Enoch Morgan's Sons Co. v. . Troxell

*297 Rapallo, J. Specimens of the packages and labels used by the plaintiff, and of those used by the defendants, and which are claimed to be an infringement of the plaintiff’s trade-mark, have been submitted to our inspection, and we are clearly of opinion that there is too great a dissimilarity between the two to sustain the judgment in this case. The only points of similarity between the two articles sold are, that they are both small cakes of soap covered with tin-foil or tinned paper, and having a blue band around them, with gilt lettering. The cakes are not even of the same shape, one being nearly square, and the other an oblong. But we are of opinion that this form of package, with a blue band and gilt lettering, could not be appropriated by the plaintiff as a trade-mark. There is nothing peculiar about it, and it is an appropriate and usual form in which to put up small cakes of soap, and the law of trade-marks has not yet gone so far as to enable a party to appropriate such a form of package and fashion of label, and exclude every one else from its use, or from the use of any thing resembling it. If it had, the different forms and -fashions of cigar-boxes, packages of chewing tobacco, perfumery, canned goods, and other small articles, and the color or style of labels which every dealer according to his taste adopts or selects from those in use, would afford food for litigation, sufficient to give constant occupation to the courts. All these articles of each class bear a general resemblance to each other, and the products of the different dealers can be distinguished only by the brands, marks, or names which they may put upon them, and these can be protected as trade-marks only so far as they are new and comply with the other conditions necessary to constitute a trade-mark. When there is a simulation of a trade-mark, and the intent becomes a subject of inquiry, the form, color, and general appearance of the packages may be material, but to sustain an action there must be an imitation of something that can legally be appropriated as a trade-mark. When we come to look at the brands or contents of the labels, they are entirely different. The label of the plaintiff on one side of the package is “ Sapo *298 lio for cleaning and polishing, manufactured by Enoch Morgan’s Sons & Co., -440 West street, Mew York,” and on the other side, “ Enoch Morgan’s Sons’ Sapolio,” with a well-drawn figure of a human face opposite a pan, and reflected in it. The label of the defendants does not bear the slightest resemblance to this, except that it is blue paper, with gilt lettering; .it is different in shape, and the wording is on one side in large letters, “ Troxell’s Pride of the Kitchen Soap,” the words “ Scouring and Polishing ” being printed at the bottom in small letters. On the other side is printed in large letters, “ Pride of the Kitchen Soap,” under which are six lines in small letters describing its uses. The only mark upon the defendants’ packages which presents even an idea similar to that of the plaintiff, is a very small figure of a monkey, sitting down, tail in the air, and looking at something which he holds in his hand, which may be supposed to be a mirror, or pan, or some bright article, but so diminutive as not to be at all conspicuous, and entirely different in appearance from the distinct and well-drawn figure printed on the plaintiff’s label, and on each side of the monkey is the word, “ Trade-mark,” in very small letters. The dissimilarity in these figures is much greater even than that of the hogs in Popham v. Cole (66 N. Y. 74; 23 Am. Rep. 22). The mere idea represented by some figure on an article sold for polishing purposes, that it will make things bright enough to be used as mirrors, cannot be appropriated in a trade-mark. The figure by which that idea is sought to be conveyed may perhaps be adopted, but in this case there is no similarity whatever in the figures. If, as we think, there was no imitation of any trade-mark of the plaintiff, the judgment cannot be sustained on the ground of fraudulent representations, or devices on the part of the defendants to palm off their goods upon individuals as the goods of the plaintiff. What remedy there is for such a wrong if proved, it is not necessary now to inquire, but the remedy clearly is not to restrain the defendants from selling their own goods in packages and with labels which they have a legal right to use, and which do not infringe upon any trade-mark of the plaintiff. *299 The judgment should be reversed, and a new trial ordered, costs to abide the event. All concur, except Miller and Traoy, JJ., absent. Judgment reversed.