1. Letters or figures affixed to merchandise by a manufacturer
for the purpose of denoting its quality only cannot be appropriated
by him to his exclusive use as a trademark.
2. An injunction will not be granted at his suit to restrain
another manufacturer from using a label bearing no resemblance to
the complainant's, except that certain letters, which alone convey
no meaning, are inserted in the center of each, the dissimilarity
of the labels being such that no one will be misled as to the true
origin or ownership of the merchandise.
APPEAL from the Circuit Court of the United States for the
Eastern District of Pennsylvania.
The facts are stated in the opinion of the Court.
MR. JUSTICE FIELD delivered the opinion of the Court.
This is a suit in equity to restrain the defendants, D. Trainer
& Sons, from using on ticking manufactured and sold by them the
letters "A.C.A." in the sequence here named, alleged by the
complainant to be its trademark, by which it designates
Page 101 U. S. 52
ticking of a particular quality of its own manufacture, and to
compel the defendants to account for the profits made by them on
sales of ticking thus marked.
It appears that the complainant, the Amoskeag Manufacturing
Company, a corporation created under the laws of New Hampshire,
commenced the manufacture of ticking at Amoskeag Falls, in that
state, sometime prior to 1834, and marked its products with a label
or ticket consisting of a certain device within which were printed,
in red colors, the name of the company, its place of manufacture,
the words "Power Loom," and in the center the single letter "A" or
"B" or "C" or "D," according to the grade of excellence of the
goods, the first quality being indicated by the first letter and
the decreasing quality from that grade by subsequent letters in the
alphabet. The device, apart from the words mentioned, was a fancy
border in red colors, square outside and elliptical within, and the
words in the upper and lower lines of the label were printed in a
line corresponding with the inside curve of the border.
In the year 1834 or about the time, the company introduced an
improvement in its manufacture by which it produced a grade or
quality of ticking superior to any which it had previously
manufactured. For goods of this quality it used in its label or
ticket, in place of the single letter "A," the three letters
"A.C.A." The original device, with its colored border and printed
words, indicating the company by which and the place where the
goods were manufactured was retained, the only alteration
consisting in the substitution of the three letters "A.C.A." in
place of the single letter "A." Subsequently the company changed
its place of manufacture from Amoskeag Falls to Manchester, in the
same state, and a corresponding change was then made in the label.
The three letters mentioned were placed in the label or ticket on
all goods of the very highest quality manufactured by the
complainant, the single letter being retained in the labels placed
on other goods to indicate a lower grade or quality. The
combination of the three letters was probably suggested, as is
stated, by the initials of the words in the company's name --
Amoskeag Company -- with the letter "A" previously used, to denote
the best quality
Page 101 U. S. 53
of goods it manufactured. It is contended by the complainant
that the combination was adopted and used to indicate, not merely
the quality of the goods, but also their origin as of the
manufacture of the Amoskeag Company. It is upon the correctness of
this position that it chiefly relies for a reversal of the decree
dismissing the bill.
On the part of the defendants, the contention is that the
letters were designed and are used to indicate the quality of the
goods manufactured and not their origin; that it was so adjudged
many years ago in a case to which the company was a party in the
Superior Court of the City of New York, which adjudication has been
generally accepted as correct and acted upon by manufacturers of
similar goods throughout the country; and that the letters, as used
by the defendants on a label or ticket having their own device, and
in connection with words different from those used by the
complainant, do not mislead or tend to mislead anyone as to the
origin of the goods upon which they are placed.
The general doctrines of the law as to trademarks, the symbols
or signs which may be used to designate products of a particular
manufacture, and the protection which the courts will afford to
those who originally appropriated them, are not controverted.
Everyone is at liberty to affix to a product of his own manufacture
any symbol or device, not previously appropriated, which will
distinguish it from articles of the same general nature
manufactured or sold by others, and thus secure to himself the
benefits of increased sale by reason of any peculiar excellence he
may have given to it. The symbol or device thus becomes a sign to
the public of the origin of the goods to which it is attached and
an assurance that they are the genuine article of the original
producer. In this way, it often proves to be of great value to the
manufacturer in preventing the substitution and sale of an inferior
and different article for his products. It becomes his trademark,
and the courts will protect him in its exclusive use, either by the
imposition of damages for its wrongful appropriation or by
restraining others from applying it to their goods and compelling
them to account for profits made on a sale of goods marked with
it.
