Metcalfe v. Brand

JUDGE HOLT delivered the opinion oe the court. This case presents some interesting and rather novel trade-mark questions. — 337 — As early as 1810, one Bnrrowes began to make by a .secret process a particular kind of mustard, at Lexington, Kentucky. It soon became noted for its excellence, and widely known as “ Burrowes’ Lexington Mustard,” or more commonally as “Lexington Mustard.” By this name it was quoted in the market, and soon had an extensive sale at a high price. It was put up in round tin cans of different sizes, with a label upon each of this character, in size, color, letters, words and other indicia : Bnrrowes continued to manufacture, and put it upon the market in this form, and thus labeled, for nearly or perhaps quite thirty years ; and until his death, or near it, in or near 1841, when his wife succeeded to the business, and carried it on in the same way for several ' years,' and until it was transferred to her son, Samuel I). McCullough. He appears at first to have continued . the use of the same label; but subsequently used a — 338 — different one of the following character, and in which the word “Lexington” is similarly used, save as to place: He continued the business until 1869, when he sold out to the firm of Yates & Dudley; and they carried it on until July, 1877, when they transferred it to the appellee, J. H. Brand, While conducted by them they used upon their packages this label; They also used another label, different in color and other respects, upon which were these words inter alia: “Burrowes’ Celebrated Lexington Mustard. — 339 — Manufactured by Yates & Dudley, Lexington, Ky.” They advertised it as "Burro wes’ Lexington, Ky., Mustard,” and appear to have branded some of their cans, "Burrowes’ Lexington Mustard.” Their contract of sale with the appellee, Brand, dated July 12, 1877, speaks of it as "Burrowes’ Lexington, Ky., Mustard.” It had been manufactured during all this time in the same building probably, and certainly in the same locality; and Brand continued to so make it from about the first of August, 1877, until. September following, when he associated one Osborne with him, and removed the business to Louisville, Kentucky, where it was conducted under the firm name of John H. Brand & Co. They used two labels upon their cans or packages, the following being that known as their blue label, and which was used upon the round cans: The ground color of the other was yellow, with various devices and words upon it, among them being '‘Burrowes’ Celebrated Lexington Mustard;” and it was used upon the square cans. They subsequently — 340 — also used the following label, which, as will be seen, is almost identical with that used by Burrowes; And also by printed placards advertised their manufacture as “Burrowes’ Lexington Mustard.” So far as shown, however, all of the labels and' advertisements '.used, after the removal to Louisville, showed upon their face that the firm was located there. The ‘tin cans used in putting up the mustard were round ¡with flat- tops, around which were pasted, in order to more securely fasten them, strips of light red or brownish cotton cloth. The appellant, Metcalfe, began to make mustard at Lexington about 1873, and has so continued ever since. Some two or three years before Yates & Dudley sold out he used a blue label, but upon his square cans only, and it was, according to his own testimony, quite different and easily distinguishable from the blue — 341 — one -used by them, and that subsequently used by the appellee, Brand. It is not exhibited in the record, but Metcalfe testifies, without contradiction, that it contained the words: “E C. Metcalfe’s Improved Lexington, «Kentucky, Mustard.” In November, 1877, he for the first time began to use upon his round tin cans, corresponding in size and shape with those then in use by the appellee, Brand, both the following label, and a strip of cloth similar in all respects to that then employed by Brand: He also, in December, 1878, moved. Ms manufactory into the same building where the Burrowes mustard had formerly been made. The lower court held that the appellee. Brand, had an exclusive right to use the words, “Burrowes’ Lexington Mustard; that the appellant, Metcalfe, had the right to use the words, “H. C. Metcalfe’s Lexington, Kentucky, Mustard ;” but that his package with the strip of light red cloth around its top, and the blue label upon it, was an illegal imitation of Brand’s package, and he was enjoined from using it and from — 342 — packing, labeling or marking his mustard with any colorable imitation of Brand’s blue label, and also from using the words of caution on his (Metcalfe’s) label from the end of the first line and after the word “be,,” to the word “made,” on the third line. He now, by this appeal, complains of this injunction. The court below declined to decide whether Metcalfe could use the words, “Lexington Mustard” or “Lexington, Kentucky, Mustard,” without being preceded by his name ; but decided that he might use the round tin can, or cotton strips to bind the top, or a paper label, provided they were not so combined as to colorably imitate Brand’s package. The appellee, Brand, by a cross-appeal, also complains, insisting that he has an exclusive right to the use of the word, “Lexington,” as a trade-mark in connection with the word“ Mustard,” and its manufacture. These complaints, therefore, present two> questions. First. Has the appellee, Brand, an' exclusive right to the use of the word “Lexington” as the name, or part of the name, of his mustard? Second. Has the appellant, Metcalfe, wrongfully and so far imitated, by label or otherwise, the article manufactured and offered for sale to the public by Brand, as to authorize equitable interference ? The law as to trade-marks is by no means ancient. It is one of the results of multiplied invention and modern commercial growth. Especially is the doctrine of equitable intervention for their protection of recent origin. The right to sue for their improper use doubtless arose originally from the common law right to maintain an action for a false representation ; and as — 343 — the wrong was calculated to work an injury not only to the purchaser, but to the maker or manufacturer of the article, a right of action at common’ law was given to the latter in such a case. Then the common law ■advanced another step. It was held that although the •original purchaser was not deceived, but knew.who was tile real manufacturer, yet, if the trade-mark was put upon the article in order to deceive a future purchaser, and cause the public to believe that it was the manufacture of the person to whom the trade-mark in fact belonged, then this entitled him to sue, because it was equally a deception. Next, the courts of equity— •aequitas sv/pplet legem — declared that although a person had honestly purchased goods from one maker,' with the trade-mark of another upon them, or had manufactured them to order, not knowing that he was wrongfully putting the trade-mark of another -upon them, yet he could not put them upon the market, because it would both injure the true owner of the trade-mark and deceive the public. Thus, gradually, the law extended its protecting arm until the right of the first user to what is known as a trade-mark was recognized, the underlying principle being, that one person shall not be permitted to sell his goods as' those of another, or use the means likely to lead thereto, thus not only injuring such other person but deceiving the public. It will aid us in the consideration of this case to first see, under the rule of stare decisis, what principles of this branch of the law are to be regarded as settled. It is somwhat difficult to give a concise definition of .a trade-mark. It may consist, however, of a — 344 — name or a device, or a peculiar arrangement of words,, lines or figures, or indeed any peculiar mark or symbol,, not theretofore in use, adopted and used by a manufacturer, or a merchant for whom goods may be manufactured, to designate them as those which he manufactures or sells. It may be put either upon the article itself or its case, covering or wrapper, and! is assignable with the business. The term cannot be properly applied to a mere label. It, however, may contain one. It may be the vehicle or embodiment of it. The object is to show the origin of the article. The general rule is against the use of mere words as a trade-mark. An exception to this, however, is where they indicate origin, ownership or the maker. If they are of common use, indicating merely kind or quality, as for instance “superfine,” or “first quality,” or are merely descriptive of the nature of the article, or of a generic character, as “hémp” or “cotton,” then they cannot be so appropriated. (Amoskeag Man’f Co. v. Spear, 2 Sandford’s Sup. Court. Rep., 599; Boardman v. Meriden Brittania Co., 35 Conn., 402; Helmbold v. Helmbold Man’f Co., 17 Am. Law Reg. (N. S.), 169; Manufacturing Co. v. Trainer, 101 U. S., 51.) Such words are the common property of all men. They may be used truthfully by one man, without, infringing upon another’s right, or creating a possibility of the public being thereby deceived. Thus the-word “hemp” is a generic one, embracing the hemp of every man. The mark, “A No. 1,” upon a firkin of butter, is a common one, indicating its quality. A trade-mark must be specific. It must mark the goods of the manufacturer as his goods, and not as his in common with all other persons. — 345 — Keeping in mind the above rules, which we think will be conceded as now settled, we, in the light of them, proceed to the consideration of a question which is by no means beyond dispute. It is, can a person, under any circumstances, acquire a trade-mark right in the name of a place when associated with the name of the article manufactured by him \ In other words, could the