Things to Know About Trade-Marks: A Manual of Trade-Mark Information

by J. Walter Thompson Company

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."