Words which are merely descriptive of the character, qualities,
or composition of an article, or of the place where it is
manufactured or produced, cannot he monopolized as a trademark.
An ordinary surname cannot be appropriated as a trademark by any
one person as against others of the same name who are using it for
a legitimate purpose, although cases are not wanting of injunctions
issued to restrain the use even of one's own name where a fraud
upon another is manifestly intended or where he has assigned or
parted with his right to use it.
The owner of a trademark bearing his own name which is affixed
to articles manufactured at a particular establishment may, in
selling the latter, confer upon the purchaser exclusive authority
to use the trademark.
This was a suit in equity instituted by the Brown Chemical
Company, a corporation organized under the laws of Maryland,
against the firm of Meyer Brothers and Co., of St. Louis, in the
State of Missouri, to restrain an unfair competition in trade. The
bill averred in substance that plaintiff had been engaged in the
preparation of a certain medicine which had acquired a high
reputation as a remedy for the prevention and cure of many
diseases. That in 1879 it devised and used a certain label,
consisting of four sides or panels, the front one of which bore the
representation of a lion's head, above which was printed the word
"Brown's." In the mouth of the lion was suspended road or bar,
having dependent therefrom a banner or streamer, bearing the words
"Iron Bitters" printed in large, conspicuous letters and separated
by a circular design occupying the central field of the banner. The
three remaining panels had also printed thereon the words "Brown's
Iron Bitters" in various places and arranged as shown in the label.
That since plaintiff acquired its right in the premises, the
defendants fraudulently offered and sold medicine put up in bottles
to which labels were attached containing the words "Brown's
Iron
Page 139 U. S. 541
Tonic," which were intended to indicate that the medicine
contained in said bottles was that prepared by the plaintiff, which
said preparation the defendants had fraudulently caused to be
offered and sold as and for plaintiff's preparation. And that large
quantities of "Brown's Iron Tonic" had been sold as and for
plaintiff's "Brown's Iron Bitters," and frequently mistaken
therefor.
The answer admitted most of the allegations of the bill so far
as they related to the preparation and sale of Brown's iron
bitters, denied any fraudulent intent with respect to defendants'
own label, and averred that in the summer of 1881, one E. L. Brown,
in connection with one C. J. Lincoln, commenced putting up and
selling Brown's iron tonic at Little Rock, Arkansas, as a wholly
distinct preparation from Brown's iron bitters, and with no
intention or purpose of imitating plaintiff's preparation, which at
that time had not been advertised or sold to any great extent; that
subsequently Brown sold out his interest in said preparation to
Lincoln, who has since that time been putting up said medicine and
offering it to the public in cartons and bottles wholly different
in size, color, and appearance from plaintiff's bottles, and with
labels attached to the bottles wholly different in size, color,
appearance, and details from plaintiff's labels, and enclosed in
wrappers very different from the cartons of Brown's iron bitters,
so that the public could not be misled or the plaintiff
injured.
The case as made by the respective parties did not differ
materially from their pleadings.
In explanation of the manner in which defendants' preparation
originated, Brown swore that from August, 1869, to May 1, 1881, he
was traveling salesman for a Louisville wholesale drug house, and
during that time traveled extensively in the southwest, and became
generally known to the trade. In May, 1881, he formed a partnership
with C. J. Lincoln, of Little Rock, which was dissolved in
December, 1883. The firm name was part of the time C. J. Lincoln
and part of the time Lincoln & Brown. Brown did not personally
go to Little Rock until December, 1881, when, following out a
preconceived notion, he instructed the chemist of the firm to
prepare a formula,
Page 139 U. S. 542
and they devised a label and began to advertise the preparation
through the newspapers and traveling salesmen. They sold some at
retail in 1881, of which no record was kept. In the spring of 1882,
they began to make sales to the trade. It does not appear the they
knew of Brown's iron bitters or that they had seen it until after
they had determined upon their own remedy and its label. The
opinion of the circuit court dismissing the bill is reported in 31
F. 453.
MR. JUSTICE BROWN, after stating the facts as above, delivered
the opinion of the Court.