appellee, Brand, acquire an exclusive right to use the word “Lexington” as part of the name of his mustard ? It is clear that prior use by him is essential to such a claim. (Manufacturing Co. v. Trainer, supra.) If he had acquired such right, then, he could continue to use it after the removal of his manufactory to Louisville, provided he did so without fraud. Equity will not protect a trade-mark that expresses a falsehood as against one which expresses a truth. To do so would sanction a fraud. (Helmbold v. Helmbold Man’f Co., supra.) It, however, appears that the appellee’s packages of mustard, put up after the removal, always located the firm in Louisville. If a geographical name be used as such, it cannot be protected as a trade-mark. Clearly, all persons living in a town or city may use its name as an address ; and of course many persons may make the same article in the same town, and show that it is so manufactured, by having the name of the place stamped upon it or printed upon the label or covering, as their address or place of business. Otherwise, monopolies, which are destructive of individual right and public interests, would be created and fostered. The right of one person to appropriate the name of a region of country to the exclusion of others — 346 — who produce or sell a similar product of the same region, may bo regarded as settled by the Supreme Court in Canal Company v. Clark, 13 Wall., 311, commonly known as the “Lackawanna Coal Case.” Lackawanna is the name of a considerable region of country. Lackawanna coal is a natural product of that region, and the name was descriptive of the general character or quality of the product. It not only indicated the place from whence the coal came, but the general quality of the article. Being generic and thus descriptive, it was held that each of the contestants had' a right to call his coal “Lackawanna Coal;” but this case cannot be regarded as holding that the pame of a place can, under no circumstances, become a trademark. The general qualities of a natural product are indicated by the name of the region from whence it comes. All have a right to sell it, and in doing so to call it by the name of the section where it is produced, or from whence it originally came, as that in effect describes the article. Such a name indicates the quality, and not the producer or the ownership. All may use it with equal truth. It is not like a sale of one man’s goods as those of another. There is no invasion of a man’s business reputation, and no imposition practiced upon the pub • lie. For these reasons such phrases as “Sea Island Cotton,” “Hungarian Grass,” “Kentucky Hemp,” or “Virginia Tobacco,” will not'be protected as trademarks. This is not so, however, of a manufactured article. The name of the place where it is made serves in no possible way to indicate its quality or composition ; and where the manufacturer has given it a geo — 347 — graphical name, which he was the first to use in connection with the article, it seems to us that it may, from long use in such connection, acquire a secondary meaning; and instead of designating the place where the article is made, indicate its origin, or that it is the product of a particular manufacturer, or made according to his method. When this is the case it becomes, in our opinion, a valid trade-mark. It then designates the particular goods of ■ this one man. The public so understand it; and this is the aim and end of a trade-mark. The name is no longer used to indicate the place where they are made, but becomes the name of his goods. It gives notice that he is the maker. It, by reason of first and continued use, and association with the name of the article made or sold by him, acquires an understood reference to him. It is the trade denomination of his article. It acquires a secondary meaning in- connection with a particular manufacture. Thus, we will suppose that John Doe has for years made at Mt. Sterling, Kentucky, a revolving book-case, which he has called during all that time “The Mt. Sterling Revolving Book-case.” The materials out of which he constructs it come from different places; no one else has made such a case there, or used this name; and it does not express in any way the quality of the article, save as referring to Doe as the maker. The public, when they ask in the market for the “Mt. Sterling Revolving Book-case,” understand that it is the one manufactured by him. The name “Mt. Sterling,” as used in this connection and under such circumstances, indicates tb q particular — 348 — boolt-case of this one man. His skill has given it excellence and. reputation in the market, and justice to him, as well as the protection of the public, require that its name should be protected as a trade-mark. It will create no monopoly. Upon the contrary, it will serve to' stimulate invention and competition. It will not hinder Richard Roe or others from making the same article at the same place, and