106 Ala. 475 | Ala. | 1894
— There was a- decree pro confesso against W. L>. Scott and the Southern Oil Co., the sole defendants to this bill; a submission for final decree on bill and decree pro confesso ; a decree declaring the complainant entitled to relief, and referring the case to the register to ascertain and report the profits for which the defendants should account, or the damages to which the complainant was entitled ; a report upon said reference to which no exceptions were filed ; and a final decree enjoining the defendants as prayed in the bill, confirming the report of the register' as to profits which defendants had made through the infringement of complainant’s alleged trade-mark, fraudulent imitation- of complainant’s label and fraudulent use of packages or barrels labelled by complainant, and previously used by it in the sale of oil, but which the defendants procured after they had been emptied of their contents and refilled and sold, and adjudging the defendants liable to the complainant for the amount of said profits. From -that decree both defendants prosecute this appeal, though they did not appear at all or for any purpose in the city court nor be-, fore the- register on reference. It is conceded that the defendants, notwithstanding their being in contempt below, may on this appeal question and have,passed upon the equity of complainant’s bill.
A prominent question in the case, going to the equity of the bill in part, is whether certain words stamped upon or affixed to packages of goods sold by the complainant constituted a trade-mark. Of course, it is well settled that a mere word, or several words in a certain sequence, may constitute a trade-mark the exclusive use of which the courts will protect. To entitle words to this protection, however, they must indicate the source
But a word which is the name of the thing to which it is affixed cannot become a trade-mark in respect to that thing, nor words which describe the thing to which they are attached and indicate its characteristics, its virtues, the quantity contained in the package, &c. &c. For if the thing is not patented all men have the right to make and vend it, to the use of its name and to every word in the language to aptly describe it; and the exclusive use by one of words which are thus necessary to all and equally belong to all will not be protected.
It not infrequently happens — very generally indeed— that words used for the purposes of a trade-mark, and which either in themselves as originally used denote only origin or ownership, or by user come in the public mind to indicate origin or ownership though intrinsically importing nothing of the kind, come finally do a sort of adjective or descriptive significance in respect of the wares upon which they appear, and to be in the nature of an assurance that, the commodity possesses certain virtues and qualities. But this is not because the words themselves are descriptive of the thing, but because they point to an origin or ownership known by experience to be the source, or the manufacturer or vendor, of goods of certain qualities. The words do not describe the thing, but they indicate who made it. This knowledge of the maker involves an assurance of quality, through the reputation which articles manufactured by him and put on the market under his mark has acquired. This
On the other hand, it is often the case that words used as, and intended to constitute, trade-marks * and which are primarily and intrinsically descriptive merely, come, by their continued use by one person to mark goods manufactured or sold by him, to clearly indicate the origin and ownership of such goods. But they do not thereby lose their primary meaning or become the exclusive property of the person who thus uses them. They continue to oelong to the common vocabulary of adjective words, and as such the public have a right to use them in the description of its wares which cannot be interfered with by the courts on the theory of preventing infringement of trade-marks. Such words, however clearly they may finally come to perform the legitimate offices of a trade-mark by indicating origin or ownership, still have their primary significance and they cannot be wrenched out of their places as descriptive words for the common use of all, merely because one of the public has assumed for a time to use them for a purpose the law does not warrant. — 26 Am. & Eng. Encyc. of Law, pp. 289-300, 302-305; Browne on Trade-Marks, Chapters III and IV; Manufacturing Co. v. Trainer, 101 U. S. 55.
In the case at bar. the complainant claims as its trademark, in respect of a certain brand or grade of coal oil manufactured and sold by it, the words “Fire-Proof Oil.” These words, it is alleged — and proven for all the purposes of this case — were first used by the complainant, as a part of the brand or label for barrels of oil of a certain excellent quality, many years ago and have been ever since so used by it, that they had not been so used by others for this purpose before their
So that the real and only inquiry on this branch cif the case is as to whether these words in the collocation of their use are descriptive of the article to which they are attached, and in and of themselves, as thus arranged, indicate the grade, quality, characteristics &c. &c. of such article, and did so indicate quality &c. when they were first used by complainants in this' way. The question is not without difficulty even upon principle, and the difficulty is rather enhanced than relieved by adjudication of courts and departments. The trouble does not, of course, arise upon the literal and abstract meaning of the words “Fire-Proof;” that is clear enough — proof against fire, incombustible — but upon their meaning as used here in collocation with and having manifest reference to (an illuminating) “Oil.” We know that in a general sense this oil is not proof against fire, not 'incombustible, not
Moi’eover, the public knowing that the words “fireproof” as applied to illuminating oil, could not imply incombustibility, and knowing also that such oil of a certain high degree of purity and excellence was as to inflammability and consequent explosiveness proof against fire, would and does readily and naturally understand these words in this connection to refer to and carry assurance of that valuable quality of uninflammability in oil of this kind. So that it may well be said that they are not only of a general descriptive character, but also that they aptly and unmistakably to common apprehension point out a very desirable quality or grade of the thing to which they are applied. Fully capable of this meaning and in point of fact conveying it as here used, there is no room to say that this use of them is arbitrary or fanciful. They clearly differ, we think, in this respect from the terms “Sunlight,” “Daylight,” “Gaslight,”'and !‘Insurance,” as applied to illuminating oils, which have been protected as trade-marks ; and also even from the term “Snowflake” as applied to breads and starch, which has been denied protection because descriptive. All these terms, upon the face of them, it seems to us, are clearly fanciful in the connection they are thus used and are arbitrarily applied — not to indicate that the oil is sunlight or gaslight or daylight, nor that the light it makes is as bright as sunlight or daylight or as soft and bright as gaslight, nor any positive quality of the oil, but — as a mere fanciful name or designation for the particular commodity. And so with “Insurance Oil” and perhaps also “Snowflake” bread or
It is of no consequence that the complainant first produced oil of this quality and first applied to such or other oil the appellation of “Fire-Proof.” If, as we think, these words are descriptive, every other person who subsequently produced or dealt in oil of this quality had an equal right with complainant to the use of them in describing his product or wares. Of course the complainant might have coined a word to identify its oil and been protected in its exclusive use, but this is a very different matter from the use of. words, or a single word rather — for that used is really but one compound word —which already existed as a part of the language and hence was publici juris.
We, therefore, conclude that the bill presents no case of infringement of a trade-mark, and that so far as it seeks an injunction of the use of the words “Fire-Proof Oil” by the defendants and an account of profits accruing to them through the use of said words, dissociated from complainant’s label, it is without equity.
This conclusion will operate a reversal and remandment of the cause. The question whether the defendants have imitated complainant’s label can better be deter
The 'bill presents a clear case for injunction and an accounting for profits in respect of the use by the defendants of barrels bearing complainant’s label which, after being sold by complainant containing oil and emptied of their contents, are bought up by the defendants, refilled with their oil and sold. This is a flagrantly fraudulent appropriation of the complainant’s label and the good will attaching to it to the manifest injury of the complainant and the public.. — Browne on Trade-Marks, § 443, et seq.
Unless The Southern Oil Company answers the bill, or some further showing is made that it is a partnership or a myth, service upon some agent of it should be proved before the register before decree pro confesso passes.
Reversed and remanded.