Avenarius v. Kornely

Eerwin, J. The findings of the trial court above set out give a sufficient statement of the material facts in the case. Findings 8, 10, 13, 15, 18, and 19 are attacked for want of evidence to support them. We think the findings challenged are well supported by the evidence and shall spend no time upon that point. It is also claimed that the ninth finding is inconsistent, since it finds that the word “Carbolineum” was-intended as a trade-mark and also a specific name and designation for a commodity, and that the word cannot serve-the double purpose of a trade-name and also the name of the-compound. It is not easy to reconcile the authorities upon the point, some cases holding that, when a new compound is-discovered and christened and given a name, the name cannot also be appropriated as a trade-mark, but the cases appear-to turn on whether the word denotes origin or ownership or is merely descriptive. The exclusive right to use words, letters, or symbols to indicate merely the quality of goods to-which they are affixed cannot be acquired. But the rule-seems to be otherwise if the primary object of the trade-mark 'be to indicate origin or ownership. Canal Co. v. Clark, 80 U. S. 311; Lawrence Mfg. Co. v. Tenn. Mfg. Co. 138 U. S. 537, 11 Sup. Ct. 396; W. R. Lynn S. Co. v. Auburn-Lynn S. Co. 100 Me. 461, 62 Atl. 499; Marshall v. Pinkham, 52 — 261 — Wis. 572, 9 N. W. 615. So the doctrine that a name cannot be a trade-mark or trade-name only applies when the name is used to describe the kind or quality of the thing sold and not the article of a particular-maker or seller. This doctrine seems to be recognized in the cases cited by appellant. In Canal Co. v. Claris, supra, it was held that where one mined coal in the Lackawanna Valley, Pennsylvania, and his coal has become known as “Lackawanna coal,” others who come in afterwards and mine coal in another part of the valley cannot be enjoined from calling their coal “Lackawanna coal,” it being in fact and in its generic character properly so designated; and that because the complainants had not coined the word “Lackawanna,” but found it a settled .and known appellation of the district in which their coal deposits and those of others were situated, and not applying to •any manufacture of theirs, but to that portion of the coal of the valley in which they mined and marketed it, and differing neither in nature or quality from all other coal of the same region, the word could not be appropriated. ; The court said, page 323: “Hence the trade-mark must either by itself or by association point distinctively to the origin or ownership of the article to which it is applied. The reason of this is that, unless it does, neither can he who first adopted it be injured by any appropriation Or imitation of it by others nor can the public be deceived. The first appropriation of a name or device pointing to his ownership, or which, by being associated with articles of trade, has-acquired an understood reference to the originator or manufacturer of the articles, is injured whenever another adopts the same name or device for similar articles, because such adoption is in effect representing falsely that the productions of the latter are those of the former.” In Manufacturing Co. v. Trainer, 101 U. S. 51, 53, the court said: “The general doctrines of the law as to trade-marks, the symbols or signs which may be used to designate products of .a particular manufacture, and the protection which the courts — 262 — will afford, to those who originally appropriated them, are not controverted. Every one is at liberty to affix to a product of his own manufacture any symbol or device, not previously appropriated, which will distinguish it from articles of the same general nature manufactured or sold by others, and thus secure to himself the benefits of increased sale by reason of any peculiar excellence he may have given to it.” In Candee, S. & Co. v. Deere & Co. 54 Ill. 439, the question was whether one manufacturer of plows at Moline, Illinois, could appropriate as his own, to the exclusion of all other manufacturers at the same place, the name of the place, and thus prevent other manufacturers from designating their manufacture as of the place where they are actually made; and it is said the cases do not go to that extent. It is further said in the opinion that the words “Moline, 111.,” had acquired a generic meaning, and one manufacturer at Moline had the same right to use them that any other manufacturer there had. In Royal B. P. Co. v. Sherrell, 93 N. Y. 331, it was held that the word “Royal,” as indicating quality or grade, could not be appropriated as a trade-mark, and it was said: “The right to use a word or name as a trade-mark is the right which a person has to use a certain mark or name for articles which he has manufactured so that he may prevent another person from using it, because the mark or name denotes that articles so marked or named were manufactured by a certain person, and no one can have the right to put the same name or mark upon his goods and thus represent them to have been manufactured by the person whose mark it is. Per Sir V. Page-Wood, V. C., in Collins Co. v. Cowen, 3 K. & J. 428. But there can be no exclusive right to the use of words or marks which have no relation to the origin or ownership of the goods