The trademark for tea (No. 9952) registered in the Patent Office
by Ingraham, Corbin & May December 27, 1881, was for the
combination of the figure of a diamond and the words "The Tycoon
Tea" enclosed in it, and its registration conferred no exclusive
right to the use of the word "Tycoon" considered by itself.
This is a suit in equity brought in the court below by Calvin R.
Corbin and Horatio N. May, co-partners, as Corbin, May & Co.,
doing business in Chicago, against Walter J. Gould, Edward Telfer,
David D. Cady, and L. F. Thompson, co-partners as W. J. Gould &
Co., doing business in Detroit, for the alleged infringement of a
trademark.
The bill, filed on the 24th of September, 1885, alleged
substantially as follows: that for over six years, complainants had
been engaged in manufacturing, preparing, and shipping to the
United States, and selling in the United States and elsewhere, a
particular quality of tea, of which their immediate predecessors in
business, Ingraham, Corbin & May, were the first and exclusive
manufacturers, importers, and wholesale dealers in this country;
that during this period, they had imported large quantities of such
tea, which, by reason of its superior quality and because of the
advertising they gave it, became well and favorably known, and was
sold extensively in the chief cities and towns of the United
States, particularly in Michigan; that said particular tea was
known as "Tycoon Tea," the word "Tycoon" being properly attached to
the cases and coverings in which the tea was imported; that this
name "Tycoon" was given by them to their tea in 1879, in order to
more clearly identify it, and had since been used as their adopted
trademark for it; that having complied with the act of Congress in
such case made and provided, and with
Page 133 U. S. 309
the regulations prescribed by the Commissioner of Patents, they
procured the registration and recording of said trademark in the
Patent Office on the 27th of December, 1881, and received from the
Commissioner of Patents a certificate showing such record, that
since the word "Tycoon" was first applied by them as a trademark,
and since the date of such registration, the defendants,
confederating with divers other persons in different parts of the
United States, with full knowledge of complainants' rights under
and by virtue of their trademark, in violation thereof, without
complainants' consent, and with the intent fraudulently to divert
to themselves complainants' trade in such tea, put upon the market
in Detroit and elsewhere large quantities of tea in packages or
cases of the same size and general appearance as those used by
complainants, with the word "Tycoon" stamped thereon, in imitation
of complainants' trademark, all of which was intended to deceive
and mislead the public into buying defendants' tea, which is of an
interior quality, greatly to the injury of the reputation of
complainant's tea; that, by reason of such fraudulent acts and
practices on the part of defendants, complainants had been deprived
of great gains and profits in the sale of their tea, and had been
damaged more than $10,000, and that defendants were still using the
aforesaid facings or labels, with the word "Tycoon" stamped
thereon, upon tea, and threaten to continue to do so, to the great
injury and damage of plaintiffs. The bill prayed for an injunction
to restrain the defendants and their agents from the further use of
complainants' trademark, for an accounting, and for damages.
Upon the filing of this bill, supported by a number of
affidavits corroborating its allegations, the court issued a
temporary restraining order as prayed for, and the defendants
thereupon filed their answer, denying specifically all the material
allegations of the bill. The answer further alleged that the word
"Tycoon" could not have been lawfully adopted and used as a
trademark, because it had been a word in common use in trade, as a
brand or name for various kinds of tea imported from Japan, for
many years prior to the time when complainants
Page 133 U. S. 310
claim to have adopted it as a trademark. It further set forth
that the defendants had been using the word "Tycoon" on the facings
or labels of their tea in connection with the word "Chop," but it
denied that these labels bore any more similarity to those of
complainants than is usually the case with tea labels, and alleged
that, except in the word "Tycoon," there was no resemblance
whatever between them. It therefore prayed that the bill be
dismissed. Considerable testimony was taken in the case, and the
court below, on the 14th of June, 1886, rendered a decree
dismissing the bill, without delivering any opinion. An appeal from
that decree brings the case here.
Page 133 U. S. 311
MR. JUSTICE LAMAR delivered the opinion of the Court.
