISTY'S MINSTRELS" (case), 104.
CITIZENSHIP —
averment of, concerning corporation, not proper, 236.
defined, 328, n. 4.
diverse, must be pleaded in federal practice, 236.
of applicant for registration, immaterial, 328,
what averments necessary in federal equity pleading, 337.
CLASSIFICATION —
of trade-marks, suggested by patent ofl&ce, 371.
390 INDEX.
jReferences are to pages.
CLASS OF GOODS —
must be stated in registering-, 186, 328.
infring-ement must be upon same, 186.
"CLOVERDALE," 334.
"CLUB HOUSE" (gin), 59.
"CLUB SODA," 67.
"COAL OIL JOHNNY'S PETROLEUM" (soap), 67.
COAT-OF-ARMS —
of state or United States, not registrable, 332.
effect of adding, to trade-mark, 130.
"COCOAINE" (hair oil), 67, 77, 196.
"COCOATINA," 196.
"COE'S SUPERPHOSPHATE OF LIME," 196.
COLLATERAL MISREPRESENTATION—
will not debar mark from protection, 49.
COLLOCATION —
in issue of fraudulent use of color, 170.
COLOR—
fraudulent imitation of, 169, 171.
infringement of, restrained, 30.
no trade-mark in, 167.
not registrable as trade-mark, 329.
registration in, 172.
COLORABLE IMITATION —
of trade-marks, 181.
COMMERCE CLAUSE -
sole basis of federal trade-mark legislation, 210, 211.
COMMISSIONER OF PATENTS —
duties of, judicial, 335.
action of, not controlled by maiidamus, 335.
may make regulations for transfers of trade-marks, 41.
COMMON LAW —
right of trade-mark not abridged or qualified by registration
act, 338.
"COMPACTUM" (umbrellas), 67.
COMPARISON —
no opportunity of, given consumer, as affecting test of infringe-
ment, 182, 207, 209.
"CONGRESS WATER," 67, 93.
CONSTRUCTION —
of contracts affecting trade secrets, 159.
INDEX. 391
Beferences are to pages.
CONTEMPTS—
action upon, not reviewed on appeal, 270.
by circulating- matter prejudicial to defense, 270,
by oflfering- infring-ing- goods for sale, though no sale effected, 270.
by publishing perverted construction of injunction, 270.
by violation of decree, 270.
costs of unsuccessful motion to commit, 277.
costs upon appeal, 277.
enlarging decree on hearing, 271.
erroneous action upon, reached by certiorari, 271.
intent of contemnor immaterial, 271.
"CONTINENTAL" (fire insurance corporation), 59, 112.
CONTINUANDO —
must be pleaded in action at law, 238.
CONTRACTS—
in reference to trade secret, 153.
how construed, 159.
for sale of good-will, 139, 143.
not to disclose trade secret, implied as between master and serv-
ant, 156.
CONTRACTS AFFECTING USE OF TRADE-MARK (see Act
OF March 3, 1881) —
not amounting to transfer or assignment, cannot be registered,
339.
COPYRIGHTS —
distinguished from trade-marks, 7.
CORPORATE NAMES—
as trade-marks, 110.
governed by same principles as names of partnerships and indi-
viduals, 113.
when registrable, 333.
CORPORATION —
cannot acquire right to use proper name in unfair competition, 114.
cannot be a citizen, 236.
creation of, no defense to infringement of incorporators, 258.
having common interest, may join as plaintiffs, 220.
injunction may issue against all persons connected with infring-
ing, 144.
jurisdiction of federal courts in suits against, 216, 217.
may hold trade-marks, 36.
restraint of, from improper use of proper name in corporate name,
108.
stock issued for good-will, 138.
COSTS—
as against innocent warehouseman, 276.
392 INDEX.
Beferences are to pages.
COSTS (continued) —
as against retailer, 276.
awarded bailee who has made discovery, 224.
caused by unfounded charge in bill, 276.
in unsuccessful motion to commit for contempt, 277.
may be adjudged on interlocutory decree, 278.
may be allowed where damages refused, 273.
on appeal, when decree reversed in part, 277.
pleading to avoid, 253.
refused as against retail dealer, 253.
label manufacturer acting ignorantly, 253.
refused because of delay, 276.
refused successful defendant, when, 275.
subject to prior lien of wharfinger's charges, 224.
upon appeal from committal for contempt, 277.
usually follow the event, 273.
want of notice, no defense to recovery of, 274.
where sales too small to justify accounting, 276.
"COTTOLENE," 67, 130, 196.
"COUGH CHERRIES" (confectionery), 67.
"COUGH REMEDY, "59.
COUNTERFEITING —
trade-marks, 180.
infringement by, 180.
COURTS—
jurisdiction of, in cases of unfair competition, 32.
"CRACK PROOF" (rubber), 59.
"CRAMP CURE," 59.
"CREAM" (baking powder), 67.
"CRESYLIC" (ointment), 59.
CRIMINAL PROSECUTION—
for trade-mark infringement, 41.
"CRISTALLINE," 333.
"CROMARTY," 333.
"CROUP TINCTURE," 59.
"CROWN SEIXO,"193.
"CRYSTAL" (castor oil), 67.
"CRYSTALLIZED EGG," 59.
CUBA—
protection of registered trade-maks in, 340, 341, 342.
"CUTICURA," 67, 195.
"CYLINDER" (glass), 59.
INDEX. 393
References are to pages.
CYPHER CODE —
improper use of, when restrained, 158.
D.
DAMAGES—
amount of, does not affect jurisdiction of federal courts in trade-
mark cases, 216.
and profits both assessed in equity, 263.
awarded in equity where no loss of profit shown, 264.
election between, and profits, in English practice, 245.
for invasion of good-will, 149, 150.
in actions at law, 241.
jury may make inferences as to, from all the evidence, 244.
loss of sales as an element of, 263.
may be mitigated by showing matter added to mark in use, 200.
nominal, in actions at law, 244.
plaintiflF must elect between, and profits, under English prac-
tice, 262.
punitive, cannot be assessed in equity, 264.
punitive, may be recovered at law, 238.
punitive, only where fraudulent intent shown, 189.
punitive or exemplary, may be allowed where no actual damage
proven, 243, n. 3.
••DAMASCUS BLADE" (scythes), 67.
•'DANIEL" (bridle bits, etc.), 68.
"DAYLIGHT" (oil), 68.
DEAD LANGUAGES —
trade-marks consisting of words from, 79.
words from, may be used as trade-mark, when, 79.
DEALER—
purchasing infringing goods from manufacturer, injunction
against, 259.
in fraudulent labels, 179.
DECEIT —
action of, bj' defrauded purchaser, 225.
DECEPTION —
doubt as to, resolved in favor of complainant, 186.
need not be shown, 189
proof of, when necessary, 177, 178, 181.
DECEPTIVE MARKS —
not registrable, 332.
DECLARATION (see Forms) —
in action of trespass, 235.
394 INDEX.
Beferences are to pages.
DECREE —
directing defendant how to use a proper name, 106.
"DEER TONGUE" (tobacco), 68.
DEFENSES—
abandonment, 239.
action at law better susceptible of defense than suit in equity^
240.
acquiescence, 239.
added matter used with infringing mark, ineffective, 258.
attacking plaintiif 's right to sue, 239.
equality of quality no defense, 256.
estoppel, 239.
fraudulent representations by plaintiff as, 252.
ineffective, that refilling was done at request of customer, 190.
in equity, 252.
laches, as defense to accounting, 255.
laches or delay, 239, 256.
license from owner, 240.
no defense that purchaser was notified of real nature of infring-
ing goods, 182.
none to show defendant added "Improved" to infringing mark,
256.
none to show defendant placed his name, initials or address on
infringing goods, 256.
non-infringement, 240.
of abandonment, not favored, 126.
of infancy, 256.
of plaintiff adding coat-of-arms to trade-mark, 130.
of prior use, ineffective, where user accompanied by false repre-
sentations, 257.
of registration of defendant's mark, 256.
of using firm name in conjunction with trade-mark, 130.
plaintiff's failure to advertise assignment, 239.
prior use must be on same class, 257.
showing that infringement has ceased, ineffective, 259.
that defendant did not intend to sell, ineffective, 257.
that defendant did not sell, ineffective, 259.
that defendant did not make infringing article, ineffective, 259.
that defendant has been licensed, ineffective where license re-
voked, 259.
that defendants have incorporated, ineffective, 258.
that defendant is acting as agent, ineffective, 259.
that infringing goods were made by plaintiff, ineffective, 257.
that infringement has ceased, no defense in action at law, 245.
that infringement is only partial, ineffective, 258.
that infringement of proper name is done under fraudulent license,
ineffective, 258.
INDEX. 395
References are to pages.
DEFENSES (continued) —
that licensee has not joined in action, 239.
that mark has become publici juris, 239.
that mark is common to the trade, 239.
that others arc infrin^'ing, ineffective, 257.
that plaintiff is guilty of misrepresentations to public, 239.
that territorial licensee is not joined in suit, ineffective, 259.
v?ant of notice, ineffective, 258.
wrongful use of words "patent" or "patented," 252.
DEFINITIONS —
acquiescence, 123.
amount in controversy, 338.
article of manufacture, 315.
citizenship, 328, n. 4.
counterfeit mark, 180.
distinctive, 2.
domicile, 328, n. 2.
essential features of trade-mark, 329, n. 1.
fac-simile, 330.
generic term, 54.
good-will, 132.
imitation mark, 180.
infringement, 166.
label, 314.
location, 328, n. 3.
print, 314.
quack medicine, 154.
right of privacy, 160.
substitution, 192.
trade-mark, 1.
trade secret, 153. •
treaty, 326.
DEGREE OF CARE —
expected of consumers, 207.
DEMURRER—
interposed on application for preliminary injunction, confesses
allegations of fraud, and injunction issues if demurrer over-
ruled, 262.
proper attack on defects upon face of bill, 255.
sustained where exhibited conflicting marks show no infringe-
ment, 255.
will not lie to bill in equity on ground of uniting prayers for
damages and profits, 250.
"DERBY," 196.
"DERRINGER" (fire-arms), 68.
396 INDEX.
References are to pages.
DESCRIPTION —
requisites of, in registration, 329.
DESCRIPTIVE WORDS —
invalid because generic, 55.
not registrable, 332.
why objectionable as trade-marks, 55.
