264 F. 98 | 2d Cir. | 1920
(after stating the facts as above). [1] In the absence of any showing of earlier appropriation, plaintiff had perfect right to use “Yankee” as a trade-mark for cigarette cases. Cf. Scandinavia, etc., Co. v. Asbestos, etc., Co., 257 Fed. 937,- C. C. A.-.
Nor is it material that the cases are made under a patent owned by defendant. A licensee máy build up a business in the patented article and create a trade-mark by his efforts, which will even remain his after the expiration of the patent. President, etc., Co. v. Macwil-
It is urged that the copying of plaintiff’s style of ornamentation is an appropriation of those nonfunctional features upon which stress has been so often laid in cases of unfair competition. It was pointed out in Crescent, etc., Co. v. Kilborn, 247 Fed. 299, 159 C. C. A. 393, that to enjoin such copying it must be shown that the ornamentation of plaintiff’s article had become associated with the thing itself in the minds of the public; but we think the proofs in this case respond to that test.
The order refusing injunction is reversed, and the cause remanded, with direction to enjoin defendant until the further order of the court from all use of the trade-mark “Yankee” in connection with cigarette cases, further preventing him from making or vending cigarette cases ornamented either externally or internally as plaintiff’s “Yankee” cases have been, or from in any way pretending or suggesting that any cigarette case made by him or for him by any manufacturer other than plaintiff is a Yankee cigarette case. We do not, however, think that at this stage of the case defendant should be enjoined from making cases under the patent in question composed of brass with nickel plating. Whether such an article is or can be said to be either of German silver or of an imitation of German silver is a matter to be left to final hearing.
Plaintiff will recover the costs of this appeal.