California Fig Syrup Co. v. Frederick Stearns & Co.

TAFT, Circuit Judge (after stating the facts as above). Counsel for the appellee contends that the decree of the court below must be sustained on two grounds: First, that the complainant and appellant cannot appropriate as a trade-mark the term “Syrup of Figs,” because it is a descriptive term, and relates to the composition of the article which it is used to designate; and, second, that the complainant cannot have relief in a court of equity, because, in using the name to' designate the preparation which it sells, it is guilty of a distinct misrepresentation to the public, which has a tendency to mislead the public into buying the article with a false impression in respect to its manufacture and its composition. 3. There is nothing about the defendant’s article which resembles the complainant’s article except the words “Fig Syrup,” which is substantially the same in meaning and appearance as the words “Syrup of Figs.” “Syrup of Figs” is a descriptive term. It may be that no one had ever made a syrup of figs at the time that Queen Selected the term to designate the preparation which he put upon the market. That is immaterial. It is entirely possible to describe something by the use of common words which may never have had a commercial use, or which may never have been in fact made. The [815] Century Dictionary describes “syrup” to be “a solution of sugar in water, made according to an official formula, whether simple, flavored, or medicated with some special therapeutic or compound.” ft is defined by Webster as “a thick and viscid liquid, made from the juice of fruits, herbs, etc., boiled with sugar.” The Standard Dictionary defines “syrup” generally “as a thick, sweet liquid,” and specifically as “a saturated solution of sugar in water, often combined vrith some medicinal substance, or flavored, as with the juice of fruits for use in confections, cookery, or the preparation of beverages.” This authority further states that “syrups are commonly named from their source of flavoring.” The Century Dictionary gives a number of medicinal syrups. Syrup of aconite is a mixture of tincture of fresh aconite root 1 part, with syrup 9 parts. Syrup of almond is sweet almond 10 parts, bitter almond 3 parts, sugar 50 parts, orange-flower water 5 parts, water to make 100 parts. Syrup of althaea, is althaea 4 parts, sugar 60 parts, water to make 100 parts. Syrup of citric acid is citric acid 8 parts, water 8 parts, spirit of lemon 4 parts, syrup 980 parts. Syrup of garlic is fresh garlic 15 parts, sugar 60 parts, dilute acetic acid 40 parts. Syrup of gum arabio is mucilage of acacia 25 parts, syrup 75 parts. Syrup of ipecac is fluid extract of ipecac 5 parts, syrup 95 parts. Syrup of rhubarb is rhubarb 90 parts, cinnamon 18 parts, potassium carbonate 6 parts, sugar 600 parts, water to make 1000 parts. 'Syrup of squill is vinegar of squill '40 parts, sugar 60 parts, with water. Syrup of wild cherry is wild-cherry hark powdered 12 parts, sugar 60 parts, glycerine 5 parts, water to make 100 parts. It is manifest that the term “Syrup of Figs,” used to describe a' medical preparation, has a distinct and definite meaning, namely, a combination of sugar and the juice of the fig, and possibly other ingredients, in which, however, the medicinal property of the fig is the active and chief element. That this is the sense in which the complainant intends it to be understood may be gathered from its reference to it as the “California Liquid Fruit Remedy,” from its statement upon the package that it “presents in the most elegant form the laxative and nutritious juice of the figs of California,” and from its statement in its circular “that it is a combination of the laxative and nutritious elements of figs with the medicinal virtues of plants known to be most beneficial to the human system, thereby forming Syrup of Figs.” In Chemical Co. v. Meyer, 139 U. S. 540, 11 Sup. Ct. 625, it was held that the term “Iron Bitters” was so indicative of the ingredients, characteristics, and purpose of the preparation upon which it was placed that it could not be monopolized as a trade-mark. Mr. Justice Brown, delivering the opinion of the court, said: “The general proposition is well established that words which are merely descriptive of the character, qualities, or composition of an article, or of tha place where it is manufactured or produced, cannot be monopolized as a trademark (Canal Co. v. Clark, 13 Wall. 311; Manufacturing Co. v. Trainer, 101 U. S. 51; Caswell v. Davis, 58 N. V. 223; Thomson v. Winchester, 19 Pick 214; Raggett v. Findlater, L. R. 17 Eq. 29); and we think the words ‘Iron Bitters’ are so far indicative of the ingredients, characteristics, and purposes of the plaintiff’s preparation as to fall within the scope of these decisions.” [816] The term “Syrup of Figs,” therefore, cannot be used as a trademark. ■ ■ • But it is well settled that, even if the complainant is using something to designate its articles which it cannot claim to have the exclusive right to use as a trade-mark, yet, if it can show to the court that the defendant is selling an article like the complainant’s in such a way as to induce the public to believe that defendant’s article is the complainant’s, and that it is doing this intentionally and fraudulently, the complainant may have the relief of a court of equity by injunction to prevent such piracy. Thus in this case, even though “Syrup