The bill alleges, and the affidavits sustain the allegation, that for over 60 years the complainant and its predecessors, from whom it derives title, had used as a trade-mark the words “Virgin Leaf” to designate a brand of fine cut tobacco, suitable for smoking and chewing, manufactured by them.
In 1863 David H. McAIpin, who founded the copartnership of D. H. McAIpin & Co., bought the trade-mark of John Cornish who
The defenses are: First: That the complainant’s trade-mark has always been used to designate chewing tobacco and has never been used in connection with cigarettes. Second : That it has long been the custom in the tobacco business to use the same name for tobacco in its various forms when made by different manufacturers. For instance, if A uses the name “Oriilamme” in connection with smoking tobacco B may with propriety use the same name to designate his chewing tobacco, C to designate his cigarettes and D to designate his cigars. Such is the alleged custom. Third: That “Virgin Leaf” means “Virginia Leaf” and the two names are used synonymously to indicate tobacco grown in the state of Virginia.
I think the weight of testimony is to the effect that though the complainant’s tobacco is not used for cigarettes it is suitable for smoking purposes and is so used. It may be rolled into cigarettes, though the proof that this has been done, except in sporadic instances, is most unsatisfactory. As to the second defense — assuming that such testimony as is presented by the defendant would he sufficient, in any circumstances, to establish a custom, it is manifest that the mere fact that manufacturers of tobacco have allowed their trade-names for a smoking brand to he used by manufacturers of cigarettes is of no relevancy whatever unless it he shown that the infringing use was open, notorious and acquiesced in by the owner of the mark. If on the other hand he knew nothing of the infringement or had granted a license to use the mark in a restricted form the proof is equally ineffectual.
The introduction of two packages of tobacco having the same trade-name and apparently manufactured by different individuals, is absolutely of no relevancy whatever unaccompanied by proof of the circumstances surrounding the origin and use of the respective packages. For illustration take the trade-name “Recruit.” Two packages
The testimony fails to establish the third defense. “Virgin Leaf” is not synonymous with “Virginia Leaf” and is not descriptive of the tobacco used. It is an arbitrary fanciful name intended to denote the purity of the tobacco. If the defendant is not seeking to avail himself of the reputation which attaches to the complainant’s tobacco, if, as he says, he only wishes the advantages which flow from the use of Virginia tobacco, he has only to substitute “Virginia” for “Virgin” and the complainant will have no cause for complaint.
It would seem therefore, that the only question worthy of debate is the one suggested by the first defense. Can the trade-mark of a manufacturer of smoking and chewing tobacco be appropriated by the manufacturer of cigarettes? I incline to the opinion that it cannot be. A trade-mark is a guaranty that the goods to which it is attached are made by its owner. If the owner has a high character for honesty, good workmanship and fair dealing his mark stands for all of these qualities. Those who have been accustomed to his goods see his mark and buy, knowing that they will not be defrauded. Whether a manufacturer confines himself to smoking tobacco, chewing tobacco or cigarettes, he is still in the tobacco business just as one is in the clothing business whether he makes coats, waistcoats or trousers, just as one is in the whisky business whether he makes Rye or Bourbon. A consumer who believes in McAlpin’s tobacco, seeing “Virgin Leaf” cigarettes on the market, will naturally think that they are the product
The precise question was decided in the case of Carroll v. Ertheiler (C. C.) 1 Fed. 688. The complainant had adopted the word-symbol “Tone Jack” to sell smoking tobacco manufactured by him. The defendant was enjoined from selling “Rone Jack” cigarettes, the court observing:
“Cigarettes consist of smoking tobacco, similar in all respects to that used in pipes. The circumstance that a longer ‘cut’ than that commonly used in pipes is most convenient for cigarettes is not important, nor that the tobacco is smoked in paper instead of pipes. It may be used for either purpose, and is all embraced in the term ‘smoking tobacco.’ We do not believe the public or the trade draw such a distinction as the defendant sets up.”
The right which every man possesses to have his business protected is well expressed in the case of Levy v. Walker, L. R. 10 Ch. D. 447, as follows:
“You must not use a name, whether fictitious or real — you must not use a description, whether true or not, which is intended to represent, or calculated to represent, to the world that your business is my business, and so, by fraudulent misstatement deprive me of the profits of the business which would otherwise come to me.”
See, also, Menendez v. Holt, 128 U. S. 514, 9 Sup. Ct. 143, 32 L. Ed. 526; Hilson Co. v. Foster (C. C.) 80 Fed. 896; 28 Am. & Eng. Enc. of Raw, p. 422.
The logic of the situation may be briefly stated. Either the defendant is endeavoring to profit by the reputation of McAlpin’s tobacco or he is not. If it be true that he is making this attempt he should be stopped in limine, if, on the other hand, he is only selling his good:: on their merits he does not need the same trade-mark as the qom-plainant.
To continue its use will only serve to increase the confusion which is injurious to both, assuming that both are desirous of disposing of their tobacco on its merits.
The motion is granted.