DESIGN—
patented by another, not registrable as trade-mark, 333.
"DESSICATED" (codfish), 59.
"DEWEY'S CHEWIES " —
refused registration, 165.
"DIAMOND" (soap), 68.
DIRECTORS —
of corporation as defendants in action for infringement by cor-
poration, 223.
DISCOVERY —
to avoid costs, 274.
when compelled, 268.
"DISQUE," 260.
DISSIMILAR WORD OR MARK —
may infringe, 193.
DISSOLUTION—
use of trade-marks by partners on, 221.
DISTINCTIVE —
defined, 2.
DISTRICT OF COLUMBIA—
court of appeals, no jurisdiction under act of 1881, 217.
DISUSE —
abandonment of trade-mark by, 125.
DIVERSE CITIZENSHIP —
must be pleaded, in federal practice, 236.
"DOG'S HEAD BEER," 194.
"DOLLY VARDEN" (stationery), 68.
DOMICILE —
defined, 328, n. 2.
"DR. LOBENTHAL'S ESSENTIA ANTIPHTHISICA," 68.
"DRUGGISTS' SUNDRIES" (cigars), 59.
"DRUGGISTS' SUNDRIES" —
too broad for class in registration, 328, n. 5.
"DRY MONOPOLE" (champagne), 59.
"DUBLIN" (soap), 68.
INDEX. 397
References are to pages.
"DURHAM" (tobacco), 59, 68, 93, 196.
"DYSPEPTICURE,"68, 196.
E.
"EDELWEISS" (perfume), 68.
"EGG" (macaroni), 59.
"EL CABIO" (tobacco), 80.
"EL DESTINO," 80, 196.
"ELECTRO-SILICON," 68, 77, 196.
"ELGIN" (watches), 59, 98.
"ELK" (cigars), 68.
"EMOLLIA" (toilet cream), 68.
"EMOLLIORUM" (leather dressing), 60.
"EMPIRE" (stoves), 68.
EMPLOYEE—
liable for infringement, 223.
EMPTY PACKAGES—
competitor enjoined from buying, 180.
"ENCYCLOPEDIA BRITANNICA," 60.
ENGRAVER—
of fraudulent marks, 178.
"EPICURE" (canned salmon), 68, 187.
EQUALITY OF QUALITY —
no defense, 202, 256.
EQUITABLE JURISDICTION —
basis of, 184, 246.
EQUITY —
relief in, 209, 250.
ESTATE AND EFFECTS —
good-will, not included in, 139.
ESTOPPEL —
as a defense, 239.
of withdrawing- partner as against subsequent creditor, where
old firm name used, 148.
"ETHIOPIAN" (stockings), 68, 83.
"EUREKA" (fertilizer, etc.), 68, 79.
"EUREKA" (shirts), 129.
"EVAPORATED" (food), 60.
"EVERLASTING" (pills), 68.
"EVER READY" (coffee mills>, 60,
"EVERYDAY SOAP," 201.
398 INDEX.
Beferences are to pages.
EVIDENCE —
burden of proof in refilling cases, 191.
burden of proving abandonment, 128.
burden of proving prior right, 128, n. 6.
delay in order to secure, not laches, 122.
expert, on question of infringement, 265.
matters of which courts take judicial notice, 265.
of abandonment, 125, 126.
of deception, when necessary, 177, 178, 181.
of defendant's sales, 245.
of experts, as to habits of customers, 189.
of fraud, 208.
of fraud, particular instances, 189.
of fraudulent intent, in trade-mark cases, 177, 188.
in other cases of unfair competition, 178.
in criminal prosecution, 231, 232.
of intent of contemnor immaterial, 271.
of loss of sales, 245.
of loss of sales, in action at law, 244.
of submission by others, 269.
printing label in foreign language, evidence of fraud, 99.
registration as, of extent of claim, 329.
"EXCELSIOR" (soap), 130.
"EXCELSIOR" (stoves, etc.), 68, 79, 130.
EXCLUSIVE LICENSEE —
must be a party, 220, n. 1.
EXEMPLARY DAMAGES—
in actions at law, 241, 242.
may be allowed where no actual damage proven, 243, n. 3.
EXHIBITS —
introducing conflicting marks as, 267.
demurrer may be sustained on inspection of, 255.
EXPERT EVIDENCE —
as to habits of customers, 189.
on question of infringement, 265.
valuable in doubtful case, 266.
on technical and scientific questions, 266.
on catch- words applied to goods, 267.
EXPORTERS—
may have trade-marks, 38.
"EXTRACT OF NIGHT-BLOOMING CEREUS " (perfume), 60.
F.
"FABER" (pencils), 68.
FAC-SIMILE —
defined, 330.
need not contain unessential features of mark, 330.
INDEX. 399
References are to pages.
FAC-SIMILE (continued) —
one only needed for registration, 330.
required in registration, 329.
"FAIRBANK'S PATENT" (scales), 60.
FALSE LABELS—
averment of bill to restrain dealing in, 251.
FALSE PRETENSES—
in sale of goods under imitation mark, 229.
FALSE REPRESENTATION —
in connection with trade-marks, 44, 46.
deprives owner of registered mark of protection, 338.
"FALSTAFF" (cigars), 68.
"FAMILY" (salve), 69.
"FAMOUS" (stoves), 60.
"FANCY GOODS"
too broad for class in registration, 328, n. 5.
"FAVORITA" (flour), 69.
FEDERAL COURTS —
jurisdiction concurrent with state courts in trade-mark cases,
215, 217.
jurisdiction dependent upon diverse citizenship in cases of un-
registered trade-marks, 215.
jurisdiction of, in cases of unfair competition, 216, 217.
jurisdiction of, in trade-mark cases, 212, 214.
FEES (see Statutes; Act of March 3, 1881) —
for filing copy of registration certificate in Cuba, Porto Rico and
the Philippines, 342.
for registration of trade-mark in patent office, 337.
for registration, when refunded, 331.
"FERRO-MANGANESE" (mineral water), 77.
"FERRO-PHOSPHORATED ELIXIR OF CALISAYA BARK,"
60, 77.
"FIBRE CHAMOIS" (dress linings), 69.
"FILOFLOSS " (silk), 69.
"FILOSELLE," 200.
"FILTRE RAPIDE" (filters), 69.
"FIRE-BOARD," 260, n. 4.
"FIRE-PROOF" (oil), 60.
FIRM NAME —
as part of good-will, 140.
as trade-marks, 100.
passes to purchaser of assets only by express agreement, 147.
400 INDEX.
References are to pages.
"FLAG"—
law of Illinois, 230, n. 1.
"FLORDE MARGARETTA," 196.
"FLOR FIN A" (cigars), 80.
FOREIGN ADJUDICATIONS —
upon rig-ht to trade-mark, 269, n. 5.
FOREIGN CORPORATION —
cannot enjoin formation of new corporation under same name, 113.
FOREIGNERS —
have no special privilege under act of March 3, 1881, 339.
FOREIGN LANGUAGE —
printing generic word in letters from, does not make trade-
mark, 56.
FOREIGN TRADE-MARK LAWS —
enumerated, 327.
FORGERY —
counterfeiting trade-marks is not, 229.
FORM —
not registrable as trade-mark, 329.
infringement of, 172.
FORM, SIZE AND COLOR —
no trade-mark in, 167.
FORMS —
answer, 361.
bill of complaint:
trade-mark infringement, 346.
unfair competition, 352, 357.
against dealer in spurious labels, 358.
contract against disclosing trade secret, 156.
declaration, action at law, 343.
injunction, interlocutory decree, 365.
final decree, 367, 368, 369.
interrogatories, 351.
mandate, circuit court of appeals, 370.
pleading registration of trade-mark, 344.
registration, prints and labels:
application by an individual — prints, 316.
a firm — prints, 316.
a corporation — prints, 317.
an individual — labels, 317.
a firm — labels, 317.
a corporation — labels, 318.
trade-mark- registration :
letter of advice, 293.
statement by an individual, 293.
INDEX. 401
References are to pages.
FORMS (continued) —
declaration for an individual, 294.
statement by a firm, 294.
declaration for a firm, 296.
statement by a corporation, 296.
declaration for a corporation, 297.
amendment, 297.
FORMS OF ACTION, 225.
FORMER ADJUDICATIONS —
value of, in determining right to trade-mark, 269.
FRAUD—
evidence of, 208.
how charged in bill to restrain unfair competition, 250, n. 3.
no fixed rules for dealing with, in equity, 209.
must be pleaded in action at law, 237.
must be proven in cases of unfair competition, 32.
presumed from printing American label in foreign language, 99.
presumed from wrongful use of trade-mark, 32.
FRAUDULENT INTENT —
must be shown in action at law, 189.
FRAUDULENT PACKAGES—
liability of dealer in, 224.
FRAUDULENT REPRESENTATIONS—
by plaintiff, as a defense, 252.
"FRENCH" (paints), 60.
"FRUIT SALT," 254.
"FRUIT" (vinegar), 60.
FUNCTION —
of trade-marks, 7.
G.
"GALEN" (manufactured glass), 60.
"GASLIGHT" (oil), 69.
GENERIC TERMS —
classified, 55.
common to trade, no exclusive right to conveyed by registration,
337.
defined, 54.
from dead languages, not valid trade-marks, 79.
illustrations of, 58.
include geographical and descriptive words and proper names, 55.
judicially defined, 73, 74, 75.
26
402 INDEX.
References are to pages.
GEOGRAPHICAL NAMES —
as employed by sole owner of natural product and place of pro-
duction, 92.
as trade-marks, 36.
cannot be essential feature of trade-mark, 329.
not registrable, generally, 333.
when registrable, 334.
false use of, vitiates trade-mark, 98.
not made registrable by surrounding geometrical figure, 335.
not trade-marks because generic, 55, 91, 97.
protected against unfair competition, 93.
taken from trade-mark on natural product of the locality, as af-
fecting validity of the trade-mark, 36.
when protected as trade-marks, 94.
who may complain of false use of, 99.
why objectionable as trade-marks, 55.
"GERMAN," 69, 196.
"GERMAN HOUSEHOLD DYES," 196.
"GERMANIA," 325.
"GERMEA," 196.
"G. F.," 206.
"GIBRALTAR" (lamp chimneys), 60.
