N. K. Fairbank Co. v. Swift & Co.

Mr. Justice Waterman delivered the opinion of the Court. This is an appeal from the decree dismissing a bill filed by the if. K. Fair bank Company, a corporation organized under the laws of the State of Illinois, against Swift & Company? also a corporation organized under the laws of this State. The suit was brought to restrain an alleged infringement of two trade-marlcs, which are the property of appellant, and also to protect the appellant against an alleged unfair competition in business. It appears from the evidence that the contending parties each manufacture very similar substances ; that the appellant was the first to make practicable for common use in cooking, a preparation made from cotton seed oil, for which preparation it coined the name “ cottolene,” and that to popularize the use of the same, and to make the public acquainted therewith, it has for a number of years expended in advertising very large sums of money—as one witness testified, as much as $100,000 per annum; that the manufacture carried on by the defendant of cotton seed oil for cooking purposes, was by it begun some time after the complainant had engaged in such business, and after complainant had obtained’its trade-marks and introduced its manufacture to the public under the name of “ cottolenethat the defendant coined and has made use of the word “ cotosuet ” to designate its product; that the principal ingredient of each of the preparations is cotton seed oil, a small quantity of beef suet stearine being added thereto. The complainant charged that the defendant, “for the purpose of creating upon the trade and public the false impression that said defendant’s product is in reality the product of complainant, or that the defendant’s product is the same as that of the complainant and does not differ therefrom as the complex product of one manufacturer commonly differs from a similar product of the same general class made by another manufacturer and for the purpose of deceiving or enabling dealers to deceive and impose upon persons, and especially the careless and uninformed and those ignorant of the English language Avho were accustomed or disposed to buy for trade or consumption the cottolene made by the complainant, by passing off and imposing upon such persons the product of defendant in lieu of that of complainant, and for the purpose of trespassing upon the good will of the public towards complainant, and unlawfully and wrongfully securing to defendant trade which of right belongs to complainant, defendant has made and is now using upon its said goods false and fraudulent marks, signs and tokens,” setting forth a particular description of such alleged false and fraudulent marks, signs and tokens, among which is that the word “cotosuet ” is so used by the defendant. No person is entitled to represent his wares as being the goods of another man, or articles of his manufacture as having been made by another, and no person is by the law permitted to use any mark, sign, symbol, name, device or other means, whereby he makes a false representation, or deceives as to his own goods, or as to the goods of another, or whereby, without himself making a false representation to a buyer who purchases from him, he enables such buyer to tell a lie or to make an untrue representation to somebody else who is the ultimate customer. Mor is it a defense to an action, the gist of which is a charge of deception, to reply that the words uttered by the defendant were the literal truth, for the truth may be stated in a way likely to, and that does, deceive. What is required is that a party shall not conduct his business so that by what he says or does, he deceives customers to their injury, or to that of a competitor. A man may not use his own name for the purpose of deception, and such fraudulent use will be enjoined. Fair competition in business is legitimate and promotes the public good, but an unfair appropriation of another’s business by using his name or trade-mark, or an imitation thereof calculated to deceive the public, is not permissible and will be enjoined by a court of equity. Hazleton Boiler Co. v. Hazleton Tripod Boiler Co., 40 Ill. App. 430; Same, 142 Ill. p. 509; Reddaway v. Banhan, House of Lords, opinion filed March 26, 1896; Celluloid Co. v. Cellonite Co., 32 Fed. Rep. 97. As has frequently been said, it is not often the case' that one intending to palm off his goods as those of another, copies entirely the marks, signs, brands or trade-marks of his rival; what he does is to imitate, more or less closely, in such a way as to deceive the unwary or ordinary observer. What degree of resemblance is necessary in order to warrant the issuing of an injunction to prevent the fraudulent use of trade-marks, or to prevent the fraudulent use of resemblances to trade-marks, or to stop unfair competition in business, must necessarily always continue to be a question which can not be settled by rules applicable to all cases. While the court is not bound to interfere where ordinary attention will enable the purchasers to discriminate between the trade-marks used on the goods manufactured by different parties, nevertheless, the character of the article, the