1. Names which are merely descriptive of the ingredients,
qualities, or characteristics of an article of trade, such as the
names "Coco-Quinine" and "Quin-Coco," applied to a liquid
preparation of quinine in combination with chocolate and other
things, cannot be appropriated as trademarks. P.
265 U. S.
528.
2. The use of a name similar to that already employed by
another, truthfully to describe one's own product is not a legal or
moral wrong, even if its effect be to cause the public to mistake
the origin or ownership of that product.
Id.
3. A first made and marketed, a liquid preparation containing
quinine and other drugs compounded with chocolate to give it color
and flavor and to aid in suspending the quinine. B then, using
chocolate, produced an article of the same taste and appearance,
but sold cheaper, and, to reap A's trade, suggested to retail
druggists the feasibility and economy of passing off the one for
the other when dispensed out of the bottle, which was done in many
and divers instances.
Held:
(a) That B was guilty of unfair competition. P.
265 U. S.
528.
(b) He who induces another to commit a fraud and furnishes the
means is equally guilty. P.
265 U. S.
530.
(c) When several acts of unfair competition are shown, there is
warrant for concluding that they will continue, and equity will
afford adequate relief by injunction. P.
265 U. S.
531.
Page 265 U. S. 527
(d) The injunction in this case should forbid B and his agents
from directly or indirectly representing or suggesting to his
customers the feasibility or possibility of passing off B's product
for A's, and may well require that his original packages sold to
druggists shall bear labels not only distinguishing B's bottled
product from A's, but also stating affirmatively that B's
preparation is not to be sold or dispensed as A's, or be used in
filling prescriptions or orders calling for the latter. P.
265 U. S.
531.
(e) But the use by B of chocolate as an ingredient of his
preparation should not be forbidden.
Id.
275 F. 752 reversed.
Certiorari to a decree of the circuit court of appeals which
reversed a decree of the district court dismissing on the merits a
suit brought by the above-named respondent to enjoin the petitioner
from continuing to manufacture a medicinal preparation called
Quin-Coco if flavored with chocolate, and from continuing the use
of that name.
MR. JUSTICE SUTHERLAND delivered the opinion of the Court.
Respondent is a corporation engaged in the manufacture and sale
of pharmaceutical and chemical products. In 1899, it began, and has
ever since continued, to make and sell a liquid preparation of
quinine in combination with other substances, including yerba-santa
and chocolate, under the name of Coco-Quinine.
Petitioner also is a pharmaceutical and chemical manufacturer.
The Pfeiffer Chemical Company, Searle & Hereth Company, and
petitioner are under the same ownership and control. The first
named company, in 1906, began the manufacture of a liquid
preparation which is substantially the same as respondent's
preparation, and
Page 265 U. S. 528
which was put upon the market under the name of Quin-Coco. Two
years later, the Searle & Hereth Company engaged in the
manufacture of the preparation, which ever since has been sold and
distributed by petitioner.
This suit was brought in the federal District Court for the
Eastern District of Pennsylvania by respondent to enjoin petitioner
from continuing to manufacture and sell the preparation if flavored
or colored with chocolate, and also from using the name Quin-Coco,
on the ground that it was an infringement of the name Coco-Quinine,
to the use of which respondent had acquired an exclusive right. The
district court decided against respondent upon both grounds. 268 F.
156. On appeal, the court of appeals ruled with the district court
upon the issue of infringement, but reversed the decree upon that
of unfair competition. 275 F. 752.
The entire record is here, and both questions are open for
consideration.
First. We agree with the courts below that the charge of
infringement was not sustained. The name "Coco-Quinine" is
descriptive of the ingredients which enter into the preparation.
The same is equally true of the name "Quin-Coco." A name which is
merely descriptive of the ingredients, qualities or characteristics
of an article of trade cannot be appropriated as a trademark, and
the exclusive use of it afforded legal protection. The use of a
similar name by another to truthfully describe his own product does
not constitute a legal or moral wrong, even if its effect be to
cause the public to mistake the origin or ownership of the product.
