122 F. 796 | 8th Cir. | 1903
The complainant, Allen B. Wrisley Company, a corporation, and its predecessor, manufactured at Chicago, in the state of Illinois, and sold throughout the country in pound packages, a soap which they branded “Old Country Soap,” from 1876 until the commencement of this suit. In 1898 the Iowa Soap Company, the defendant, commenced to make and has since manu
But geographical terms and words in common use to designate a locality, a country, or a section of a country cannot be monopolized as trade-marks. Shaver v. Heller & Merz Co., 108 Fed. 821, 831, 48 C. C. A. 48, 59; Canal Co. v. Clark, 13 Wall. 311, 321, 20 L. Ed. 581; Mill Co. v. Alcorn, 150 U. S. 464, 14 Sup. Ct. 151, 37 L. Ed. 1144; Chemical Co. v. Meyer, 139 U. S. 540, 546, 11 Sup. Ct. 625, 35 L. Ed. 247; Manufacturing Co. v. Trainer, 101 U. S. 51, 56, 25 L. Ed. 993; Goodyear’s India-Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598, 602, 9 Sup. Ct. 166, 32 L. Ed. 535; Continental Ins. Co. v. Continental Fire Ass’n (C. C.) 96 Fed. 846; Brown Chemical Co. v. Frederick Stearns & Co. (C. C.) 37 Fed. 361; Chemical Works v. Muth (C. C.) 35 Fed. 524, 1 L. R. A. 44; Illinois Watch-Case Co. v. Elgin Nat. Watch Co., 94 Fed. 667, 35 C. C. A. 237; New York & R. Cement Co. v. Coplay Cement Co. (C. C.) 45 Fed. 212; Iron Co. v. Uhler, 75 Pa. 467, 15 Am. Rep. 599; Connell v. Reed, 128 Mass. 477, 35 Am. Rep. 397; Morgan Envelope Co. v. Walton, 86 Fed. 605, 30 C. C. A. 383. “Old Country” is a term in common use to designate a country occupied by civilized man before the American continent was. It plainly means a different country from our country, just as the “Old Continent” means the continent of Europe as distinguished from our continent. It is both a geographical term and a term in common use to designate a country. The complainant may not, therefore, exclude others from its use, or become the owner of any property in it as a trade-mark. Hence its bill cannot be sustained for infringement of a technical trade-mark.
But the use of geographical or descriptive words to institute or maintain unfair competition may be lawfully enjoined by a court of equity to the same extent as the use of any other terms or symbols (Shaver v. Heller & Merz Co., 48 C. C. A. 48, 108 Fed. 832, and cases there cited), and counsel for the complainant insist that it is entitled to an injunction on the ground of unfair competition. Deceit is the basis of suits of this character. The intention to palm off one’s goods as those of another, and the use of suitable means to effect that intention, are both essential elements of a good cause of action for unfair competition. The intention alone, without the actual or the probable use of means calculated “to convey a false impression to the public mind, * * * and to mislead and deceive the ordinary purchaser,” furnishes no ground for relief, because an intent to injure, where no injury is or will be inflicted, causes no legal damage. McLean v. Fleming, 96 U. S. 254, 256, 24 L. Ed. 828; Kann v. Diamond Steel Co., 89 Fed. 706, 712, 32 C. C. A. 324, 330, N. K. Fairbank Co. v. R. W. Bell Mfg. Co., 23 C. C. A. 554, 561, 77 Fed. 869, 876. Here, as elsewhere in the entire domain of human action, though, the intent may be lawfully inferred from the words
There is no direct evidence in this case that the defendant intended to palm off its soap as that of the plaintiff, and the only question is whether it so named and dressed its goods that they were calculated to induce a purchaser who was using ordinary care to buy them as the articles made by the complainant. The name which the defend
The foregoing opinion contains the statement that “the use of geographical or descriptive words to institute or maintain unfair competition may be lawfully enjoined by a court of equity to the same extent as the use of any other terms or symbols,” and the case of Shaver v. Heller & Merz Co., 48 C. C. A. 48, 108 Fed. 821, 832, is cited in its support. If the doctrine intended to be expressed by this statement be that a court of equity may en
1. Use of geographical names as trade-names, see notes to Hoyt v. J. T. Lovett Co., 17 C. C. A. 657; Illinois Watch-Case Co. v. Elgin Nat. Watch Co., 35 C. C. A. 242.
2. Unfair competition, see notes to Scheuer v. Muller, 20 C. C. A. 165; Lare v. Harper & Bros., 30 C. C. A. 376.