46 F. 624 | U.S. Circuit Court for the District of Western Pennsylvania | 1891
The plaintiff in this case, claiming to be the owner, as the .assignee and successor of Dr. L. H. Harris, of a certain trade-mark registered by him, February 3, 1885, under the provisions of the act of congress of March 3, 1881, alleged infringement by the defendant, and prayed for an injunction and account. The defendant denied the right -of the plaintiff to the exclusive use of the words “Cramp cure,” which were the words used by plaintiff and defendant, and in controversy, because not part of the registered-trade-mark, or, if held to be part of the registered trade-mark, denied that any exclusive right to the use of those words could legally be claimed by Dr. Harris or his successors, and de- *
The first question to be considered is the dispute between the parties as to what the trade-mark which was registered really is. The application filed by Dr. Harris states that he has adopted for his use a trademark for a medicine for the cure of cramps, and further says:
“The said trade-mark consists essentially of the illustration of a boy in a position indicating suffering from cramps. In connection with this figure are the words ‘ Cramp cure,’ placed just below the figure. The figure of the boy is shown in connection with a landscape, and on either side of the figure is a basket, containing various kinds of fruits. The basket on the right hand side of the boy is standing upright, while the other is tilted over on one side, with the fruit partially scattered over the ground. At the top of the picture is the title and name ‘ Dr. Harris,’ and below, near the bottom of the same, are arranged the words, ‘ Cramp cure for every ache and pain.’ These have generally been arranged as shown in the accompanying fac simile, but the landscape, baskets, and descriptive matter may be omitted or changed at pleasure, without materially altering the character of the trade-mark, the essential feature of which is the illustration of the boy apparently in great pain.”
From the description in the application it would appear that the words “Cramp cure” are used twice, but the accompanying fac smile shows the words to be used but once, forming, just below the figure of the boy, part of the expression, “Cramp cure for every ache or pain.” The proper construction of the statement is that the trade-mark registered was the design of the suffering boy, which the application states to be the essential feature. The reservation of the right to omit the descriptive matter, which includes the words “Cramp cure,” shows that the applicant did not regard those words as part of the trade-mark.
But conceding for the present that the words “Cramp cure,” are a portion of the trade-mark, as claimed by plaintiff, are they such words as can properly be claimed and used exclusively by the plaintiff as a trademark? “The object of a 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 the public; it would afford no protection to either against the sale of a spurious, in place of the genuine, article.” Manufacturing Co. v. Trainer, 101 U. S. 51. “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 trademark, and the exclusive use of it be entitled to protection.” Canal Co. v. Clark, 13 Wall. 311; Lawrence Manuf’g Co. v. Tennessee Manuf'g Co., 138 U. S. 537, 11 Sup. Ct. Rep. 396. “The general proposition is well established that words which are merely descriptive of the character, qualities, or composition of an article, or of the place where it is manufactured or produced, cannot be monopolized as a trade-mark; and we think
Plaintiff’s counsel, however, while insisting that, according to the general rules upon the subject, the words “Cramp cure” are a portion and a valid portion of the trade-mark, and are not words simply descriptive of the purpose and character of the medicine, have argued that the trade-mark,, being registered under the act of congress of March 3, 1881, the decisions of the courts upon this question, when not made as to trade-marks registered under the act of ^congress, are notgenerally pertinent, and should not be controlling. That the act of 1881 contains certain limitations upon the registry of trade-marks, limitations so ex
“27o alleged trade-mark shall be registered, unless the same appear to he lawfully used as such by the applicant in foreign commerce or commerce with Indian tribes, as above mentioned: or is within the provision of a treaty, convention, or declaration, with a foreign power; nor which is merely the name of the applicant; nor which is identical with a registered or known trade-mark owned by another, and appropriate to the same class of merchandise; or which so nearly resembles some other persons’ lawful trade-mark as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers. ”
Plaintiff’s counsel argue that, as to the specific character of the trademark, and the words or signs that may be employed, there is no limitation as to the use of descriptive names, or names indicative of the purpose of the article, or to which it may be applied; that the tests set up by the act of congress are that the proposed trade-mark shall not be the mere name of the applicant, and that it shall not have been used before by others as applied to the same class of merchandise. An examination of the act of congress shows that it does not sustain plaintiff’s position. The act does not define a trade-mark. It provides that the owner of a trade-mark, used in commerce with foreign nations, etc., may obtain registration of such trade-mark by complying with certain requirements and regulations, among which is the filing of a written declaration that the registering party has a right to the use of the trade-mark sought to he registered. It provides, as quoted above, that no alleged trade-mark shall be registered, unless the same appear to be lawfully used by the applicant in foreign commerce, etc. It provides that, in an application for registration, the commissioner of patents shall decide .the presumptive lawfulness of claim to the alleged trade-mark, provides that the registration shall be prima facie evidence of ownership, and provides that nothing in the act shall prevent, lessen, impeach, or avoid any remedy, at law or in equity, which any party aggrieved might have had if the act had not been passed. The evident purpose of the act was, by registration, to protect an existing valid trade-mark, when used in certain cases, not to create, by the registration, a trade-mark which had otherwise no existence or validity. ■ As in the construction of the penal statutes of the United States it is frequently necessary to look to the common law, in order to ascertain the nature of the crime, and the definition of the term used by the statutes, so, in applying tbe act of 1881, and ascertaining the rights conferred by it, it is necessary to turn to the decisions of the courts for the rule which will define the valid legal trade-mark which is protected by registration under the act. By the exception of certain specified'things irom registry, congress has limited the trade-marks which may be registered, but it has not said that those which are registered are thereby made valid trade-marks. Such a construction of the act would be contrary to the well-known doctrine of the Trade-Mark Cases, 100 U. S. 82, where the supreme court say that a
Aside from the use of the words “Cramp cure,” there is no resemblance between the label used by the defendant and that used by the plaintiff. The defendant’s label bears the w'ords, “Stucky’s diarrhoea and cramp cure. This preparation will be found invaluable for the cure and relief of diarrhoea, cramps, cholera morbus, dysentery, summer complaint, and pains in the stomach.” Then follow the directions for use, and at the foot of the label are the words, “Prepared only by Emil G. Stucky, Druggist, Cor. 24th St. and Penn Ave., Pittsburgh, Pa.” This label, which is used on the bottle containing the medicine, and which has been offered in evidence, is printed in black ink. The wrapper or box in which the bottle is inclosed has substantially the same inscription printed in black ink. The plaintiffs label bears the words, “Dr. Harris’ cramp cure. A specific for cholera, cramps, pain in the stomach, <fcc., &c.” Then follow the directions, and at the foot of the label are the words,