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or to legalize in any form or measure piracy in trade-marks. Property in a trade-mark is acquired at common law only by appropriation and use, and then only of such names, words, and devices as may be held to be adapted to point out the true source and origin of the goods to which such marks are applied. The statute widens the range of selection, and authorizes the mechanic or manufacturer to adopt any name or device he pleases, and to foreclose any controversy on the subject by writing out and filing with the recorder, as the law provides, an accurate description of the name, device, &c., that may have been chosen. But such paper is to be filed in the county where the goods, &c., are to be manufactured or prepared. It is not perceived how this can be made to apply to Rosenbaum & Co.'s stoves, which are manufactured in another state. The statute has no application to the facts of the present litigation. Nor will any fair construction of it warrant the appropriation by one party of an existing trademark, the title and ownership of which is in another party.
But it is objected that the words “ Charter Oak,” with the accompanying device, lack the requisite ingredients or characteristics of a trade-mark, and therefore it is insisted that the plaintiff could acquire no exclusive right to their use for that purpose.
The books are full of authority establishing the proposition that any contrivance, design, device, name, symbol, or other thing, may be employed as a trade-mark which is adapted to accomplish the object proposed by it; that is, to point out the true source and origin of the goods to which said mark is applied; or even to point out and designate a dealer's place of business, distinguishing it from the business locality of other dealers. The mark, however, must possess the requisite characteristics, pointing out the source and origin of the goods, and not be merely descriptive of the style, quality, or character of the goods themselves. Thus it has repeatedly been held that where the name or device employed had, from use or other cause, come to be descriptive of the goods manufactured or sold, their quality and use, such name or device was ineffectual and could not be upheld as a trade-mark. It was so as to the letters “A. C. A.,” in the leading and famous case of The Amoskeag Manufacturing Co. v. Spear, 2 Sandf. S. C. R. 599, as also in Stokes v. Landgraff, 17 Barb. 608, and in various other cases cited by the defendants. But these authorities have no application to the mark claimed by the plaintiff. For the
name“ Charter Oak,” with the combined device, in no possible view or application of them, are either descriptions or suggestive of the style, character, or qualities of a cast-iron cooking-stove. In their natural significancy, import, or symbolism, or in the use made of them prior to the plaintiff's appropriation of them as a trade-mark, they were as far removed as can well be imagined from conveying any such application or meaning. And that constitutes one of their virtues as a trade-mark: Fetridge v. Merchant, 4 Abb. Prac. R. 158; 6 Beav. 66; 4 McLean 516.
The general rule respecting the characteristics of trade-marks has already been given. The following names and designations, among many others, have been held to come within that rule. As pointing to a hotel, “ Irving House,” (3 Sand. S. C. 726); “Revere House,” (7 Cush. 322). As pointing to a manufacturer or dealer, “ Cocoaine,” (9 Bosw. 192); “Howe,” (50 Barb. 236); "Akron," the name of a town, (19 Barb. 599); “London Conveyance Company,” (2 Keene 220); “303,” the designation of a particular pen, (47 Barb. 471); “Bell's Life,” the name of a newspaper, (22 Law Rep. 428); “Roger Williams Long Cloth,” (6 R. I. 434); “ Day & Martin,” (7 Beavan 89).
The name and device selected by the plaintiff were adopted to point out the true source and origin of the stoves to which he applied them, and were therefore possessed of the requisite characteristics of a trade-mark. By the adoption and use of that mark he acquired a property interest therein which the courts will protect. Have the defendants invaded the rights of the plaintiff in this behalf?
The defendants accumulated in the St. Louis market a quantity of the Rosenbaum & Co. stoves, with the name Charter Oak” upon them, which they held for sale as “ Charter Oak” stoves. They were aware of the plaintiff's proprietorship of the “Charter Oak” trade-mark, and were proceeding to sell in defiance of plaintiff's rights.
In this condition of things the present suit was instituted anı an injunction granted restraining the defendants from the proposed sale. The only question raised on this branch of the case is, whether the use of the name “ Charter Oak,” separated from the other parts of the plaintiff's mark, amounted to an infringement of his rights, assuming his ownership of the name as a trade-mark in combination with the device of oak leaves.
