180 F. 920 | U.S. Circuit Court for the District of Southern New York | 1910
(after stating the facts as above). The defendant makes no showing in the papers to contradict the proof that “Spanish tile” and “cohesive tile” are synonymous terms in the trade with “Guastavino tile” and “timbrel vault,” and that they mean arches made by Guastavino. The complainant has had exclusive user for now nearly 30 years and presents affidavits of substantial builders and architects who say that “Spanish tile” and “cohesive tile” mean Guas-tavino’s work. A secondary meaning is therefore in my judgment shown clearly enough even for a preliminary writ.
I have had two doubts, but I think neither is substantial. The first is this: Here is a name which has never been used to distinguish the complainant’s work from any other man’s, because no one else has ever made the structure. A “trade-mark” or “trade-name” is some symbol by which one man’s manufacture is differentiated from another’s and if the goods were never made by another no mark applied to them can be the personal mark of manufacture which is the only subject of monopoly. This argument is wholly sophistical, because all that is needed for a valid trade-mark is that the name should indicate the manufacture of the owner, whether there are other manufacturers or not. If the name has come to mean both the article and its manufacturer, it is none the less a misapplication to apply it to the article when made by another. Strictly speaking the article has never yet got a generic name at all; usage has heretofore not found it necessary to distinguish between product and manufacturer. That does not change the fact that the work in question does mean the product of •Guastavino. The name has not become generic, because the thing has not yet become a genus.
The only troublesome analogy is the invalidity of a trade-mark upon a patented article acquired before the patent expires. However, those cases are to be explained upon the theory that the name, e. g., “Singer’s sewing machine,” prima facie means a machine made in accordance with the patent. I know of no case in which it is held that a patentee could not protect his mark if he showed that the name meant not only the patented structure, but also that he made it himself. Suppose no one but the patentee had ever made the patented article, and it was -shown that the name meant not only a machine made after the patent,
The second doubt is from the use of the names in making building contracts with architects and builders who always know independently of the name with whom they are dealing. However, the complainant has a good answer to this, when it suggests that, though contracts are made -explicitly enough, its general reputation in the trade depends upon the character of the work which goes under its name. If Co-merma’s arches are called “Spanish tile,” (Juastavino must bear the chance of their miscarriage. Whether Comerma makes them better or worse, he is certainly not entitled to tack Guastavino’s name to them. Each man must be allowed to make his own name on his own work, and it is plain enough that, even though the contracting architects and builders know with whom they are dealing, the profession and trade who merely followed the results of the work through the gossip of their colleagues might well attribute Comerma’s bad work, if it were bad, to Guastavino. Therefore, in spite of the way in which the, business is done, there is ground to expect confusion.
Ret a writ go pendente lite against the use of “Spanish tile” or “cohesive tile” in any form without some distinguishing sign to indicate Comerma. If the parties cannot settle between them the proper addendum, they may bring the, dispute to me. The writ should be explicit, as it saves litigation upon contempt proceedings.
In view' of the conflict of evidence the writ will not include any provision regarding Comerma’s representing himself as a former foreman of the complainant.
