35 F. 524 | U.S. Circuit Court for the District of Maryland | 1888
It appears from the testimony that in chemistry the product obtained by partly neutralizing phosphoric acid with a base is called an acid phosphate of that base, as acid phosphate of lime, acid phosphate of potassium, acid phosphate of magnesium or sodium or zinc or strychnine. There are therefore very many acid phosphates, and the words “acid phosphate” alone suggests an indefinite and incomplete idea, unless, by the context or use or association, there is suggested to the mind the base which must be present a's a constituent of every phosphate. The complainant corporation, doing business in Providence, R. I., about the year 1868, guided by the chemical knowledge and discoveries of Prof. Eben N. Horsford, and under his direction, began the manufacture for sale of a preparation to be used as a medicine, condiment, or beverage, which was essentially an acid phosphate of lime, and to which it gave the name of “Ilorsford’s Acid'Phosphate, ” aud by that name labeled, advertised, and sold it in large and increasing quantities. This preparation went into very general use; and as it was the first preparation of the kind thus popularized, and for a long time the only one known to the public, it came to be usually called for, not as “Horsford’s Acid Phosphate,” but simply as “Acid Phosphate.”
Parke, Davis & Co., manufacturing chemists of Detroit, Mich., began, in 1881, the manufacture and sale of a preparation'of the same character, after a formula used by Dr. William Peppier, of Philadelphia, very similar to Horsford’s, and which they called “Liquor Acidi Phosphorici,” and which, by labels, circulars, and advertisements, they represented to he a scientific substitute for “Horsford’s Acid Phosphate.” In 1887, Parke, Davis & Co. changed the name aud label of their preparation, and called and labeled it “ Liquid Acid Phosphate,” representing it to be the same as their “ Liquor Acidi Phosphorici,” and a substitute forllorsr ford’s Acid Phosphate, stating that it contained phosphoric acid in combination with calcium, magnesium, iron, sodium, and .potassium. In these circulars they say;
*526 “We have hitherto labeled this preparation ‘Liquor Acidi Phosphorici,’ adopting the name and following the formula of Dr. Wm. Peppier, of Philadelphia. The preparation has, however, come to be so universally known as ‘Acid Phosphate’ that we have thought it best to adopt that name on our labels.”
There is no question that the preparation had become so universally known by the name “Acid Phosphate” because it had been brought into public notice by the complainant’s preparation-, which was extensively used as an aid to digestion, and called for at soda-fountains as a tonic beverage by that name. The nominal defendants in this case are Messrs. Muth & Bro., of Baltimore, but it is the sale by them of the preparation made and advertised by Parke, Davis & Co., and labeled “Liquid Acid Phosphate,” which is complained of, and it is they who are defending this suit. There is no complaint of any misleading representation with regard to. the manufacture or origin of the goods sold by the defendant, and no ground for complaint of-a,ny deceptive imitation of complainant’s labels or packages. Indeed, Parke, Davis & Co., in all respects except in the use'of the name “Acid Phosphate,” seek to give prominence to the fact that the article sold by defendants is made by them, and not by complainant, and that the formula is somewhat different, and, as they claim, an improvement upon Prof. Horsford’s. There is therefore entirely wanting that element of deception by imitative labels and false representations which moves the court to grant restraining injunctions in many trade-mark cases.