The general proposition is well established that words which are
merely descriptive of the character, qualities, or composition of
an article, or of the place where it is manufactured or produced,
cannot be monopolized as a trademark,
Canal
Company v. Clark, 13 Wall. 311;
Manufacturing
Company v. Trainer, 101 U. S. 51;
Caswell v. Davis, 58 N.Y. 231;
Thomson v.
Winchester, 19 Pick. 214;
Raggett v. Findlater, L.R.
17 Eq. 29, and we think the words "Iron Bitters" are so far
indicative of the ingredients, characteristics, and purposes of the
plaintiff's preparation as to fall within the scope of these
decision. It is hardly necessary to say that an ordinary surname
cannot be appropriated as a trademark by any one person as against
others of the same name who are using it for a legitimate purpose,
although cases are not wanting of injunctions issued to restrain
the use even of one's own name where a fraud upon another is
manifestly intended or where he has assigned or parted with his
right to use it.
McLean v. Fleming, 96 U. S.
245;
Goodyear Company v. Goodyear Rubber
Company, 128 U. S. 598;
Russian Cement Co. v. Le Page, 147 Mass. 206;
Hoxie v.
Chaney, 143 Mass. 592. The distinction between the lawful and
the unlawful use of one's own name is illustrated in the case of
Croft v. Day, 7 Beavan 84, in which the successor of Day
and Martin, originators of the
Page 139 U. S. 543
famous blacking, filed a bill to enjoin the defendant Day, a
nephew of the elder Day, who had commenced business as a blacking
maker and was using a label of the same color and size, with the
letters arranged precisely the same and with the same name, "Day
and Martin," on the boxes. The defendant was enjoined, the court
placing its decision not upon any peculiar or exclusive right that
the plaintiff had to use the name of Day and Martin, but upon the
fact of the defendant's using the names with certain circumstances
and in a manner calculated to mislead the public. The court
observed:
"He [the defendant] has a right to carry on the business of a
blacking manufacturer honestly and fairly. He has a right to the
use of his own name. I will not do anything to deprive him of that
or any other name calculated to benefit himself in an honest way,
but I must prevent him from suing it in such a way as to deceive
and defraud the public."
In
Holloway v. Holloway, 13 Beavan 209, Thomas Holloway
had for many years made and sold pills and ointments under the
label "Holloway's Pills and Ointments." His brother Henry Holloway
subsequently manufactured pills and ointment with the same
designation. The pill boxes and pots (of ointment) of the latter
were similar in form to, and were proven to have been copied from,
those of the former. The Master of the Rolls, in granting the
injunction, said:
"The defendant's name being Holloway, he has a right to
constitute himself a vendor of Holloway's pills and ointment, and I
do not intend to say anything tending to abridge any such right.
But he has no right to do so with such additions to his own name as
to deceive the public and make them believe that he is selling the
plaintiff's pills and ointments. The evidence in this case clearly
proves that pills and ointments have been sold by the defendant
marked in such a manner that persons have purchased them of the
defendant believing that they were buying goods of the
plaintiff."
The principle of this case was approved by this Court in the
case of
McLean v. Fleming, 96 U. S.
245, in which a person was enjoined from using his own
name in connection with certain pills upon the ground that they
were put up in such form that purchasers exercising ordinary
caution were
Page 139 U. S. 544
likely to be misled into buying the article as that of the
plaintiff. These cases obviously apply only where the defendant
adds to his own name imitations of the plaintiff's labels, boxes,
or packages, and thereby induces the public to believe that his
goods are those of the plaintiff. A man's name is his own property,
and he has the same right to its use and enjoyment as he has to
that of any other species of property. If such use be a reasonable,
honest, and fair exercise of such right, he is no more liable for
the incidental damage he may do a rival in trade than he would be
for injury to his neighbor's property by the smoke issuing from his
chimney, or for the fall of his neighbor's house by reason of
necessary excavations upon his own land. These and similar
instances are cases of
damnum absque injuria. In the
present case, if the words are not in themselves a trademark, they
are not made a monopoly by the addition of the proprietor's name,
provided, of course, the defendant be legally entitled to make use
of the same name as connected with his preparations.