"GLENDON" (iron), 60.
"GLENFIELD" (starch), 69.
"GOLD DUST," 69, 196.
"GOLD LABEL" (bread), 60, 84, n. 2.
"GOLD MEDAL" (saleratus), 60.
"GOLDEN CROWN," 69, 197.
"GOLDEN" (ointment), 60.
"GOLIATH," 326.
GOOD-WILL —
advertising as an element of, 27.
analogous to trade-marks, 16.
classes of business having, 133.
covenant to make valuable, 146.
defined, 132.
general and local, distinguished, 140.
goes to personal representative, 144.
inseparable from trade-marks, 13.
jurisdiction of federal courts in cases involving, 152.
not necessarily included in mortgage of entire assets, 139.
of learned professions, 135.
of newspaper, 133.
of partnership, 147.
INDEX. 403
References are to pages.
GOOD-WILL (continued) —
remedies of purchaser, 149.
rescission of contract for sale of, 151.
rights of vendor, 142.
sale of, 137, 138.
sale of, on dissolution, 147.
sale of, conveys trade-marks without special mention, 19.
taxation of, 138.
trade-marks inseparable from, 138.
trade-marks can only be assigned with, 41.
trade-secret conveyed with, 155.
vendee of, enjoined from re-engaging in business, 146.
what words necessary to convey, 139.
"GOODYEAR RUBBER CO.," 60.
"GOURAUD'S ORIENTAL CREAM" (cosmetic), 69, 189.
"GRAND MASTER" (cigars), 69.
"GRANITE" (kitchen utensils), 60.
"GRANOLITHIC" (artificial stone), 60.
"GRANULATED DIRT-KILLER" (soap), 60.
GREAT BRITAIN —
treaty with, 326.
"GREATEST VALUE FOR THE MONEY" (shoes), 60.
"GREEN MOUNTAIN" (grapes), 60.
"GREEN MOUNTAIN" (scythe-stones), 69.
"GRENADE" (syrup), 69, 83.
"GUARANTEED" (corsets), 60.
"GUENTHER'S BEST" (flour), 60.
"GUINNESS," 197.
"GULLIVER" (cigars), 69.
"GYRATOR " (bolting machines), 60.
H.
"HABANA," 275.
"HAMBURG" (tea), 61.
"HAND GRENADE" (fire extinguisher), 61.
"HANFORD'S CHESTNUT GROVE" (whiskey), 69.
"HANS A" (lard, etc.), 69.
" HARVEY'S SAUCE," 61.
"HARVEST VICTOR" (harvesters), 69.
"HEADACHE WAFERS," 61.
"HEALTH FOOD" (cereal products), 61.
404 INDEX.
References are to pages.
"HEALTH PRESERVING" (corsets), 61.
"HELIOTYPE" (prints), 69.
"HERO" (jars), 69.
"HIGHLY CONCENTRATED COMPOUND FLUID EXTRACT
OF BUCHU," 61.
"HOLBROOK'S " (school apparatus), 61.
"HOME," 69, 197.
"HOMOEOPATHIC MEDICINES," 61.
"HOOSIER" (drills), 69.
"HOSTETTER'S BITTERS," 275.
infring-ement by dealingf in material for refilling, 190.
infringed by other words, 197.
"HOWQUA'S MIXTURE," 69.
"HUMPHREY'S HOMGEOPATHIC SPECIFICS," 197.
"HUNTER" (shoes), 69.
"HUNTSMAN'S CHERRY BRANDY," 194.
"HYDRO-BROMO SODA MINT," 61.
"HYGEIA" (water), 69.
"HYGIENIC" (underwear), 61,
"HYGIENIQUES " (suspenders), 69.
• I.
"IDEAL" (fountain pens), 70.
ILLUSTRATIONS —
of generic terms, 58.
of valid trade-marks, 65.
IMITATION —
of particulars common to the trade, 181.
of trade-marks, 180.
of trade-mark, may be limited or partial, 166.
"IMPERIAL" (beer), 61.
IMPORTERS—
may have trade-marks, 38.
IMPROPER JOINDER —
of other causes of action with suits to restrain unfair competition,
251.
"IMPROVED"—
addition of, to mark, no defense, 256.
"INDIAN POND" (scythe-stones), 70.
"INDIAN ROOT" (pills), 70.
INDEX. 405
References are to pages.
INDIAN TRIBES —
commerce with may be wholly in a single state, 325.
•'INDURATED FIBRE" (wood-pulp products), 61, 77.
INFANCY —
not a defense, 256.
INFANT —
liable for costs, 273.
INFRINGER —
liable for whole profit on infringing article, 263.
may recover from person procuring the infringement, 277.
INFRINGEMENT —
by a dissimilar word or mark, 193.
by counterfeiting, 180.
by imitation, 180, 181.
by others than defendant, no defense, 257.
by refilling genuine packages, 190.
defined, 166.
discontinuance of, no defense to action for damages, 245.
evidence of loss of sales resulting from, 267.
expert evidence as to, 265.
how pleaded, in action at law, 237.
judicial tests of, 206.
may be partial, 258.
must be on same class of goods, 253.
of catchwords, 193.
tested by probability of deception, 181.
tests of, 181.
what participants liable for, 178.
when single instance of, warrants injunction, 267.
INITIALS —
as trade-marks, 205.
INJUNCTION (see Forms; Interlocutory Decree; Prelimi-
nary Injunction) —
against dealers, printers, engravers, etc., 178, 179.
against disclosure of trade-secret, 153.
against fraudulent imitation of tin tag, 167.
against licensee on breach of condition, 222.
against refilling, 190.
against vendee of good-will re-engaging in business, 145.
cannot issue in suit to which exclusive licensee is not a party, 220.
denied when doubt whether plaintiff's mark generic, 260.
denied when plaintiff guilty of laches, 260.
denied where exclusiveness of plaintiff's right doubtful, 260.
denied where plaintiff's right not exclusive, 260.
denied where plaintiEf's right or defendant's infringement doubt-
ful, 260.
406 INDEX.
References are to pages.
INJUNCTION (continued) —
enlarging on hearing of contempt proceedings, 271.
granted against threatened infringement, 259.
granted on ex parte affidavits only in clear case, 261.
granted on preliminary order only in extreme case, 261.
may be granted without costs, 253.
preliminary, may be reviewed and enlarged on appeal, in fed-
eral practice, 264.
may issue against all persons connected with infringing corpora-
tion, 144.
no contempt in violation of, where stayed by appeal, 271.
refused owner of registered mark containing false representa-
tion, 338.
preliminary refused where defendant solvent, and injury may be
repaired by money judgment, 260, n. 2.
right to, not lost by laches or acquiescence, 122.
value of interlocutory decree in another case, 270.
preliminary weight of former adjudications concerning plaintiflF's
title, upon, 261.
when warranted by evidence of single infringement, 267.
will lie against registrant by one having prior right, 338.
INOPERATIVE DEFENSES (see Defenses) —
that the mark has become indicative of quality through extensive
sales, 76, 85.
"INSECTINE" (insect powder), 70.
INSPECTION BY THE COURT —
of conflicting marks, 189.
INSPECTION —
of books and papers, 268.
"INSTANTANEOUS" (tapioca), 61.
"INSURANCE" (oil), 70.
INTENT —
distinction between trade-mark and other cases as to, 176, 177.
immaterial in action in equity, 252.
of parties as to assignment of trade-mark, 127.
INTENTION —
actual intention to adopt trade-mark necessary, 12.
INTERFERENCE —
may be declared between partner and firm, 335.
better title pi-evails, 335.
burden of proof upon applicant, 335.
nature of issues in, 335.
no appeal from, 336.
registrant under act of 1870 notified of application under act of
1881 to register similar mark, 336.
INDEX, 407
References are to pages.
INTERLOCUTORY DECREE (see Fokms) —
as evidence of rig-ht to trade-mark, 270.
decree may adjudge costs, 278.
"INTERNATIONAL BANKING CO.," 61.
INTERNATIONAL CONVENTION —
for protection of industrial property, 326, 374.
United States not a party, 380.
INTERROGATORIES —
form of, 351.
INTERSTATE COMMERCE —
present federal act does not relate to trade-marks used in, 211.
"INTIMIDAD" (cigars), 80.
"INVIGORATOR" (spring bed bottoms), 70.
"IRON BITTERS," 61.
"IRON CLAD" (boots), 70.
"IRONSTONE" (water pipe), 61.
"JOHNSON'S AMERICAN ANODYNE" (liniment), 61.
JOINDER —
of parties plaintiff, 220.
JOINT TORT-FEASOR —
liable for whole damage resulting from tort, 264.
JUDICIAL DEFINITIONS —
of good-will, 132.
of trade-mark, 2.
JUDICIAL TESTS —
of infringement, 206.
"JULIENNE," 61.
JURISDICTION— ■
of equity based on right of property in trade-mark cases, 184,
n. 1, 218.
of equity in matters of trade-secret, 157.
of federal courts in cases involving good-will, 152.
of federal courts in cases of unfair competition, 32.
of federal courts in trade-mark cases, 211. 212, 214, 236, 249.
of federal courts in trade-mark actions between citizens of same
state, 339.
where complainant an
alien, 339.
of state courts, in trade-mark cases, 217.
of state and federal courts, concurrent in trade-mark case.-, 215*
408 INDEX.
References are to pages.
K.
"KAISER" (beer), 61, 70.
"KATHAIRON" (remedy), 70.
"KEYSTONE LINE," 222.
"KID NEE KURE," 56, 61.
"KIDNEY AND LIVER " (bitters), 61.
"KING BEE " (smoking tobacco), 70.
"KING OF THE FIELD" (agricultural implements), 70.
"KITCHEN CRYSTAL" (soap), 70.
"KOFFIO" (cereal coffee), 70.
"KOKOKO"—
aboriginal, refused registration as trade-mark for cotton goods, 81.
L.
LABEL —
designed by court for defendant's direction, 106.
false, averments of bill to restrain dealing in, 251.
false, manufacture of, 253.
if containing false statements invalidates trade-mark used there-
with, 44.
LABEL MANUFACTURER —
submission of, to avoid costs, 274.
LACHES—
a bar to preliminary injunction, 122, 260.
a bar to relief against unfair competition, 32.
as a defense, 256.
as governed by statute of limitations, 124.
distinguished from acquiescence, 123.
maj' bar account, 255.
may work abandonment, 84.
no bar to injunction, 122.
none where delay is to secure evidence, 122.