The sole question for decision is whether or not the words “acid phosphate,” as applied to complainant’s preparation, are words of that class which the law will protect as a trade-mark. This narrow question of great importance to the complainant has been most thoroughty and ably presented by counsel, and it resolves itself into a question of fact; for as to the principles of law there is no contest. The right of the complainants to protection in the trade-mark claimed by them depends upon whether or not acid-phosphate is an arbitrary name given by them to a preparation to which it had never before been applied, and not a description of it; for, if it is a reasonably sufficient description of the character, kind, and quality of the thing to which it has been applied, then it is a well-settled rule of law that no one can make an exclusive appropriation, of such a name. The phrase “acid phosphate ” is common in chemistry, and constantly found in treatises and text-books. It was not invented by the complainants, but had been in use some 20 or 30 years before they made use of it. Any compound of any phosphoric acid with a. base may appropriately be calléd a phosphate; and, if there is present so much acid that it could saturate a greater quantity of the base, it is properly called an “acid phosphate,” to distinguish it from a “basic phosphate,” in which the base preponderates, or a neutral phosphate, in which neither is in excess, all three of these terms being perfectly well known in chemistiy. It is not to be gainsaid that as a complete and exhaustive indication of all that the preparation contains the phrase “ acid phosphate” is inexact. It does not indicate that it is a solution-, which it is,
“Nor is the question whether the name used as a trade-mark will convey an exact notion of how to compound an article, so that one reading it will be able to make a like article. If the necessary effect is to inform the reader or hearer of the general characteristics and composition of the thing, it is a name which niay be used with equal truth by any one who has made and offers for sale a thing compounded of the same ingredients, and who desires to express to the public the same facts. Nor does the coupling together, in a new combination >f words which before that had been used apart, and had entered into the common scientific vocabulary, give a right to the exclusive use of such combination, where it is indicative, not of origin, maker, use, and ownership alone, but also of quality and other characteristics.”
In the ease then before the New York court of appeals, the plaintiffs, Caswell, Mack & Co., had prepared a medicine to which they had given the name of “Ferro-Phospliorated Elixir of Calisaya Bark.” The plaintiffs were the first to invent and use the combined word “ferro-phosphorated,” and gave it to the preparation to distinguish it as the preparation made by themselves, and also to announce that there was iron and phosphorus in it. This it was decided they could not do to the exclusion of other persons; for although the combined word was their own invention, and did, as their trade-mark, indicate the origin and maker of the article, it did more, and, by words which were of common significance, it indicated that the ingredients iron and phosphorus were combined with the calisaya bark, and therefore it could not be protected as a trade-mark. This ease only applies the recognized ruling in many other cases.
It seems impossible to maintain that the words “acid phosphate” are not, in this sense, descriptive words, indicative of the composition and characteristics of Horsford’s preparation. There is evidence in what has heretofore been done by the complainant and by Horsford himself which tends strongly to support this conclusion. The complainant’s trademark, as originally registered in the United States patent-office in the year 1877, states that the complainant “has adopted for its use a trade
“My invention consists in the use of acid phosphate of lime, magnesia, or alkali as a condiment in liquid form, either by itseif or as a substitute for. vinegar, or an ingredient in a beverage or sauce, or for other culinary or sanitary purposes, where it is desirable to employ an -acid in liquid form. The importance of phosphates to the animal economy, to be supplied through hood, has long been recognized. I have found the advantage to the health of using the liquid monabasic acid phosphate, when employed in aid of digestion and assimilation, to be of the most marked character. * * * The acid phosphate-I employ is generally a compound of one atom of lime with one atom of phosphoric acid, with a small addition of free phosphoric acid, and is prepared as follows.”
He then describes the process of preparation, and adds:
“The acid phosphate of lime maybe substantially replaced by the corresponding compounds of magnesia and potassa or soda, produced by the well-known chemical methods.”
His claim is for “the manufacture of liquid acid phosphate of lime for use as a condiment or article of diet or ingredient to be employed in beverages or food, substantially as and for the purposes herein set forth.”
It seems to me that it is fairly to be inferred from this specification of Prof. Horsford, and it is distinctly stated in other portions of the evidence, that the particular base used in obtaining the phosphate to be used in this preparation is not deemed of substantial importance. It would appear that it is the phosphoric acid, presented to the stomach •in-that form in which it--is found in an acid phosphate which has been
The counsel for defendants have also submitted an argument based upon the right, after a patent has expired, which any one has, to use the name which the inventor has given to a new patented article, and by which it has become generally known. Complainant, however, insists that the defense is not raised by the answer, and that there is no testimony to show that complainant’s preparation was made under the patent No. 75,272, granted to Horsford.’ 1 have not found it necessary to consider or pass upon this question, resting my decision upon the inherent objection to the words themselves, which prevents their lawful appropriation as a trade-mark.
There being no deceptive similarity in defendants’ labels and packages, and nothing complained of except the use of the words “acid phosphate,” in my judgment, the bill must be dismissed.