Page 101 U. S. 54
The limitations upon the use of devices as trademarks are well
defined. The object of the trademark is to indicate, either by its
own meaning or by association, the origin or ownership of the
article to which it is applied. If it did not, it would serve no
useful purpose either to the manufacturer or to the public; it
would afford no protection to either against the sale of a spurious
in place of the genuine article. This object of the trademark and
the consequent limitations upon its use are stated with great
clearness in the case of
Canal Company v. Clark, reported
in the 13th Wallace. There, the Court said, speaking through Mr.
Justice Strong, that
"no one can claim protection for the exclusive use of a
trademark or tradename which would practically give him a monopoly
in the sale of any goods other than those produced or made by
himself. If he could, the public would be injured, rather than
protected, for competition would be destroyed. Nor can a generic
name or a name merely descriptive of an article of trade, of its
qualities, ingredients, or characteristics, be employed as a
trademark, and the exclusive use of it be entitled to legal
protection."
And a citation is made from the opinion of the Superior Court of
the City of New York in the case of the present complainant against
Spear, reported in the 2d of Sandford, that
"the owner of an original trademark has an undoubted right to be
protected in the exclusive use of all the marks, forms, or symbols
that were appropriated as designating the true origin or ownership
of the article or fabric to which they are affixed; but he has no
right to the exclusive use of any words, letters, figures, or
symbols which have no relation to the origin or ownership of the
goods, but are only meant to indicate their names or quality. He
has no right to appropriate a sign or symbol, which from the nature
of the fact it is used to signify, others may employ with equal
truth, and therefore have an equal right to employ for the same
purpose."
Many adjudications both in England and in this country might be
cited in illustration of the doctrine here stated. For the purpose
of this case, and in support of the position that a right to the
exclusive use of words, letters, or symbols, to indicate merely the
quality of the goods to which they are affixed cannot be acquired,
it will be sufficient to refer, in addition to
Page 101 U. S. 55
the decisions mentioned in Wallace and Sandford, to the judgment
of the Vice-Chancellor in
Raggett v. Findlater, where an
injunction to restrain the use by the defendants upon their trade
label of the term "nourishing stout," which the plaintiff had
previously used, was refused on the ground that "nourishing" was a
mere English word denoting quality. Law Rep. 17 Eq. 29. Upon the
same principle letters or figures which, by the custom of traders,
or the declaration of the manufacturer of the goods to which they
are attached, are only used to denote quality, are incapable of
exclusive appropriation, but are open to use by anyone, like the
adjectives of the language.
If now we apply the views thus expressed to the case at bar, we
shall find the question involved to be of easy solution. It is
clear from the history of the adoption of the letters "A.C.A." as
narrated by the complainant, and the device within which they are
used, that they were only designed to represent the highest quality
of ticking which is manufactured by the complainant, and not its
origin. The device previously and subsequently used stated the name
of the manufacturer, and no purpose could have been subserved by
any further declaration of that fact. And besides, the letters
themselves do not suggest anything, and require explanation before
any meaning can be attached to them. That explanation when made is
that they are placed in the device of the company when it is
affixed to the finest quality of its goods, while single letters
are used in the same device when it is attached to goods of an
inferior quality. They are never used be themselves, but merely as
part of a device containing, in addition to the border in red,
several printed terms. Alone, the letters convey no meaning; they
are only significant as part of the general device constituting the
trademark. Used in that device to denote only quality, and so
understood, they can be used by others for a similar purpose
equally with the words "superior" or "superfine," or other words or
letters or figures having a like significant.
We are aware that there is in the record the testimony of
several witnesses to the effect that they understood that the
letters were intended to indicate the origin as well as the
quality
Page 101 U. S. 56
of the goods to which they were attached, but it is entirely
overborne by the patent fact that the label previously disclosed
the name in full of the manufacturer and by the history of the
adoption of the letters, as narrated by the complainant. As it was
pertinently observed in the case in Sandford, if purchasers of the
ticking read the name of the company, the letters can give no
additional information, even if it be admitted that they are
intended to indicate the name of the company. And if they do not
read the name as printed, the letters are unintelligible. If an
explanation be asked of their purpose in the label, the only
reasonable answer which can be given is the one which corresponds
with the fact that they are designed merely to indicate the quality
of the goods.
But there is another and equally conclusive answer to the suit.
The label used by the defendants is not calculated to mislead
purchasers as to the origin of the goods to which it is attached.
