Affixation
A trade-mark that is not affixed to the goods for which it is registered cannot be protected in the courts.
A mark, or design, or name, that is used only in advertising is not a trade-mark but an advertising symbol. Affixation is an essential requisite of validity in trade-marks.
The trade-mark word "Simmons" is affixed on chains by stamping it in minute letters on the swivel of the chain.
The trade-mark may be written, or printed, or pasted, or stenciled, or branded, or woven, or sewed, upon the article with which it is used.
When it is not feasible to affix it to the article itself, as in case of liquids and many other commodities, the trade-mark must be affixed to the container.
Many ingenious devices are used by manufacturers in affixing trade-marks. The trade-mark "Brenlin", on Brenlin window shades, is placed upon every yard of the fabric in small perforated letters. The name appears near the selvage on each side of the goods.
The name "Aurora", applied to portieres and similar hangings, is to be found woven in the pattern of the fabric near the ends of each piece. The trade-mark blends into the pattern in such a way that it is inconspicuous, but may be readily found upon looking for it.
The London Feather Company's "London Plumes" trade-mark is cleverly affixed, being in the shape of a diminutive celluloid label, to the inside of the stem of each ostrich plume. The label is sewed on in such a manner that if it is cut out the plume falls apart.
This trade-mark is stenciled on duck sail cloth.
Makers of clothing generally affix their trade-marks to each garment in the shape of a sewed label. Manufacturers of rubber goods, such as rubber tires, water bags, etc., mold the trade-mark into the article itself. The "Lowell Duck" trade-mark, used on sail cloth, is stenciled at regular intervals on the selvage. The Corticelli kitten, which is the registered trade-mark of Corticelli Spool Silk, appears on the label at the end of each spool.
Moet & Chandon, and other champagne producers, have adopted the unique method of affixing their trade-marks to the bottom of the corks of their bottles. The trade-mark is not seen, of course, until the bottle has been opened. This method of affixation has been sustained by the courts. The logic of it is that it prevents an unscrupulous retailer from washing the label off a bottle of wine and pasting a spurious label in its place, provided the purchaser knows where to look for the trade-mark.
CHAPTER III
Advertising Characters
The main difference between a trade-mark and an "advertising character" is in the matter of affixation. A trade-mark, to be valid, must be affixed to the goods, while an advertising character is often used only in the advertisements of the product, though most advertisers use their trade-marks also in advertising.
But there is another difference. A trade-mark is inflexible. After having been once adopted and registered, it cannot be changed in design or wording. If changes are made in it, the validity of the trade-mark is vitiated proportionately. On the other hand, all kinds of changes are being constantly made in advertising characters, though advertisers are careful to preserve the main features of a character, after having adopted it, in order that it may be the touchstone of remembrance in the reader's mind.
It has occurred to various advertisers, who have been impressed by the infinite variety of pictures in advertising, that it would be a good idea for them to put some permanent pictorial feature in their advertisements. This feature—a human figure, or a decoration, or a group of figures—serves as an identifying landmark to the voyager in these weltering seas of change. With this principle established and followed year after year in all advertisements of any product, it is feasible to change the entire artistic treatment of the subject from time to time, yet still hold to the symbolic figures which connect, in the reader's mind, all the past advertising with the new series.
This line of reasoning underlies the adoption and use of advertising characters.
An "advertising character"—this is a rather crude term, but it seems to express the idea better than anything else—differs from an advertising illustration in that the character is carried on continuously in the advertising, in some form, while an illustration is dropped for something new.
Peter Henderson's famous gardener.
For example, Peter Henderson's gardener appears, and has appeared, in every advertisement of Peter Henderson's seeds for many years. In most of the Peter Henderson advertisements, the gardener is the only illustration.
The Lackawanna Railroad has used Phoebe Snow for many years in its advertisements as its star passenger on the dirtless and dustless road to Buffalo. The scheme of picturing this dainty white-clad girl in connection with the advertising of a railroad is based on a very clever idea. Railroad journeys are generally supposed to be dusty and uncomfortable; but here is an attractive young lady who does not even go to the trouble of changing her white dress when she makes a trip on the Lackawanna. The use of Phoebe Snow as an advertising symbol is suggestive of the cleanliness and comfort and safety of the road.
The Dutch boy is taken out of the trade-mark and made to do stunts.
It sometimes happens that an advertising character is a figure or a device that has been formally adopted as a trade-mark of the advertiser's product. The National Lead Company's Dutch painter boy is a device of this kind. While a trade-mark must not be changed, a human figure, used as the trade-mark, may be put into another illustration, and used separately. This has been done in the National Lead Company's advertising. Their Dutch Boy has been depicted in the act of painting a house, and in giving a lecture on paint.
The Gold Dust Twins have been engaged in laborious but joyous tasks of various kinds since about 1880. Gold Dust was first made in 1883, but the twins, not called at that time "The Gold Dust Twins" had been a house trade-mark of the N. K. Fairbank Company for two or three years before that.