We are of opinion that the decree below must be affirmed. The
material allegations of the bill are not sustained by the evidence,
and the one which presents the entire foundation for the claim of
relief is disproved by the exhibit which the complainants append to
their bill. After alleging that complainants had adopted as their
trademark the word "Tycoon," and stamped it upon packages of a
particular kind of tea manufactured and imported by themselves
alone into the American market in 1879, and that the said word
"Tycoon," having never before been adopted as a trademark, had
become known to the trade as exclusively designating a particular
kind of tea dealt in by the complainants, the bill states that, for
the purpose
Page 133 U. S. 312
of obtaining protection for their exclusive right to the said
word "Tycoon" as a trademark, they deposited it, as above
described, in the Patent Office at Washington, and that in 1881 the
same was registered and recorded by the Commissioner of Patents of
the United States, and a certificate was issued therefor securing
to the complainants protection for the said trademark. The exhibits
A and B, appended to the bill, and other exhibits attached to
Corbin's deposition, show that the trademark adopted by the
complainants, deposited and registered in the Patent Office, is not
the word "Tycoon," as stated in the bill, but a transverse,
diamond-shaped symbol, enclosing the word "The" at the top and
"Tea" at the bottom, between which, lengthwise the diamond, is the
word "Tycoon." A facsimile is as follows:
image:a
The claim of the complainants, filed in the Patent Office for
the registration of the trademark in question, is in these
words:
"Our trademark consists of the letters and words and arbitrary
symbols, 'The Tycoon Tea, I., C. & M., C., Japan Tea,'
ornamental scroll border, transverse diamond shape. . . . The
letters or words, 'I., C. & M., C., Japan Tea,' may be omitted,
or they may be partly omitted and partly changed as to their
position within the square, without materially altering the
character of our trademark,
the essential features of which
are the symbol of a diamond and the arbitrarily selected word
'Tycoon.'"
It is not pretended that this combination, claimed and
registered as the trademark of complainants, has ever been used by
the defendants either in the identical form or in a form having
such resemblance thereto as might be calculated to deceive. A
comparison of the label of defendants with that of the
complainants, as given in the exhibit to the bill, shows many
striking points of difference, and but few, if any, points of
Page 133 U. S. 313
similarity except that the word "Tycoon" is found in both. In
the complainant's label, the diamond figure, the words, "The Tycoon
Tea," "Choicest," and "spring Leaf," are printed in blue ink, and
the other words are printed in black ink, all in different kinds of
ornamental letters -- the whole surrounded by an ornamental black
scroll border. The defendant's label is water-marked in red and
pink colors, surrounded by a heavy blue border with black
decorations. The words are printed in various styles of letters of
different colors; the words, "Tycoon Chop," for instance, being in
large, white letters with red facings, on a solid black ground, and
"Japan Tea" in large black letters, some of which are plain and
some ornamental. On the complainants' label, the proprietorship of
the tea is indicated by the letters, "I., C. & M.,"
representing Ingraham, Corbin & May, the predecessors of the
present firm, while on the defendants' label the name of their
firm, and their place of business appear prominently near the
bottom of it. These labels are so entirely dissimilar that it is
difficult to perceive how they could be mistaken the one for the
other. A mere glance is sufficient to distinguish them. There are
certainly no more points of similarity between them than are to be
found ordinarily between tea labels or facings, and were it not for
the fact that the word "Tycoon" is found in both of them, there
would be no semblance of a case of infringement. With respect to
the word "Tycoon," the evidence shows beyond question that it has
been used as a name or brand for Japan tea for many years. Invoices
of "Tycoon tea" were received at the custom house in San Francisco
as early as May 15, 1873, as shown by a copy of the official
records of that office filed in this case, and the evidence of
dealers and merchants of California is all to the effect that the
word was in common use as a brand for Japan tea for several years
prior to that date. It is unnecessary to go into this evidence in
detail, but it is conclusive as to the long use of the word prior
to the alleged adoption of it as a part of the trademark of the
complainants.
The authorities cited by complainants' counsel to show that the
prior use of a word as a trademark by another party, who
Page 133 U. S. 314
had abandoned it, is not sufficient to debar the present owner
of it from protection, do not apply this case. At the time
complainants claim to have adopted the word "Tycoon" as their
trademark for the particular species of tea dealt in by them, it
was not an abandoned trademark previously used by some other person
or firm to designate a particular quality of tea, but it was and
had been for many years in general and common use as a term
descriptive of a class of teas introduced into the American market
-- a term which all men engaged in the tea business had an equal
right to use and which belonged to no one individual either as a
trademark or a trade label. It belonged to the public as the common
property of the trade, and therefore was not subject to
appropriation by anyone person. The following language, used in
Amoskeag Manufacturing Company v. Spear, 2 Sandford 599,
quoted with approval by this Court in
Canal
Company v. Clark, 13 Wall. 311,
80 U. S. 324,
is applicable to the claim of the complainant in this case:
"He has no right to appropriate a sign, or a symbol, [or a
name,] which, from the nature of the fact which it is used to
signify, others may employ with equal truth, and therefore have an
equal right to employ for the same purpose."
See also Goodyear Co. v. Goodyear Rubber Co.,
128 U. S. 598;
Liggett & Myers Tobacco Co. v. Finzer, 128 U.
S. 182;
Stachelberg v. Ponce, 128 U.
S. 686;
Menendez v. Holt, 128 U.
S. 514. Even conceding that the complainants may claim a
trademark for the combination of the diamond and the words enclosed
in it, as described in their application to the Patent Office,
there was, upon the authorities above cited, clearly no trademark
in the word "Tycoon," considered by itself.
The decree of the court below dismissing the bill should be, and
it hereby is,
Affirmed.