and are only meant to indicate their quality or grade.” In Beadleston & Woerz v. Cooke B. Co. 74 Fed. 229, the majority of the court held that the word “Imperial” was a designation of quality in the connection used and therefore — 263 — could not be appropriated as a trade-name, although the court observes that the word is close to the border line between terms that signify quality and those that do not. There is a strong dissent from the proposition that the word is descriptive or designates quality. In Chaffee Mfg. Co. v. Selchow, 131 Fed. 543, it was held that the word “Flinch” was generic and known to the public and therefore was not the subject of a trade-mark, citing Browne, Trade-marks, §§ 87-91; Paul, Trade-marks, § 35. The court said, pages 545, 546: .. . “If chess or golf or whist were now invented and named, could any manufacturer or vendor of the implements with which such games are played obtain a trade-mark in their names by selling such implements put up in boxes marked with the names of the games ? He of course could adopt a trade-mark to distinguish the chessmen or the playing cards or the golf clubs which he made from those made by others, but I think he could not acquire a trade-mark in the names of the games by simply selling the games after they had become known to the public under such names.” In Singer Mfg. Co. v. June Mfg. Co. 163 U. S. 169, 16 Sup. Ct. 1002, the question arose upon the expiration of a patent during the existence of which the word “Singer” as used to indicate style of the machine rather than as solely indicating the origin of manufacture had become public and constituted the generic description. It was held that at the expiration of the patent the right to make the patented article and to use the generic name passed to the public with the dedication resulting from the expiration of the patent. In Holzapfel’s C. Co. v. Rahtjen’s A. C. Co. 183 U. S. 1, 22 Sup. Ct. 6, the right to manufacture the compound had become public, and it was held that the name by which it was known likewise became public. It is said in the opinion that there was no attempt to pawn off the composition of one for the composition of another, and no pretense of deception as to the person who in fact manufactured, and that the prin — 264 — ciples involved in Singer Mfg. Co. v. June Mfg. Co., supra, apply. Under the claim of appellant that a generic name or a name merely descriptive of an article of trade or its qualities or characteristics cannot be employed as a trade-mark and entitled to protection, a long list of authorities is cited as to what words have been held descriptive in the sense that they cannot be appropriated as trade-marks. We shall not attempt to review the numerous cases cited-by appellant upon this point. We believe it would be difficult, if not impossible, to reconcile all the authorities upon the subject. The general rule has often been stated, but the difficulty arises in applying it to the particular case." This court has stated the general rule as follows: “It has often been decided that words which are merely descriptive of the kind, nature, style, character, or quality of the goods or articles sold cannot be exclusively appropriated and protected as a trade-mark. ... It seems to be the office of a trade-mark to point out the true source, origin, or ownership of the goods to which the mark is applied, or to point out and designate a dealer’s place of business, distinguishing it from the business locality of other dealers.” Marshall v. Pinkham, 52 Wis. 572, 578, 580, 9 N. W. 617, 618. And in Dunbar v. Glenn, 42 Wis. 118, 137: “Where the trade-mark in its original signification or by association distinctively points to the origin or ownership of the article to which it is applied, it will be protected. But where it is a generic or geographical name, designating a city or district or country, or is merely descriptive of the article manufactured, and can be employed with truth by other manufacturers, it is not entitled to legal protection as a trademark.” That the word “Carbolineum” as applied to the facts in this case could be appropriated as a trade-mark we think is well supported by authority. The name was applied by the plaintiff in 1876 to a compound of his own invention, — 265 — namely, a wood-preserving paint and liquids composed of a high, distillate of coal tar, which he called “Carbolineum.” During all the time since 1876 he has continuously called his product by the name of “Carbolineum,” and affixed such name either alone or in connection with other indicia to the receptacles containing the same and sold the product under «aid name in European countries, and that the word “Carbolineum” was coined and originated by the plaintiff and was wholly unknown when first used by him, and has always been used by him as his trade-mark to designate his invention. Such arbitrary word newly coined and adopted by plaintiff to distinguish his production from that of others, ■and not merely descriptive of the article manufactured, is a valid trade-mark. Dunbar v. Glenn, 42 Wis. 118; Marshall v. Pinkham, 52 Wis. 572, 9 N. W. 615; Fish Bros. W. Co. v. La Belle W. Works, 82 Wis. 546, 52 N. W. 595; Listman M. Co. v. Wm. Listman M. Co. 88 Wis. 334, 60 N. W. 261; W. B. Lynn S. Co. v. Auburn-Lynn S. Co. 100 Me. 461, 62 Atl. 499; Paul, Trade-marks, § 