use to which it is put, and the kind of people who are likely to ask for it, as well as the manner in which it is probable it will be ordered, must not be lost sight of. Popham v. Cole, 66 N. Y. 69; 23 Am. Rep. 22, and cases there cited; Morgan’s Sons Co. v. Troxell, 89 N. Y. 292; 42 Am. Rep. 294; Manufacturing Co. v. Francis, 101 U. S. 51; Ball v. Siegel, 116 Ill. 137; Reed v. Richardson, 45 L. T. (N. S.) 54; Beard v. Turner, 13 Id. 736; Leidesdorf v. Flint, 7 N. W. Rep. 174; Eggers v. Heink, 63 Cal. 445; Morgan’s Sons Co. v. Troxell, 23 Hun 632; Ewing v. Johnston, L. R. 18, Ch. Div. 612; Apollo naris Co. v. Sherer, 22 Fed. Rep. 22. Applying these principles to the case at bar, we are, from an examination of the evidence, to determine whether defendant has conducted itself so that its goods are represented or made to appear as the goods of the complainant, and whether the defendant, without making a direct false representation to any of its customers, has so conducted itself as to enable such customers to make a false representation to somebody else who is to be the ultimate customer. Has it been guilty of unfair competition in business? All practices between rivals in business which tend to engender unfair competition, are odious, and will be suppressed by injunction. Ho man will be permitted to make use of signs or tokens which serve to confuse the identity of his business Avith that of another, or to mislead the public, and thus divert custom from his competitor to himself. It is urged that the defendant, knowing the great success which had attended the endeavor to sell the complainant’s product under the name “ cottolene,” deliberately chose as a designation for its, the defendant’s, product, the word “cotosuet,” intending thereby to confuse the public as to the identity of the product of the complainant and that of the defendant, and that the use of the word “ cotosuet ” has had such effect. We do not agree with what has been said in one case, that the use of a sign or token so similar to that of a rival as that there is a possibility that confusion may arise therefrom, is sufficient to call for the interposition of a court of equity. Confusion is possible under almost any circumstances. The question is not what is possible, but what is probable. The word “ cottolene,” from its similarity of formation to the words gasolene, naphthalene, benzolene, petrolene, and other chemical names, indicates an article derived substantially entirely from a product of the cotton plant; while the word “ cotosuet ” indicates a substance derived from a product of the cotton plant and suet; and we do not think that an ordinary purchaser of such articles would be misled by the term “ cotosuet ” into purchasing it, thinking he was obtaining what is known as “cottolene.” We can well understand that a person who desired to obtain, for cooking purposes, a vegetable shortening, might easily be induced by a grocer to accept “cotosuet,” “cookene,” “golden suet,” “suetene,” “cornene” “clarelene,” “golden shortening,” or “ supreme shortening ” — names applied by other manufacturers to their respective products of articles similar to “ cottolene ”—although such purchaser had distinctly asked for “ cottolene.” It is well known that retail vendors can, to the ordinary purchaser, sell several similar articles, that Avhich they, as such vendors, endeavor to dispose of, and that if the articles are substantially alike, the seller will hear no “kicking,” as, in the present case, one witness testified he heard none when he gave “ cotosuet ” to people who inquired for “cottolene.” There are doubtless in this country millions of people to whom, if Seipp’s beer were given when they called for Blatz’s, or vice versa, would make no complaint. To a person of ordinary observation and attention, the distinction between “cottolene” and “cotosuet” is obvious. Only a person of more than average heedlessness and carelessness would mistake one for the other. We have examined a large number of exhibits in the way of pictures, signs and devices, employed respectively by appellant and appellee to advertise and sell their respective goods, and do not find, except in one instance, any such resemblance as would deceive a person of ordinary attention — having reference in what we say to the class of persons by whom these respective products are likely to be inquired for and bought, and the way and manner in which they are sold — nor do we find any evidence that the defendant has intended to palm off its goods as the product of the complainant; on the contrary, we think in every instance, the brands, marks and advertisements of “ cotosuet ” contain a plain and easily recognizable statement; indeed, one by which it is substantially impossible for an observer to fail to see that the “ cotosuet ” advertised or branded is made only by Swift & Company, the defendant. One of the trade-marks of the complainant is that of the head of a steer surrounded by cotton bolls. The defendant has made use of the head of a steer surrounded by cotton bolls. The steers do not look alike; the dissimilarity between the two heads is very apparent; yet as the picture of the steer’s head, made by the complainant, has