O'Rourke v. Central City Soap Co.

Biiown, J. Two prominent objections are made in this case to the monopoly by the plaintiff of the words “anti-washboard” as applied to soap: First, that the words are descriptive of the quality of the article, and hence cannot be made the subject of a trade-mark; and, second, that they are not original with the plaintiff, but were unlawfully appropriated by him. 1. As a general rule, there is no doubt that, in order that mere words may be uphold as a' trade-mark, they must be purely arbitrary, — 578 — or must indicate the origin or ownership of the article or fabric to which they are affixed. Words expressive of the character or composition of an article, or of the name by which it is generally known in the market, cannot he made the subject of monopoly. Burton v. Stratton, 12 Fed. Rep. 696, 700, and cases cited. .There is, however, a class of words which, though not descriptive of the article, are suggestive of some supposed advantage to be derived from using it, or some effect produced by its use. These have been ordinarily, though not always, upheld as valid trade-marks. Examples of such as have been sustained are “Painkiller,” as applied to a medical compound, (Davis v. Kendall, 2 R. I. 566; S. C., Cox, Trade-mark Cas. 103;) “Invigorator,” as applied to a bed-bottom, (Ex parte Heyman, 18 O. G. 922;) “Samson Brace,” as applied to suspenders; “Blood-searcher” and “ Annihilate, ” as applied to medicines, (Fulton v. Sellers, 4 Brewst. 42;) “Zero,” to a water-cooler; “Arctic,” to a soda fountain; “Day-light,” “Sun-light,” and “Gas-light,” to illuminating oils, (Browne, Trade-marks, § 273.) The words “Anti-washboard” are not objectionable, as indicating the composition or quality of the article, although the natural inference from them is that by the use of the soap the necessity of rubbing clothes is obviated. Upon the whole, we incline to the opinion that they are rather suggestive than descriptive, and that they may be properly claimed as a trade-mark. 2. The second objection presents a question of somewhat more difficulty. It has been sometimes said that the-owner of a valid trade-mark must have been the first to appropriate the name to that particular article, and this, to a certain extent, is true; but if the trade-mark be abandoned, or the use of it intentionally discontinued by the original proprietor, it may be readopted and appropriated by another, provided it has not become a mere description of quality or kind of product. Browne, Trade-marks, § 690, 252; Durham Smoking Tobacco Case, 3 Hughes, 151: Atlantic Milling Co. v. Robinson, 20 Fed. Rep. 217. In the case under consideration, however, the question is presented whether a person may appropriate a trade-mark belonging to another, and subsequently acquire a good title thereto by the abandonment thereof by the first proprietor. The testimony shows, and it is not disputed, that when Winger began manufacturing soap at Stur-gis, under the name of “Winger’s Anti-washboard Soap,” the firm of Clark & Benefiel was manufacturing soap at Mattoon, Illinois, under the same name, and continued so to do for nearly a year after Winger commenced business. During this time he was an admitted trespasser' upon their rights. The fact that he supposed the Ohio firm had gone out of business is no defense if in fact they had an exclusive right to the trade-mark. Millington v. Fox, 3 Mylne & C. 338; Welch v. Knott, 4 Kay & J. 747; Leather Cloth Co. Case, Cox, Trademark Cas. 223. — 579 — There is no evidence in this case that his competition interfered with the business of Clark & Benefiel, or Stephens, their successor, or that he was the cause of the subsequent abandonment of the business by them, but if it be once conceded that a person may acquire a good title to a trade-mark by appropriation, without the consent of the lawful owner, it would enable a manufacturer, by the use of large capital or superior energy, to drive competitors out of business, by seizing their trade-marks, and using them for that very purpose, provided the lawful owner is unable or unwilling to assert his rights by resort to the courts. We think that no court would hesitate to pronounce against a title so obtained. We find it difficult to distinguish such a case, in principle, from the one under consideration, as it might be impossible to prove that the lawful owner was compelled to discontinue by reason of such competition. We see no objection to the defendant availing itself of this defense. To maintain their bill for an infringement the plaintiffs are bound to show an exclusive right to the use of this trade-mark. If it appears that the words were in common use to designate the article of manufacture, or if the exclusive right to use them was vested in another, we apprehend that the plaintiffs are no more entitled to an injunction than is the patentee of an invention who fails to show that he is the first and original inventor of the thing patented. Wolfe v. Goulard, 18 How. Pr. 64; Manhattan Medicine Co. v. Wood, 14 O. G. 519; Congress & E. S. Co. v. High Rock Co., 57 Barb. 526. In this respect, both stand in the position of a plaintiff in ejectment, who must recover upon the strength of his own title, and not upon the weakness of the defendant’s. Indeed, it is a good defense to an ordinary action of replevin that the right to the possession of the property is in a third person. Dermott v. Wallach, 1 Black, 96; Schulenburg v. Harriman, 21 Wall. 44. The fact that defendant has no better right to the use of the trade-mark than the plaintiff would certainly not entitle the latter to an injunction. Upon the whole we have come to the conclusion that the plaintiffs never acquired an exclusive right to the use of the words “anti-washboard,” and that their bill should be dismissed.