The trade-mark of the Prudential Insurance Company.
One of the most widely known symbols ever used in advertising is the representation of the Rock of Gibraltar, which is a feature of the Prudential Insurance Company's advertising. There is hardly any doubt that pictures of the Rock have been printed more times in connection with the Prudential advertising than in all other forms of representation that have been issued since the art of printed illustration began.
The conception of the Victor dog, with his head inclined in a curiously suggestive listening attitude, before the mouthpiece of a phonograph, with the caption, "His Master's Voice", under the picture, is an idea that ought to rank among the productions of genius. It would be interesting to know what the Victor Talking Machine Company thinks its dog is worth.
A lady with a smile as inscrutable as that of Mono Lisa. The advertising symbol of Hubert's Malvina Cream.
Hubert's Malvina Cream advertising carries a peculiar but strikingly effective diamond-shaped device showing a woman's smiling face.
The American Bankers' Association, which issues travelers' cheques, good in every part of the world, has adopted a couple of travelers—evidently a young man and his wife on their honeymoon trip—as advertising characters. This well-groomed couple is shown, in the various advertisements, on the deck of a steamship, before the Pyramids, in a Venetian gondola, buying curios in the Orient, and in other places. Before they settle down they will have covered as many leagues as the Wandering Jew.
The Dutch Cleanser woman, in her eternal chase of dirt, is one of the best-known advertising characters in current use. This character is also the trade-mark of the product, and appears on cans of Dutch Cleanser.
It would be hard to beat this Dutch Cleanser woman as an eye-catcher. She shows motion, energy in action, and the device has an attractive simplicity.
This striking figure of a mountain climber is Peter's Chocolate Mountaineer. He has reached the summit of the Jungfrau and is waving his hand to his friends in the valley to let them know he is there, and that he is about to eat his chocolate.
An Alpine mountaineer, used as an advertising character of Peter's Chocolate, has become well-known to every magazine reader in the country. The use of this figure harmonizes with the phrase "high as the Alps in quality", which is used in the Peter's Chocolate advertising.
The advantage to be gained, in the long run, by adopting a catchy and attractive advertising character, is shown by the nation-wide popularity of the Campbell "Kids". Everybody knows them and their rippling jingles, and they have no doubt become immensely valuable to the concern that owns them.
The law of unfair competition protects an advertiser in the use of an advertising character when the character is the advertiser's own creation.
In cases where living models are used for this purpose, the advertiser should remember that a model has a right to sell his services—that is, to pose—for anybody he pleases. Some advertisers make a contract of long duration with the models they intend to use, binding them to an agreement not to pose for any other commercial purpose.
Catch-phrases used in advertising, like Ivory Soap's famous "It Floats", and Bon Ami's "Hasn't Scratched Yet" are protectable against infringement and unauthorized use by another than the owner, through the same principle of law which gives protection to a manufacturer against a competitor who has imitated his packages, labels and circulars.
An advertiser's exclusive right to a catch-phrase is conditional on its constant and persistent use by him. An intermittent use does not establish a right to use it to the exclusion of others, nor does a use of the phrase in varying forms of wording, even if the sense of it is preserved, establish such a right.
It is hardly necessary to say that an exclusive right cannot be created for a phrase that is not distinctive, such as "Your Opportunity", "Clip the Coupon", etc. The common language is free to all, and an advertiser cannot prevent others from using a phrase in their advertisements merely because he used it in his advertisements first, unless he can prove that they are using his language with the intention of misleading the public.
The Owl
And The Lamp
The owl is the symbol of wisdom—and wisdom means experience, judgment, and knowledge, combined with common-sense.
The lamp is the symbol of light and clearness of vision. Used in its figurative sense it is as old as civilization, for the ancients held the sign of a lamp to mean the power of imagination, illuminating the future.
The symbol of the owl and the lamp combined means Light leading Wisdom.
This is the advertising symbol of the J. Walter Thompson Company. For many years it has been the trade-mark of good advertising.
J. WALTER THOMPSON COMPANY
New York: 44 East 23rd Street
Boston: 201 Devonshire Street
Cincinnati: First National Bank Bldg.
St. Louis: Odd Fellows Bldg.
Chicago: The Rookery
Cleveland: Swetland Bldg.
Detroit: Trussed Concrete Bldg.
Toronto: Lumsden Bldg.
London: 33 Bedford St., Strand
A clean and bright little fellow who adorns Swift & Company's advertising.
In the case of the unauthorized use of a well-known, extensively advertised catch-phrase, this intention is virtually obvious. For example, if any soap manufacturer should begin to print the N. K. Fairbank Company's celebrated question, "Have You a little Fairy in your Home?" in his advertisements and signs, the courts would doubtless enjoin him summarily, without inquiry into his intentions. This phrase has been used so long by the N. K. Fairbank Co., and so much money has been expended in giving it publicity, that its owners have acquired a valuable property right in it.
