Brooklyn White Lead Co. v. Masury

By the Court, Mitchell, P. J. The plaintiffs have been engaged in the manufacture of white lead for more than twenty years, and have been in the habit, for that period, of marking their kegs with their name; adding the words, “ premium lead, warranted pure.” Since 1849, the defendant has been engaged in the same business; he and the plaintiffs manufacturing in Brooklyn, and each having a store in New York. The defendant, at first, labeled his kegs “ Brooklyn White Lead * pure, 100 lbs.” To that the plaintiffs did not object. They knew it, and may be considered as having assented to it, and led the defendant to continue to use that name, and enabled him to obtain a reputation for it as his own, by their acquiescence. As they both dealt in the same article, and both man [418] ufactured it at Boooklyn, each had the same right to describe it as Brooklyn white lead; and it is shown that many other companies had used the same designation. But within some few years, (how many does not appear,) the defendant has changed his mark, and assumed one to which he has no title, and which is an imitation of the plaintiffs’ with only a colorable difference; that of “ Brooklyn white lead and zinc company.” He has no such company, and that part of his new title seems to have been adopted to imitate the plaintiffs’ and to make his paint pass as theirs. Such would be its effect with any but the most cautious. It is to protect the plaintiffs’ right of selling his own that the law of trade marks has been introduced. It must include a right to sell to all—to the incautious as well as to the cautious. Any false name that is assumed in imitation of a prior true name is in violation of this right, and the use of it should be restrained by injunction. [New York General Term, September 14, 1857. The defendant should be enjoined from the use of the word “ company ” or “ Co.” He says others are interested with him in the business. That would justify him in calling his paint by the name of Masury & Co.’s, but not by a title as of an incorporated company, strongly resembling the plaintiffs. He has, within a few years, added to his business the making of zinc paint. He may therefore continue to use the title “ Brooklyn white lead and zinc;” only omitting the name “company,” or “ Co.” The injunction should be so modified. The order appealed from should also be so modified, without costs. Mitchell, Roosevelt and Peabody, Justices.]