delivered the opinion of the court.
In 1851 the plaintiff employed N. S. Vedder, an extensive stove-pattern maker of Troy, New York, to design and construct for Mm a set or series of cooking stove patterns. The patterns were made as ordered, and in a form which resulted in the production of a cooking stove of a new and improved interior arrangement and construction, for which Vedder obtained letters patent, which he assigned to the plaintiff. The plaintiff originated and applied to the stove the name “ Charter Oak,” which was so formed upon the patterns as to produce the name upon the manufactured article, in combination with a sprig of oak leaves. The name and device was employed to distinguish and designate cooking stoves of the plaintiff’s manufacture. The manufacture and sale commenced the following year, and has been followed up continuously ever since ; the sales from 1852 to 1867, both years inclusive, amounting to 119,226. These stoves were distributed broadly through the western and southern country, and appear to have been highly popular and successful.
But the answer denies that the plaintiff first appropriated and used that name in such connection as indicating the source and origin of the article to which it was applied, and denies that his use of it has been either exclusive or uninterruptedly continuous, and avers that the contrary of all this is true. Upon these issues a large mass of testimony was taken, from which the following facts are deduced: 1. That the plaintiff’s appropriation of the name “ Charter Oak,” as already detailed, was prior in point of time to any similar use of that name by any other parties. The testimony is clear and entirely satisfactory on this point. 2. That notwithstanding such appropriation by the plaintiff, different manufacturers in Cincinnati, and in that region, at different times subsequently to 1852, applied the same name to cooking stoves of their manufacture, but without the consent of the plaintiff in any instance, and without his knowledge, except in two instances. The first of these two occurred in 1854, and was at once checked by the plaintiff, and abandoned by the Cincinnati manufacturer on being apprised of the plaintiff’s rights. The other is that of the manufacture of the stoves, the sale of which, with the plaintiff’s alleged trade-mark upon them, is sought to be enjoined by this suit; and the suit was commenced immediately after the facts came to the knowledge of the plaintiff. 3. That J. S. &. M. Beckham, of Utica, Oneida county, New York, manufactured• in Utica a “Charter Oak” cooking stove, from 1852 to 1857, and then abandoned it, and never
The fact that parties in Cincinnati, or elsewhere, manufactured “ Charter Oak” stoves, and sent them into the market to compete with the plaintiff’s manufactures, in no way aids the defense, unless it appears that the plaintiff assented to or acquiesced in such infringements upon his rights; and, as already indicated, there is nothing in the ease to establish a dedication or abandonment to the public, on the part of the plaintiff, of his supposed rights of property in the alleged trade-mark. There is no testimony having that tendency except the transaction with the Peckhams, and that is insufficient. In Gillott v. Esterbrook, 47 Barb. 455, it appeared that an imitation of the plaintiff’s mark had been in use for many years, and that for twenty years he had issued printed “ cautions ” to the public on the subject,
The depredations of others upon plaintiff’s rights furnish no excuse to the defendants for similar acts on their part. It is rather an aggravation to the plaintiff that others have also injured him, and courts have not shown any disposition to encourage that line of defense. Woodbury, J., in Taylor v. Carpenter, 2 Wood & Min. 8, held this language: “There is something abhorrent in allowing such a defense to a wrong which consists in counterfeiting others’ marks or stamps, defrauding others of what had been gained by their industry and skill, and robbing them of the fruit of their good name, merely because they have shown forbearance and kindness.” (See observations of Story, J., same case, 3 Sto. 464.)
After this suit was commenced, Rosenbaum & Co., who seem to be the real parties defending against the action, made an attempt to appropriate the disputed trade-mark to their own use, in clue form of law, by filing in the office of recorder of deeds, in the county of St. Louis, a written claim thereto, under the act of March, 1866 (Gen. Stat. 1865, p. 912). A certified copy of the paper so filed, declaring that said Rosenbaum & Co. had adopted “ Charter Oak ” as their trade-mark for stoves manufactured by them, was given in evidence, and relied upon as showing their title to the trade-mark as against Filley, who had never filed any such document. If this proceeding can be made available for the purpose intended, it may be regarded as an entirely new and improved method of disposing of trademark cases, and of appropriating the property of others, the subject of such suits, without risk or inconvenience, and at very slight cost.
