77 Tex. 530 | Tex. | 1890
Lead Opinion
—William Radam brought this suit against Charles Alff & Co., a firm composed of Charles Alff and Joe K. Heim, and against ihe members of the firm individually, to recover damages for alleged infringement of a trade mark, and for injunction restraining the defendants from using the alleged infringing trade mark.
The trial by jury resulted in a verdict for plaintiff for one cent damages, and judgment was rendered perpetuating the injunction, from which this appeal is prosecuted.
The alleged trade mark of plaintiff consisted of the words ce Microbe Killer,” used in conjunction with a device, symbol, or illustration representing a man in the attitude of striking a human skeleton with a blud
The alleged trade mark of the defendants consisted of the words “ Microbe Destroyer,” printed on a yellow paper label 4-| by 4f inches in dimensions, with a black border around it, but no device or symbol.
Appellants contend that the words “ Microbe Killer ” are words of definite meaning, in common use, descriptive of the quality, ingredients, or charactei’istics of the remedy put up and sold under that name, “and therefore not susceptible of being erected into a trade mark.”
What constitutes a trade mark is a question of law for the court. Whether a trade mark has been so constituted, and if so constituted whether there has been an infringement of it, are ordinarily questions of fact for the jury.
In the ease'of Manufacturing Company v. Trainor, 101 United States, 54, it is said: “ The limitations upon the use of devices as trade marks are well defined. The object of the trade mark is to indicate, either by its own meaning or by association, the origin or ownership of the article to which it is applied. If it did not, it would serve no useful purpose either to the manufacturer or to the public; it would afford no protection to either against the sale of a spurious in place of the genuine article. This object of the trade mark and consequent limitations on its use are stated with great clearness in the case of Canal Company v. Clark, 13 Wallace. There the court said, speaking through Mr. Justice Strong, that ‘No one can claim protection for the exclusive use of a trade mark or trade name which would practically give him a monopoly in the sale of any goods.other than those produced or made by himself. If he could, the public would be injured rather than protected, for competition would be destroyed. Nor can a generic name, or a name merely descriptive of an article of trade, of its qualities, ingredients, or characteristics, be employed as a trade mark, and the exclusive use of it be entitled to legal protection.’ And a citation is made from the opinion of the Supreme Court of the city of New York in the case of the present complainant against Spear, reported in 2 Sandford, that ‘ the owner of an original trade mark has an undoubted right to be protected in the exclusive use of all the marks, forms, or symbols that were appropriated as designating the true origin or ownership of the article to which they are affixed; but he has no right to the. exclusive use of any words, letters, figures, or symbols which have no relation to the origin or ownership of the goods, but are only meant to indicate their names or quality. He has no right to appropriate a sign or symbol which from the nature of the fact it is used to signify, others may employ with equal truth and therefore have an equal right to employ for the same purpose.’”
Words in common use are common property of the people, and no exclusive right to the use of such words can be acquired by adopting them
On the trial the plaintiff testified that the words “ Microbe Killer " mean “fungus" destroyer; that the word microbe was intended to signify fungus; that in using the name “ Microbe Killer” he intended to convey the meaning that it kills those things, and that the name “Microbe Killer" means destroyer of microbes.
That the words are English words in common use, of known signification and fixed meaning, we think there can be no doubt, and that they were employed by the plaintiff in their ordinary and not in any arbitrary or fanciful sense is shown beyond question by the testimony of the plaintiff himself. Under the authorities, supra, we think it quite clear that the words “ Microbe Killer” as used by the plaintiff did not constitute a trade mark.
Notwithstanding plaintiff has no real or legal trade mark, if the defendants had intentionally simulated the peculiar device or symbol employed by plaintiff on his labels, and such simulation was calculated to deceive ordinarily prudent persons, and did deceive such persons, the plaintiff would be entitled to protection against the consequences of such deception, not because of his device or symbol being a trade mark in the legal sense of that term, but because of the fraud and deception practiced by the defendants upon the plaintiff and the public.
In this case, however, the labels used by the plaintiff and defendants respectively are so entirely dissimilar that we do not think it possible for any person of ordinary prudence and caution to have been deceived by defendants’ label and thereby induced to buy their remedy when the purchaser desired and intended to buy the plaintiff’s remedy.
Other assignments of error are immaterial and will not be discussed, as what we have said disposes of the case.
We are of opinion that the judgment of the court below should be reversed and judgment rendered here that appellee take nothing by his suit, and that he pay all costs of this and of the court below.
Reversed and rendered.
Adopted June 3, 1890.
Rehearing
MOTION EOR REHEARING.