The theory of a trademark proper then being untenable, this case
resolves itself into the question whether the defendants have, by
means of simulating the name of plaintiff's preparation, putting up
their own medicine in bottles or packages bearing a close
resemblance to those of plaintiff, or by the use of misleading
labels or colors endeavored to palm off their goods as those of the
plaintiff. The law upon this subject is considered in the recent
case of
Lawrence Mfg. Co. v. Tennessee Mfg. Co.,
138 U. S. 537. The
law does not visit with its reprobation a fair competition in
trade; its tendency is rather to discourage monopolies except where
protected by statute, and to build up new enterprises from which
the public is likely to derive a benefit. If one person can by
superior energy, by more extensive advertising, by selling a better
or more attractive article, outbid another in popular favor, he has
a perfect right to do so; nor is this right impaired by an open
declaration of his intention to compete with the other in the
market. In this case, the usual indicia of fraud are lacking. Not
only do defendants' bottles differ in size and shape from those of
the plaintiff, but their labels and cartons are
Page 139 U. S. 545
so dissimilar in color, design, and detail that no intelligent
person would be likely to purchase either under the impression that
he was purchasing the other. There are certain resemblances in the
prescriptions and instructions for the use of the respective
preparations, but no greater than would be naturally expected in
two medicinal compounds, the general object of which is the same.
Under such circumstances, a certain similarity in the methods of
using and recommending them to the public is almost unavoidable.
While the resemblances in this case are perhaps too great to be
considered the result of mere accident, the dissimilarities are
such as to show an intention to avoid the charge of piracy. The
similarities in the advertising cards or posters are undoubtedly
much greater, both being a deep yellow in color, with an
arrangement and shape of letters closely approaching identity, and,
if this resemblance had been carried into the labels, we should
have regarded it as strong evidence of a fraudulent intent; but as
it appears from the testimony that the use of these posters has
been discontinued, and further that the defendants in this case
never employed them or put them up, or authorized others to do so,
it is clear that as against these defendants, the court cannot now
be properly called upon to enjoin them. If the bare act of posting
these advertising cards were fraudulent, the remedy is against the
party who committed the wrong. The act does not affect the labels
on the bottles, with which alone the defendants are concerned, and
it has relation only to a mode of advertising, distinct from the
medicine as offered to the public by the defendants.
In the published drug list of. C. J. Lincoln & Co., the
manufacturers of defendants' preparation, they advertised both of
these articles, one under the head of "bitters" and the other under
the head of "tonics." Defendants' testimony shows that while they
have sold but a few gross of Brown's iron tonic, they have been
selling the iron bitters since October, 1881, in large quantities.
The testimony of a number of druggists doing business at Little
Rock indicates that the two preparations are known to the trade and
purchasers as distinct and separate, and that one is never mistaken
for the
Page 139 U. S. 546
other. That the plaintiff itself did not consider that Lincoln
& Co. were infringing upon its rights is evident from the
correspondence between them in the summer of 1882. From this
correspondence it appears that Lincoln & Co. were dealing with
the plaintiff, which wrote them under date of August 21, 1882: "We
notice you are manufacturing a Brown's iron tonic. Is this a new
medicine? If so, are you not trespassing upon our rights?" etc. To
this Lincoln & Co. replied, saying that they had begun the
manufacture of the iron tonic since the admission of Mr. E. L.
Brown into their firm, in May, 1881, enclosing them a bottle of the
preparation, and assuring them that they had no desire to make
money upon their good reputation, and had never attempted to sell
their tonic as that of the plaintiff. To this the plaintiff replied
as follows:
"Baltimore, Md. August 28, 1882"
"Messrs. C. J. Lincoln & Co., Little Rock, Ark."