"Money invested in advertising is as much a part of a business as if invested in buildings or machinery, and when the goods of a manufacturer have become popular, not only because of their intrinsic worth, but also by reason of the ingenious, attractive and persistent manner in which they have become advertised, the good-will thus created is entitled to protection against unfair competition." (Hilson v Foster, 80 Fed. R. 896—1897.)
This is the advertising symbol used in Swift's Wool Soap advertising. The little boy in the receding undershirt used something "Just as good".
An interesting case of one concern attempting to profit by the advertising of another, was in the courts in 1907.
Kellogg's Toasted Corn Flakes were extensively advertised in a series of "blind" advertisements in newspapers on successive days. These advertisements, which were of large size and striking in appearance, showed the picture of a woman winking, with the admonition "Wink at Your Grocer and See What You Will Get", followed by the letters "K. T. C." in large type. The idea of the advertiser was to arouse curiosity by this form of advertising, and particularly by the letters "K. T. C." After considerable advertising of this kind he had planned to announce that "K. T. C." meant "Kellogg's Toasted Corn Flakes", and that any woman might get a package of this preparation free if she would wink at her grocer.
This young couple can get cash anywhere on "A. B. A." Travelers' Cheques.
But before the final explanatory advertisements appeared, another concern selling "Cook's Flaked Rice", a similar product, caused advertisements to be printed in the same newspapers, in which they announced that "K. T. C." meant "Keep to Cook's".
"La Belle Chocolatière," the trade-mark of Walter Baker's Chocolate.
The Kellogg firm obtained an injunction against this advertising on the ground of unfair competition, in that the defendant was misappropriating the good-will created by the Kellogg Company's advertising.
The widely advertised phrase used in the Pompeian Massage Cream advertisements, "Don't envy a good complexion; use Pompeian and have one", is the result of a prize contest, in which many thousands of people tried their skill at making phrases.
The Corticelli kitten, the advertising symbol of the Nonotuck Silk Co.
The Central Railroad of New Jersey, in advertising its New York to Philadelphia service, uses a phrase that is a complete advertisement of its train service in six words. Trains leave New York for Philadelphia every hour, leaving at ten o'clock, eleven o'clock, at noon, and so on. Every train leaves exactly on the hour.
The road formerly used the phrase: "Trains every hour on the hour", and this seemed to be pretty good, but it was thought that something better might be devised. A great deal of thought was given to the subject, and as a result the phrase "Your Watch Is Your Time Table" was devised. This phrase tells the whole story. It is no longer necessary to bother with time-tables when one goes from New York to Philadelphia. Just look at your watch. To visualize this idea, the phrase is used in the advertising in connection with the pictures of a fast train and a watch.
A celebrated advertising phrase was "You press the button; we do the rest", formerly used by the Eastman Kodak Company. This sentence achieved a tremendous popularity, but it had the fundamental defect of not containing any word which would connect it closely with the Eastman Company's product. There is hardly a doubt that it was heard and used by a vast number of people who did not receive any Kodak-buying suggestion from it.
A short, incisive phrase which does not possess this defect is "O'Sullivanize Your Walk", used in the advertising of O'Sullivan's Rubber Heels. When you have a pair of O'Sullivan's Heels put on your shoes you do not merely invest in a comfort-giving device. It is a bigger transaction than that. You begin to walk like a man who means business—you have the erect and confident bearing of success—in short, you "O'Sullivanize Your Walk".
CHAPTER IV
Infringement
There is no intrinsic value in a trade-mark. Its worth in dollars is a creation, and it depends upon the successful sale, or popularity, of the commodity to which the trade-mark is applied, the distribution of this commodity, the extent to which it has been advertised, and the profit that there is in it.
Some widely-known trade-marks are worth millions of dollars, and many are valued at a hundred thousand dollars or more.
The ownership of an advertised and favorably known trade-mark is, therefore, a valuable property right. In estimating the assets of a business, its trade-mark is included under the head of Good-Will, and Good-Will is Reputation. The value of a trade-mark is the value of the reputation of the goods it represents and identifies.
A valuable trade-mark—like other valuable things—becomes, sooner or later, an object of envy on the part of those who want money without troubling themselves about the manner of getting it. Sometimes this leads to a more or less ingenious simulation of a trade-mark.
The remedy for the infringement of a registered trade-mark is covered by sections 16 to 19, inclusive, of the Act of 1905. We quote these sections of the law:
"Sec. 16. That the registration of a trade-mark under the provisions of this act shall be prima facie evidence of ownership. Any person who shall, without the consent of the owner thereof, reproduce, counterfeit, copy, or colorably imitate any such trade-mark and affix the same to merchandise of substantially the same descriptive properties as those set forth in the registration, or to labels, signs, prints, packages, wrappers, or receptacles intended to be used upon or in connection with the sale of merchandise of substantially the same descriptive properties as those set forth in such registration, and shall use, or shall have used, such reproduction, counterfeit, copy or colorable imitation in commerce among the several states, or with a foreign nation, or with the Indian tribes, shall be liable to an action for damages therefor at the suit of the owner thereof; and whenever in any such action a verdict is rendered for the plaintiff, the court may enter judgment therein for any sum above the amount found by the verdict as the actual damages, according to the circumstances of the case, not exceeding three times the amount of such verdict, together with the costs.