It does not resemble the device of the complainant. Its border has
a different figure; it is square outside and inside. It has within
it the words "Omega" and "Ring Twist," as well as the letters
"A.C.A." Neither the name of the complainant nor of the place where
its goods are manufactured, nor the words "Power Loom," are upon
it. The two labels are so unlike in every particular, except in
having the letters "A.C.A." in their center, that it is impossible
that any one can be misled in supposing the goods, to which the
label of the defendants is attached, are those manufactured by the
complainant. The whole structure of the case thus falls to the
ground. There is no such imposition practiced upon the public and
no such fraud perpetrated upon the manufacturers, in attempting to
dispose of the goods of one as those of another, as to call for the
interposition of a court of equity.
Decree affirmed.
MR. JUSTICE CLIFFORD dissenting.
Symbols or devices used by a manufacturer or merchant to
distinguish the products, manufactures, or merchandise which he
produces, manufactures, or sells, from that of others, are called
and known by the name of trademarks. They are used in order that
such products, manufactures, or merchandise may
Page 101 U. S. 57
be known as belonging to the owner of the symbol or device, and
that he may secure the profits from its reputation or superiority.
15 Am.Cyclopedia 832.
Equity courts in all civilized countries have for centuries
afforded protection to trademarks, the object of such protection
being not only to secure to the individual the fruits of his skill,
industry, and enterprise, but also to protect the public against
fraud.
Property in a trademark is acquired by the original application
to some species of merchandise or manufacture of a symbol or device
not in actual use to designate articles of the same kind or
class.
Devices of the kind, in order that they may be entitled to
protection in a court of equity, must have the essential qualities
of a lawful trademark; but if they have, the owner becomes entitled
to its exclusive use within the limits prescribed by law, the rule
being that he who first adopts such a trademark acquires the right
to its exclusive use in connection with the particular class of
merchandise to which its use has been applied by himself or his
agents.
Prior use is essential to any such exclusive claim, as the right
to protection begins from such actual prior use; nor does the right
to protection extend beyond the actual use of the device. Hence,
the use of it on one particular article of manufacture or
merchandise will not prevent another from using it on another and
different class of articles, the rule being strictly applied that
the right to protection in equity is limited to the prior use of
the symbol by the owner.
Sufficient appears to show that the plaintiffs, at an early
period in the fourth decade of the present century, engaged in the
manufacture of a fabric known as ticking of various grades and
quality, and that subsequently they made a valuable improvement in
the mode of manufacturing the fabric, which enabled them to produce
a very superior articles. Before the introduction of the
improvement, they had been in the habit of marking their products
in that species of manufacture with one of the first four letters
of the alphabet, to designate the different grades of their
manufacture when offered for sale in the market. Thirty-four years
ago or more, they introduced the new improvement
Page 101 U. S. 58
in the manufacture of the fabric, and adopted the distinctive
trademark, of which a facsimile is exhibited in the transcript.
When examined, it will be seen that it consists of the corporate
name of the complainants, with a rough engraved surrounding, and
the letters "A.C.A." plainly and conspicuously printed in the
center of the circular outside edge.
Conclusive proof is exhibited that the peculiar combination of
letters adopted by the complainants as a symbol of trade originated
with them, and that it suggested itself to them as comprising the
initial letters of their familiar corporate name, with the addition
of the letter "A" at the close, which had previously been used by
them as indicating the best quality of the fabric manufactured by
them before they made the alleged improvement.
Single letters of the kind are frequently used as a mark of
quality, but the proofs in this case show to a demonstration that
the peculiar combination of letters adopted by the complainants at
the period mentioned were not adopted to denote quality merely, but
as an appropriate and distinguishing trademark, symbol, or device,
to indicate to the public and to purchasers that the fabric which
bears the mark was of the manufacture of the manufacturing company
of the complainants. Beyond all doubt, they adopted the symbol or
device, and affixed it to the fabric of their trade to indicate the
origin and ownership of the article.
Few manufactured products bear in their own external appearance
sufficient evidence of their real character to protect the
purchaser against fraudulent imitations. Integrity in manufacture
and uniformity in quality are high recommendations to purchasers,
and manufactured goods falling within that category are much
preferred both by the purchasers and consumers of the same, and
when by long experience the public have learned to associate these
elements of recommendation with a special symbol or brand, the wide
and profitable sale of the articles bearing the same is assured,
and the exclusive possession and use of the symbol or brand becomes
of great value to the real owner. Purchasers are also interested
that such a trademark should receive protection, as it is a
guaranty of genuineness, and its value is proportioned to the
business reputation
Page 101 U. S. 59
of the owners of the same and of the excellence of their
manufactures. 4 Johns. Cyclopedia, part 2, p. 916.