49; Burnett v. Phalon, 9 Bosw. 192; Keasbey v. Brooklyn C. Works, 142 N. Y. 467, 37 N. E. 476; Pennsylvania S. Mfg. Co. v. Myers, 79 Fed. 87; N. K. Fairbank Co. v. Central L. Co. 64 Eed. 133; Leonard v. White’s G. L. Co. 38 Fed. 922; Potter D. & C. Corp. v. Miller, 75 Fed. 656; Northwestern C. M. Co. v. Mauser & C. 162 Fed. 1004; Nat. B. Co. v. Baker, 95 Fed. 135. An examination of the foregoing cases and many others which might be cited will clearly show that the word “Carbolineum” is not so descriptive of the quality of plaintiff’s 'compound as to make it obnoxious to the rule forbidding the use of descriptive words as trade-marks or trade-names. Newly coined words have been generally sustained as proper trade-marks, because such words, being meaningless, cannot be either descriptive or deceptive. In W. R. Lynn S. Co. v. Auburn-Lynn S. Co. 100 Me. 461, 62 Atl. 499, 960, the — 266 — plaintiff was held entitled to tbe exclusive use of the name “Auburn-Lynn Shoes.” In Le Page Co. v. Russia C. Co. 51 Fed. 941, it is said: “It is equitable that a manufacturer who has given reputation to any article should have the privilege of realizing the fruits of his labors by transmitting his business and establish; ment with the reputation which has attached to them on his decease to his legatees or executors, or during his lifetime to purchasers; and it is also in accordance with the principles of law and justice to the community that any trade-mark, including a surname, may be sold with the business or the establishment to which it is incident, because, while it may be that individual efforts give them their value at the outset, yet afterwards this is ordinarily made permanent as a part of the entire organization or as appurtenant to the locality in which the business is established, and thenceforward depends less on the individual efforts of the originator than on the combined result of all which he created.” The point that, when the plaintiff gave his product a name and it was a new product and known by no other name, the name became publici juris, is not sustained by the great weight of authority. Some cases, it is true, support this idea. But where a product is manufactured and the compound is a secret invention, as in this case, the inventor may coin a new name for his product by which it is to be known, and he is entitled to protection of such name as his trademark or trade-name. The plaintiff’s compound of anthracine oil is one of the products included in the general designation. It is the plaintiff’s product — his own secret compound. Anthracine oil is the general name for the product, but the plaintiff’s manufacture of this general product invented by himself by a secret process is his manufacture, and his trade-name is entitled to protection. The purpose of the trademark is to give the plaintiff’s special invention a distinctive name for his anthracine oil to distinguish his manufacture and point to its origin. The court found that the plaintiff constructed the word to make his goods known by the name — 267 — “Carbolineum” and used the word as a trade-mark. Reference to a few of the many cases upholding words as proper-trade-marks will suffice: “Uneeda” as applied to a biscuit (Nat. B. Co. v. Baker, 95 Fed. 135) ; “Cuticura” as a trademark for toilet soap (Potter D. & C. Corp. v. Miller, 75 Fed.. 656); “Valvoline” for lubricating oil (Leonard v. White’s G. L. Co. 38 Fed. 922) ; “Cottolene” designating a substitute-for lard composed of cotton-seed oil (N. K. Fairbank Co. v. Central L. Co. 64 Fed. 133); “Saponifier” used in soap making (Pennsylvania S. Mfg. Co. v. Myers, 79 Fed. 87); “Bromo-Caffeine” as name of a chemical compound (Keasbey v. Brooklyn C. Works, 142 N. Y. 467, 37 N. E. 476) ;. “Auburn-Lynn” shoes (W. B. Lynn S. Co. v. Auburn-Lynn S. Co. 100 Me. 461, 62 Atl. 499). This court said in Listman M. Co. v. Wm. Listman M. Co. 88 Wis. 334, 340, 60 N. W. 262: “But a valid trade-mark may consist of some novel device, arbitrary character, or fancy word applied without special meaning, which by use and reputation comes to serve the same purpose. Such words and devices are held to indicate sufficiently the true source and origin of the goods without particular addition of the name of the manufacturer or dealer.” In Dunbar v. Glenn, 42 Wis. 118, the owner of the water-of a mineral spring applied the name of “Bethesda” to the-spring and used the mark “Bethesda” on barrels in which the water was shipped and recorded the word, and it was held that the name was a valid trade-mark and that the defendant, who owned another spring 1,200 feet from that of plaintiff, which was alleged to have exactly the same chemical constitution and curative properties, was not entitled to the use-of plaintiff’s trade-mark. Actions to restrain the infringement of trade-marks are-based upon the doctrine that the law will not allow one person to sell his own goods as and for the goods of another; and this is to prevent not alone fraud upon private rights, but as — 268 — well upon the public. Marshall v. Pinhham, 52 Wis. 512, 580, 9 N. W. 615; Dunbar v. Glenn, supra. It may well be, as contended by appellant, that, when one •owning a newly patented product gives it a name, sixch name becomes publici juris on the expiration of the patent; but the .point has no hearing here. The patent which it is