Burke v. Cassin

By the Court, Rhodes, J.: , From the year 1848 to the time of the commencement of these actions, Udolpho Wolfe, the plaintiff’s testator, who has died since the commencement of these actions, has been engaged in the manufacture of gin at Schiedam, in Holland, and in the importation of it into Hew York, and in the sale of it in different places in the United States. The gin is put up in bottles having labels attached, and the bottles are inclosed in wrappers, also having labels thereon, and are packed in boxes, upon which are stamped certain words which appear on the labels. Wolfe claims as his trademark, the words: “ Wolfe’s Aromatic Schiedam Schnapps.” The defendants are engaged in manufacturing or compounding and offering for sale, at San Francisco, gin, or an article — 478 — which resembles gin, but which is inferior in quality to that which is sold by the plaintiff; and the labels and stamps which they place on their bottles and the wrappers and boxes, bear a striking resemblance to those which are used by the plaintiff. The labels used by the defendants in one of the actions, represent the commodity to which it is attached as “ Von Wolf’s Aromatic Schiedam Schnapps;” and those which are used by the defendants in the other, action, represent it as “Van Wolf’s Aromatic Schiedam Schnapps.” The plaintiff claims that, the use of those words,.stamps and labels, by the defendants, is a violation of his trademark. A trademark is a word, symbol, figure, form, or device, or a combination thereof, adopted or devised and used by a manufacturer or vender of goods, to designate the origin or ownership of his goods, and is used by him to distinguish his goods from those which are manufactured or sold by others. A violation of a trademark consists in the adoption or colorable imitation thereof, and its use by the wrongdoer on his goods in such manner that the purchasers of the goods of the wrongdoer are deceived, or liable to be deceived, and induced to believe that such goods were manufactured or sold by the owner of the trademark. In its essence, it is a false representation in respect to the origin or ownership of the goods, to which the false or simulated trademark is attached. There is but little conflict among the cases in regard to the rules of law governing the acquisition or enjoyment of the right of a trademark, or those applicable to controversies growing out of the violation of those rights; but the principal difficulties arise in the application of those rules to the varied and sometimes complicated facts of the several cases. One of those rules is that a word, figure, etc., in common use, which indicates the name, nature, kind, quality, or character of the article, cannot be appropriated as a trademark; and even a new word which is devised for a — 479 — new preparation, compound, or article, will not be protected as a trademark, as is held by many well considered cases; but there are others which lay down the contrary doctrine. The name which the plaintiff employs to designate the article which he sells, is “ Schiedam Schnapps,” or “Schnapps.” The affidavits used on the.hearing of the motion to dissolve the injunction, tend to show that the word Schnapps was in common use in Holland, and to some extent in the United States, at the time of its adoption by the plaintiff". Its primary signification probably was “dram,” or “drink,” but it had long been used to designate gin manufactured at Schiedam. That word, therefore, could not be appropriated by the plaintiff* as his trademark. Had it not been used in Hew York, or elsewhere in the United States, as the name of gin, prior to its adoption by the plaintiff^ he still could not maintain his claim to it. Could he secure his claim to the word on the ground that it was not in use in the United States, prior to the time when he adopted it, the law for the protection of trademarks would be shorn of most of its strength, for on the same principle other persons would be at liberty to adopt and use the word in other cities, States, or countries, if at the time of its adoption by them it was not in use in such cities, States, or countries. The rule for the exclusion of a word in common-use, is coextensive with that for the protection of a word which was rightfully adopted as a trademark. Hor can the word “Schiedam” be adopted as a part of the plaintiff’s trademark. It is claimed as indicating origin—the place of manufacture of the plaintiff’s gin; but the evidence shows that there are other manufactories of gin at that city besides that of the plaintiff, and the word has long been used to denote quality or kind. A party would not be entitled to be protected in the use of the word “Havana” as a trademark for his cigars, even as against a party whose cigars were neither manufactured or sold at — 480 — Havana, for that word is used as descriptive of the kind or quality of the cigars. The word “aromatic” is employed as expressive of one of