of Figs” is such a descriptive term that it cannot be used as a trade-mark, yet, if the defendant here put its medicinal preparation up in packages ornamented and dressed so as to be a colorable imitation of the complainant’s package, with the intention of misleading the public into the purchase of the defendant’s article as the complainant’s, then undoubtedly the defendant might be enjoined from thus attempting to palm off its article as the article of complainant. Chemical Co. v. Meyer, 139 U. S. 540, 11 Sup. Ct. 625; Lawrence Manuf’g Co. v. Tennessee Manuf’g Co., 138 U. S. 537, 11 Sup. Ct. 396; Croft v. Day, 7 Beav. 84; Holloway v. Holloway, 13 Beav. 209; McLean v. Fleming, 96 U. S. 245; Wotherspoon v. Currie, L. R. 5 H. L. 508; Thompson v. Montgomery, 41 Ch. Div. 35-50. In this case there is evidence tending to show that the defendant is attempting to appropriate to itself by unfair means the good name which the preparation of the complainant has acquired by advertising and use among the public at large. Witnesses, who are retail druggists, testified that defendant’s agents visited them, and recommended the sale of defendant’s article, on the ground that the druggists could palm off defendant’s article as complainant’s article upon intending purchasers who were not familiar with complainant’s package, and who called only for syrup of figs, intending thereby to purchase the complainant’s article.. The defendant reduces the price of its article very considerably in order to induce druggists to take this course. We are not prepared to say, therefore, that the complainant might not, except for the reason about to be stated, be entitled to some relief, by an injunction against the defendant to prevent unfair competition. 2. But the second ground presented, and that upon which the court below rested its decision, prevents the complainant from having any relief at all. That ground is that the complainant has built up its business and made it valuable by an intentional deceit of the public. It has intended the public to understand that the preparation which it sells has, as an important medicinal agent in its composition, the juice of California figs. oThis has undoubtedly led the public into the purchase of the preparation. The statement is wholly untrue. Just a suspicion of fig juice has been put into the preparation, not for the purpose of changing its medicinal character, or even its flavor, but merely to give a weak support to the state-. ment that the article sold is syrup of figs. This is a fraud upon the public. It is true, it may be a harmless humbug to palm off upon the public as syrup of figs what is syrup of senna, but it [817] is neveRtheless of such, a character that a court of equity will not encourage it by exl ending any relief to the person who seeks to protect a business winch has grown out of, and is dependent upon such deceit. It is well, settled that if a person wishes Ms trade-mark property to be protected by a court of equity he must come into court with clean hands, and If it appears that the trademark for which he seeks protection is itself a misrepresentation to the public, and has acquired a value with the public by fraudulent misrepresentation in advertisements, all relief will be denied to him. This is the doctrine of the highest court of England, and no court has laid it down with any greater stringency than the supreme court of the United States. Medicine Co. v. Wood, 108 U. S. 218, 2 Sup. Ct. 436; Leather Cloth Co. v. American Leather Cloth Co., 4 De Gex, J. & S. 137, and 11 H. L. Cas. 523; Buckland v. Rice, 40 Ohio St. 526; Palmer v. Harris, 60 Pa. St. 156; Prince Manuf’g Co. v. Prince's Metallic Paint Co., 135 N. Y. 24, 31 N. E. 990; Krauss v. Jos. R. Peebles’ Sons Co., 58 Fed. 585; Connell v. Reed, 128 Mass. 477; Siegert v. Abbott, 61 Md. 276-284. The argument for complainant is that, because fig juice or syrup has no laxative property, everybody ought to understand that when the term is used to designate a laxative medicine it must have only a fanciful meaning. But the fact is admitted that the public believe that fig juice or syrup has laxative medicinal properties. It is to them that the complainant seeks to sell its preparation, and it is with respect to their knowledge and impressions that the character, whether descriptive or fanciful, of the term used, is to be determined. Exactly this question, raised against the same complainant, was considered by the circuit court for the district of Massachusetts (Syrup Co. v. Putnam, 66 Fed. 750), and relief was denied by Judge Colt to the complainant on the ground that its use of the term “Syrup of Figs” was a misrepresentation to the public, and a fraud upon it. The case was carried to the court of appeals and affirmed upon the opinion of the circuit judge. 16 C. C. A. 376, 69 Fed. 740. Reliance is had by the defendant upon a decision of the court of appeals of the Ninth circuit, which was on an appeal from an order of Judge' McKenna, granting a preliminary injunction. Improved Fig Syrup Co. v. California Fig Syrup Co.. 4 C. C. A. 264. 54 Fed. 175. The opinion in the Ninth circuit is based on the theory that the term “Syrup of Figs” is not descriptive. We are unable to follow that learned court to this conclusion. It seems to us that the reasoning of Judge Colt, affirmed as it is by the court of appeals of the First circuit, is more satisfactory. The decree of the court below is affirmed, with costs,