using the name of the place merely geographically or to show their place of business or as their address; but they must not use it as the name of their boolt-case. Indeed, unless they aim to deceive the public, they would not desire to so use it. If their article is as good or better than that of Doe, there would be no incentive to do so. It will not do to say in such a case that as Roe’s manufactory is at Mt. Sterling, therefore, he, a new-comer, may give his book-case the same name as Doe’s, because equity will not enjoin against telling the truth. It is done for deceit; and when so done, it can not be said in a true sense that it is done truthfully. It is at best but a nominal truth, amounting to a deception. There is really a false representation, which equity, from a sense of common justice, will enjoin. A person’s name may be a trade-mark, as “Decker Brothers” upon pianos. There may be other brothers of the same name, and they could in a certain sense truthfully use the same name upon pianos, which they might subsequently begin to manufacture ; and a man can not be deprived of the right to use his own name; but in such a case he must use it as his own name, and not as the name of his goods. Each case must, of course, turn upon its own partic — 349 — ular circumstances. Browne on the Law of Trademarks, section 192, says: ‘ ‘A word may be considered to be geographical or not, according to the circumstances of the case,” and evidently a distinction should be drawn between the use of a geographical name, indicating the particular manufacture of a certain person, and its use in describing a natural product of a particular locality, possessing qualities depending upon the place. The above view, we think, is supported by both reason and authority. We shall refer to but few cases, although many have been examined. In the Anatolia Liquorice Case (10 Jurist (N. S.), 550), the complainants were manufacturers of a new character of liquorice out of materials obtained from different places, upon which they stamped the name “Anatolia.” The name as used was held to be a trademark. Mr. Browne, in speaking of this case, says: “This is a recognition of the doctrine that a geographical name may cease to be merely such, and acquire a new function as an arbitrary symbol.” (Browne’s Law of Trade-marks, section 184.) The Glenfield Starch Case (5 E. & I. Appeals, 508) appears to have been well considered. There the plaintiffs, as in this case, were the assignees of the business, and had removed their manufactory from the little village of Glenfield to Paisley, but still continued to use the word “Glenfield” upon- their starch. The defendant, residing at Glenfield, and doing business in the very house previously used by the plaintiffs, began to make what he termed upon his labels “Glenfield Starch.” He was enjoined from so using — 350 — the name. Siegart v. Findlater, L. R., 7 Chan., 801, is to the same effect. The opinions in Newman v. Alford, 51 N. Y., 189, and Lea v. Wolf, 15 Abb. Pr. (N. S.), 1, appear to have been based mostly upon an intended fraud ; but where a trade-mark is infringed, the false representation, either directly or indirectly made, is really the essence of the wrong. The Moline Plow Case (Candee, Swan & Co. v. Deere & Co., 54 Ill., 439), and that of the Brooklyn White Lead Company (25 Barb., 416), do not, when closely examined, raise any conflict. In the one the word “Moline” was used as an address, while in the other the complainant was not the first user of the word “Brooklyn.” In the case now in hand, however, there is a conflict of testimony as to the prior use of the word “Lexington,” in connection with the word “mustard.” The labels of Burrowes show that he used it as an address. There is evidence tending to show that both McCullough and Yates & Dudley used it both ways. One of thejr labels indicates its use as a part of the name of their article, while another shows it as an address merely. There was at most no uniformity as to its use by them. It is shown that Metcalfe used it in connection with the word “mustard” upon a former label of his, and while Yates & Dudley were engaged in the business; but the exact time when he began to do so does not appear further than that it was two or three years before they sold to Brand. The evidence that either Metcalfe or Yates & Dudley used it with any uniformity as a distinctive part of the name of their — 351 — article is not of a satisfactory character. This uncertain use, whether as an address or as the name of the article, together with the doubt necessarily arising therefrom as to the prior use in the last-named way, forbid either party to this controversy. from appropriating the word “Lexington,” in and of itself, to his exclusive use as a trade-mark. It was settled by the leading case of Amoskeag Company v. Spear, supra, and a line of cases following it, that such a right will not be declared or protected unless clearly