(1) Kinds of Goods Protectable by Registration 176. DAVIS v. DAVIS UNITED STATES CIRCUIT COURT, DISTRICT OF MASSACHUSETTS. 27 Fed. 490 IN EQUITY. Motion for preliminary injunction. W. B. H. Dowse and E. B. Hale, for complainants. 1886 CARPENTER, J. This bill is brought to enjoin certain alleged infringements of the trademark of the complainants, registered June 2, 1885, and numbered 12,279. It appears that the trademark of the complainants, and also the alleged infringements thereof, are used in commerce with the Dominion of Canada. The trademark is described as follows in the statement annexed to the certificate of registry: "Our trademark consists of a label bearing a representation of the device or design produced by the means and arrangement used by us in packing our cakes or bars of soap in boxes. We fold each cake or bar of soap in either a red or yellow wrapper, and pack the cakes or bars thus folded in a box, so that the red and yellow wrappers alternate. . . . As the label is a reproduction of the appearance which the soap presents when packed, as described, in a box, it is obvious that bars or cakes of soap simply wrapped and arranged in a box, as described, is one method of producing our trademark, ... the essential feature of which is the device produced by the combination and alternate arrangement of red and yellow spaces, substantially as described." This trademark, although, in the words of the statement, it "consists of a label," is not attached in any way to the soap sold by complainants. In practice the label is made of the same size as the box of soap, measuring on the inside, and is placed in the box on the upper layer of bars of soap, and is by the retail tradesman taken out, and used as a show-card. The complainants allege that the respondents infringe this trademark in two ways: First, they give to their customers a shallow box containing cakes of soap of the same length and breadth as those sold. by them, but much thinner, and enclosed in red and yellow wrappers, and arranged alternately by colors, as in the drawing of the trademark. ... It is to be observed that there is a very great difference in appearance between a box of soap, and a printed label representing the upper layer of soap therein contained. The most careless observer could not confound one with the other. I therefore conclude that there is no infringement by the use of the advertising box, unless, indeed, it be an infringement of the rights of the complainants to sell soap wrapped in red and yellow wrappers, arranged alternately in the box in which it is packed. But the complainants claim, in the second place, that their trademark is infringed by the sale of soap wrapped and arranged in boxes in the same manner used by them. Undoubtedly the terms of the statement are broad enough to cover the boxes of soap sold by respondents. The statement expressly says that "bars or cakes of soap simply wrapped and arranged in a box, as described, is one method of producing our trademark." But I am of opinion that the registration, in so far as it can be interpreted to cover the sale of boxes of soap, is entirely void, for the reason that the object or thing thus included in the description is not such a thing as can lawfully be registered as a trademark. A trademark is some arbitrary or representative device attached to or sold with merchandise and serving to designate the origin or manufacture of that merchandise. I do not think that the merchandise itself, or any method of arranging the various packages, can be registered as a trademark. In the very nature of the case, as it seems to me, the trademark must be something other than, and separate from, the merchandise. It is not, of course, claimed that the colors used in the wrappers can be in themselves the subject of a trademark registration; nor is it claimed that the wrappers themselves constitute the trademark. The claim is that the trademark consists in the arrangement of the colors in the wrappers. This seems to me to be no less than a patent for an idea, under the guise of the registration of a trademark. I do not think that, in any possible view, the claim can be sustained. . . . The motion for preliminary injunction will be denied. OMPANY 177. COLUMBIA MILL COMPANY v. ALCORN SUPREME COURT OF THE UNITED STATES. 1893 150 U. S. 460, 14 Sup. 151 APPEAL from the Circuit Court of the United States for the Eastern District of Pennsylvania. Affirmed. In equity. Bill by the Columbia Mill Company against William W. Alcorn and Samuel Alcorn, trading as W. W. Alcorn & Co., for infringement of a trademark. The Court below dismissed the bill (40 Fed. 676), and complainant appeals. Affirmed. P. H. Gunckle, for appellant. Mr. Justice JACKSON delivered the opinion of the Court. The complainant, a corporation of Minnesota, engaged in the manufacture of flour at Minneapolis, in that State, brought this bill to restrain the defendants from using the word "Columbia" in a brand placed on flour sold by them. The complainant alleged that it had selected this word as a fanciful and arbitrary name or trademark at least five years prior to the filing of the bill, for the use and purpose of identifying a certain quality of flour of its own manufacture. The complainant's brand, printed on sacks, and stencilled on the heads of barrels, was in the form of a circle, in the upper arc of which were the words "Columbia Mill Co.," and in the lower arc, "Minneapolis, Minn." These words were printed in blue. On a horizontal line, and in the middle of the circle, was the alleged trademark, "Columbia," in large letters, which was printed in red. Below this word, on separate lines, and in smaller letters, were the words "Roller Process" and "Patent." The bill also alleged that the brand of flour on which the trademark was affixed obtained an extensive sale, and became generally known throughout the country, but that in the years 1887 and 1888 purchasers and consumers thereof were misled and deceived by the defendants, who put up in similar packages an imitation of the flour manufactured by the complainant, which was thus sold by them under the name, brand, and trademark, "Columbia." It was further alleged that the flour thus sold, although inferior in quality to the complainant's article, caused a great diminution in the business of the complainant. The bill prayed for an injunction, and an accounting of the profits on all the flour sold by the defendants under the brand of "Columbia." The defendants answered that they carried on in Philadelphia a general business of buying outright, and of selling on commission, flour consigned to them, and that, in accordance with the custom of the trade, they had their own brands put on the sacks and barrels of flour handled by them. They admit that one of the brands so used was in the form of a circle, having the words "High Grade" in the upper arc, and under those words "No. 1"; then, on the next line, "Hard Wheat,' under which, in large letters, was the word "Columbia," and below that, in