Foster, Milburn & Co. v. Blood Balm Co.

Bleckley, Chief Justice. In the element of registered trade-mark, the case made by 'the complainants is a total failure. They had, and still have, a registered mark, but that has never, in any way, been encroached upon by the defendants. The registration has proved unfortunate, rather than happy, for it has even become a surprise to the complainants themselves, besides tending, perhaps, to mislead the defendants. The complainants now suggest that their true and correct trademark was not registered, but that .by mistake something else was substituted. This is enough to embarrass them, considering that the registration was founded on oath, and was attended with a printed fao simile and a thoroughly minute description in words of the mark submitted for registration. A mistake, even in so solemn and deliberate a proceeding, might occur; but whether it did or not, the record stands as originally made, and it is certain that unless the complainants can have more than one trade-mark for the same class of goods, or unless a trade-mark may consist in part of matter registered and in part of matter not registered, their trade-mark has not been tampered with. The registered mark has been continuously used by them since the registration, as’ well as before. They affix it to each and every package of their goods, but they use it always in connection with the other three sides of their label, the registered matter constituting the fourth side. As to whether one person or firm can appropriate :two or more trade-marks for the same goods in the same commerce,- one registered and the other not, we are not [224] prepared to say. The books, so far as we are acquainted with them, furnish no instance of such double marks; and if }here can be two, we see no reason why there may not be twenty. Neither will we now say whether a mark registered as a whole can be treated as but part of a trademark, when used in combination with another material part not registered. It is probable that the act of congress, properly construed, confers no authority for registering less than the whole of any mark on which the applicant for registration intends to rely in subsequently using the registered matter affixed to his merchandise. There is good reason for not opening the public registry to mere scraps and fragments of a trade symbol. If the flag is to consist of stars and stripes, the device is neither one nor the other, but both together, and both should appear in the Herald’s book. We, however, mention these points only to pass them, not to decide them. The case before us does not rest solely, nor even chiefly, on the strict trade-mark element, but on the analogous element of label or wrapper. Conceding that the complainants’ trade-mark is confined to the fourth side of their wrapper, a side which the defendants have in no way touched, the question is, are the other three sides, each of them more loud to the public eye than is the fourth, such a label, or such parts of a label, as a court of equity can and will protect against unfair infringement? The prior use of this label by the complainants is clearly established, and the manner of its use has been such as to give them as strong a right as is capable of arising in respect to any label of its, class. How to classify it is the sole difficulty on this branch of the case. It boars the names of the proprietors, the name of their medicine and of their place of business, the names of various diseases, etc., and is characterized by a device consisting chiefly of a letter of the alphabet nine times repeated, the repetitions being arranged in three vertical columns, separated by lines or bars, so as to form three groups of three B’s (B. B. B.), and when applied to the goods, each of three [225] sides of the package presents to the eye one of these triple combinations of B in conspicuous type. There are other features, but these are the most important in the present controversy. The name of complainants’ medicine is Burdock Blood Bitters, and this gives rise to the suggestion that the three B's on the label are used descriptively of the medicine, being the initials of the three words constituting this name. Moreover, as all the words are generic terms belonging to the language, the usual distinction between the appropriation of these in their literal sense, and words arbitrary or specific, is also suggested. A further suggestion is that: B is merely a letter of the common alphabet, and being: such, it is the property of the world and incapable of appropriation to the exclusive use of anybody. These considerations would, perhaps, all be pertinent were it not for: the distinction between a trade-mark in its technical character, and a quasi trade-mark, such as a label or wrapper:. It is not quite certain .that, even as a technical trade-mark, nine B’s distributed into groups of three each, arranged in. a given order, and placed in colored frames or settings,, would not be sufficiently fanciful and arbitrary to be- legitimate. There is no possible device or design which does; not consist in its elements of something which is common to-the whole world when it comes to be represented todheeye. Combination and arrangement of some such elements underlie all individuality and all difference. If nine-letters, collocated so as to forma new word, will become w symbol, it may be difficult to say why the same letters, or one of them nine times repeated, may not be so arranged and combined as to form, with certain accessory lines enclosing them, a symbolic tableau. Such a device, it might be, would serve not only as a commercial emblem, but as the distinctive standard of a nation. Indeed,, it may be doubtful if the flag of our own country would be more-easy of recognition amongst other national ensigns, than, would [226] be this label amongst most other labels of proprietary medicines. But -whether the design would suffice or not for a technical trade-mark, there can be no reasonable doubt that it is sufficient for a label; for, taken in connection with the proprietors’ names, the name of their place of business, and the name of their medicine, all of which appear upon it, it is an appropriate indication of the origin and ownership of their goods; and if others, for goods of the same class, havé imitated the main features of it so closely as that the imitation is likely to mislead the average public .and betray purchasers into ordering goods covered by the ¡simulated label, thinking them to be those put on the market by the complainants, this would amount to unfair ■competition in trade, and upon being ascertained with due Certainty, the use of the imitation ought to be enjoined. 2. We are, however, satisfied that, in this case, the injunction, if to be granted at all, ought to await the result of a trial upon the merits. It is a grave matter to petrify in an instant a living business by a mere interlocutory ■order. If the use of a particular label is important to the complainants, so is it to the defendants. And, at last, the facts have to be found by a jury; the chancellor, under •our system, has no power to settle them in vacation or •even in term. Any injunction which he, unaided by a jury, could grant would be only a temporary expedient. It would prevent neither the delay nor the expense of a jury trial. At that trial, it will be for the jury to say by their verdict, not only whether the label used by the defendants resembles ’ the complainants’, but whether the imitation is such as to deceive, and whether its use, if continued, will probably .have that result. Divers other questions ■ of fact, if the pleadings retain their present shape, will come before the jury for full and final ascertainment. . It is not shown that the defendants are insolvent, or that for any cause the denial of a preliminary injunction will produce irreparable damage. There would [227] be much more danger of such damage to the defendants from a mistaken grant of an injunction at this stage of the proceedings than there is to the complainants from the refusal to grant it. We think the judge below acted wisely and prudently in forbearing to interfere. . He not only exercised a sound discretion, but, so far as we can discern, made a perfectly accurate decision — the very one he ought to have made. As we affirm the judgment, we forbear to express, or even to intimate, an opinion as to whether the defendant’s label is or is not piratical. At bottom, that question is one of fact rather than of law, and we leave it to the appropriate tribunal. Instead of quoting authorities in detail for the points we have glanced at, as well as those decided in the course of this opinion, we refer generally to Browne on Trade-Marks, 2d edition, and the numerous citations which that work contains, both in the text and the notes. See also Myer’s Federal Decisions, vol. 25, title Trade-Marks. Judgment affirmed.