g. Name of Material, or Article or Words in Common

&.

L General Principles.

Use of Trademarks.-There are really two rights involved in the adoption and use of trademarks. One is the exclusive right to use a particular mark or sign or words, and to be protected in that use from competition with others who may attempt to use it; and second, the right to protection from unfair competition and to protect the public from imposition and deception. The first cannot exist without the second, but the second may exist alone. Thus, a person may not have the exclusive right to use a particular sign or form of words, because the words may not be the subject of a valid trademark. And yet, having used such words or sign, and the goods being known to the public under such marks as his goods, another cannot so use the sign as to represent to the public that he is the original and only maker of the article. Obviously, this would be an imposition and fraud upon the public, and such unfair competition as should be prevented. This double right involved in the use of a trademark has been frequently recognized, and the courts have protected one from unfair competition, and the public from deception, while refusing to recognize the exclusive right to use a particular form of words as a trademark: See Shaw Stocking Co. v. Mack, 12 Fed. 707; Pierce v. Guittard, 68 Cal. 68, 58 Am. Rep. 1, 8 Pac. 645; Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. Rep. 1002; Centaur Co. v. Killenberger, 87 Fed. 725; Frost 7. Rindskoff, 42 Fed. 408; La Republique Francaise v. Schultz, 94 Fed. 500; Elgin Nat. Watch Co. v. Illinois Watch Co., 179 U. S. 665, 21 Sup. Ct. Rep. 270. In Pierce v. Guittard, 68 Cal. 68, 58 Am. Rep. 1, 8 Pac. 645, a large business was built up under the name of "German Sweet Chocolate," and the court, while declining to decide that the manufacturer had an exclusive right to use these words as a trademark, or whether they could constitute a trademark or not, yet held that another person could not use the same name even with slight variations, as "Sweet German Chocolate," in such a way as to induce the public to deal with him in the belief that they were dealing with the person who had given a reputation to the name. The same rule was announced in Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. Rep. 1002, where upon the ex

piration of the Singer sewing-machine patent, the defendants manu factured sewing-machines under that name. The court held that while the generic name "Singer" passed to the public upon the expiration of the patent, together with the right to make the machine itself, yet a new manufacturer may be compelled to indicate that the sewing-machines made by him are made by him, and not by the proprietors of the extinct patent, and this to protect the public from deception and prevent unfair competition. This case was followed in Centaur Co. v. Killenberger, 87 Fed. 725, where the right to manufacture Castoria according to Pitcher's patented formula, and to sell the article as such, was free to all the world, after the patent had expired, but the court held that in putting the medicine upon the market, the new manufacturer must clearly identify his goods. No one has a right to represent that his goods are manufactured by another: Frost v. Rindskoff, 42 Fed. 408. But there must be real deception in order to constitute a right to protection: La Republique Francaise v. Saratoga Vichy S. Co., 99 Fed. 733. Im Elgin Nat. Watch Co. v. Illinois Watch Co., 179 U. S. 665, 21 Sup Ct. Rep. 270, the supreme court held that where the geographical word "Elgin" had acquired a secondary signification in connection with its use, the courts would afford protection from imposition and fraud, although the name was not technically a trademark, and was not susceptible of registration as a trademark under the act of Congress. This distinction between the exclusive right to use a word as a trademark, and the right of protection from fair competition and the right to guard the public from deception, will recur repeatedly in this note in connection with the right to use particular forms of words as a trademark.

b. Must Express Origin and Ownership.-Browne on Trademarks, section 143, points out the characteristics of a valid trademark as: "1. Invariability-1. e., fixed, positive, unmistakable; 2 Individuality; such a difference from other symbols as to indicate origin and ownership; 3. Universality, of a right to its use; good as a representative of, or substitute for, the owner's signature all the world over; 4. Exclusiveness of the right to use; 5. Application to merchandise; 6. Use in lawful business; 7. Truth and good faith; 8. Duration unlimited, but by the trade itself (protection, however, may sooner cease).” For the purposes of this note we need simply to call attention to these characteristics without much extended notice of them. As to the fifth, "application to merchandise," we shall subsequently see that the principle of trademarks has been applied to trade signs, corporate names, publications, and other things, so that while they may not under some definitions be technical trademarks, yet being accorded the protection given to trademarks, they are such for all practical purposes. The chief characteristic of a trademark is that it should indicate the origin or ownership of the article. For, unless a trademark does

