Stachelberg v. Ponce - 128 U.S. 686 (1888)
U.S. Supreme Court
Stachelberg v. Ponce, 128 U.S. 686 (1888)
Stachelberg v. Ponce
Argued October 31, 1888
Decided December 17, 1888
128 U.S. 686
On the proofs, held that the complainant's right to the exclusive use of his alleged trademark is not established, and that he is not entitled to the equitable relief which he asks for in this suit.
This was a trademark case. The principal relief asked by the appellants, who were the plaintiffs below, was a decree enjoining the appellee, who was the defendant below, his agents and servants, from using as a tradename in their business of manufacturing and selling cigars, the words "Normandie," or "E. P. Normanda," or "La Normanda," or " Normanda, " such use of those words being, it was alleged, a violation of the right of the plaintiffs to the exclusive use of the words "La Normandi" and "Normandi" in their business of manufacturing and selling cigars of a certain kind.
It was alleged, among other things, that one Asher Bijur, of New York, was engaged from 185S to 1865 in manufacturing and packing cigars of various grades and shapes, some of which, of superior quality, were called "La Normandi," and were put up in boxes containing two hundred and fifty each, labeled and branded with these words; that, being of fine stock, skillfully made, and of a shape that pleased the eye, his cigars of that kind became widely known, gaining great favor with the public, particularly in the New England states; that the first use by anyone
engaged in the manufacture, packing, or sale of cigars, of the words "La Normandi" or "Normandi" was by him, those words constituting his trademark for cigars of the above description; that on or about February, 1865, he assigned, sold, transferred, and conveyed to the plaintiff Michael Stachelberg, his heirs and assigns, all his right, title and interest in and to the exclusive use of the words "La Normandi" and "Normandi;" that on or about January 1, 1873, the plaintiffs formed a partnership under the firm name of M. Stachelberg & Co., said trademark becoming their joint property; that since said assignment, they have been engaged in manufacturing cigars under the names "La Normandi" and "Normandi," bestowing great care upon their packing, putting them up in bunches (each bunch being tied with a peculiar colored and striped ribbon), and offering them for sale in boxes containing 250 cigars each, branded with the words "La Normandi;" and that they have incurred great expense in bringing such cigars so named to public attention, whereby large profits have accrued from their sale.
The bill also states that on the 19th of February, 1876, the plaintiffs deposited in the Patent Office at Washington the name "Normandi" as a trademark, and March 7, 1876, received from that office a certificate showing such record; that after said assignment, and up to the date of and since such deposit, they have used the word "Normandi," with the prefix "La," and that by virtue of such assignment, and of their uninterrupted use of the words "La Normandi," they acquired and have the sole and exclusive right to use them as a trademark.
It is further alleged that since January 1, 1881, the defendant, Ponce, has been manufacturing, and causing to be manufactured and offering for sale cigars substantially similar in shape, size, and outward appearance to their La Normandi cigars, and has put them in boxes of the same pattern, general shape, and size, and tied with ribbon colored and striped, and resembling the ribbons used by them, his boxes being branded some with "Normanda," some "E. P.
Normanda," and others "Normandie," whereby the defendant has fraudulently imposed and unless restrained from so doing will continue to impose upon the public his cigars as the real "La Normandi" cigars, manufactured, put up, and sold first by Bijur, and afterwards by the plaintiffs, and whereby also great and irreparable injury will be done to the plaintiffs in their business.
The defendant admits in his answer that he has sold cigars under the brand or label of "La Normanda," but those words, he alleges, have always been accompanied on the boxes or packages containing them by the words "E. P.," or "E. Ponce," or "Ernesto Ponce," and sometimes by the words, "Portland, Maine," thus indicating the manufacturer, and the place at which his cigars were made. Denying that his trademark infringes the alleged trade name of the plaintiffs or that he intends to use any trade name of theirs, he insists that Bijur did not and could not have an exclusive right to the words "La Normandi" as a trademark; that the words "Normandi" and "Normanda" are of foreign origin, and of different significations, the former being a geographical and the latter a personal name; that the word "Normanda" has long been publicly used as a name or designation for cigars, was stamped upon boxes and packages containing them long prior to any of the alleged rights of the complainants, and that such terms were in public use as a designating mark for a manufacture of cigars at Havana as early as 1861, and were so used, in that year, as a brand for cigars put up and sold by him, as well as by others. He contends that there is nothing in the shape or size of his cigars or in the manner in which he bundles or ties them up which can be exclusively appropriated by the plaintiffs. In respect to the use of the words "La Normandie," he denies that he has ever manufactured or ordered to be manufactured any cigars branded with those words, although in the course of his business he has bought and sold other and common brands of cigars marked in that way.
It was in proof that the alleged trademark, La Normandi, was used by the assignor of the plaintiffs as part of a label
that consisted of those words printed at the top thereof, a picture immediately below those words of the interior of a cigar factory while occupied by the employees of the manufacturer, and a facsimile of Bijur's signature, together with the initials "A. B." The label used by the plaintiff consists of the words "La Normandi" at its top, beneath those words a picture of the interior of a cigar factory as above stated, and at the bottom of the picture the following words, and a facsimile signature of M. Stachelberg, to-wit:
"Genuine La Normandi Segars are branded with my initials and"
"the labels inside are signed in my own handwriting. M. Stachelberg. Entered according to act of Congr. A.D. 1866, by M. Stachelberg in the Clerk's Office of the Dis. Court of the Southern District of N.Y. *"
By the decree below, the bill was dismissed upon the ground that when a right to the use of a trademark is transferred either by the act of the original owner or by operation of law, "the fact of transfer should be stated in connection with its use; otherwise, a deception would be practiced upon the public." Stachelberg v. Ponce, 23 F. 430.