surrounding it the words “ Cottolene, the new shortening, made by The 1ST. K. Fairbank Company, Chicago, U. S, A.,” and the representation of a steer’s head used by the defendant has about it the words, “ Cotosuet, the new shortening, made only by Swift & Company, Chicago, IT. S. A.,” we are of the opinion that there is such similarity between these two devices, cards or advertisements, as that there is a tendency to deceive, and while in the very great amount of advertising matter put forth by the respective parties, it is not strange that as to more or less of the same there should be, without any intention to deceive, considerable similarity in ■the devices used by one to those employed by the other, we think, without reference to whether the device of the steer’s head surrounded by cotton bolls used by the defendant was without the intention to make somethin» O similar to that of the complainant, made use of, yet it is a thing it ought not to do; and this, we understand, the defendant concedes, and insists that it has altogether ceased to use such device; and there being no evidence to the contrary of this statement, we do not think that it is necessary an injunction should go as to the use of such device by the defendant. As to the use of the word “ cotosuet,” and devices other than the steer’s head, before mentioned, employed by the defendant, of which complaint is made, we do not pnt our affirmance of the decree of the Circuit Court upon the ground that careful buyers will not be deceived, but that persons of ordinary attention, such as will be likely to ask for and desire to buy complainant’s product, will not be deceived. The complainant asks that an answer may be made to this question: “ Why did the defendant coin and use the simulated word ‘ cotosuet ? ’ ” The officers and agents of the defendant have testified how they came to make use of that word, and there is nothing to show that what they said in this regard is not true. No court, rolling back the record of time, can open, read and know the real intent and purpose and the actual motive governing the action of the defendant in coining the word “ cotosuet ” as a name for its product. Under the testimony and the circumstances of this case, it seems to us it made use of such word because, as clearly as any short word that could be created, it briefly designated the materials from which the defendant’s product is made, and that it was not chosen for the purpose of misleading the public or defrauding the complainant out of anything to which it was entitled. We do not find that the defendant has made use of its carts and wagons of complainant’s registered and well known trade mark or devices similar thereto, to such an extent or in such a manner as to cast suspicion upon its purposes, or show that it intended to perpetrate a fraud either upon the public or the complainant; and it seems to us that in printing on its boxes, cards, factory, posters, and elsewhere, the sentence, “ Cotosuet, the new shortening, made only by Swift & Co.” it meant to proclaim to the world that “ cotosuet ” was a new shortening made only by it, the defendant. The complainant admits that more than a dozen manufacturers are making in large quantities, as does it, a new shortening, the principal ingredient of which is cotton seed oil. Notwithstanding this, the complainant continues to publish as an advertisement the lines, “ Cottolene, the new shortening, made by the N. K. Fairbank Co.” We do not understand that by this the complainant means to declare that it is the only manufacturer of a new shortening, or that the words “ the new shortening,” can only truthfully be applied to its product, but that by such advertisement it proclaims that “ cottolene ” is the new shortening by it made. The complainant does not claim that the words, “ the new shortening,” are its trade-mark, or that it has acquired any right to the exclusive use of the same; its insistence merely is, that those words having been used by it in connection with its advertisement of “ cottolene,” those words used by the defendant in connection with its advertisement of “ cotosuet ” tend to deceive the unwary. So it may be said, do the words “ Chicago, U. S. A.,” employed by both complainant and defendant, have a tendency to confuse. Doubtless, there would be less danger of confusion if complainant’s product was made only in Chicago, and the defendant’s in St. Louis, and the advertisements of the respective parties respectively so stated. But as we have before stated, we are not concerned in this case with possible confusion, or with mistakes that may be made by persons of more than average carelessness and heedlessness, but with confusion likely to arise in the mind of the ordinary observer of the class and condition of those whom it is probable will desire to purchase “ cottolene,” under the circumstances and in the manner in which it is offered for sale. As to such circumstances and such manner, we do not think the complainant is being, or will be, unduly prejudiced by anything the defendant is doing. The court below, therefore, in our judgment, properly refused to enjoin the defendant, as prayed by the complainant, and its decree is affirmed.