shown ; and in the Moline plow case it was said : “ The mark must be so clear and well defined as to give notice to others, and must not be deviated from at the suggestion of whim or caprice.” This rule does not of course interfere with the right of the same person to two different trade-marks ; but if he seeks to appropriate one to himself, he must do it by no uncertain use. The question whether the appellant, Metcalfe, has so far imitated the packages of the appellee, Brand, as to entitle the latter to protection from a court of equity, remains to be considered. Every manufacturer has a right, to indicate his goods in some way, as by a particular label or wrapper. The law gives this right not only to secure to him the just reward of his skill and enterprise, but to protect the public from imposition and fraud. This is the basis of all legal interference in trade-mark cases, and upon principle a person is as much entitled to be protected in the use of a particular label as in the use of a trademark: If one uses the label of another, or a colorable imitation thereof, it is a false representation, done for — 352 — '■•fee purpose of imposing Ms goods upon the public as those of his rival in trade, thereby injuring the one and defrauding the other. Equity will not permit the use of means that are calculated to deceive and to divest another of his right. It will not permit A to sell Ms goods as those of B, or use means contributing to this end; and in preventing him from so doing, it proceeds both upon the ground of protection to A’s right and the public interest. The simulation need not be exact. The label or covering need not be copied with slight changes even. If it be substantially imitated, and so essentially alike that persons of ordinary observation and the unsuspecting public are likely to be deceived, it is sufficient to authorize equitable intervention. There need be no mala mens toward the first purchaser of the imitation article. The simulation may enable him to retail it as the genuine article, but at a lower price, and thus injure the manufacturer and delude the public. Here, again, each case must depend upon .its own circumstances. How is it in this one % We have before us two round tin cans of the same size. The tops of each are fastened with a strip of similar colored cloth. One has upon it the blue label of Brand, and the other the blue label of Metcalfe. A glance is sufficient to satisfy one of the resemblance of the two packages, it is so striking. We would disbelieve the evidence of our senses if we were to doubt that the one is an imitation of the other. As to the labels, the size is the same; the iground color is the same; each has a white border ; the letters are of the same color and strikingly alike in size; the directions for use are the same, and the — 353 — words of the caution, although, odd, nearly resemble. It is noticeable that the label of the appellee greatly resembles the blue label of both McCullough and Yates & Dudley. He began using it in the latter part of September or first of October, 1877. He moved to Louisville that fall; and then and in November, 1877, Metcalfe began for the first time to use this blue label, the cautionary words upon it, and the strip of cloth. He had formerly used a different blue label, but even it upon square cans only. It is impossible to account lor all this imitation, so complete in form and detail, so likely to deceive, save upon the theory that the purpose was to obtain the benefit of the reputation of the appellee’s mustard. It could hardly have been accidental. One can not be allowed to thus sail under a piratical flag. Even if there was no intentional fraud, yet the simulation is such as is quite likely to deceive customers as to an article now on sale; and the impending or further actual injury to the appellee should be checked by injunction. (Burke v. Cassin, 45 Cal., 467; Partridge v. Menck, 2 Sandford’s Chan., 622.) It is one of the principal offices of equity to prevent injury and imposition. Therefore, even if the imitation was unintentional, yet be colorable, and of such a character that a majority of persons would never .notice the difference, its use will be enjoined. Otherwise, the purchaser would have imposed upon him a spurious article, and the maker of . the genuine be deprived of the profit which he has labored for years, perhaps', to realize. A person may of course use any color, or words in common use, or other indicia, upon — 354 — Ms label, or in connection witli Ms goods; but fair-competition and common honesty require him to souse them as not to imitate those of another. Any other rule would but sanction fraud and deceit. If there was a defect of parties plaintiff by the nonjoinder of Osborne, it was shown by the petition. There was no demurrer upon this ground; and, therefore, under section 92 of the Civil Code, it was waived. Judgment affirmed upon both the original and cross-appeal.