Infringement by the respondents is charged, and the complainants
pray for an injunction and for an account. Service was made, and
the respondents appeared and set up various defenses, as follows:
1. that the alleged trademark was never designed or used as such,
but merely to designate one of the grades of the fabric which the
complainants manufactured; 2. that the complainants are estopped by
a prior decision of a court of competent jurisdiction to set up
that the alleged symbol is a trademark; 3. they admit that they
mark their goods with the letters "A.C.A.," but they deny that the
mark is fraudulent or that it is calculated to deceive the public;
4. they deny that their conduct is in the slightest degree
fraudulent or inequitable, or that the sale of their goods injures
the complainants.
Proofs were taken, hearing had, and the circuit court entered a
decree dismissing the bill of complaint. Prompt appeal was taken by
the complainants to this court, and they assign the following
causes of error: 1. that the circuit court erred in entering a
decree dismissing the bill of complaint; 2. that the court erred in
not granting the injunction as prayed; 3. that the court erred in
not decreeing that the complainants are entitled to an account; 4.
that the court erred in not sustaining the bill of complaint.
Attempt is made in argument to show that the symbol of the
complainants was not adopted by them for any other purpose than to
designate the grade or quality of the fabric which they manufacture
and sell in the market; but it is a sufficient answer to that
proposition to say that it is wholly unsupported by evidence, and
is decisively overthrown by the proof introduced by the
complainants.
Words or devices, or even a name in certain cases, may be
adopted as a trademark which is not the original invention of the
party who appropriates the same to that use. Phrases, or even words
or letters in common use, may be adopted for the purpose if at the
time of their adoption they were not employed by another to
designate the same or similar articles of production or sale.
Stamps or trademarks of the kind are
Page 101 U. S. 60
employed to point to the origin, ownership, or place of
manufacture or sale of the article to which it is affixed, or to
give notice to the public who is the producer, or where it may be
purchased.
Canal Company v.
Clark, 13 Wall. 311,
80 U. S.
322.
Subject to the preceding qualifications, a trademark may consist
of a name, symbol, figure, letter, form, or device, if adopted and
used by a manufacturer or merchant in order to designate the goods
he manufactures or sells or to distinguish the same from those
manufactured or sold by another, to the end that the goods may be
known in the market as his, and to enable him to secure such
profits as result from his reputation for skill, industry, and
fidelity. Upton, Trademarks, 9;
Taylor v. Carpenter, 2
Sandf. (N.Y.) Ch. 603.
Brands or stamps called trademarks, says Waite, may consist of a
name, figure, letter, form, or device adopted and used by a
manufacturer or merchant in order to designate the goods that he
manufactures or sells, and to distinguish them from those
manufactured or sold by another, to the end that they may be known
in the market as his, and thus enable him to secure such profits as
result from a reputation for superior skill, industry, or
enterprise. 6 Waite, Actions and Defenses 21.
Such a manufacturer or merchant who first adopts such a
trademark, and is accustomed to affix the same to a particular
fabric of his manufacture or sale to distinguish it from all
others, has a property in it and may maintain an action for damages
if used by another, or he may restrain another from using it by
application to a court of equity.
Hall v. Barrows, 4 De G.
J. & S. 149, 156;
s.c. 12 W.R. 322, 323.
Judicial protection is granted in such a case upon the ground
that the honest, skillful, industrious manufacturer or enterprising
merchant who has produced or brought into the market an article of
use or consumption that has found favor with the public, and who by
affixing to it some name, mark, device, or symbol which serves to
distinguish it as his and from that of all others, shall receive
the first reward of his honesty, skill, or enterprise, and shall in
no manner and to no extent be deprived of the same by another who
to that end appropriates the same or a colorable imitation of the
same to his production, so that the public are or may be deceived
or misled.
Wolfe
Page 101 U. S. 61
v. Barnett & Lion, 24 La.An. 97;
Newman v.
Alvord, 15 N.Y. 189, 196;
Lee v. Haley, Law Rep. 5
Ch.Ap. 155;
Blackwell v. Wright, 73 N.C. 310, 313.
