49 Barb. 588 | N.Y. Sup. Ct. | 1867
The name which has been selected and used for the pnrpose of distinguishing the water lime cement manufactured by the plaintiffs from that manufactured by others engaged in the same business, is one which is very clearly adapted to that purpose ; because it designates the origin of the article made and dealt in by them, as well as its place of manufacture. Within the settled rule of the law governing trademarks, it was appropriately used in these
But the more important question arising upon the facts in this case is whether the plaintiffs can properly be protected in their use of that word, under the settled rules of law relating to the appropriation and use of words as trade marks. Where words, or names, are in common use, the law does not permit such an appropriation of them to be made, so far as they are comprehended by such use. And for that reason, words and names having a known or established signification cannot, within the limits of such signification, be exclusively appropriated to the advancement of the business purposes of any particular individual, firm or company. The inability to make such appropriation of them arises out of the circumstance that on account of their general or popular use, every individual in the community has an equal right to use them; and that right is, in all cases, paramount to the rights and interests of any one person, firm or company. What may alike be claimed and used by all, cannot be exclusively appropriated to advance the interests of any person. Numerous cases have been before the courts in which this limitation upon the use of words and names as trade marks has been maintained and established. And no good reason can be given for questioning or impeaching their conclusions. But while this limitation is entirely reasonable there can be no propriety in extending it beyond the circumstance upon which it is founded. And accordingly any member of the community whose interests and business may be promoted by doing so, should be at liberty to apply even names and words in common use to the products of his industry, in such a man
The cases which have sometimes been supposed to come in conflict with this use and appropriation of popular terms will ‘be found, upon examination not to be so. In those of Burgess v. Burgess, (17 Eng. Law and Eg. 257,) and Wolf v. Goulard, (18 How. Pr. 64,) the popular use and signification of the terms used was attempted to be appropriated, which, under the principles already adverted to, the court very properly held could not be done. Such also were the cases of Corwin v. Haley, (7 Bosw. 222,) where the plaintiff; endeavored to appropriate the terms “ Club House Gin,” and of Bininger v. Wattles, (28 How. Pr. 206,) where the terms used were of a similar nature, being “ Old London Dock Gin.” These were terms in popular use for the particular purpose of describing the subjects the plaintiffs claimed the right to specifically appropriate them to. But neither of these decisions nor any others which they refer to, sanction the conclusion that because a term is in popular use, it can be burthened with no new one of a special and exclusive character for the purpose of identifying the trade and manufactures of a particular individual. What has been said by the courts upon this subject will be found to relate to such uses of pop
The object of the law, in cases of this description, is to restrain and prevent fraud upon the manufacturer, and imposition upon the public. And that object would be entirely defeated, in many cases, if courts of justice were bound to withhold their protection from persons who imposed a new office and signification upon an old word for the purpose of rendering it serviceable as a trade mark., There is no more reason for allowing a person’s business to be laid open to the fraudulent invasions ' and misrepresentations of competing manufacturers and dealers in such a case, than there would be where the term was entirely new and previously unused. Where one person by means of superior skill, intelligence and industry, has created a valuable trade for his goods or wares in the market, and identified such trade by the appropriate use of terms, labels or devices, the party who simulates those terms, labels or devices for the purpose of diverting or securing the trade to himself, is guilty of a double fraud upon the person creating the trade, and also upon the public. The man who goes upon the market in that manner, substantially represents that the goods or wares which he offers for sale are those of the person who first secured the public confidence for them. And the act embodies all the essential elements of fraud. Justice Duer says : “ The essence of the wrong consists in the sale of the goods of one manufacturer or vendor as those of another. And it is only when this false representation is directly or indirectly made, and only to the extent to which it is made, that a party who appeals to the justice of the court can have title to relief.” (2 Sand/. 607.) And the same principle is stated by the chancellor in Farina v. Silverlock, (39 Eng. Law and Eqq. 514.) The same leaméd justice, in the case already mentioned, perspicuously states the general rule applicable to cases of this description. He says : “ Every manufacturer, and every merchant for whom