letters of the same size, was the word "Patent," and the figures "196" in another line below. On the lower arc of the circle were the words "Minneapolis, Minn." The answer stated that the whole of the brand was printed in black ink. The defendants further averred that "they have never sold any flour not manufactured by the complainant as being the flour of the complainant; that they have not knowingly or actually used, or caused to be used, any brand for flour in imitation of any brand used by the complainant, nor have they ever sold any flour branded in imitation of complainant's flour; that they have never come in competition with complainant's flour, nor has any one ever purchased the respondent's flour, believing it to be of the complainant's manufacture; that they deny any claim on the part of the complainant to any right to the name Columbia' as a trademark, averring that the same was used by these respondents and other parties long before the said complainant commenced to use it, and that other mills beside the complainant's manufacture and sell flour branded "Columbia." Upon the pleadings and proofs, the Court below held that the complainant had not established its exclusive right to the use of the word "Columbia" in a brand for flour, and dismissed the bill. From this decree the present appeal is prosecuted. We are clearly of opinion that there is no error in the judgment of the Court below. The general principles of law applicable to trademarks, and the conditions under which a party may establish an exclusive right to the use of a name or symbol, are well settled by the decisions of this Court in the following cases: Canal Co. v. Clark, 13 Wall. 311; McLean v. Fleming, 96 U. S. 245; Manufacturing Co. v. Trainer, 101 U. S. 51; Goodyear India Rubber Glove Manuf'g Co. v. Goodyear Rubber Co., 128 U. S. 598, 9 Sup. Ct. 166; Corbin v. Gould, 133 U. S. 308, 10 Sup. Ct. 312; Lawrence Manuf'g Co. v. Tennessee Manuf'g Co., 138 U. S. 537, 11 Sup. Ct. 396; Brown Chemical Co. v. Meyer, 139 U. S. 540, 11 Sup. Ct. 625. These cases establish the following general propositions: That to acquire the right to the exclusive use of a name, device, or symbol as a trademark, it must appear that it was adopted for the purpose of identifying the origin or ownership of the article to which it is attached, or that such trademark must point distinctively, either by itself or by association, to the origin, manufacture, or ownership of the article on which it is stamped. It must be designed, as its primary object and purpose, to indicate the owner or producer of the commodity, and to distinguish it from like articles manufactured by others. (2) That if the device, mark, or symbol was adopted or placed upon the article for the purpose of identifying its class, grade, style, or quality, or for any purpose other than a reference to or indication of its ownership, it cannot be sustained as a valid trademark. (3) That the exclusive right to the use of the mark or device claimed as a trademark is founded on priority of appropriation; that is to say, the claimant of the trademark must have been the first to use or employ the same on like articles of production. (4) Such trademark cannot consist of words in common use as designating locality, section, or region of country. The alleged trademark cannot, for many reasons, be made the subject of an exclusive private property: First, because it is clearly shown from the proof in the cause that the word "Columbia," as a brand upon sacks or barrels of flour, was in use long before its appropriation by the complainant. . . . Second, the word "Columbia" is not the subject of exclusive appropriation, under the general rule that the word or words, in common use as designating locality, or section of a country, cannot be appropriated by any one as his exclusive trademark. In Canal Co. v. Clark, 13 Wall. 311, it was held that the word "Lackawanna," which is the name of a region of country in Pennsylvania, could not be, in combination with the word "coal," constituted a trademark, because every one who mined coal in the valley of Lackawanna had a right to represent his coal as Lackawanna coal. Speaking for the Court, Mr. Justice Strong said: "The word 'Lackawanna' was not devised by the complainants. They found it a settled and known appellative of the district in which their coal de posits, and those of others, were situated. At the time they began to use it, it was a recognized description of a region, and of course of the earths and minerals in the region. . . . It must be then 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 similar articles coming from the district, from truthfully using the same designation." The appellant was no more entitled to the exclusive use of the word "Columbia" as a trademark than he would have been to the use of the word "America," or "United States," or "Minnesota," or " Minneapolis." These merely geographical names cannot be appropriated, and made the subject of an exclusive property. They do not, in and of themselves, indicate anything in the nature of origin, manufacture, or ownership; and in the present case the word "Columbia" gives no information on the subject of origin, production, or ownership. The upper part of the brand or label of the trademark discloses the full name of the complainant as the manufacturer of the article, and is in no way supplemented or made clearer by the word "Columbia." It can no more be said that it was intended to designate origin or ownership than to denote the quality of the flour on which the brand was placed, and the proof tends strongly to show that the whole label was intended. to indicate the quality or class or character of the flour, as being made of spring wheat instead of winter wheat. It is also shown by the testimony in this case that the flour manufactured from spring wheat, such as that dealt in both by the complainant and the defendants, is never sold or bought simply on the brand, but usually, if not always, by actual sample; and the proof fails to establish that the brand of the appellees was calculated to mislead, or did actually deceive or mislead, any one into supposing that the flour of the complainant was being bought. So it cannot be said that the defendants were personating the complainant's business by using such a description or brand as to lead customers to suppose that they were trading with the appellant. Even in the case of a valid trademark, the similarity of brands must be such as to mislead the ordinary observer. For the foregoing reasons, we are clearly of opinion that there was no error in the Court below in dismissing the bill, and the same is accordingly affirmed. 178. SCHMALZ v. WOOLEY COURT OF ERRORS AND APPEALS OF NEW JERSEY. 1898 57 N. J. Eq. 303, 39 Atl. 539, 41 Atl. 939 APPEAL from Court of Chancery. Bill by Frederick W. Schmalz, who sues in behalf of an unincorporated association, against Edwin Wooley and Frederick S. Crane. Demurrer to bill sustained (39 Atl. 539), and plaintiff appeals. Reversed. |