Wolfe v. Burke

| N.Y. Sup. Ct. | Feb 15, 1873

By the Court—

Gilbert, J.

The parties respectively manufacture in Holland and sell in this country an article of gin, called “ schnapps.” That word is of German derivation. As used in Germany and in Holland, it signifies a dram or drink of some alcoholic beverage. It has, however, become an English word by common use and adoption, and means Holland gin. It is so defined in Webster’s dictionary. The evidence shows, and the court below has found, that the word was used in this country in that sense, or at least in a sense which includes the definition of Webster, long before any appropriation of it by the defendants.

Have the defendants a right to an exclusive use of the word “ schnapps,” as forming a part of the combination which constitutes their trade-mark? We are of opinion that they have not, for the reason that it is a true generic designation of merchandise by its mercantile name, and does not denote a specific product of any one. The popular use and signification of such words cannot be monopolized, for that would fetter the growth and improvement of our language. Any one has a right to sell goods by a name in common use, and which does not of itself suggest that the thing is sold or manufactured by another exclusively. The protection afforded to trademarks rests upon the principle of preventing a fraudulent appropriation of a name by which only the product or manufacture of another is designated, and of shielding the public against deception by such means. It is apparent that the word “ schnapps ” conveys only the idea of a particular kind of alcoholic beverage. Everybody is at liberty to manufacture and sell it as his own product. If it is sold as “ schnapps ” of his own manufacture, nobody can be deceived. The gin manufactured by the defendants is sold under the name of “ Wolfe’s Aromatic Schiedam Schnapps.” That manufactured by the plaintiffs is sold under the name of “Wolfe’s Bell Schnapps.” The word “ schnapps,” in both cases, denotes merely the nature of the commodity sold. It performs precisely the same office, and no other, as the old English words having the same meaning, for example, the word “gin” or “ beverage ” or “ drink.” To give the defendants a monopoly of the use of such a word would be to strike it from the nomenclature of commerce. No rule of law or equity has gone as far as this. On the contrary, all the authorities, as I read them, allow the unrestricted use, in selling merchandise, of words which merely define truly the thing sold. A monopoly of the sale of the thing itself can be obtained only by means of a government patent. If the commodity be a new one, it must necessarily have an appropriate and distinctive name, and that name, no matter when or by whom imposed, becomes by use its proper appellation and passes as such into our common language. If it has not been patented, any one has a right to manufacture and sell it. Having this right, he must necessarily have the right to designate it by the name by which it is distinguished and known, if he sells it fairly as an article of his own manufacture and not that of another.

The evidence falls short of showing that the plaintiffs’ trade-mark is a fraudulent or deceptive imitation of that of the defendants, or that it is calculated to deceive anybody, or that anybody has in fact been deceived thereby. On the contrary, the evidence leads to quite an opposite conclusion: The plaintiffs have the right to use the name of Wolfe, because it is a part of their firm name, and is the surname of the head of the firm. A man cannot make a trade-mark of his name, to the exclusion of a like use of it by another who bears the same name, if the use by the latter is fair and unaccompanied by any contrivance to deceive. (See cases cited in Browne’s Law of Trade-marks, § 431, et seq.) In the case before us; no such contrivance has been resorted to, but quite the contrary. No doubt the use of the words “Wolfe” and “ Schnapps ” has facilitated competition with the defendants, but, for the reasons stated, such competition cannot legally be deemed fraudulent or unfair.

We have no doubt of the jurisdiction of the court. The acts complained of were, in their nature, extremely injurious to the plaintiff, and were not susceptible of an adequate remedy at law. It is not the sole object of this suit to prevent the bringing of a suit by the defendants, but to restrain tile repetition of acts akin to a continuous slander of the plaintiffs’ title. In such a case a perpetual injunction is the appropriate and only adequate mode of redress. The court having acquired jurisdiction for this purpose, may retain it for all purposes.

The judgment should be slightly modified, so as to restrain 'the defendants, in appropriate terms, only from instituting suits which would re-open the questions determined in this suit. So modified, it should be affirmed, with costs.

Ordered accordingly.