This appropriation or use of terms of a public nature, is sustained by well considered and well established authorities. In the case of Knott v. Morgan, (2 Keen, 213,) the plaintiff was a shareholder in a company having and running public omnibuses, with the title painted upon them of “ London Conveyance Company,” which was imitated by the defendants upon similar omnibuses used by them. And that imitation was restrained by injunction. In the course of his decision upon that case, Lord Langdale said : “ It is not to be said that the plaintiffs have an exclusive right to the word “ Conveyance Company,” or London Conveyance Company,” or any other words. But they have a right to call upon this court to restrain the defendant from fraudulently using precisely the same words and devices, which they have taken'for the purpose of distinguishing their property, and thereby
The cases of Singleton v. Bolton, (3 Doug. 293,) and Millington v. Fox, (3 Mylne & Craig, 338,) arose upon attempts made to acquire the exclusive use of popular names by which alone the articles compounded were known, and they have for that reason no application to the present controversy. In that respect they are something like the case of Burgess v. Burgess, Corwin v. Daly, and Bininger v. Wattles, supra, where the names claimed as trade-marks were the names by which the articles had been previously known in the market; and in the two latter they indicated the quality only. The case of Perry v. Puffit, (6 Beavan, 66,) was disposed of upon the fact that the name used by the defendant was just as true in the application made of it by him as it was as used by the plaintiff; while Fetridge v. Wells, (13 How. Pr. R. 385,) Partridge v. Menck, (2 Barb. Ch. 101,) and Pidding v. Howe, (8 Sim. 477,) were dismissed because the terms and phrases the plaintiffs endeavored to appropriate were not true, but on the other hand were unfounded and deceptive, and in no way
In the present case, the term selected to identify and distinguish the plaintiffs’ manufacture from those of a similar character placed upon the market by others had never been previously used for any such purpose. That use of it imposed a new attribute or office upon the word, which specially adapted it to indicate and distinguish the origin and place of the plaintiffs’ manufacture. And it in no way intrenched upon any previous use or purpose to which the term had been in any way devoted by others. The term was made to bear and perform an entirely new duty, or office, which could result in no embarrassment, prejudice or injury to any other person whatsoever. And from the continued use made of it in that respect it has become an important and valuable element in promoting and securing the property and profit of the plaintiffs’ business, and as such the defendants would be restrained from making a similar use of it.
It is not necessary, in disposing of the present controversy, to make it entirely dependent upon the considerations previously suggested. For the term appropriated to the business of the plaintiffs is not one of those which all alike are equally entitled to make use of. Its common use is not shown to have extended beyond the inhabitants of the village known by it. And neither of them appear to contest the plaintiffs’ right to use it as a designation of the article they manufacture and sell. If any persons are entitled to complain of the use made by the plaintiffs of the term, they, certainly, are the ones to do it; not the defendants, who are neither inhabitants of, nor interested in, any of the concerns of the village. The doctrine of the case of The Brooklyn White Lead Company v. Masury. (25 Barb. 417,) does not aid the defendants, in this respect. For while it maintains the right of all the inhabitants of that particular place to call their white lead Brooklyn white lead, it does not hold that any person not an inhabitant of Brooklyn would have the same right.
The use óf this word by the defendants, under the circumstances disclosed by the evidence, creates a very strong presumption that it was adopted for the purpose of diverting a portion of the plaintiffs’ trade to themselves, and in that way. securing the gains and profits which justly the plaintiffs are entitled to. Ho other reason appears to exist for applying the name of “Akron” to their lime beds and incorporating it in the labels placed upon the barrels in which the sale of their cement, is offered and made. Ho circumstance can be reasonably and fairly suggested for these changes in the defendants’ business which were not' -made before the 1st of January, 1866, although the same business had been carried on for many years before that, unless it be the one already mentioned. And the defendants should not now be permitted to successfully allege that they did not intend, by doing- so, to mislead or deceive the public ; nor that the public could not well be deceived by what they have done. There is no room for doubt but that this name was used by them to. enable them to avail themselves pf the patronage they suspected might otherwise go to the plaintiffs ; and they probably correctly judged that such would be the result. The
Marvin, Daniels and E. Darwin Smith, Justices.]