"Sec. 17. That the Circuit and Territorial Courts of the United States and the Supreme Court of the District of Columbia shall have original jurisdiction, and the Circuit Courts of Appeal of the United States and the Court of Appeals of the District of Columbia shall have appellate jurisdiction of all suits at law or in equity respecting trade-marks registered in accordance with the provisions of this act, arising under the present act, without regard to the amount in controversy.
"Sec. 18. That writs of certiorari may be granted by the Supreme Court of the United States for the review of cases arising under this act in the same manner as provided for patent cases by the act creating the Circuit Court of Appeals.
"Sec. 19. That the several courts vested with jurisdiction of cases arising under the present act shall have power to grant injunctions, according to the course and principles of equity, to prevent the violation of any right of the owner of a trade-mark registered under this act, on such terms as the court may deem reasonable; and upon a decree being rendered in any such case for wrongful use of a trade-mark the complainant shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages the complainant has sustained thereby, and the court shall assess the same or cause the same to be assessed under its direction. The court shall have the same power to increase such damages, in its discretion, as is given by section sixteen of this act for increasing damages found by verdict in actions of law; and in assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost which are claimed."
The legal remedies set forth in these sections of the Act of 1905 apply only in case of infringements of registered trade-marks. In the case of infringements of common law trade-marks, and in cases where packages, labels and advertisements are imitated or counterfeited, actions to restrain must be brought under the law of unfair trade.
A coined word is the property, in a commercial sense, of the person, or firm, or corporation, that makes it up and uses it.
This is indisputable. It is a principle of justice that is supported consistently by the courts, but it needs no legal mind to acquiesce in its fairness, for it appeals to everybody's common-sense.
How far the use of a coined word may be allowed, when applied by other persons than its owners to goods of a different and non-competitive class, is a question that has not been definitely settled. In England, the court enjoined the use of the word "Kodak" as a name for bicycles. There is little doubt that the unauthorized use of any widely-known coined word, that has been nationally advertised, would be enjoined by the courts, even if applied to a wholly different line of merchandise.
Advertising Symbols of Railroads
A railroad cannot have a trade-mark in the true sense, inasmuch as the business of transportation produces no product to which a trade-mark can be affixed.
The advertising symbols of railroads stand in the relation of trade-marks, and are protected by the common law against infringement.
A poorly-made and inferior article, even if it should belong to a class of goods quite dissimilar to that of another article of the same name, might indirectly bring discredit upon the latter.
The word "Educator" was refused registration as a trade-mark for fish, on the ground that as it had already been registered as a trade-mark for a brand of biscuits, its use by another might lead to confusion, although fish and biscuits are quite dissimilar products.
There have been cases where a label, or a sign, or a trade-name, or trade-mark, has been appropriated bodily by a concern not entitled to use it. Some cases of infringement of this character are given in H. D. Nims' instructive book on "Unfair Business Competition," from which the following example is quoted:
"The defendants accumulated in the St. Louis market stoves (not made by plaintiff) with the name 'Charter Oak' upon them, which they held for sale as 'Charter Oak Stoves.' They were aware of the plaintiff's proprietorship of the 'Charter Oak' trade-mark, and were proceeding to sell in defiance of the plaintiff's rights. Plaintiff had been the first to use 'Charter Oak' as a name of a stove and had used it for a long time when this suit was begun. The mark was not registered. Injunction granted." Filley v Fassett, (44 Mo. 168—1869).
Infringements are generally more subtle and clever than a mere bodily adoption of a trade-mark. For instance, a piratical trade-mark may be devised so nearly like a well-known mark that it will readily deceive an unwary or careless or ignorant purchaser, and yet be so different that a show of defending it may be made.
Or, an entirely different trade-mark may be used, while the size, shape and color of the package may be imitated. The National Biscuit Company uses distinctive packages for its products, and its trade-marks are, in most cases, original, arbitrary, coined words, yet it has so far prosecuted approximately five hundred suits for infringement of its marks and packages.