claimed ■covered the product was not put in evidence. There is no •evidence that it covered the plaintiff’s product, but only a part of the process of manufacture. It may have been on a mere detail. But more than this, the evidence as to the patent shows that, whatever it was, it was not granted until about ■•twelve years after plaintiff coined and adopted the word '“Oarbolineum” for his product. The trade-mark antedated by about twelve years the patent, whatever the patent was, .and the expiration of the patent in no way affected the trademark. Batcheller v. Thomson, 93 Fed. 660, 35 C. C. A. 532. It is also argued that pláintiff abandoned the right to use •the word “Oarbolineum” as his trade-name. On this point, .also, the evidence and findings are against appellant. It is unnecessary to discuss the evidence. It fully supports the ■finding. Plaintiff constantly used the word as his trade-name and applied for registration of it in various foreign countries and was diligent in his efforts to protect it as his ■trade-name. The use of his name in connection with “Oarbolineum” did not amount to an abandonment. • Plaintiff is not confined to one form of his mark nor even to several marks. Morrison v. Case, 9 Blatchf. 518, Fed. Cas. No. 9,815; Hier v. Abrahams, 82 N. Y. 519; Ford v. Foster, L. R. 7 Ch, 611, 616; Johnson v. Bauer, 82 Fed. 662. In Dunbar v. Glenn, 42 Wis. 118, 135, this court said: “It seems to be well settled that the owner of any original trade-mark has an undoubted right to be protected in the exclusive use of all the marks, forms; or symbols that he may appropriate as designating the true origin or ownership of the article or fabric to which they are affixed.” — 269 — In Saxlehner v. Eisner & M. Co. 179 U. S. 19, 21 Snp. Ct. 7, the court said (p. 33) : “It is not necessary to constitute an infringement that every word of a trade-mark should be appropriated. It is-sufficient that enough be taken to deceive the public in the purchase of a protected article.” The fact that plaintiff registered the words “Carbolineum Avenarius” in this country was no abandonment of the word “Carbolineum” as his trade-mark, at least unless it was shown that he intended such abandonment, and the court below found otherwise. The registration does not create nor destroy rights in a trade-mark. The right to use a device to-distinguish the goods made or sold by a person whose mark it is, has long been recognized by the common-law and chancery courts of England and this country. “This exclusive-right was not created by the act of Congress, and does not depend upon it for its enforcement. The whole system of trade-mark property and the civil remedies for its protection existed long anterior to that act, and have remained in full force since its passage.” The right depends upon priority of appropriation. Trademark Cases, 100 U. S. 82; Ex parte Carborundum Co. 118 Off. Gaz. 2250; A. Leschen & Sons R. Co. v. Broderick & B. R. Co. 123 Fed. 149. Error is assigned because the trial court refused to find that Austria had canceled the plaintiff’s trade-name “Carbolineum,” and also because the court ¿refused to find that Presser had registered a trade-mark in Germany which included the word “Carbolineum.” It is at least very doubtful whether the evidence offered was competent to prove the facts-sought to be established under this head. But, even if so, the evidence offered was immaterial. The plaintiff advertised and sold his ,goods in Europe from the time he adopted his trade-name in 1876 until 1886 and endeavored in every way to protect it as his trade-name. Whether he could have-registered it in foreign countries under their laws as a trade270 name is not material. Our courts are not bound by any foreign rule, judicial or otherwise, as to the precise essentials of a trade-mark. The question is whether plaintiff’s claim is in harmony with the law, written and unwritten, of this country. Nor do our courts decide what trade-marks exist or do not exist in foreign countries. The question is whether the plaintiff was entitled to have his trade-name recorded here. Vacuum O. Co. v. Eagle O. Co. 122 Fed. 105; Hohner v. Gratz, 50 Fed. 369; The Apollon, 9 Wheat. 362; De Brimont v. Penniman, 10 Blatchf. 436, Fed. Cas. No. 3,715; Browne, Trade-marks, §§ 50, 51. The court below found that there was a material difference between the two products and this finding is clearly supported by the evidence. Nor is there any doubt under the proof made of the intention of the defendant to deceive and appropriate the trade-name of the plaintiff for his own benefit and to the damage of the plaintiff. It is unnecessary to go into & discussion of the evidence under this head. Nor Eas any laches been shown upon the part of the plaintiff. On the contrary, from first to last plaintiff appears to have been diligent in endeavoring to protect his use of the trade-name “Carbolineum.” He could not protect it further than he did in foreign countries under their laws. In October, 1886, he applied for registration, and in Eebruary, 1887, his trade-name was registered in the United States, and at the time plaintiff first used the word “Carbolineum” it had ■not been used by any other person for any purpose and was wholly unknown. It follows that the judgment of the court below must be affirmed. By the Court. — The judgment is affirmed