"LACKAWANNA" (coal), 62.
"LA CRONICA" (newspaper), 70.
"LACTO-PEPTINE," 70, 197.
"LA FAVORITA" (flour), 70, 73, n. 17, 80.
"LAKE" (glass product), 62.
"LAMOILLE" (scythe-stones), 70.
"LA NORMA" (cigar boxes), 70.
"LA NORMANDI," 62, 239.
LECTURES—
publication of, restrained, 157.
INDEX. 409
References are to pages.
-'LEOPOLD" (cloth), 70.
"LEOPOLDSHALL," 197.
LETTERS AND NUMERALS —
whether subject to appropriation as trade-mark, 202.
protected against unfair competition, 206.
LIABILITY —
of contributory infringer, 224.
LIBEL —
charging trade-mark infringement, 33, 34.
in trade, 33.
LICENSE —
as a defense, 240.
once revoked, no defense to subsequent infringement, 259.
revocable, to use trade-mark, 222.
•'LICENSED VICTUALLERS" (relish), 70.
LICENSEE —
exclusive, must be party to action, 220, 239.
may sue for infringement, 220.
territorial, need not be joined as plaintiff, 259.
♦'LIEBIG'S EXTRACT OF MEAT." 62.
"LIEUTENANT JAMES' HORSE BLISTER," 62.
"LIGHTNING" (hay knives), 70, 197.
"LINOLEUM," 62, 76.
"LION" (merchandise), 70.
LIQUIDATED DAMAGES —
in contracts affecting good-will, 150.
LITHOGRAPHS —
improper reproduction of, restrained, 157.
"LIVERPOOL" (cloth), 70.
"LOCH KATRINE" (whiskey), 62.
"LONDON WHIFFS" (cigars), 70.
"LONE JACK" (tobacco), 70, 186.
LOSS OF SALES —
as proof of damage, 244.
how established in cases of infringement, 267
M.
"MAGIC" (scythe-stones), 71.
"MAGNETIC BALM" (ointment), 71, 77.
"MAGNOLIA" (liquor), 71.
"MAGNOLIA" (metal), 62.
410 INDEX.
References are to pages.
"MAIZENA," 71, 197.
"MALTED MILK, "62.
MANDAMUS—
does not lie to direct action of commissioner on trade-mark appli-
cations, 335.
MANUFACTURER OF FALSE LABELS —
enjoined without costs when intent not shown, 253.
MARQUE DE COMMERCE —
comprehended by our word trade-mark, 6.
MARQUE DE FABRIQUE —
comprehended by our word trade-mark, 6.
MARRIED WOMAN —
having- separate estate, liable for costs, 273.
"MARSHALL'S CELEBRATED" (liniment), 62.
"MARVEL" (mill products), 71.
"MARYLAND CLUB RYE," 62, 197.
"MASONIC" (cigars), 62.
"MASON'S PATENT" (jars), 49.
MASTER AND SERVANT —
implied contract not to disclose trade secret, 156.
MATERIAL —
not registrable as trade-mark, 329.
"MATZOON" (fermented milk), 62, 81, 82. "
"MAZAWATTEE" (tea), 80.
MEASURE OF DAMAGES —
in actions for invasion of good-will, 149, 150.
"MECHANICS' STORE," 197.
"MEDICATED MEXICAN BALM" (medicine), 71.
"MEDICATED PRUNES" (medicine), 62.
"MENLO PARK" (watches), 71.
MERCHANDISE —
of substantially the same descriptive properties, 337.
"METALLIC CLINTON" (paint), 62.
"MICROBE KILLER," 62.
MINOR DIFFERENCES —
of form and dress, no defense, 208, n. 6.
MISREPRESENTATION —
as to size of package, when package is ordinary size knov/n to
the trade, 259.
collateral, 259.
MISSPELLING —
generic word does not make trade-mark, 56.
INDEX. 411
References are to pages.
MISTAKE —
in registration by a partner, creates a trust, 220.
MODE OF APPLICATION —
mvist be stated in application for registration, 330.
MODERN FOREIGN LANGUAGES—
words taken from, as trade-marks, 79, 80.
"MO JAVA, "71, 197.
"MOLINE" (plows), 62.
MONEYS, STOCK IN TRADE, DEBTS, EFFECTS AND
THINGS —
includes good-will, 139.
"MONTSERRAT" (lime juice), 62.
'♦MORSE'S COMPOUND SYRUP OF YELLOW DOCK ROOT,"
197.
MORTGAGE—
of assets of business does not necessarily include good-will, 139.
MORTGAGEE—
lien of, upon infringing goods, 224.
"MOTTLED GERMAN SOAP," 197.
"MOXIE NERVE FOOD," 198.
"MOUNT VERNON RYE," 172.
N.
NAME —
of celebrity, refused registration when also geographical name,
92, n. 1.
of defendant, added to mark, circumstance in his favor, 202.
of secret preparation, 153.
NAME OF PATENTED ARTICLE —
made publici juris by expiration of patent, 76, 85.
protected from unfair competition after expiration oi patent, 86.
NAMES—
christian, of applicants for registration should be given, 328.
"NAPOLEON" (cigars), 71.
"NATIONAL SPERM" (candles), 62,
"NATIVE GUANO" (fertilizer), 6?.
"NE PLUS ULTRA," 79.
"NEW ERA" (newspaper), 71.
"NEW MANNY" (harvester), 62.
NEWSPAPER—
good-will of, 133.
infringement of name of, 25.
412
INDEX.
References are to pages.
"NEW YORK" (g-lass products), 62.
•'NICKEL" (soap), 71.
"NICKEL-IN" (cigars), 71, 198.
NOMINAL DAMAGES —
in actions at law, 244.
NOTICE —
before suit, inadvisable, 273.
defendant not entitled to, 253. *
want of, no defense, 258.
"NO-TO-BAC" (medicine), 71, 200.
"NOURISHING LONDON" (stout), 62.
NUMERALS—
as trade-marks, 202.
o.
OFFICIAL BRAND —
not a trade-mark, 323, n. 3.
"OLD BOURBON "(whiskey), 63.
"OLD CROW," 71, 198.
"OLD INNISHOWEN" (whiskey), 63.
"OLD LONDON DOCK" (gin), 63.
"OLIVE" (bicycles), 63.
"ONE NIGHT CURE," 200.
ONE'S OWN NAME —
gratuitous permission to use, may be withdrawn at will, 124.
injunction against use of, after assignment, 145.
"ONLY GENUINE"—
improperly used by one not having exclusive title, 21, 221.
"OOMOO," 81.
"ORIGIN OR OWNERSHIP"—
generally, 89.
"OSMAN" (towels), 71.
"OTAKA" (biscuit), 71.
OWNERSHIP —
a prerequisite to registration, 323, 325, n. 4.
P.
PACKAGES—
empty, restraint of competitor from buying, 180.
fraudulent, liability of dealer in, 224.
protection in use of, 167, 169.
INDEX. 413
References are to pages.
PACKING —
method of, not trade-mark, 167.
"PAIN-KILLER" (medicine), 71.
"PARABOLA" (needles), 71.
"PARAFFIN" (oil), 63.
"PARSON'S PURGATIVE" (pills), 63.
PARTIES DEFENDANT, 221.
PARTIES PLAINTIFF —
must include exclusive licensee, 220.
where trade-mark is incident to realty, 221.
who may be, 220.
PARTNER—
when trustee of mark for firm's benefit, 220.
PARTNERSHIP —
administration of partnership estate, 148.
agreements upon dissolution, 144, n. 3.
good-will of, 147.
injunction by withdrawing partner against use of firm name, 141.
one not a partner cannot secure registration of mark, 331.
rights of partners in trade-marks on dissolution, 16, 221.
sale of good-will on dissolution conveys trade-marks without
special mention, 17.
trade-marks of individuals merged in partnership property, 19.
"PASSING OFF"—
the English equivalent of unfair competition, 31.
PATENT—
action for infringement of, properly joined with charge of trade-
mark infringement, 225.
improperly joined with charge of un-
fair competition, 250, n. 3.
expiration of, in one country may render mRrk puhlici juris without
affecting its validity elsewhere, 11.
PATENTED ARTICLE —
registration refused name of or mark for, 324.
trade-mark right in name applied to, 51, 52.
"PATENT," "PATENTED," "PATENTEE" —
unauthorized use of words, 49, 252.
"PATENT PLUMBAGO CRUCIBLES," 50.
"PATENT SOLID-HEADED. PINS," 53.
"PATENT THREAD," 53.
"PECTORINE" (medicine), 71.
PENAL LAWS, 230.
"PERFECT FACE PASTE." 63.
414 INDEX.
Beferences are to pages.
PERIODICAL —
infringement of name of, 25.
titles of, as trade-marks, 117.
"PERSIAN" (thread), 71.
PERSONAL REPRESENTATIVE—
good-will goes to, 144.
"PESSENDEDE" (watches), 83.
"PHILADELPHIA" (beer), 63.
PHILIPPINES —
protection of registered trade-marks in, 340, 341, 342.
PHOTOGRAPHS—
improper reproduction of, restrained, 157.
"PIGS IN CLOVER" (puzzle), 71.
"PILE LECLANCHA," 260.
PLEA —
cannot reach defects upon face of bill, 255.
in avoidance of discovery, 269.
PLEADING—
as to user of trade-marks in foreign commerce in -federal cases, 215.
in the action at law, 235,
jurisdictional facts in proceedings in federal courts, 216.
tendency of mark to deceive, 219.
"POCAHONTAS" (coal), 63, 71.
"POROUS" (plasters), 63.
"PORTLAND" (stoves), 71, 198.
PORTO RICO —
protection of registered trade-marks in, 340, 341, 342.
PORTRAIT —
unauthorized publication of, 163, 165.
"POST OFFICE" (directory), 63.
PRAYER FOR RELIEF —
in bill in equity, 250.
PRELIMINARY INJUNCTION (see Injunction, Preliminary)—
denied because of laches, 122.
not granted on ex parte affidavits except in a clear case, 272.
PREMISES, STOCK IN TRADE, ETC.—
good-will not included in, 139.
PRESUMPTIONS —
none in favor of federal jurisdiction, 216.