"Uneeda Biscuit" has been infringed by "Iwanta Biscuit", "Uwanta Biscuit" and "Ulika Biscuit", all of which were enjoined. In the "Iwanta" case, the opinion of the court was, in part, as follows:
"Defendants present the usual voluminous bundle of affidavits by persons in the trade to the effect that in their opinion no one is likely to mistake defendant's biscuit for complainant's. As has been pointed out before, it makes no difference that dealers in the article are not deceived. No one expects that they will be. It is the probable experience of the consumer that the court considers. Here, too, we have the manufacturer of the articles complained of, who explains, as usual, that in adopting a trade-name by which to identify his own product he has been most careful not to trespass upon any rights of complainant, and that, after considerable thought, he selected a name which should make the difference between his goods and complainant's distinct and plain, so that there could be no possibility of mistake. It is a curious fact that so many manufacturers of proprietary articles, when confronted with some well-advertised trade-name or mark of a rival manufacturer, seem to find their inventive faculties so singularly unresponsive to their efforts to differentiate. Thus, in one case, with the word 'Cottolene' before him, defendant's best effort at differentiation resulted in 'Cottoleo'; and 'Mongolia' seemed to another defendant entirely unlike 'Magnolia'. The manufacturer of the articles which defendants in the case at bar are selling seems to have had no better luck, for, with the word 'Uneeda' before him, his device to avoid confusion was the adoption of the word 'Iwanta'. The incessant use of the personal pronouns in daily speech has associated in every one's mind the sounds represented by the letter 'I' and 'U', the two words are of precisely the same length; both end with the letter 'A', and both express the same idea, namely, that the prospective purchaser's personal comfort would be promoted by the acquisition of a biscuit.... Both name and dress are clearly calculated to mislead, and the statements that both were adopted with an eye single to differentiation strain the credulity of the court beyond the breaking point."
In the case of Lever Bros. v Smith (112 Fed. R. 998), the complainant had built up a large and profitable sale for "Welcome" soap. The defendant, Welcome A. Smith, put on the market a soap similar in size and shape to "Welcome" soap, and labeled it with his own name "Welcome A. Smith", making the word "Welcome" on his labels large and prominent, with "A" and "Smith" below it, and in much smaller type. On the ends of the package the word "Welcome" alone appeared. It was held that while Smith had a right to use his own name, he could not use it in such a way that it would suggest an identity between these two products.
The trade-mark of a widely advertised household necessity.
In the case of Swift v Brenner (125 Fed. R. 826) it was held that Swift & Company's "Old Mill Soap" which had a picture of an old mill on the label, was infringed by "Old Stone Mill Soap", the label of which also had a picture of an old mill.
In the interesting case of the Welsbach Light Company v Adam (107 Fed. R. 463) it was shown that the infringing trade-mark had been devised before the complainant's mark, but had not been used until after the complainant's mark had been registered. On Feb. 20, 1900, the complainant (The Welsbach Light Company) registered the coined word "Yusea," as a trade-mark applied to gas mantles. Some months before this, the defendant had conceived the name "U—C—A" with the idea of using it in connection with gas mantles of his own manufacture. Its actual use as a trade-mark was not begun, however, until after the complainant's mark had been registered. On Oct. 23, 1900, the defendant registered "U—C—A" as a trade-mark.
This mark stands for quality in confectionery.
The complainant based his action for an injunction against the use by the defendant of the mark, "U—C—A" on the ground that its resemblance in sound to "Yusea" was sufficient to confuse buyers and divert trade from the complainant.
It was shown that "Yusea" is commonly pronounced "You see a"; that purchasers, in asking dealers for these mantles, called them "You See A" Mantles; and that the pronunciation of the name of defendant's mantles was the same as the name of complainant's products.
The defendant contended that there was no similarity in appearance in the two names; that the similarity in sound was only incidental; that there was no infringement, because the name "U—C—A" had been devised prior to the conception of "Yusea"; and that the registration of "U—C—A", allowed by the Patent Office, was proof of dissimilarity.
The Court sustained the contention of the Welsbach Light Company, and the use of "U—C—A" as a trade-mark for gas mantles was enjoined on the ground that it was an infringement of "Yusea."
Where there is a casual resemblance, not sufficiently marked to deceive a person of ordinary judgment, there is held to be no infringement.
A case in point was shown in the contention between the manufacturers of the well-known "3 in 1" Oil and the owners of a similar product called "Big Four". The "3 in 1" label bears a large figure "1" in red, enclosing the figure "3" and the word "in". The defendant's label was of different size, was printed partly in red and partly in black, and was headed "Big Four". The figure "4" in black was displayed prominently on a red background. No infringement.
A trade-mark may be held to infringe another trade-mark already established, even if it has no similarity in sound or to the eye, but if there is a close similarity in ideas.
This is exemplified by a case recently, before the Federal court for the Southern district of New York. The words "Beats-All" have been used for a number of years as a trade-mark for pencils. The owners of the "Beats-All" trade-mark applied for an injunction against the use of "Knox-All" as a trade-mark for pencils sold by a rival concern. The defendant contended that "Beats-All" was a descriptive term, indicating superiority, and, as such, it could not be protected as a trade-mark. The complainant proved that he had used the mark "Beats-All" for many years, and that, while it was originally descriptive, long usage had given it a secondary meaning. He also showed that he had registered this trade-mark under the ten years' clause. The court held that the registration of the mark under the ten years' clause removed it from the class of descriptive phrases—in other words, that registration under the ten years' clause was a prima facie evidence of validity. The defendant claimed, that in any case, "Knox-All" was so dissimilar to the ear and eye, there was no infringement of "Beats-All". This view was not sustained by the court, which held that a close similarity of ideas was sufficient to constitute infringement.