the qualities of the plaintiff’s liquor, and therefore cannot be claimed as a trademark. The name of the manufacturer or seller of goods may, of course, be used aí a trademark; and the adoption of the same name as a trademark for goods of the same kind, by a person bearing a different name, is without justification or excuse, and presents one of the clearest cases of piracy of a trademark. The name of the plaintiff" is “Wolfe,” and the name, as printed in the defendants’ labels, is “Wolf,” and has the prefix “Van ” or “ Von.” The latter, as we understand the affidavits, are mere prefixes, and have no greater significance than would the abbreviation “Mr.” in the same position. The omission of the final letter of the plaintiff’s name, does not work a material change of the name. A slight change in the name, is an artifice often resorted to by those who offer in the markets their goods, as the goods manufactured or sold by another; but the cases show that it meets with no favor from the Courts. We are clearly of the opinion that “Van Wolf” or “Von Wolf” are but imitations of the plaintiff’s name, and are violations of his trademark. It will readily be seen upon a comparison of the labels of the plaintiff' with those of the defendants, that they are in many respects different, but in other respects there is a marked resemblance. The similarity could not have been accidental. The design on the part of the defendants to imitate the plaintiff’s labels is unmistakable. The labels are of nearly the same dimensions, the paper and ink are respectively of-the same colors. The prominent words in 1 each are those already mentioned in discussing the questions in respect to the trademark—“Aromatic Schiedam Schnapps”—and the general appearance of the defendants’ — 481 — labels is such, that a large majority of persons would be liable to mistake them for the plaintiff’s labels. In Falkinburg v. Lucy, 35 Cal. 52, it is said that a label is not entitled to protection as a trademark; and on the authority of that case, as we understand the plaintiff’s counsel, the preliminary injunction in each of these cases was dissolved. A label is not a trademark, as recognized at common law, though it may in fact contain no words, figures, etc., except those which constitute the trademark. A person may adopt a label of given materials, size, color, etc., and may attach the same to his goods, or the wrappers, cases, etc., in which they are packed, although another person has previously adopted a label of the same materials, dimensions, and color, and used them in the same manner. While this right is conceded, in its exercise there is no necessity or propriety in adopting a label already in use by another. But labels, like trademarks, may be adopted and used by a manufacturer or seller of goods, to distinguish his goods from those of others; and when another person uses the same label or a colorable imitation thereof, it produces the same result as would a copy or colorable imitation of a trademark—that is to say, it is a false representation, that the goods to which it is attached were manufactured or sold by the person whose label was copied or imitated, and purchasers are deceived and are liable to be defrauded. On principle, a person is as fully entitled to be protected in the use of his label as his trademark, and the authorities fully sustain this position. (See Amoskeag v. Spear, 2 Sand. S. C. 599; Stokes v. Landgraff, 17 Barb. 608; Fetridge v. Wells, 4 Abb. Pr. 144; Coffeen v. Brunton, 4 McLean, 516; Williams v. Johnson, 2 Bos. 1; Croft v. Day, 7 Beav. 84; Upton, 144.) The decision in Falkinburg v. Lucy, supra, is that an entire label will not be protected at common law as a trademark; but, while it may — 482 — be conceded that a label is' not, strictly speaking, a trademark, the authorities, in our opinion, leave no doubt that the' law does and should protect a party, against the use or colorable imitation of his label by another. The imitation by the defendants of the labels attached by "Wolfe to his bottles and the wrappers, and of the stamp upon his boxes or cases, is very apparent and well calculated to deceive purchasers; and the plaintiff's are entitled to an injunction, to protect them from a further violation of their rights in those respects. Order in each case dissolving the injunction is reversed, and the cause remanded with directions to modify the injunction so as to restrain the defendants from affixing, stamping, or attaching, or causing to be affixed, stamped, or attached to or upon the bottles, wrappers, or boxes in which is contained or packed the spirituous liquor manufactured, compounded, sold, or offered for sale by them, the name or word “Wolfe,” or “Wolf,” or “Yon Wolf,” or “Yan Wolf,” or any colorable imitation of the name or word “Wolfe,” or the labels or stamps which are attached to or stamped on the plaintiff’s bottles, wrappers, or boxes, or any colorable imitation of them or either of them.