On this point there can be no reasonable doubt. The plaintiff's stoves were not conspicuously known by the particular device which surrounded the name upon them, but by the name itself. That was the conspicuous element in the mark. By that name the stove was bought and sold, and known in the Western and Southern markets. It was the prominent essential and vital feature of the plaintiff's trade-mark. That name the defendants and their principals appropriated bodily, and applied it to their stoves, and sought to acquire the sole and exclusive use of it by filing their claim in the recorder's office under the statute. That shows their appreciation of the value of the name, and of their purpose not only to use it themselves, but to exclude the originator of it from
Granting Filley's exclusive right, there can be no doubt that the things done and purposed by the defendants were of injurious tendency, and that the name “ Charter Oak," as employed by them, was eminently calculated to mislead buyers as to the true source and origin of the stove to which the defendants applied that name. If the name as used by them was calculated to mislead, the intention to deceive is to be inferred therefrom: Fetridge v. Merchant, 4 Abb. Pr. R. 159; 4 Mann. & Gr. 385.
The imitation of an original trade-mark need not be exact or perfect. It may be limited and partial; nor is it requisite that the whole should be pirated. Nor is it necessary to show that any one has, in fact, been deceived; or that the party complained of made the goods : 2 Sand. S. C. 607; 25 Barb. 79; 23 Eng. L. & E. 53-4; 2 Sand. Ch. 597. Nor is it necessary to prove intentional fraud. “If the court sees that complainant's trademarks are simulated in such a manner as probably to deceive customers or patrons of his trade or business, the piracy should be checked at once by injunction :" 4 McLean 519; 2 Barb. Ch. 103.
The result is, that the judgment of the Circuit Court must be affirmed.
The other judges concur.
The right of a party to protection in paratively recent origin in its fulness the use of his trade-mark, meaning and perfection, was foreshadowed as thereby any names, signs, marks, early as the time of the Year Books, in brands, labels, words, or devices of any the case of Sothern v. Hou, 2 Croke 468. kind, which can be advantageously used Although the recognition of this right to designate his goods,” though of com- by courts of equity, and its consequent
protection by injunction, was at a much Co.," as the name of an omnibus comlater period, it is now so firmly estab- pany, was upheld as a trade-mark in lished by the highest authority as a pro- Knott v. Morgan, 2 Keene 220. per subject for the exercise of the re Sykes' Patent” as a trade-mark for straining control of that court, whenever shot-bolts was sustained by injunction violated, tha* it is no longer an open against a party of the same name, and question : Amoskeag Manufacturing Co. that, too, though the party had a perfect v. Spear, 2 Sandf. S. C. 606.
right to make the identical article, there A trade-mark may, in its elementary being in fact no patent: Sykes v. Sykes, signification, be applicable to a great 3 Barn. & Cress. 543. variety of forms, marks, or symbols “Penny Bell's Life,” the name of a designating the origin or ownership of newspaper, was restrained as an infringethe thing to which it is applied.
ment of “ Bell's Life," in Clement v. For instance, the title “ Irving House” Maddick, 22 Law Rep. 428. having been used by a person for three
" H. H. 6,” as a trade-mark of years only, as a name of his hotel, an ploughs, was upheld: Remson v. Bental, injunction was granted against a party 3 Law Jour. N. S. 161. setting up a hotel and calling it by the Seixo,” as a brand for wine, war same name: Howard v. Henriques, 3 sustained : Seixo v. Provezende, 1 Chan. Sandf. S. C. 726.
App. Cas. 184. The same principle was held in re “Roger Williams Long Cloth” was spect to the name “ Revere House” when upheld, and those using “Roger Wilapplied to coaches : Marsh v. Billings, liams” as a designation of cotton cloth 7 Cush. 322.
were restrained : Barrows v. Knight, “Cocoine," as a name of hair oil, 6 R. I. 434. held to be an infringement on “Co " Anatolia,” as a brand for liquorcoaine ;'' and this, too, though the in- ice, was sustained in McAndrews v. Basgredients of the oil were open to the use sett, 10 Jurist N. S. 550, though it was of all: Burnett v. Phalon, 9 Bosw. 192. argued that the word being common to
Held by the court that A. B. Howe had all there could be no property in it; such an exclusive right to the use of the Lord WESTBURY saying: “property in word “ Howe” as a trade-mark, placed a word for all purposes cannot exist, but by him upon a scwing machine sold by property in a word as applied by way of him under a license from E. Howe, Jr., stamp upon a stick of liquorice does the patentee, that E. Howe, Jr., could be exist the moment the liquorice gets into restrained from using it as such: Howe the marker so stamped.” v. Howe Machine Co., 50 Barb. 236. In Pidding v. Howe, 8 Simons 477,
Parties making lime at the town of the nante used was “Howqua Mixture;” Akron were held entitled to use the and the court said : “ The defendant, word “ Akron” as a trade-mark, and finding that the plaintiff's mixture was an injunction was granted against the in considerable demand, had recently defendants who marked their lime with begun to sell a mixture of his own unthis word : Newman v. Alrord, 49 Barb. der the same designation. I apprehend 588.