From these, and other cases, it may be seen that a question of whether a trade-mark has been infringed is sometimes a question of psychology.
It is not necessary for the complainant to produce evidence that buyers have been actually deceived. His case is established when he can show that the marks, or symbols, or packages, or general "get-up" of the goods are sufficiently similar to establish a strong probability of deception.
The case of Shaw Stocking Company v Mack (21 Blatch 1—1882. C. C. N. Y.), cited by Mr. Nims, is an example of infringement that seems to fall within the range of psychological analysis.
"Complainant manufactured at Lowell hosiery of high reputation and designated one style by the figures '830'. The label bore the trade-mark 'Shawknit' in script with a flourish and the words 'Seamless Half Hose,' with the name of the manufacturer and the figures '830.'
"Defendants at Albany bought large quantities of complainant's goods and with complainant's consent, in effect, held themselves out to the public as selling agents of complainant's. They then began to buy of a Connecticut manufacturer goods similar to complainant's '830' style, but inferior, and sold them under a label generally resembling complainant's in appearance and bearing the word 'Seamless' in script of a similar style, including the flourish, followed by the words 'Half Hose, Double Heels,' with defendant's name and address, and the figures '830.'
"The court enjoined them from using the figures '830' to designate the Connecticut goods, and from using on the label the word 'Seamless,' printed in imitation of Shawknit."
In the case given above there was no infringement of the actual trade-mark. But the intent to deceive purchasers was shown by the use of the style number 830 and by the careful imitation of the general appearance. Well-informed customers, looking for the trade-mark Shawknit, would not have been deceived, but the probability of deceiving the uninformed and careless was sufficient to justify the injunction.
It should be kept in mind that the term "infringement" covers not only the imitation of a technical trade-mark, in whole or in part, but embraces all violations of the rights of others, in trade, no matter whether such violations fall under the trade-mark law, or the law of unfair competition.
The noted case of McLean v Fleming (96 U. S. 245—1877) decided in 1877, is one of the cases that underlie the law of unfair competition. In this case the Court said:
"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 intent on the part of the respondent to palm off his goods as the goods of the complainant, and that he persists in doing so after being requested to desist."
This is the gist of the whole matter of infringement. If an effort to trade on the reputation of another can be proved, irrespective of the form this effort may take, it is held to be an infringement.
"Chatter-Box" is an old-established publication for children, issued in the form of an illustrated book, once a year. It was held that "Chatter-Book", a publication issued for the same purpose, and of the same general appearance, was an infringement.
A piano manufacturer by the name of Henshaw placed upon the market a piano called the "Steinberg." It was held by the Court that the name "Steinberg" was an infringement of the name "Steinway," which had been long used as the name of famous pianos.
A trade-mark that has achieved great renown.
In the case of Johnson & Johnson v Bauer & Black (82 Fed. R. 662, reversing 79 Fed. R. 954) it was held that the complainant's mark of a red Greek cross, used on plasters, was infringed by the defendant's mark of a Greek cross with a red circle in the center, containing the letters "B & B", and used on the same class of goods.
A trade-mark adopted for a patented article during the life of the patent, is held to be descriptive of the article, and the right to its exclusive use expires at the expiration of the patent.
The import of this far-reaching trade-mark doctrine is illustrated in the celebrated Singer case.
The Singer Manufacturing Company, when the patents on its sewing machine were about to expire, adopted as a trade-mark the word "Singer" blended with a device. The effect of this action, if the validity of the trade-mark had been sustained, would have been to perpetuate the right to the exclusive use of the word "Singer" as applied to sewing machines. In this event, at the expiration of the patents, any person would have had the right to manufacture Singer machines, but only the Singer Manufacturing Company would have had the use of the name "Singer."
It was held by the courts that the right to use the name "Singer", as applied to machines of this particular design, became public property when the patents expired. The court said, in the case of Brill v Singer Mfg. Co. (41 Ohio St.):—
"A patentee or his assignee, by incorporating into his trade-mark the distinctive name by which a patented machine has become known to the public during the existence of the patent, cannot, after the expiration of the patent, take away from the public the right of using such name. The trade-mark cannot be made a guise for extending the monopoly, or preventing the name from becoming, with the patent, the property of the public."
But if the trade-mark is adopted and used before the article is patented, the exclusive right to the trade-mark continues after the patent expires.
In this case the patent is secondary to the trade-mark, and the trade-mark is held not to be descriptive. The word "Gants" was used as a trade-mark on corsets for several years before the article was patented. At the expiration of the patent, another manufacturer began to make corsets of this description, calling them "Gants". On the showing of the plaintiff that the patent was subsequent to the adoption of the trade-mark, the defendant was enjoined from using the name, although there was nothing to prevent him from continuing to make corsets of this description.
An individual has a right to use his own name in business transactions, but he cannot use it in a way that will deceive, directly or by inference, those who buy his goods. He cannot use the likeness of his name to that of another party of the same name for the purpose of trading on the latter's established reputation.
This principle of equity is well illustrated by the legal contentions over the name Baker, used as a trade-mark for chocolate.
