Kinney v. Allen

| U.S. Circuit Court for the District of Eastern Virginia | May 15, 1877

HUGHES, District Judge.

The complainant is a manufacturer in New York of cigarettes of several varieties, which are in very popular use. On certain classes of the packages and boxes in which he makes them up for market he places, amongst other trademarks, an Eastern fez, surrounded by rays of light; and also the numerical symbol y2, printed in bold characters, in red color, with the bar between the two figures obliqtrfe and nearly upright; with the figure 1 elevated on the left; with the figure 2 depressed on the right; the symbol as a whole being of such size that the circumference of a circle having a radius of five-eighths of an inch will just include all of its points. This character of y2 as just described has been used by the complainant on certain of his cigarettes since 1873, and he applied for its registration in the patent office of the United States in May, 1875.

Shortly before this last-named date, that is to say, in April, 1S75, the respondents began to manufacture cigarettes in Richmond similar to those of the complainant, and to put some classes of them up for market in packages and boxes similar to those used by the complainant, and to stamp some of the boxes and packages, amongst other devices, with this same numerical character y> in broad, scarlet, red color, with the dividing bar oblique and nearly upright, and of size identical with the same character as used by the complainant. The latter complains that this is an infringement of his right to the exclusive use of this trade-mark, and files his bill praying for a perpetual injunction forbidding the use of it by the respondents. It would seem that the original idea ■of the complainant in using this character % •on certain of his wares', was to indicate that the cigarettes stamped with it were made up of two kinds of tobacco, in the proportion of half-and-half. The numerical character does not express such an idea; it is not the term which a person accustomed to the use of accurate language would employ for the purpose of expressing it; but yet it must be admitted that it does in some sort indicate the idea, and is not an absolutely .arbitrary symbol. It is only because of the fact that the character does indicate the idea of half-and-half, but does not express it, that any confusion attends this case. If the use by the complainant of the numerical character y2 was absolutely arbitrary, there -could be no question of his exclusive right to use it stamped in any form upon his goods. But where, on the other hand, a character or word is the one in general use for describing the quality or kind' of goods on which it is placed, the books are full of .authorities showing that such character or word ordinarily used cannot be appropriated by any one manufacturer, and that the most he can acquire by long usage, or by statutory registration, is the right of using the character or word printed or painted in some special form not in ordinary use. The cases reported on this head are so numerous and emphatic that it is needless to cite them.

There are, therefore, but two questions arising in the present case as to this numerical character y>.

1. The first is, its use by the complainant being in a critical sense merely arbitrary, as only indicating but not expressing the idea of half-and-half, but not absolutely arbitrary in a popular sense, — whether or not complainant has a right to an injunction prohibiting the use by others of the character in any form on wares similar to his own. On the general principle that exclusive privilege, in prejudice of general right, ought not to be upheld in cases of nicety and doubt, I think it most proper not to grant a general injunction.

2. The next question is, whether the complainant has a right to the exclusive use of this trade-mark in the form, size, color, and style, in which he has used it upon his wares since 1S73. and in which he registered it in 1875. Upon the authority of cases numerously reported, and upon principles well established, I decide that he has such a right, and will so decree, and will insert in the decree an imprint of the character y2 in the form, size, color, and style, in which an exclusive use upon his cigarettes is affirmed to the complainant.