Nothing can be better established, says the Master of the Rolls,
and nothing ought to be otherwise than fully established in a
civilized country, than that a manufacturer is not entitled to sell
his goods under the false representation that they are made by a
rival manufacturer.
Singer Manufacturing Co. v. Wilson, 2
Ch.D. 434, 440; Browne, Trademarks, sec. 385;
Osgood v.
Allen, 1 Holmes 185, 194.
When we consider, says Duer, the nature of the wrong that is
committed when the right of property in a trademark is invaded, the
necessity for the interposition of a court of equity becomes more
apparent. He who affixes to his own goods an imitation of an
original trademark by which those of another are distinguished and
known seeks by deceiving the public to divert to his own use the
profits to which the superior skill and enterprise of the other had
given him an exclusive title, and endeavors by a false
representation to effect a dishonorable purpose by committing a
fraud upon the public and upon the true owner of the trademark.
Amoskeag Manufacturing Co. v. Spear, 2 Sandf. (N.Y.) 599,
605;
The Collins Company v. Brown, 3 Kay & J. 423,
428.
Thirty years and more before the suit was commenced, the
plaintiff company adopted the trademark in question and affixed the
same to their improved manufacture of ticking, and it appears from
the evidence that they have continuously from that date to the day
the bill of complaint was filed used the same as the symbol to
designate that peculiar manufacture, which of itself is sufficient
to show, if any thing in the nature of proof can be, that the first
defense set up in the answer ought to be overruled.
Much discussion of the second defense cannot be required, as the
statement of the proposition that the complainants are estopped to
ask relief in this case because they were partially unsuccessful in
a prior suit against another party is quite sufficient for its
refutation. Neither argument nor authority is necessary to show
that it has no foundation in law or justice, and it is equally
clear that the supposed analogy between an
Page 101 U. S. 62
admiralty decree
in rem and a decree dismissing a bill
in equity for the invasion of a trademark is illusory, unfounded,
and without the slightest legal effect.
Suppose that is so, still the respondents deny that the
trademark which they use is in the slightest degree fraudulent or
that it is calculated to deceive the public. They admit that they
use the letters "A.C.A.," but they deny that in any other respect
they have used the trademark adopted by the complainants.
Manufacturers and merchants have severally the unquestioned
right to distinguish the goods they manufacture or sell by a
peculiar mark or device, so that the goods may be known in the
market as the product or sale of the owner of the trademark, or
device, in order that they may thus secure the profits which the
superior repute of the goods may be the means of giving to the
producer or seller.
Gillott v. Esterbrook, 48 N.Y. 374,
376.
Confirmation of that proposition is found in all the reported
cases, and it is equally true that the owners of such trademarks
are entitled to the protection of a court of equity in the
exclusive use of the symbols they have thus adopted and affixed to
their goods, the foundation of the rule being that the public
interest as well as the interest of the owner of the trademark
requires that protection. 2 Story, Eq.Jur., sec. 951.
Such a party has a valuable interest in his trade or business,
and having appropriated a particular label or trademark indicating
to those who wish to give him their patronage that the article is
made or sold by him or by his authority, or that he carries on his
business at a particular place, he is entitled to protection
against any other person who attempts to pirate upon the goodwill
of his customers or of the patrons of his trade or business by
sailing under his flag without his authority or consent.
Partridge v. Menck, 2 Barb. (N.Y.) Ch. 101.
Redress is given in such cases upon the ground that the party
charged is not allowed to offer his goods for sale, representing
them to be the manufacture of the first and real owner of the
trademark, because by doing so he would be guilty of a
misrepresentation, and would deprive the real owner of the
Page 101 U. S. 63
profits he might make by the sale of his goods which the
purchaser intended to buy.
Compensation for such an injury was in early times given to the
injured party by an action of deceit at common law, long before the
Court of Chancery attempted to exercise jurisdiction to grant
relief for such wrongful acts. In such an action, it is doubtless
true that the plaintiff is required to allege that the party
charged infringed the trademark with a fraudulent intent, and to
prove the charge as alleged, in order to secure a verdict and
judgment for redress. Certain early cases in equity may be found
where it is held that it is requisite that the allegation and proof
in a chancery suit should be the same; but the practice in equity
has long been settled otherwise, the rule now being that the injury
the owner of the trademark suffers by the offering for sale in the
market of other goods side by side with his, bearing the same
trademark, entitles the real owner of the trademark to protection
in equity, irrespective of the intent of the wrongdoer, it being
held that the inquiry done to the complainant in his trade by loss
of custom is sufficient to support his title to relief.