For a hundred and thirty-one years the firm of Walter Baker & Co., and its predecessors, have manufactured chocolate at Dorchester, Mass. For more than a generation past, the firm has done business under its present name. "Baker's Cocoa," as the principal product of the firm is popularly called, has achieved great success. This national popularity of the name "Baker" as applied to cocoa and chocolates, began, some years ago, to attract other persons by the name of Baker. One of the Bakers—a William H.—began to manufacture chocolate in Winchester, Va., in 1894, and put it on the market, labeled "W. H. Baker & Co." At that time the products of Walter Baker & Co. were labeled "W. Baker & Co." It can be seen that the substitution of W. H. Baker & Co.'s goods for those of Walter Baker & Co., was an easy matter for any retailer who wanted to do it. The packages were much alike. The retailer made a larger profit on the product of W. H. Baker & Co.
The Walter Baker Package
(Front)
Walter Baker & Co. sued W. H. Baker in the Federal Court in Virginia, and at the same time began a suit against W. H. Baker's New York agent, Sanders, to prevent their use of the name "Baker" or the firm name, "Baker & Co." In the Virginia suit, the opinion of the court was that while W. H. Baker had a right to use the name "Baker," it being his own name, he could not use it in connection with the sale of cocoa or chocolate unless he made a distinction between it and the name of Walter Baker & Co. which would be easily observed by customers. The nature of the required distinction was not specified by this court.
In the suit in the Federal Court for the Southern District of New York against Sanders, the New York agent of W. H. Baker, the court's decision was essentially the same as that of the Federal Court in Virginia. The New York court specified, however, that the defendant should put in conspicuous lettering on his packages these words: "W. H. Baker is distinct from and has no connection with the old chocolate manufactory of Walter Baker & Company."
The Walter Baker Package
(Back)
This suit had been settled a year or two, when in New York, another Baker—William P.—began to sell a "Baker's Chocolate." Suit being brought to enjoin him by Walter Baker & Co., it was decided by the court that he must not use the name "Baker" alone, or "W. Baker." He was allowed to use his own name if spelled in full, "William Phillips Baker," or he might use a middle initial—"William P. Baker"—and he was directed to state on his labels that his goods were made and sold by "William P. Baker, of New York."
The contentions of the various Bakers were stilled and the mantle of peace lay upon them for a short space. Then, as the record shows, a William H. Baker, of Syracuse, felt the calling of chocolate manufacturer stir within him.
The William H. Baker of Syracuse imitated the packages and labels of the William H. Baker of Winchester, Va. His evident intention was to make it appear that he was the William H. Baker who had been enjoined by Walter Baker & Co., for he stated conspicuously on his label "W. H. Baker is distinct from and has no connection with the old chocolate manufactory of Walter Baker & Co."
William H. Baker, of Winchester, Va., brought suit against the Syracuse Baker to prevent him from using the former's label. Injunction was granted, but the defendant was permitted to use the name "William H. Baker" if he printed the name "Syracuse" conspicuously in connection with it.
The suit of Royal Baking Powder Co. v Royal (122 Fed. 337—1903; 58 C. C. A. 499-506), deals with the controversy of this well-known baking powder concern over the use of the name "Royal" on baking powder by an individual by the name of "Royal." The court held that Royal could make and sell baking powder under his own name, but to prevent confusion he should not place his name on the front label, and that he should make it inconspicuous.
The package now used by William H. Baker, of Syracuse, Inc.
From a consideration of these cases, and many others where the same issue was involved, the principle may be definitely established that, while courts will not prevent an individual from using his name altogether, they will restrict the manner of its use when there is shown an intention to trade on another's reputation.
It is a settled principle of law that a complainant must appear in a court of equity with clean hands. In other words, an essential misrepresentation of a complainant's goods, by means of his trade-mark, or on his labels, or through advertisements, is a bar against his action for relief from infringement.
One Flavel made and sold a stove under the name "Flavel's Patent Kitchener." The defendant, Harrison, began to make and sell another stove under the same name. Flavel sued to enjoin Harrison, but an injunction was denied when it was shown that Flavel's stove was not patented, although its name would lead one to believe that it was made under a patent.
In another case, the makers of a toilet preparation known as "The Balm of a Thousand Flowers" brought suit to enjoin another party from selling a similar preparation under the name of "The Balm of Ten Thousand Flowers." The complainant's motion to enjoin was denied, when it was shown in court that his "Balm of a Thousand Flowers" did not contain the balm of any flower whatsoever—in fact, was not a balm at all, but a soap—and that its chief ingredients were oil and alcohol. It was held that the trade-mark was deceitful and complainant's motion was denied. Fetridge v Wells (4 A 66 Pr. 144; B. How. Pr. 385).
The infringement of trade-names and trade-marks in most classes of merchandise is relatively infrequent compared with the extensive substitution, infringement and counterfeiting that are continually going on in the liquor, wine, cigar and allied trades.