"PRIDE," 71, 198.
"PRIDE OF ROME, "198.
"PRIME LEAF" (lard), 63.
INDEX. . 416
Beferences are to pages.
PRINCIPAL —
liable for infringement by agent, 223.
PRINTS AND LABELS (see Forms; Statutes, Prints and
Labels) —
adverse decision, appeal from, 314.
advertisement, when considered a print, 314.
appeal to commissioner, 314.
application:
for renewal, 315.
requisites of, 315,
articles of manufacture, definition of the words, 315.
attachment to or impress on the article of manufacture required
in labels, 314.
certificate of registration:
renewal of, 315.
signature to, etc., 315.
commissioner, appeal to, 314.
contents of the packages to be indicated by the label, 315.
copies of print or label, filing of, 315.
decisions pertaining to registry of labels, 315.
directions for use to be indicated by the label, 315.
duration of term of registration, 315.
examiner, appeal from decision of, 314.
fees, 312, 315.
label, definition of the word, 314.
name of the manufacturer to be indicated by the label, 314.
not classified in patent office, 372.
novelty not prerequisite to registration, 314.
pertinence to the article of manufacture required in prints, 314.
place of manufacture to be indicated by the label, 315.
print, definition of the word, 314.
proprietor or agent should sign the ^ipplication, 315.
quality of the goods to be indicated by the label, 315.
registration, proceedings upon, 315.
renewal of certificate of registration, 315.
restrictions on registration, 315.
revenue stamp to be affixed to certificate of registration, 315.
term of registration, 315.
PRINTER —
of fraudulent labels, 179.
proof of intent of, 179, n. 4.
PRIORITY OF APPROPRIATION —
generally, 42, 43.
PRIOR RIGHT —
burden of proving, 128, n. 6.
416 INDEX.
References are to pages.
PRIOR USE —
controls even as against registrant, 338.
no defense, unless on same class, 257.
void because accompanied by false representions, no defense, 257;
PRIVACY —
right of, 160.
PRIVATE LETTERS —
publication of, restrained, 157.
"PRIZE MEDAL, "63.
PROBABILITY OF DECEPTION —
as test of infringement, 181.
in unfair competition cases, 175.
PROFITS —
and damages may be recovered in equity, 263.
made by sale of infringing article may be recovered, 263.
plaintiff not limited to profits due to use of mark, 263.
PROPER NAME—
assignment of, cannot be re-assigned, 148, n. 2.
cannot be assigned for fraudulent use in competition, 108, 114o
cannot be registered under act of March 3, 1881, 340.
cannot be technical trade-mark, 29, 55, 100.
defendant using his own in good faith, 105.
defendant using, in manner calculated to deceive, 106.
not trade-marks because generic, 55, 101, n. 3.
of first ow^ner of mark being included in mark does not render it
unassignable, 15.
the right to assume, 102.
the use of one's own name, 102.
PROPERTY, CREDITS AND EFFECTS —
good-will not included in, 139.
PUBLICI JURIS —
test of whether word has become, 128.
that mark has become, as a defense, 239.
"PUDDINE," 71, 200.
PUFFING —
harmless misrepresentation, 259.
PUNITIVE DAMAGES —
allowed where no actual damage proven, 243, n. 3.
cannot be assessed in equity, 250, 264.
in actions at law, 238, 241, 242.
PURCHASER —
degree of care of, 183.
"PURITY" (oleomargarine), 63.
INDEX. 417
R^erences are to pages.
Q.
QUACK MEDICINES —
trade-marks applied to, are not protected, 46, 154.
"QUALITY"—
defined, 73, n. 17.
(inferiority or superiority) of infringing goods immaterial, 176.
R.
"RALEIGH," 92.
REAL-ESTATE DEALER —
mark used by, not a trade-mark, 323, n. 3.
"RED CROSS PLASTERS," 195.
"RED" (snuff), 63.
REFEREE—
reluctance to disturb findings of, in contempt cases, 270.
REFILLING —
burden of proof in cases of, 191, 267.
enjoined even when done at customer's request, 190.
packages with spurious goods, 180, 190.
REGISTRATION (see Forms; Statutes: Act of 1881; Trade-
mark Rules of Patent Office) —
advantages of, 237.
a prerequisite to trade-mark right under English statute, 9.
application for should show length of user on each class of goods
for which registration sought, 372.
as evidence of extent of registrant's claim, 329.
by aliens, 10.
by one partner through mistake, 220.
cannot validate mark otherwise invalid, 40.
certificate will not issue to assignee, 323, n. 3.
citizenship of applicant immaterial, 328, n. 4.
class of goods must be stated, 186.
date of adoption stated in application not conclusive, 331.
defense that it does not make valid trade-mark of mark common
to the trade, 239 .
description of essential features, 329.
does not preclude third party, 213.
doubts as to conflict resolved against applicant, 332.
features of mark not included in, abandoned, 131.
federal, advantages of, 212.
function of commissioner in applications for, as to title, 212, n. 4.
granted only for class in which mark is actually used, 328, n. 5.
granted onl}' to valid trade-marks, 325, 327, n. 1.
in color, 172.
418 INDEX.
Eeferences are to pages.
REGISTRATION (continued) —
is record of adoption of trade-mark, 40.
limits registrant to matter claimed, 213.
mode of application must be stated, 330.
must be pleaded, 237.
no institution of suit for trade-mark infringement without, under
English act, 210.
not a grant of right or privilege, 213.
not a means of acquiring trade-mark, 40.
not conclusive as to right to trade-mark, 337.
not granted for use on "fancy goods, ".SZS.
of corporate names, 333.
of defendant's mark, not a defense, 256.
of name of celebrity, 165.
of name of or mark for patented article, refused, 324.
of mark common to trade, 337.
of mark of voluntary association of manufacturers, refused, 323.
of partnership mark, granted only on application of partner, 331.
of trade-mark, does not cure objection of its being colorable imita-
tion of another mark, 240.
one, may cover all classes of goods on which mark is used, 372.
only prima facie evidence of ownership, 212.
ownership a prerequisite, 323, n. 3.
pleading form of, 344.
refused coat-of-arms of state or United States, 332.
refused descriptive words reproduced in letters from foreign lan-
guage, 84.
refused form, material and color, 329.
refused generic words, 83.
refused geographical names, 92, n. 1.
refused picture and word not true alternatives, 329, 332.
refused proper and geographical names joined, 333.
right to, not concluded by registrability inforeign country, 325, n.l.
single, may cover all classes of goods on which mark is used, 329.
state, 217, 218.
the invalid federal statutes, 210.
under English statute constructive user of trade-mark, 38.
use of fac-similes in, 330.
validity of present federal statute, 212, n. 1.
value of, 327.
when refused, fee not refunded, 331.
RELIEF—
in equity, 250.
REMOVAL OF BUSINESS —
to plaintiff's locality, as proof of fraud, 189.
RES ADJUDICATA—
none created by decision of court of foreign country, 260.
INDEX. 419
References are to pages.
RESCISSION —
of contract for sale of g-ood-will, for vendor's fraud, 151.
RESEMBLANCE—
inspection by court as test of, 219.
need not be such as to deceive purchasers having opportunity of
comparison, 219.
RESTRAINT OF TRADE —
contract relating to trade secret is not in, 153, 156.
in sale of good-will, 142.
RETAIL DEALER —
costs may not be imposed against, 253, 276.
REVIVAL—
of action against deceased infringer's representative, 221.
"RICHARDSON'S PATENT UNION" (machine), 63.
"RISING SUN" (stove polish), 71.
"ROBERT'S PARABOLA GOLD-BURNISHED SHARPS," 198.
"ROGER WILLIAMS" (cloth), 72, 101.
"ROSE " (vanilla extract), 63.
"ROSEBUD" (canned salmon), 72.
"ROSENDALE " (cement), 63.
"ROYAL" (baking powder), 72.
"ROYAL BLUE" (carpet sweeper), 72.
"ROY WATCH CASE CO.," 198.
"RYE AND ROCK" (liquor), 63.
S.
"SAFETY" (powder), 63.
SALE —
of business, conveys trade-marks used therein, 15.
of trade-marks, 12.
SALES—
evidence of extent of, 245.
"SANITARY" (filter), 63.
"SANITAS," 79, 198.
"SAPOLIO" (scouring brick), 72.
"SAPONIFIER" (concentrated lye), 72.
"SAPPOTA TOLU,"201.
"SARSAPARILLA AND IRON," 63.
"SATININE" (starch and soap), 64.
"SATIN POLISH" (boots and shoes), 64.
"SAWYER'S CRYSTAL BLUE AND SAFETY BOX," 198.
420 INDEX.
Beferences are to pages.
"S. B.,"200.
"SCHIEDAM SCHNAPPS, " 64.
SCIENTER, 176.
SEARCH-WARRANTS —
under local statutes, 231.
SECTION 3449, R. S. U. S., 228.
SECRET —
in trade, 153.
SECRET PREPARATION —
name of, as trade-mark, 153.
"SELECTED SHORE" (mackerel), 64.
SELECTORS—
of merchandise, may have trade-marks, 37.
"SEFTON" (cloth), 72,
"SELF-WASHER" (soap), 87.
SERVANT —
liable for infringement, 223.
"SINGER" (sewing machines), 64, 76.
SHAPE—
infringement of, restrained, 30.
"SHAWKNIT," 72, 198.
SHERMAN ANTI-TRUST ACT —
claim for damages under, cannot be joined with bill to restrain
unfair competition, 251.
"SHREWSBURY,MARSHALL& CO. PATENT THREAD," 198.
"SILVER GROVE" (whisky), 72.
SINGLE SALE —
when sufficient to secure injunction, 267.
"SIR J. CLARK'S CONSUMPTION PILLS," 252.
"SIX LITTLE TAILORS," 72, 198.
SIZE —
imitation of, restrained, 30.
no trade-mark in, 167.
SLANDER —
in trade, 33, 35.
of title to trade-mark, 35.
"SLATE ROOFING" (paint), 72.
"SLICED ANIMALS" (toys), 72.
"SPLENDID" (flour), 64.
"SOCIAL REGISTER" (directory), 72.
"SOMATOSE" (meat extract), 64, 79, n. 7.
INDEX. 421
Beferences are to pages.
"SOUTHERN COMPANY, ST. LOUIS," 198.