Neither will the complainant be deprived of remedy in equity
even if it be shown by the respondent that all the persons who
bought goods from him bearing the trademark of the real owner were
well aware that they were not of the complainant's manufacture. If
the goods were so supplied by the wrongdoer for the purpose of
being resold in the market, the injury to the complainant is
sufficient to entitle him to relief in equity.
Nor is it necessary, in order to entitle the party to relief,
that proof should be given of persons having been actually deceived
or that they bought goods in the belief that they were of the
manufacture of the complainant, provided that the court is
satisfied that the resemblance is such as would be likely to cause
the one mark to be mistaken for the other.
Edelston v.
Edelston, 1 De G. J. & S. 185;
McAndrew v.
Bassett, 4
id. 380; Sebastian, Trademarks, 70.
Two trademarks are substantially the same in legal contemplation
if the resemblance is such as to deceive an ordinary purchaser
giving such attention to the same as such purchaser usually gives
and to cause him to purchase the one supposing it
Page 101 U. S. 64
to be the other.
Gorham Company v.
White, 14 Wall. 511;
McLean v. Fleming,
96 U. S. 245,
96 U. S. 256;
Adams, Trademarks 107.
Difficulties attend the effort to describe with precision what
resemblance is necessary to constitute an infringement, and perhaps
it is not going too far to say that the term is incapable of exact
definition as applied to all cases. Grant that, and still it is
safe to say that no manufacturer or merchant can properly adopt a
trademark so resembling that of another engaged in the same
business as that ordinary purchasers buying with ordinary caution
are likely to be misled.
Positive evidence of fraudulent intent is not required where the
proof of infringement is clear, as the liability of the infringer
arises from the fact that he is enabled through the unjustifiable
use of the trademark to sell a simulated article as and for the one
which is genuine.
McLean v. Fleming, supra.
Unless the simulated trademark bears a resemblance to that which
is genuine, it is clear that the charge of infringement is not made
out, and it is doubtless true that the resemblance of the simulated
one to the genuine must be such that the former is calculated to
deceive or mislead purchasers intending to buy the genuine goods;
but it is a mistake to suppose that the resemblance must be such as
would deceive persons seeing the two trademarks placed side by
side. Exact definition may not be attainable; but if a purchaser,
looking at the article offered to him, said Lord Cranworth, would
naturally be led from the mark impressed on it to suppose it to be
the production of the rival manufacturer and would purchase it in
that belief, the court considers the use of such a mark fraudulent.
Franks v. Weaver, 10 Beav. 297.
Apply that rule to the case before the court and it is
sufficient to control the decision; but the Chancellor went much
further, and said that if the goods of a manufacturer have, from
the mark or device he has used, become known in the market by a
particular name, he thought that the adoption by a rival trader of
any mark which will cause his goods to bear the same name in the
market may be as much a violation of the rights of the owner as the
actual copy of his device.
Seixo v. Provezende, Law Rep. 1
Ch. 192, 196.
Page 101 U. S. 65
When the entire trademark is copied, the case is free of
difficulty, as the rule is universal that the infringer is liable;
but the question is when may it be said that a trademark has been
taken by another? Answers to that question are found in several
cases, of which no one is more satisfactory than that given by the
Master of the Rolls in a recent case. He says that a trademark to
be taken need not be exactly copied, nor need it be copied with
slight variations, but it must be a substantial portion of the
trademark; to which he adds that it has sometimes been called the
material portion, but that, as he states, means the same thing, and
he then remarks that it means the essential portion of the
trademark, and finally concludes the subject by saying that "what
the court has to satisfy itself of is that there has been an
essential portion of the trademark used to designate goods of a
similar description."
Singer Manufacturing Co. v. Wilson,
2 Ch.D. 434, 443; Cod.Dig., sec. 342.
Argument to show that that rule is applicable to the case before
the Court is unnecessary, as the proposition is self-evident, and
if so, it is impossible to see how any one can vote to affirm the
judgment of the circuit court. Beyond all question, the letters
"A.C.A." are the essential feature of the trademark adopted by the
complainants, and the respondents admit in their answer and in
argument that they use the same three letters in the same
combination.