John Dowell, for the motion.— 1. That the words “ Microbe Killer" can bé taken as a trade mark and applied to medicine, we refer to the following authorities: Davis v. Kendal, 2 R. I., 566; Cox’s Manual of Trade Mark Cases, Nos. 103, 281, holding “pain killer” good, the word “killer" here passed on being one of the words of appellee. Smith v. Sixbury, Price & Stenart’s Am. Trade Mark Cases, 557, holding “ magnetic balm" good; Fulton v. Seller, 4 Brewster, 42, or Cox’s Manual of Trade Mark
All of the words sustained in the above authorities are common words, or ordinary words of the English language. The distinction is this: if an ordinary word is used to denote the effect of the invention, and not the quality or nature", they can be appropriated.
The words pain killer denote the effect or action of the medicine, invigorator likewise, also blood searcher, magnetic balm, and the like, and are good trade marks, while sulphuric acid would not be, as any person would be authorized to use the word sulphur to any medicine into which it entered as an ingredient.
2. It is insisted that the two words together were first used by appellee; and though each one separate may have been used before, yet he is the only one who applied them together'—designated their joint use; and such is new, novel, and valid. Words that are ordinary words when in use separately may become new and novel when used together, as in this case. Who ever used the words “microbe killer” jointly before appellee? Ho one. Newman v. Alvord, Cox’s Manual of Trade Mark Cases, case 282; Burnett v. Phalon, Cox’s Manual of Trade Mark Cases, case 277.
3. Words selected arbitrarily, not expressive of the quality or character of the article, and not previously appropriated by any other person to designate a similar commodity, may be used as a trade mark for such article. Price & Steuart’s Am. Trade Mark Cases, 1, 88, 559.
Mere words may become valid trade marks when they are merely arbitrary. Price & Steuart’s Am. Trade Mark Cases, 6, 79, 103, 485, 672, 674.
Were not appellee’s words “Mierobe Killer” declared by him arbitrarily to denote his medicine? They are not descriptive of the nature or quality of the medicine, and have nothing to do with it in their separate, ordinary use, and nothing to do with it in their joint use except as arbitrarily selected and affixed to it by appellee for his business purpose. These joint words are a valid and legal trade mark.
4. In determining whether or not there is imitation the court will look to the whole package as offered for sale—the jug, label, color of medi
5. The word “microbe” is a new word, only of late coinage. It is not in Worcester’s Unabridged Dictionary and' supplemental edition of 1886, and neither is it in Webster’s Unabridged Dictionary of 1890. I refer to these dictionaries to support me.
6. If the common words “ pain killer,” passed upon by two Supreme Courts (viz., 2 Rhode Island, 366; Canada West, Chan. Mowat, V. C. Cod. Dig., 236), and held tobe a fancy name indicative of the inventor’s article, then why not microbe killer? If pain killer are fanciful words so adjudged, then why are not “microbe killer?”
7. Labels may be quite different, yet if the general appearance of the whole thing when put up is the same, so that the public are deceived thereby, using ordinary care, then the imitation is complete. The Electro Silicon v. Levy, Price & Steuart’s Am. Trade Mark Cases, 370; Smith v. Sixbury, Price & Steuart’s Trade Mark Cases, 558, 559; Gillott v. Esterbrook, 48 N. Y., 374; Newman v. Alvord, 51 N. Y., 189; Hier v. Abrahams, 82 N. Y., 519; Ex Parte Heyman, Price & Steuart’s Am. Trade Mark Cases, 362, 363; O’Rourke v. Soap Co., Price & Steuart’s Trade Mark Cases, 1043; Burton v. Stratton, Price & Steuart’s Am. Trade Mark Cases, 673; 44 Mo., 168; Cox’s Manual of Trade Mark Cases, 669; Manfg. Co. v. Spear, 2 Sandf., 597; Canal Co. v. Clark, 13 Wall., 322; Falkingburg v. Lucy, 35 Cal., 52; Browne on Trade Marks, sec. 216; Durham Tobacco Case, 3 Hughes, 157; Witherspoon v. Currie, L. R., 5 E. & I. App., 508; Ford v. Foster, L. R., 7 Ct. App., 611; McAndrew v. Barrett, 10 Jur. (U. S.), 550; Lee v. Haley, L. R., 5 Oh., 155; Seixo v. Provezende, L. R., 1 Ch., 192; Broham v. Bustard, 1 Ham. & M., 447.
8. Appellee’s trade mark is indicative of origin and ownership. With the words Microbe Killer is used appellee’s own name, the whole being William Radam’s Microbe Killer.
Walton, Hill & Walton, for appellants, asked that the judgment be reformed so that the cause be remanded for trial upon appellants’ cross-bill.
having been rendered in ac-
.—Judgment cordance with the opinion of the Commission of Appeals, both parties, in effect, ask that the judgment be so reformed as to remand the cause for further proceedings.
Appellants desire this to enable them to prosecute their cross-bill for damages; and appellee suggests that he may be able to offer further evidence on another trial tending to show that his right has been infringed, „
Without in any respect qualifying the former opinion as to the law of the case, the former judgment will be set aside and a judgment here entered reversing the judgment of the court below and remanding the cause for further proceedings.
Reversed and remanded.
Delivered June 28, 1890.