"SOROSIS," 198.
"SNOWFLAKE" (crackers), 64.
SPANISH LAWS —
trade-mark rights secured under, in Cuba, Porto Rico and the
Philippines, 341.
SPECIFIC PERFORMANCE —
of contract for s£ile of good-will, 137.
"STANDARD A" (cigars), 64.
"STAR," 72, 198, 201.
"STARK," 198.
"STATE PENAL LAWS," 230.
STATE REGISTRATION—
advantages of, 217.
STATUTE OF FRAUDS —
agreement not to engage in rival business does not come vvithin,
143.
STATUTE OF LIMITATIONS —
in cases of laches, 124.
STATUTES : ACT OF MARCH 3, 1881 (see also Acts of 1870,
1876, 1881 and 1882)—
action :
by commissioner on application (sec. 3), 332.
for damages (sees. 7, 9), 337, 338.
for an injunction (sec. 7), 337.
jurisdiction of United States courts in an (sec. 7), 337.
when barred (sec. 8), 338.
appellate jurisdiction of United States courts (sec. 7), 337.
applicant:
citizenship of, to be recited (sec. 1), 323.
domicile of, to be recited (sec. 1), 323.
name of, not registrable (sec. 3), 332.
name of, to be specified in the application (sec. 1), 323.
statement of, to recite what (sec. 1), 323.
application:
action on same by the commissioner (sec. 3), 332.
conflicting with another (sec. 3), 332.
length of time of use of mark, to be recited in (sec. 1), 323.
must be accompanied by a written declaration (sec 2), 331.
must recite what (sec. 1), 323.
time of receipt of, to be recorded (sec. 3) , 332.
article:
if injurious, an action for damages or injunction is barred
(sec. 8), 338.
422 INDEX.
Beferences are to pages.
STATUTES: ACT OF MARCH 3, 1881 (continued)—
article (continued):
not manufactured in this country, term of registration for
(sec. 5), 336.
assignment, commissioner to prescribe forms and rules for (sec.
12), 339.
bars:
to an action for damages or injunction (sees. 8, 11), 338.
to registration (sees. 1, 2, 3), 323-332.
business, if unlawful, bars an action for damages or injunction,
(sec. 8), 338.
certificates of registration:
how and when issued (sees. 4, 13), 336, 339.
use of same in courts as evidence (sec. 4), 336.
citizenship of applicant:
as affecting the right to register (sec. 1), 323.
to be specified in the application (sec. 1), 323.
claim, presumptive lawfulness of, to be decided by the commis-
sioner (sec. 3), 332.
class of merchandise to be recited in the application (sec. 1), 323.
commerce with foreign nations or Indian tribes, use of trade-mark
in, necessary to registration (sees. 1, 2, 3), 323-332.
commissioner :
action on application (sec. 3), 332.
to decide presumptive lawfulness of claim (sec. 3), 332.
to prescribe regulations for registration (sec. 1), 323.
to prescribe rules and forms for assignments and transfers,
(sec. 12), 339.
to sign certificates of registration (sec. 4), 336.
common law and equitable rights:
not abridged by expiration of term of certificate (sec. 11), 338.
not abridged by statute (sec. 10), 338.
compensation, registrant aggrieved may recover (sec. 7), 337.
conflicting applications (sec. 3), 332.
confusion of the public mind by similarity of marks bars regis-
tration (sec. 3), 332.
convention with a foreign power as conferring the right to reg-
ister (sec. 3), 332.
copies:
of printed specifications to be kept of record (sec. 4), 336.
under official seal to be evidence (sec. 4), 336.
copying and using registered trade-mark, damages for (sec. 7),
337.
counterfeiting, damages for (sec. 7), 337.
courts of equity, practice to be followed in office action on con-
flicting applications (sec. 3), 332.
courts of the United States, jurisdiction of (sec. 7), 337.
INDEX. 423
References are to pages.
STATUTES: ACT OF MARCH 3, 1881 (continued) —
damages :
action for, when barred (sec. 8), 338.
forafiBxing-fraudulent trade-mark to merchandise (sec. 7), 337.
for false or fraudulent registration (sec. 9), 338.
for wrongful use of registered trade-mark (sec. 7), 337.
deceit of the public:
action to defend trade-mark so used, not maintainable (sec. 8),
338.
by similarities in marks, bars registration (sees. 2, 3), 331,
332.
declaration:
must be in writing (sec. 2), 331.
must be verified by whom (sec. 2), 331.
must contain what (sec. 2), 331.
when false or fraudulent, damages for (sec. 9), 338.
with a foreign power, as conferring the right to register (sec. 3),
332.
description:
must truly represent the mark (sec. 2), 331.
of the goods required (sec. 1), 323.
of the mark required (sec. 1), 323.
domicile of applicant must be recited in the application (sec. 1),
323.
duration of certificate (sec. S), 336.
equitable rights not affected by statute, or expiration of term
(sees. 10, 11), 338.
equity:
aggrieved registrant may resort to (sec. 7), 337.
courts of, practice followed in interference cases (sec. 3), 332.
evidence:
copies under seal to be received as (sec. 4), 336.
of ownership, registration to he prima facie (sec. 7), 337.
of registry (sec. 4), 336.
expiration of term of certificate does not abridge common-law or
equitable rights (sec. 11), 338.
facsimiles:
of trade-marks to be filed (sec. 1), 323.
presented, must truly represent the mark (sec. 2), 331.
false registration, damages for (sec. 9), 338.
fees:
for registry, and how payable (sec. 1), 323.
formerly paid with intent to procure registration (sec. 6), 337.
foreign countries, residents of may register when (sees. 1, 3), 323-
332.
foreign nations or Indian tribes, trade-marks used in commerce
with, alone registrable (sees. 1, 2, 3), 323-332.
424 INDEX.
References are to pages.
STATUTES: ACT OF MARCH 3, 1881 (continued) —
foreign power, convention with, as conferring right of registra-
tion (sec. 3), 332.
former rights and remedies preserved (sec. 10), 338.
forms for assignments to be prescribed by commissioner (sec. 12),
. 339.
fraud in obtaining registration bars an action (sec. 8), 338.
fraudulent:
declaration and registration, damages for (sec. 9), 338.
trade-mark, damages for affixing same to merchandise (sec. 7),
337.
goods, particular description of same, to be recited (sec. 1),
323.
identity with other trade-marks, bars registration when (sees. 2,
3), 331, 332.
imitation of registered trade-mark, penalty for (sec. 7), 337.
Indian tribes or foreign nations, trade-marks used in commerce
with, alone registrable (sees. 1, 2, 3), 323-332.
infringement, remedy for (sec. 7), 337.
injunction:
action for, when barred (sec. 8), 338.
against the wrongful use of a registered trade-mark (sec. 7),
337.
interference practice, to follow the rules of United States courts
of equity (sec. 3), 332.
issue of certificates of registration (sec. 4), 336.
jurisdiction, original and appellate, of United States courts(sec. 7),
337.
lawfulness of claim to trade-mark to be decided by commissioner
(sec. 3), 332.
length of time of use of mark to be recited (sec. 1), 323.
location of applicant to be specified (sec. 1), 323.
manufacture of articles abroad, registration for (sec. 5), 336.
merchandise, class of to be recited (sec. 1), 323.
mistake or confusion in the public mind, caused by similarity of
trade-marks, bars registration (sec. 3), 332.
mode of affixing, to be recited (sec. 1), 323.
name of applicant:
not registrable (sec. 3), 332.
to be specified in the application (sec. 1), 323.
oath to declaration, how and by whom made (sec. 2), 331.
ownership, registration to be prima facie evidence of (sec. 7), 337.
penalty:
for false or fraudulent registration (sec. 9), 338.
for imitation of trade-mark (sec. 7), 337.
printed copies of specification to be kept of record (sec. 4), 336.
receipt of application, time of to be recorded (sec. 3), 332.
INDEX. 425
References are to pages.
STATUTES: ACT OP^ MARCH 3, 1881 (continued) —
recording:
of time of receipt of application (sec. 3), 332.
of transfers of right of use (sec. 12), 339.
records of trade-marks, statements, declarations, etc., to be
kept (sec. 4), 336.
registration:
as a condition precedent to registration abroad (sec. 13), 339.
authorized when (sec. 1), 323.
bars to (sees. 1, 2, 3), 323-332,
by residents of foreign countries (sees. 1, 3), 323, 332.
certificates of, how and when issued (sees. 4, 13), 336, 339.
certificates of, use of same in courts as evidence (sec. 4), 336.
expiration of term of, does not abridge common-law or equi-
table rights (sec. 11), 338.
fee for (sees. 1, 6), 323, 337.
how eflfected (sec. 1), 323.
marks not registrable (sec. 5), 336.
obtained by false or fradulent representations, damages for
(sec. 9), 338.
records of, to be kept (sec. 4), 336,
renewal of, can be made when (sec. 5), 336.
restricted to marks used in foreign or Indian commerce (sees.
1, 2, 3), 323-332.
right to, as affected by citizenship of applicant (sec. 1), 323.
right to, as conferred by treaty, convention, or declaration
with a foreign power (sec. 3), 332.
right of action secured thereby (sec. 7), 337.
rules for, to be prescribed by the commissioner (sec. 1), 323.
to he prima facie evidence of ownership (sec. 7), 337.
use in foreign and Indian commerce a prerequisite to (sees. 1,
2, 3), 323-332.
regulations and rules to be prescribed by the commissioner (sees.
1, 12), 323, 339.
remedy for infringement (sec. 7), 337.
renewal of registration (sec. 5), 336.
reproduction and use of registered trade-mark, penalty for (sec. 7),
337.
resemblance to other marks must be avoided (sees. 2, 3), 331-332.
restrictions:
on actions for damages or an injunction (sec. 8), 338.
on actions for infringement (sees. 8, 11), 338.
on registration (sees. 1, 2, 3), 323-332.
right to use the mark must belong exclusively to the applicant
(sec. 2), 331.
rights at common law and equity not abridged:
by expiration of the term of registration (sec. 11), 338.
by the enactment of the statute (sec. 10), 338.
426 INDEX.
References are to pages.
STATUTES: ACT OF MARCH 3, 1881 (continued) —
rules and regulations, to be prescribed by the commissioner (sees.