This had become an evil of such formidable proportions that in 1904 an organization under the title of the Trade-Mark Protective Company was formed to run down and prosecute offenders. The clients of this company are mostly importers and producers of whiskies, wines, olive oils, cordials, cigarettes and cigars. The company has a staff of skilled detectives, who are always at work looking for imitators and counterfeiters of the goods of the company's clients. After securing evidence of an infringement the company undertakes the prosecution of the offenders.
The methods of the Trade-Mark Protective Company in prosecuting infringers and counterfeiters are of the kind that inspire evil-doers with terror as well as respect.
In many cases the bottles, or packages, and labels—including trade-marks—have been counterfeited so perfectly, and in such detail, that expert bottle-makers and lithographers were required as witnesses to show the difference between the spurious and the genuine.
An account of a few of the cases prosecuted by the Trade-Mark Protective Company are given here for the purpose of showing the methods of this class of dealers in spurious goods.
One Young, doing business as the "Cincinnati Distilling Company" was found using counterfeits of the labels of the Wilson Distilling Company. He was tried, convicted, and sentenced to six months in the workhouse and to pay a fine of $300.
A cigar dealer, when asked by customers for the well-known "Romeo and Juliet" cigar, which bears a label reading "Romeo y Julieta", sold an imitation bearing a label on which the words "Romeo, el Amante de Julietta" appeared—the words "Romeo" and "Julietta" being in large type. The cigars bearing this label were seized, and the dealer was restrained from selling any "Romeo and Juliet" cigar which did not bear the genuine label.
Genuine Old Tom Gin
Spurious Old Tom Gin
Reproduced by courtesy of Trade-Mark Protective Company.
On this page are shown pictures of two bottles, each labeled "Old Tom Gin". The bottle with the spurious label, shown on the right, is identical in size and shape with the genuine bottle. The labels are so much alike, in design and coloring, that one would easily pass for the other on casual, careless inspection. Upon obtaining the requisite evidence the spurious stock was seized, and the use of the imitation label was enjoined.
In the case of the owners of Edouard Pernod's Absinthe against John B. Van Opstal and others it was shown that the defendants were selling an imitation of Pernod's Absinthe under the fictitious name of "Aernod's" Absinthe, relying upon the similarity in sound to deceive purchasers. In this case the label of the genuine Pernod was closely imitated in design and color, and second-hand Pernod bottles were used.
The defendants being brought into court, a judgment and injunction was entered against them.
On the next page are two Chartreuse labels. The one on the right, bearing the name "Garnier" is genuine. The labels were exactly the same size and color. The infringing label was so clearly an imitation that the offending party did not contest the case, but surrendered the imitation labels to the Trade-Mark Protective Company, and agreed never to use them again.
Since the expulsion of the Chartreuse monks from France, and their settlement in Spain, they have adopted a new label, but the original label as shown here is also still used by them.
They have established their right to the exclusive use of the name "Chartreuse" in the United States by a suit recently decided by the Supreme Court. Reference to this case has been made on [page 35] of this book.
In another case, where an infringement of Fernet Branca Bitters was prosecuted, the defendant claimed that he had a right to use the name, as his partner was named Branca, and that this partner was a skilled worker in the preparation of bitters. He was, nevertheless, restrained from using the Fernet Branca name on his labels.
Most of these prosecutions are based on the law of unfair trade, but in one case, that of Petrotta, accused of selling counterfeit Martell Brandy and other liquors, the complainant founded his case on the charge of larceny. He held that in selling spurious goods for genuine the defendant obtained money under false pretences, and in that respect he is like a person who obtains money on a worthless check. This argument was upheld by the court, and Petrotta was sent to prison for two years.
Labels reproduced by courtesy of Trade-Mark Protective Company.
Infringement of Chartreuse Label
Genuine Chartreuse Label
This case is notable, in that it is the first case on record of a conviction for larceny of money obtained on a sale of counterfeit goods.
The refilling of bottles is a specific offence, covered by statutes in some of the states. It is needless to say that it is extremely difficult to obtain evidence of refilling that will convict.
In the case of the People v Luhrs (195 N. Y., 377), in which the defendant Luhrs was charged with having refilled a Wilson Whiskey bottle, he put in the unusual defence that although he refilled a Wilson Whiskey bottle, he refilled it with Wilson Whiskey. But the New York penal code states that it is unlawful to sell any goods which are represented to be the manufacture of any other party than the seller, unless such goods "are contained, in the original packages, and under the labels, marks or names pasted thereon by the manufacturer."
The defendant contended that this law was unconstitutional, because it prevented him from selling his legitimate property in any way he chose to sell it, and thus deprived him of his property without due process of law. The court did not accept this contention, as the defendant obviously had the right to sell Wilson Whiskey any way he might desire, and at any price, on the condition that he did not sell it in a trade-marked package that had contained other goods. The trade-mark certifies both to the manufacture and the packing of contents. By refilling bottles, even with the same kind of goods, the dealer makes a false representation, as the bottle would not contain, after refilling, what was originally put in it.