A glance at the statute, however, shows that it was intended for no such purpose. It was not designed in the slightest particular to weaken or abridge any existing rights, or any future right, to a trade-mark which might be acquired in the usual way, or to legalize, in any form or measure, piracy in trade-marks. Property in a trade-mark is acquired at common law only by
But it is objected that the words “Charter Oak,” with the accompanying device, lack the requisite ingredients or characteristics of a trade-mark, and therefore it is insisted that the plaintiff could acquire no exclusive right to their" use for that purpose. The books are full of authorities establishing the proposition that any contrivance, design, device, name, symbol, or other thing, may be employed as a trade-mark which is adapted to accomplish the object proposed by it — that is, to point out the true source and origin of the goods to which said mark.is applied, or even to point out and designate a dealer’s place of .business, distinguishing it from the business locality of other dealers. The mark, however, must possess the requisite characteristics, pointing out the source and origin of the goods, and not be merely descriptive of the style, quality, or character of the goods themselves. Thus, it has repeatedly been held that where the name or device employed had, from use or other cause, come to be descriptive of the goods manufactured or sold, their quality and use, such name or device was ineffectual, and could not be upheld as a trade-mark. It was so as to the letters “A. C. A.,” in the leading and famous case of the Amoskeag Manufacturing Company v. Spear, 2 Sandf., S. C., 599; as also in Stokes v.
The general rule respecting the characteristics of trade-marks has already been given. The following names and designations, among many others, have been held to come within that rule: as pointing to a hotel, “ Irving House” (3 Sandf., S. C., 726), “Revere House” (7 Cush. 322); as pointing to a manufacturer or dealer, “Cocoaine” (9 Bosw. 192), “Howe” (50 Barb. 236) ; “Akron,” the name of a toAArn (49 Barb. 599) ; “ London Conveyance Company ” ( 2 Keene, 220); “ 303,” the designation of a particular pen (47 Barb. 471); “Bell’s Life,” the name of a newspaper (22 Law Rep. 428); “Roger Williams Long Cloth” (6 R. I. 434); “Day & Martin” (7 Beav. 89). The name and device selected by the plaintiff were adapted to point out the true source and origin of the stoves to which he applied them, and were therefore possessed of the requisite characteristics of a trade-mark. By the adoption and use of that mark he acquired a property interest therein which the courts Avill protect. Have the defendants invaded the rights of the plaintiff in this behalf ? The defendants accumulated in the St. Louis market a quantity of the Rosenbaum & Co. stoves, with the name “Charter Oak” upon them, Avhich they held for sale as “Charter Oak” stoves. They were aware of the plaintiff’s proprietorship of the “Charter Oak” trade-mark, and were proceeding to sell in defiance of plaintiff’s rights.
In this condition of things the present suit Avas instituted, and an injunction granted restraining the defendants Jfrom the proposed sale. The only question raised on this branch of the case
The imitation of an original trade-mark need not be exact or perfect. It may be limited and partial; nor is it requisite that the whole should be pirated. Nor is it necessary to show that any one has in fact been deceived, or that the party complained of made the goods. (2 Sandf., S. C., 607 ; 25 Barb. 79 ; 23 Eng. L. & E. 53-4; 2 Sandf. Ch. 597.) Nor is it necessary to prove-intentional fraud. “If the court sees that complainant’s trade-marks are simulated in such a manner as probably to deceive customers or patrons of his trade or business, the piracy should be checked at once by injunction.” (4 McLean, 519; 2 Barb. Ch. 103.)
The result is that the judgment of the Circuit Court must be affirmed.