1, 12), 323, 339.
similarity to other marks bars registration, when (sees. 2, 3), 331-
332.
specifications, printed copies of, to be kept of record (sec. 4), 336.
statement of applicant:
to recite what (sec. 1), 323.
recording of (sec. 4), 336.
terms of registration:
duration of (sec. S), 336.
expiration of, does not abridge common-law or equitable
rights (sec. 10), 338.
limitation of (sec. 5), 336.
renewal of (sec. 5), 336.
time of receipt of application to be recorded (sec. 3), 332.
of use to be recited (sec. 1), 323.
transfers of the right of use, how regulated (sec. 12), 339.
treasury department, deposit of trade-mark in, 298.
treaties as conferring the right of registration (sec. 3), 332.
United States:
citizens of, may obtain registration, when (sec. 1), 323.
courts of, to have jurisdiction, when (sec. 7), 337.
use:
if an unlawful business, bars an action (sec. 8), 338.
if wrongful, common-law and equitable rights unimpaired,
(sec. 10), 338.
if wrongful or unlawful, bars registration (sec. 3), 332.
length of time of, to be recited (sec. 1), 323.
right of, must be exclusive in the applicant (sec. 2), 331.
right of, transfers of (sec. 12), 339.
unlawful, of trade-mark, damages or injunction (sec. 7), 337.
verification of declaration, how and by whom made (sec. 2),
331.
STATUTES: PRINTS AND LABELS —
art, works of, not registrable (sec. 3), 312.
commissioner:
jurisdiction as to registration (sec. 3), 312.
to sign and seal the copy of record of registration (sec. 3), 312.
copyright law, application to registry of prints and labels (sec. 3),
312.
cut, the word construed as meaning what (sec. 3), 312.
engraving, the word construed as meaning what (sec. 3), 312.
fees for registration (sec. 3), 312.
fine arts, registry not allowed to illustrations or works connected
with (sec. 3), 312.
illustrations, when registrable (sec. 3), 312.
labels, registration of (sec. 3), 312.
INDEX. 427
References are to pages.
STATUTES: PRINTS AND LABELS (continued) —
law of copyright, application of to registry of prints and labels
(sec. 3), 312.
pictorial illustrations, when registrable (sec. 3), 312.
print, the word construed as meaning what (sec. 3), 312.
prints, registration of (sec. 3), 312.
record of registration, copy of, fee for (sec. 3), 312.
registration, provisions as to (sec. 3), 312.
works of art, not registrable (sec. 3), 312. -
STATUTES—
registration under English statute refused in the absence of
intention to malie actual user, 12, n. 3.
"STEEL SHOD" (shoes), 64.
"STEINWAY," 199.
"STEPHENS," 199.
"ST. JAMES," (newspaper, etc.), 72.
"STOCK BELONGING TO THE PARTNERSHIP" —
includes good-will, 139.
"STOCK IN TRADE AND EFFECTS" —
good-will not included in, 139.
"STONE ALES"—
case, 95.
"STRAIGHT CUT" (cigarettes), 64.
"STUART'S DYSPEPSIA TABLETS," 199.
SUBMISSION—
to avoid costs, 274.
must be complete, 274, 275.
may be made at any stage of the case, 274.
by others as evidence of right to trade-mark, 269.
offer of on conditions, insufficient, 275.
"SUBSTITUTION"—
defined, 192.
"SUCCESSOR TO"—
right of purchaser of business to advertise as, 141.
SUITS IN EQUITY —
for invasion of good-will, 149.
"SUNLIGHT" (soap), 72, 199.
"SVENSKA SNUSMAGANISET," 64.
"SWAN," 199.
"SWAN DOWN" (complexion powder), 72.
"SWEET CAPORAL" (cigarettes), 72.
"SWEET LOTOS" (tobacco), 64.
428 INDEX.
References are to pages.
"SWEET OPOPONAX OF MEXICO" (perfume), 72.
"SWING" (scj'the-sockets), 64.
SYMBOL —
may be infringed by, or infringe, a word, 199.
SYPHONS—
acts to protect, 231.
"SYRUP OF RED SPRUCE GUM" (medicine), 72.
T.
"TAFFY TOLU" (chewing gum), 64.
"TAMAR INDIEN" (lozenges), 73, 80.
"TASTELESS" (drugs), 64.
TERRITORIAL LIMITATION —
may result in particular country from expiration of local patent,
without affecting right elsewhere, 11.
none as applied to trade-marks, 10, 11.
TESTS OF INFRINGEMENT, 181.
"THE DEMON," 195.
"THE GOOD THINGS OF LIFE " (periodical), 73.
"THE NILE" (playing cards), 73.
"THOMSONIAN " (medicines), 64.
"THOMSON'S GLOVE-FITTING CORSETS," 145.
"TIDAL WAVE" (tobacco), 73.
"TIME-KEEPER" (watches), 64, 332.
TIN TAG —
not a trade-mark, 167.
fraudulent imitation of, enjoined, 167.
TITLE —
former adjudication establishing, conclusive on application for
preliminary injunction, 261.
registration only prima facie evidence of, 213.
"TIVOLI" (beer), 73.
"TOD" (watches), 80.
"TONGE'S," 199.
TRADE SLANDER AND LIBEL, 33.
slander or libel not actionable in absence of proof of special dam-
age, 35.
TRADE-MARK —
abandonment of, 125, 126.
acquisition of, generally, 36.
alien cannot have, as against a citizen making prior adoption in
good faith, 11.
INDEX. 429
Beferences are to pages.
TRADE-MARK (continued) —
analogy of to good-will, 16.
assignment by implication, 127.
cannot exist "in gross;" must be "appendant," 11.
can only be assigned with good-will, 41.
counterfeiting, 180.
courts not critical of, where fraudulent competition exists, 255.
defined, 2.
dependent on priority of appropriation, 42, 43.
distinguished from patents and copyrights, 7.
does not become publici juris through extensive sales, 76.
does not imply registration, in England, 51.
earliest recognition of, 4.
evolution of the law of, 6.
function of, defined, 7.
imitation of, may be limited or partial, 166.
includes the French marque defabrique and marque de commerce, 6.
in initials, 205.
in name of secret preparation, 153.
inseparable from business, 126.
inseparable from good-will, 13, 138.
in titles of books, 115.
in title of periodical, 117.
invalidated by dishonest label, 44.
is an assurance of quality, 73.
letters and numerals as, 202, 203.
may be a word in common use, when, 56.
may be purely fanciful, 7, n. 4.
may be registered for all classes of goods on which actually
used, 329.
may consist of word from dead language, 79.
may indicate natural product, 8.
may pass by implication as incident to realty, 22.
mode of affixing, immaterial, 3, 39.
must be distinctive, 2.
must be meaningless, 47.
must be truthful, 44.
need not indicate manufacturer or place of manufacture, 8.
none in name of patented article after expiration of patent, 76,
85.
no right of, in form, size or color, 167.
no right of, in necessary n.ame of product, 76.
not acquired by registration, 40.
not defined by acts of 1870 and 1881, 327, n. 1.
of partnership, passes with sale of good-will, 17.
perpetual existence of, 10.
proper names cannot constitute, 29.
430 INDEX.
Beferences are to pages.
TRADE-MARK (continued)—
registry indispensable to right to sue under English trade-mark
act, 210.
reproduction of, proof of fraudulent intent, 177.
requisites of valid, 9.
right acquired only by adoption and actual use, 12.
right of, in word applied to patented article during life of the
patent, 51.
where use of mark antedates patent, 52.
right to, a common law right, 8.
right to, a right of property, 6, n. 3 ; 8.
right to, may be common to several owners, 21.
right to, secured under Spanish laws, protected in territory under
military government of United States, 341.
territorial rights to, cannot be conveyed, 9, 11.
the law of, but part of law of unfair trade, 1.
unlawful to apply to manufacturer's product to which he does not
intend its application, 191.
water-mark may be, 39,
what are essential features of, 329.
words and devices common to the trade cannot be, 79.
TRADE-MARK RULES OF PATENT OFFICE —
act of 1870, rights of registrants under (rule 18), 284.
action of office to be directed to the merits (rule 31), 287.
additions to papers not permitted (rule 33), 288.
advertising stamp of attorneys not permitted on drawings (rule
28) (6), 287.
advice, letter of, to contain what (rule 22), 285.
allowance, notice of, amendments after (rule 35), 288.
amendments :
form of (rule 33), 288.
in general (rules 32-36), 287, 288.
new matter not permitted in (rule 32), 287.
not permitted after notice of allowance except when (rule 35),
288.
to amendment, form of (rule 34), 288.
to declaration, cannot be made (rule 25), 285.
to statement, when admitted (rule 32), 287.
appeal to the commissioner (rule 38), 289.
applicant:
may prosecute his own case (rule 11), 282.
should not correspond with office if he has an attorney (rule 7),
282.
applications:
are preserved in secrecy (rule 24), 285.
conflicting, practice, etc. (rule 37), 288.
examination of (rules 30, 31), 287.
indp:x. 431
References are to pages.
TRADE-MARK RULES OF PATENT OFFICE (continued) —
applications (continued):
fee on fWmg (rule 22), 285.
rejected, prior to present law (rule 18), 284.
to contain what, form of (rules 21-23), 285.
articles not manufactured in this country (rule 42), 289.
assig^nments :
fee for recording- (rule 47), 291.
orders for copies of, must give liber and page of record (rule
45), 290.
provisions regulating (rule 43), 290.
attendance of applicant in person not necessary (rule 6), 282.
attorney :
correspondence will be held with (rule 7), 282.
disbarment of (rule 16), 283.
registration of (rule 11, 282).
in general (rules 11-16), 282, 283.
stamp of, not permitted on face of a drawing (rule 28) (6), 287.
substitution of (rule 14), 283.
bars to registration (rule 20), 284.
certificate of registry:
date of (rule 41), 289.
duration of (rule 42), 289.
revenue stamp required on (rule 40), 289.
issue of (rule 39), 289.
renewal of (rule 42), 289.
certificates in general, revenue stamps required on (rule 48), 291.
charges for express, postage, etc., must be prepaid (rule 10), 282.
commissioner:
appeals and petitions to (rule 38), 289.
communications to be addressed to (rule 3), 281.
communications (see Correspondence, infra, this title),
conflicting applications, interference, patent practice to govern
in (rule 37), 288.
copies of actual trade-mark, when required from applicant (rule
27), 286.
copies of publications, price of (rule 47), 290.
corporations must recite under the laws of what state or nation
incorporated (rule 226), 285.
correspondence :
must be in writing (rule 1), 281.
decorum and courtesy required (rule 2), 281.
must be addressed to the commissioner (rule 3), 281.
checks, drafts, etc., to be drawn to the commissioner's order,
(rule 3), 281.
separate letter for each subject of inquiry required (rule 4),
282.
