Wightman & Hough Co. v. Nivois

HOUGH, Circuit Judge (after stating the facts as above). [1] In the absence of any showing of earlier appropriation, plaintiff had perfect right to use “Yankee” as a trade-mark for cigarette cases. Cf. Scandinavia, etc., Co. v. Asbestos, etc., Co., 257 Fed. 937,- C. C. A.-. [2] That defendant suggested the name as a good one is immaterial. A trade-mark is appurtenant to a business, and the question argued at bar is: Whose was the business of dealing in "Yankee” cigarette cases? It is quite true that a trade-mark may belong to a dealer in, and not to the manufacturer of, the goods known by the trade-name (Menendez v. Holt, 128 U. S. 514, 9 Sup. Ct. 143, 32_L. Ed. 526), and defendant, who bought “Yankee” cases from plaintiff in considerable quantities, seeks to occupy that position. He is not sustained by the evidence; on the contrary, we find that the business of making and selling these articles was the plaintiff’s business, • and not the defendant’s. Nor is it material that the cases are made under a patent owned by defendant. A licensee máy build up a business in the patented article and create a trade-mark by his efforts, which will even remain his after the expiration of the patent. President, etc., Co. v. Macwil100 Ham, 238 Fed. 159, 151 C. C. A. 235. We regard it a's shown clearly that defendant has made a cigarette case in appearance, ornamentation, dress, and packing exactly like plaintiff's. The only difference is that it is not composed of the materials specified in plaintiff’s license. In other words he has waited until plaintiff’s expensive article has become known and made a market for itself, and then imitated it in a comparatively cheap way. It is urged that the copying of plaintiff’s style of ornamentation is an appropriation of those nonfunctional features upon which stress has been so often laid in cases of unfair competition. It was pointed out in Crescent, etc., Co. v. Kilborn, 247 Fed. 299, 159 C. C. A. 393, that to enjoin such copying it must be shown that the ornamentation of plaintiff’s article had become associated with the thing itself in the minds of the public; but we think the proofs in this case respond to that test. The order refusing injunction is reversed, and the cause remanded, with direction to enjoin defendant until the further order of the court from all use of the trade-mark “Yankee” in connection with cigarette cases, further preventing him from making or vending cigarette cases ornamented either externally or internally as plaintiff’s “Yankee” cases have been, or from in any way pretending or suggesting that any cigarette case made by him or for him by any manufacturer other than plaintiff is a Yankee cigarette case. We do not, however, think that at this stage of the case defendant should be enjoined from making cases under the patent in question composed of brass with nickel plating. Whether such an article is or can be said to be either of German silver or of an imitation of German silver is a matter to be left to final hearing. Plaintiff will recover the costs of this appeal.