this, the one who first used it cannot be injured by its appropriation or imitation by others, neither can the public be deceived. The trademark may either by itself, or by association, point to the origin or ownership of the article to which it is applied: See Canal Co. v. Clark, 13 Wall. 311; Falkinburg v. Lucy, 35 Cal. 52, 95 Am. Dec. 76; Insurance Oil Tank Co. v. Scott, 33 La. Ann. 946, 39 Am. Rep. 286; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537, 11 Sup. Ct. Rep. 396; Thomas G. Plant Co. v. May Co., 105 Fed. 375; Tetlow v. Tappan, 85 Fed. 774. The main object of a trademark is to indicate, either by its own meaning or by association, the origin or ownership of the article to which it is applied. This is the only useful purpose which a trademark can or is intended to serve: Handy v. Commander, 49 La. Ann. 1119, 22 South. 230; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537, 11 Sup. Ct. Rep. 396. The exclusive right to use a trademark does not rest on Invention, but on such use as makes it point out the origin of the claimant's goods: Tetlow v. Tappan, 85 Fed. 774. Where the general and chief purpose of a trademark is to point out the origin or ownership of articles, the right to be protected in the exclusive use of such trademark is not affected by the fact that the words used also denote quality, and carry with them a claim of excellence incident to the goods: Thomas G. Plant Co. v. May Co., 105 Fed. 375. In Oakes v. St. Louis Candy Co., 146 Mo. 391, 48 S. W. 467, the words "What Is It," as applied to a particular candy, were denied protection as a trademark on the ground that they did not point out its origin or ownership.

c. Truthfulness.-Generally speaking, a trademark should express the truth, and should be adopted and used in good faith. If its purpose or effect is to practice a fraud on the public, and to deceive them so that they will buy goods which are not what they are represented to be, a trademark will not be protected. Thus, where soap was sold as "Old Country Soap," for the purpose of inducing residents from Europe to believe that such soap was made in the "old country," a person is not entitled to protection in the use of such name: Wrisley Co. v. Iowa Soap Co., 104 Fed. 548. And a manufacturer of Havana cigars who advertised as using only the choicest grades of Havana tobacco, when in fact he used inferior grades, and in many cigars no Havana tobacco at all, was denied protection on the ground of misrepresentation: Hilson Co. v. Foster, 80 Fed. 896. A similar holding respecting the advertising and sale of whisky is found in Krauss v. Peebles' Sons Co., 58 Fed. 585. One who falsely represents the composition of his goods is in no position to enjoin a rival manufacturer from using similar labels on the ground that the latter deceives the public: Clotworthy v. Schepp, 42 Fed. 62. Equity recognizes no property right in a trademark which is calculated to deceive the public as to the place where goods are manufactured. Hence, where shoes are manufac

tured in Georgia, a trademark "Old Colony Shoe Company, Rockland, Mass.," under which the goods are sold, which trademark was adopted because of the reputation of Rockland as a place where fine shoes were made, is not entitled to protection: Coleman etc. Co. v. Dannenberg Co., 103 Ga. 784, 68 Am. St. Rep. 143, 30 S. E. 639. And a trademark which states that the article is made in London by a firm who are purveyors to her majesty, when in truth is prepared in New York by a different firm, will not be protected: Raymond v. Royal Baking Powder Co., 85 Fed. 231. A trademark on medicine which states that it was made in Massachusetts by one firm will not be protected, where the medicine is in fact made in New York by another firm: Manhattan Medicine Co. v. Wood, 108 U. S. 218, 2 Sup. Ct. Rep. 436. A trademark, "Prince's Metallic Paint," originally used to designate paint made from ores dug from the Prince mine, is not entitled to protection when used in connection with paints made from ores coming from other mines: Prince's Metallic Paint Co. v. Prince Mfg. Co., 57 Fed. 938.