432 INDEX.
Beferences are to pages.
TRADE-MARK RULES OF PATENT OFFICE (continued)—
correspondence (continued):
letters relating to application should state what (rule 5), 282.
letters relating to registered marks should state what (rule S),
282.
personal attendance unnecessary (rule 6), 282.
will be held with the attorney (rule 7), 282.
double correspondence not permitted (rule 8), 282.
office cannot expound the law, etc. (rule 9), 282.
charges for postage, etc., must be prepaid (rule 10), 282.
courtesy and decorum required of applicants and attorneys ( rule2),.
281.
date of certificate of registration (rule 41), 289.
declaration:
in general (rules 22-26), 285, 286.
cannot be amended (rule 26), 286.
requisites of (rule 25), 285.
to be made before whom (rule 25), 285.
decorum required from applicants (rule 2), 281.
disbarment of attorneys (rule 16), 283.
domicile to be recited (see Statutes) (rule 22b), 285.
double correspondence not allowed (rule 8), 282.
drawing:
furnished by the office (rule 29), 287.
if unsatisfactory, actual copies of mark required (rule 27)^
286.
must not be rolled (rule 28) (6), 287.
requisites of (rule 28), 286.
duration of term of registration (rule 42), 289.
English language to be used in the application papers and as-
signments (rules 23, 43), 285, 290.
erasures by applicant not permitted (rule 33), 288.
essential features of trade-mark to be distinguished (rule 22&), 285.
examination of applications (rules 30, 31), 287.
examiner of trade-marks, original jurisdiction of, proceeding's
before (rule 30), 287.
express charges must be prepaid (rule 10), 282.
fac-simile of trade-mark:
in general (rules 22), 27-29, 285, 286, 287.
furnished by the office (rule 44), 290.
fees:
dispensed with, when paid under act of 1870 (rule 18), 284.
how paid (rules 49, 50), 291, 292.
refunded when (rule 51), 292.
schedule of (rule 47), 290.
foreign nations, to be named when (rule 20), 284.
foreigners, when entitled to register (rule 17), 283.
INDEX. 433
Beferences are to pages.
TRADE-MARK RULES OF PATENT OFFICE (continued) —
former registration, reference to same, when required (rule 18),
284.
goods, particular kind to be recited (see Statutes) (rule 22f^), 285.
Indian tribes, to be named when (rule 20), 284.
information of certain kinds not furnished (rules 9, 24), 282, 285.
insertions by applicant not permitted (rule 33), 288.
interferences, when declared, practice (rule 37), 288.
issue of certificate (rule 39), 289.
lawful trade-marks, or those used lawfully, alone registrable,
(rule 20), 284.
lenglh of time used to be recited (see Statutes) (rule 22/j), 285.
letter of advice to contain what (rule 22), 285.
letters, rules and regulations governing (see Correspondence,
supra, this title),
list of trade-marks published in the Official Gazette (rule 46), 290.
manufacture of articles in foreign countries (rule 42), 289.
merchandise, class of to be recited (see Statutes) (rule 22b), 285.
merits, office action to be directed to the (rule 31), 287.
mutilations of papers not permitted (rule 33), 288.
name of applicant not registrable (rule 20), 284.
new matter not admitted by amendment (rule 32), 287.
noticeof allowance, amendments after, when permitted (rule 35), 288.
oath, to be made before whom (rule 25), 285.
order for copies to specify what (rule 45), 290.
personal attendance by applicant unnecessary (rule 6), 282.
petitions to the commissioner (rule 38), 289.
postage must be prepaid (rule 10), 282.
power of attorney:
filing of, requisites of (rule 12), 283.
requisites of (rule 12), 283.
revocation of (rule 15), 283.
to have revenue stamp affixed (rule 13), 283.
printed copies of trade-marks furnished by the office (rule 44), 290.
priority proceedings, patent practice to govern (rule 37), 288.
publications, price of copies of (rule 47), 290.
recording assignments (rule 43), 290.
fee for (rule 47), 290.
refunding of fees (rule 51), 292.
registrants under act of 1870, rights of (rule 18), 284.
registration :
barred when (rule 20), 284.
certificate of, date, duration, etc. (rules 39-42), 289.
of attorneys (rule 11), 282.
of particular trade-marks,office cannot advise as to(rulc9),282.
renewal of (rule 42). 289.
who entitled to (rules 17-20), 283, 284.
28
l^
434 INDEX.
Beferences are to pages.
TRADE-MARK RULES OF PATENT OFFICE (continued) —
rejection of an application, office proceeding's (rule 30), 287.
remittances, how made (rule 3), 281.
renewal of certificate of registration (rule 42), 289.
repayment of money, when made (rule 51), 292.
residence of applicant required (see Statutes) (rule 22b), 285.
restrictions on registration (rule 20), 284.
return of papers lacking in courtesy and decorum (rule 2), 281.
return of application papers not allowed (rule 36), 288.
revenue stamp:
to be affixed to power of attorney, etc. (rule 13), 283.
to be affixed to certificates (rule 40), 289 (rule 48), 291.
review by commissioner of adverse decisions (rule 38), 289.
schedule of fees (rule 47), 290.
secrecy, applications preserved in (rule 24), 285.
separate letters, when required (rule 4), 282.
specification must recite what (rule 22b), 285.
statement :
may be amended (rule 32), 287.
to contain what, (rules 20, 22b), 284, 285.
substitute declaration (rule 26), 286.
substitution of attorneys (rule 14), 283.
term of registration:
duration of (rule 42), 289,
renewal of (rule 42), 289.
transfer of trade-mark rights (rule 43), 290. (See also Assign-
ments, supra, this title.)
use:
manner or mode of, to be recited (rule 20), 284.
time of, to be recited (rule 22b), 285. (See Statutes: Act of
March 3, 1881.)
verification of declaration (rule 25), 285.
weekly issue to close on Thursday (rule 41), 289.
writing, business to be transacted in (rule 1), 281.
TRADE NAMES—
generally, 103, 104, 105.
the term a misnomer, 29.
TRADE SECRET —
conveyed with good-will, 155.
defined, 153.
may be owned in severalty, 160.
may be subject of expired patent, 158.
must be unknown to others, 158.
TRADES UNION—
label of, as trade-mark, 37, 230.
"TR AFFORD," 199.
INDEX. 435
References are to pages.
TREATY—
defined, 326.
TREATIES AND CONVENTIONS —
judicial notice taken of, 265.
when deposit of foreig"n mark necessary, 331.
with foreig^n nations, enumerated, 325, n. 1.
"TRENTON," 333.
"TRILBY" (gloves), 73.
TRUSTEE —
duty of, to protect title to trade-mark, 220.
TRUSTS—
concerning titles to trade-marks, 220.
"TUCKER SPRING" (bed), 64.
"TWIN BROTHERS" (yeast), 73.
"TYCOON" (tea), 64.
U.
ULTIMATE CONSUMER —
probable deception of, as test of infringement, 182, 186.
"UNEEDA," 73, 199, 208.
UNFAIR COMPETITION (see Infringement) —
between vendor and vendee of good-will, 142.
bill in equity to enjoin, 250, n. 3.
by improper use of proper name, restrained, 105.
distinguished from trade-mark infringement, 27.
generic words protected against, 85, 86, 87, 88.
law of, includes law of trade-marks, 1, 23, 28.
relief against, based on fraud against the plaintiff and the
public, 23, 24, 26, 29.
UNION LABELS —
and other marks of trades unions, 230.
as trade-marks, 37.
infringement of, enjoined because unfair competition, 37.
"UNION METALLIC CARTRIDGE CO.," 333.
"UNITED STATES" (dental rooms), 64.
USER —
a prerequisite to acquiring trade-mark, 38.
character of, necessary, 12.
held immaterial under act of 1870, 330.
must be shown to secure registration, 331, 332.
after application filed, may be shown by supplemental petition,
331.
436 INDEX.
References are to pages.
USER (continued) —
must be actual, 252.
must be upon goods actually upon the market, 43.
originally unlawful, not cured by abandonment of mark by
owner, 43.
single instance of, sufficient to establish right to trade-mark,
38, 39.
of trade-mark, limited to indicating origin and ownership, 167.
V.
VALUE OF TRADE-MARK—
should be pleaded, in federal practice, 249.
" VALVOLINE " (lubricating oil), 64, 73.
VENUE—
how laid in action at law, 236.
VERIFICATION —
of bill in equity, 251.
"VICTORIA" (lozenges), 64.
"VIT^-ORE," 64, 199.
"VITASCOPE" (machine), 73.
"V-O" (medicine), 64.
VOLUNTARY ASSOCIATION—
registration for mark used by, refused, 323, n. 3.
"VULCAN" (matches), 73.
W.
WAIVER —
always question of fact, 123.
none without knowledge of facts, 123.
"WALTHAM" (watches), 93, n. 5.
"WAMSUTTA" (muslin), 187, 199.
WAR DEPARTMENT—
circulars relating to trade-mark protection in territory under
military control of the United States, 340, 341.
WAREHOUSEMAN—
submission of, to avoid costs, 276.
"WARREN," 199.
WATER-MARK—
may be a trade-mark, 39.
"WATER OF AYR" (stone), 65.
"WAVERLY" (bicycles), 73.
"WEBSTER'S DICTIONARY, " 65.
INDEX. 437
References are to pages.
WHARFINGERS —
handling infringing goods, given lien for charges, 276.
lien of, upon infringing goods, 224.
"WILLOUGHBY LAKE" (scythe-stones), 73, 199.
"WISTAR'S BALSAM OF WILD CHERRY," 65, 73.
"WORCESTERSHIRE" (sauce), 65.
WORD —
may be infringed by, or infringe, a symbol, 199.
WRIT OF INJUNCTION —
form of, 367.
"YALE" (locks), 65.
"YANKEE" (soap), 73, 168.
"YUCATAN" (leather), 65.
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