that primâ facie the defendant was not The number ( 303” was held to be a at liberty to do that." proper subject for a trade-mark of pens,
Aleploglu, 6 Beavan 69, and its use was restrained by injunction: the court restrained the defendant from Gillott v. Esterbrook, 47 Barb. 455. using the Turkish word “Pessendede,"
The “ London Conveyance meaning " warranted or approved," on
watches made by him, the plaintiff hav- fringement, it is settled that “The ing long used such word as a mark for whole trade-mark need not be pirated :" his watches.
Ibid. 469. In Croft v. Day, 7 Beavan 89, “ Day “An injunction ought to issue when & Martin," as a trade-mark for black- ever the design, either apparent or ing, was sustained against a firm, the proved, is to impose on the public, and real name of which was Day & Martin. the imitation is such that the success of
“Bismarck” as name of paper collars, the design is a probable or possible conwas upheld in Messerole v. Tynberg, 4 sequence : Amoskeag Manufacturing Co. Abb. Pr. N. S. 414, the court remark- V. Spear, 2 Sandf. S. C. 607. ing: “There is no reason for making “If the wholesale buyer, who is most any distinction between a common word conversant with the marks, is not misled, or term used for an original purpose,
but the small retailer or the consumor which has accomplished its object, and a is, the right of action must exist:" new design adopted by a manufacturer." Clark v. Clark, 25 Barb. 79.
In Farina v. Silverlock, 39 Eng. Law “ It is not necessary that any proof & Eq. 517, an injunction was granted should be made of any one having been against the engraver who made simu- deceived, but the court will examine the lated labels to sell to third parties. two things, and see if they are not cal
There seems to be no more restriction culated to deceive.” When there is a against the choice of a name for a trade- strong resemblance the court will premark than the choice of a symbol. It is sume it is not fortuitous, but that it sufficient that the name in its applica- was intentional with a view to mislead tion to the goods be so far original and purchasers : Eddleston v. Vick, 23 Eng. peculiar as to be capable of distinguish- Law & Eq. 53-4. ing when known in the market one Nor is it necessary that the one inmanufacturer's goods from those of an
fringing upon the trade-mark should Other : Ainsworth v. Walmsley, 1 Law be shown to offer the articles as those Rep. Eq. Cas. 252; Amoskeag Manu- of the plaintiff's manufacture, for even facturing Co. v. Spear, 2 Sandf. S. C.
where the contrary appeared, an injunc605 ; Newman v. Alrord, 49 Barb. 592; tion was ordered in the case of Sykes v. Williams v. Johnson, 2 Bosw. 1. Sykes, 3 Barn. & Cress. 543. A party being fully possessed of
And even where the defendant cxthis right of property in his trade- pressly informed the purchaser that the mark, will not be held to have waived trade-mark placed on the goods was an such right by reason of his neglect to imitation of the plaintiff's mark, an inrestrain others from its use.
“ It is no
junction was granted, on the ground excuse that others have used or are using that succeeding dealers might not make such trade-mark :” Taylor v. Carpenter, a similar disclosure : Coates v. Holbrook, 3 Story 462 ; Coates v. Holbrook, 2 3 Sandf. Ch. 586. Sandr. Ch. 596 ; Taylor v. Carpenter, It is not necessary that the defendants 2 Wood. & Min. 8.
should be the manufacturers of the Where the use by others is with the goods. They can be enjoined although knowledge of the original owner of the only commission merchants, selling in mark, his consent, if implied at all in the strict line of their business: lbid. the knowledge of such use, can be re- It is not necessary to prove intentional voked at any time: Gillott v. Ester fraud on the part of defendant to warbrook, 47 Barb. 471.
rant equitable relief. It is the probaIn relation to what constitutes an in- bility of deception which justifies the