"Gentlemen: Enclosing your invoice, thank you for your kind and
satisfactory letter. We wish the Brown's iron tonic a success, as,
upon examination, we cannot see where it conflicts with us except
in the multiplicity of the Brown family."
"Your friends,"
"BROWN CHEMICAL COMPANY"
Indeed, the controversy between these parties seems to have
arisen some months afterwards, through a trade circular issued sued
by Lincoln & Co. in the autumn of 1882 in which they called
attention to the distinction between the bitters and the tonic as
rival remedies, and offered the latter at a lower price at the same
time recommending it as a superior remedy. While, of course, the
plaintiff is not estopped by this letter to claim an infringement
of its rights, it tends very strongly to show that the persons who
were most actively interested in putting an end to this alleged
fraud were satisfied in their own minds that no fraud was intended.
The testimony is particularly cogent in view of the fact that suit
was not begun until nearly four years after the letter was
written.
Page 139 U. S. 547
The right of the plaintiff to maintain this bill, then, must
rest upon the assumption that the words "Brown's Iron Tonic" bear
such a resemblance in sound and appearance to the words "Brown's
Iron Bitters" that the public are liable to be misled. But if the
words "iron bitters" cannot be lawfully appropriated as a
trademark, it is difficult to see upon what theory a person making
use of these or similar words can be enjoined. We understand it to
be conceded that these words do not in themselves constitute a
trademark. It follows, then, that another person has the right to
use them, unless he uses them in such connection with other words
or devices as to operate as a deception upon the public. If the
defendants be liable at all, then it must be by the addition of the
patronymic "Brown" to the words "Iron Tonic." But the evidence
shows that the preparation was originally compounded by a person of
that name of whom the present manufacturers are the successors in
business, and, in the absence of testimony tending to show an
intention to palm off their preparation as that of the plaintiff,
they have a right to such use.
It is claimed, however, that even conceding Brown's right to use
his own name as connected with the manufacture of the iron tonic,
he could not transfer such right to a person of different name and
thereby authorize the latter to make use of it. Whatever may have
been the respective rights of Brown and Lincoln to this name, the
plaintiff does not stand in a position to question the right of
Brown to transfer his interest in the business and to include in
such transfer the right to the use of his name in connection with
the preparation of the tonic as part of the goodwill of the
business. In the case of
Kidd v. Johnson, 100 U.
S. 617, it was held that the owner of a trademark which
is affixed to articles manufactured at his establishment may, in
selling the latter, lawfully transfer to the purchaser the right to
use the trademark, and, in delivering the opinion of the Court, MR.
JUSTICE FIELD observed:
"But when the trademark is affixed to articles manufactured at a
particular establishment, and acquires a special reputation in
connection with the place of manufacture, and that establishment is
transferred, either by contract or operation of law,
Page 139 U. S. 548
to others, the right to the use of the trademark may be lawfully
transferred with it. Its subsequent use by the person to whom the
establishment is transferred is considered as only indicating that
the goods to which it is affixed are manufactured at the same place
and are of the same character as those to which the mark was
attached by its original designer."
So, in
Mendendez v. Holt, 128 U.
S. 514, it was held that when a partner retires from a
firm, assenting to or acquiescing in the retention by the other
partners of the old place of business and the future conduct of the
business by them under the old name, the goodwill remains with the
latter as of course, and that under such circumstances, the right
to use a trademark passes to the remaining partners as a part of
such goodwill. There are a few cases indicating that the mere right
to use a name is not assignable, notably
Chadwick v.
Covell, 151 Mass. 190, but none that it may not be assigned to
an outgoing partner or to a successor in business as an incident to
its goodwill.
Ainsworth v. Walmsley, L.R. 1 Eq. 518;
Derringer v. Plate, 29 Cal. 292.
There was no error in the decree of the court below, and it is
therefore
Affirmed.