Complete imitation is not required by any of the well considered
cases. Instead of that, it is well settled that the proof of
infringement is sufficient if it shows even a limited and partial
imitation, provided the part taken is an essential portion of the
symbol. None of the cases show that the whole must be taken, nor is
it necessary to show that anyone has in fact been deceived if the
imitation is such as to prove that it is calculated to deceive
ordinary purchasers using ordinary caution. Proof of actual intent
to defraud is not required, but it is sufficient if the court sees
that the trademark of the complainant is simulated in such a manner
as probably to deceive the customers and patrons of his trade and
business.
Filley v. Fassett, 44 Mo. 168, 178;
Coats v.
Holbrook, 2 Sandf. (N.Y.) Ch. 586, 626.
Courts of justice do not always use the same language in
Page 101 U. S. 66
defining what is the requisite similarity in the two trademarks
to entitle the complainant to relief, but they substantially concur
that if it be such that the public may be led to believe while they
buy the goods of the respondent that they are buying an article
manufactured by the complainant, the proof of similarity is
sufficient.
Hirst v. Denham, Law Rep. 14 Eq. 542, 552.
For the purpose of establishing a case of infringement, it is
not necessary to show that there has been the use of a mark in all
respects corresponding with that which another person has acquired
an exclusive right to use if the resemblance is such as not only to
show an intention to deceive, but also such as to be likely to make
unwary purchasers suppose that they are purchasing the article sold
by the party to whom the right to use the trademark belongs.
Wotherspoon v. Currie, Law Rep. 5 App.Cas. 508-519;
s.c. 27 L.T.N.S. 393.
Chancery courts will protect the property rights of a party in
his trademark, and for its invasion the law will award compensation
in damages. Legal redress will be accorded when it is shown that
the symbol or device used by the wrongdoer is of such a character
that by its resemblance to the established trademark of the
complainant it will be liable to deceive the public and lead to the
purchase of that which is not the manufacture of the proprietor,
believing it to be his.
It is not necessary that the symbol or device should be a
facsimile or a precise copy of the original trademark, or that it
should be so close an imitation that the two cannot be easily
distinguished by one familiar with the genuine device; but if the
false or simulated one is only colorably different, or if the
resemblance is such as may deceive a purchaser of ordinary caution,
or if it is calculated to mislead the careless and unwary, and thus
to injure the sale of the goods of the proprietor of the true
device, the injured party is entitled to redress.
Colman v.
Crump, 70 N.Y. 573, 578;
Glenny v. Smith, 11 Jur.N.S.
964.
Trademarks usually exhibit some peculiar device, vignette, or
symbol, in addition to the name of the party, which the proprietor
had a perfect right to appropriate, and which, as well as the name,
is intended as a declaration to the public
Page 101 U. S. 67
that the article is his property. Imitators frequently drop both
the name and certain parts of the surroundings and substitute their
own name with a different vignette; but if the peculiar device is
copied, and so copied as to manifest a design of misleading the
public, the omission or variation ought to be wholly
disregarded.
Proof of an intention to defraud is not required, but it is
plain that the respondents acted with a design, and it would be
absurd to suppose that they had no further object than the mere
imitation of the trademark which they copied. On the contrary, it
is obvious that they expected to gain an advantage in the sale of
their goods by attaching their simulated device to fabrics
resembling in appearance and quality the fabric of the
complainants. Of course they meant to secure to their goods a
preference in the market which they otherwise would not have
commanded, and it is difficult, if not impossible, to see how any
such advantage could be gained unless the simulated trademark would
enable them to sell their fabrics as that of the injured party.
Amoskeag Manufacturing Co. v. Spear, supra; Fetridge v.
Wells, 13 How. (N.Y.) Pr. 386.
Proprietors of a trademark, in order to bring the same under the
protection of a court of equity, are not obliged to prove that it
has been copied in every particular by the wrongdoer. It is enough
for them to show that the representations employed bear such
resemblance to their symbol or device as to be calculated to
mislead the public who are purchasers of the article, and to make
it pass for the one sold by the true owner of the trademark.
Walton v. Crowley, 3 Blatchf. 440-447.
Candid men cannot read the record in this case without being
forced to the conclusion that the respondents took the essential
feature of the complainants' trademark, which they had used for
forty years to designate the fabric of ticking which they
manufactured, and which had become known throughout the United
States as the authorized symbol to indicate that description of
goods; and if so, it follows to a demonstration that the decree of
the circuit court should be reversed.