It is not every untruthful or inaccurate statement, however, that will deprive a person of the right to the exclusive use of a trademark. Thus, the mere fact that a medicine will not accomplish all that is claimed for it is not sufficient fraud to deprive a company of relief in a court of equity: California Fig Syrup Co. v. Worden, 95 Fed. 132. Inaccurate statements which are immaterial are not such false representations as to disentitle a manufacturer using labels to protection against infringement: Tarrant & Co. v. Hoff, 76 Fed. 959. The fact that the same trademark is put on different brands is immaterial, where the different brands are properly distinguished so that no deception results: Lichtenstein v. Goldsmith, 37 Fed. 359. Where the boxes sold are also labeled with the name of the local dealer is not such a false representation as will invalidate the trademark: Lichtenstein v. Goldsmith, 37 Fed. 359; Pike Mfg. Co. v. Cleveland Stone Co., 35 Fed. 896. The continued use of the name of a firm as a trademark, after a change has taken place in the name of the firm, is not such a deception as will deprive the firm of the right to protection in the use of the name: Feder v. Benkert, 70 Fed. 613. The fact that "Carlsbad Sprudel Lozenges" contain but ten per cent of the ingredients found in Carlsbad water is not such a misrepresentation as to prevent the court from giving relief for an infringement of the name: Carlsbad v. Kutnow, 71 Fed. 167. Where a complainant, who seeks to have his trademark protected, corrects false statements therein and in his advertisement after suit is brought, this does not help his case if he had no right to protection at the time the suit was filed: Alaska Packers' Assn. v. Alaska Imp. Co., 60 Fed. 103.

From an examination of the cases already cited it will appear that there is a distinction between false statements made by a complain

ant who is seeking to have his trademark protected, and false statements made by one against whom relief is sought. In the first case, the false statements of the complainant will prevent him from obtaining relief and he is not entitled to the exclusive use of his trademark, since he does not come into equity with clean hands. In the second case, the complainant is not entitled to relief merely because of the false statements of the defendant, and the defendant will not be enjoined from using his words or designs merely because they are false, unless the complainant also has the exclusive right to their use. In other words, untruthfulness and false statements furnish good ground for denying relief and protection, but they are not always sufficient cause for granting affirmative relief unless the complainant has the exclusive right to use the trademark.

d. Novelty and Utility.-The word or words employed should be new or novel in their application to the particular article, and not a word generally used in connection with such article. Thus, the words "Tycoon Tea," which had been in general use for many years as a term descriptive of a particular class of teas, are not the subject of a trademark, since all men engaged in the tea business had an equal right to use them. The words belonged to the public as the common property of the trade: Corbin v. Gould, 133 U. S. 308, 10 Sup. Ct. Rep. 312. “La Normandi," as applied to cigars, is not sufficiently novel to be a trademark where it has long been in use for this purpose by others: Stachelberg v. Ponce, 128 U. S. 686, 9 Sup. Ct. Rep. 200. The word "Kaiser," as applied to mineral waters, is not the subject of exclusive appropriation, where others had long used it for the same purpose: Luyties v. Hollendeer, 30 Fed. 632.

A design should have some utility to designate the origin or ownership. Hence, where a manufacturer uses upon his packages a large number of different names, so that the effect is to produce confusion, rather than certainty, as to origin, he cannot be protected in the exclusive use of such names as trademarks: Albany etc. Paper Co. v. Hoberg Co., 102 Fed. 157.

II. What are and What are not Valid Trademarks.

a. Arbitrary and Fanciful Names.-The kind of words most frequently selected by manufacturers as trademarks for the purpose of designating their goods and distinguishing them from others, and the kind chosen with the most uniform success, are words which are arbitrary or fanciful in character. Indeed, a trademark should be an arbitrary or fanciful name, not descriptive of the article itself, and which has never before been applied to such articles. Whether a word is arbitrary and fanciful, or whether it is descriptive, and hence not the proper subject of a trademark, may frequently be a very nice question. In Selchow v. Baker, 93 N. Y.