Canal Co. v.
Clark, 13 Wall. 311,
80 U. S. 323,
80 U. S. 327;
Standard Paint Co. v. Trinidad Asphalt Co., 220 U.
S. 446,
220 U. S. 453;
Howe Scale Co. v. Wyck-off, Seamans & Benedict,
198 U. S. 118,
198 U. S.
140.
Second. The issue of unfair competition, on which the courts
below differed, presents a question of more difficulty. The
testimony is voluminous, more than 200
Page 265 U. S. 529
witnesses having been examined; but, since the question with
which we are now dealing is primarily one of fact, we have found it
necessary to examine and consider it. Nothing is to be gained by
reviewing the evidence at length, and we shall do no more than
summarize the facts upon which we have reached our conclusions.
The use of chocolate as an ingredient has a three-fold effect:
it imparts to the preparation a distinctive color and a distinctive
flavor, and to some extent, operates as a medium to suspend the
quinine and prevent its precipitation. It has no therapeutic value,
but it supplies the mixture with a quality of palatability for
which there is no equally satisfactory substitute. Respondent, by
laboratory experiments, first developed the idea of the addition of
chocolate to the preparation for the purpose of giving it a
characteristic color and an agreeable flavor. There was at the time
no liquid preparation of quinine on the market containing
chocolate, though there is evidence that it was sometimes so made
up by druggists when called for. There is some evidence that
petitioner endeavored by experiments to produce a preparation of
the exact color and taste of that produced by respondent, and there
is evidence in contradiction. We do not, however, regard it as
important to determine upon which side lies the greater weight.
Petitioner in fact did produce a preparation by the use of
chocolate so exactly like that of respondent that they were
incapable of being distinguished by ordinary sight or taste. By
various trade methods, an extensive and valuable market for the
sale of respondent's preparation already had been established when
the preparation of petitioner was put on the market. It is
apparent, from a consideration of the testimony, that the efforts
of petitioner to create a market for Quin-Coco were directed not so
much to showing the merits of that preparation as they were to
demonstrating its practical identity with Coco-Quinine, and, since
it was sold at a
Page 265 U. S. 530
lower price, inducing the purchasing druggist, in his own
interest, to substitute, as far as he could, the former for the
latter. In other words, petitioner sought to avail itself of the
favorable repute which had been established for respondent's
preparation in order to sell its own. Petitioner's salesmen
appeared more anxious to convince the druggists with whom they were
dealing that Quin-Coco was a good substitute for Coco-Quinine, and
was cheaper, than they were to independently demonstrate its
merits. The evidence establishes by a fair preponderance that some
of petitioner's salesmen suggested that, without danger of
detection, prescriptions and orders for Coco-Quinine could be
filled by substituting Quin-Coco. More often, however, the
feasibility of such a course was brought to the mind of the
druggist by pointing out the identity of the two preparations and
the enhanced profit to be made by selling Quin-Coco because of its
lower price. There is much conflict in the testimony, but on the
whole it fairly appears that petitioner's agents induced the
substitution, either in direct terms or by suggestion or
insinuation. Sales to druggists are in original bottles bearing
clearly distinguishing labels, and there is no suggestion of
deception in those transactions, but sales to the ultimate
purchasers are of the product in its naked form out of the bottle,
and the testimony discloses many instances of passing off by retail
druggists of petitioner's preparation when respondent's preparation
was called for. That no deception was practiced on the retail
dealers, and that they knew exactly what they were getting, is of
no consequence. The wrong was in designedly enabling the dealers to
palm off the preparation as that of the respondent.
Coco-Cola
Co. v. Gay-Ola Co., 200 F. 720;
N. K. Fairbank Co. v. R.
W. Bell Manuf'g Co., 77 F. 869, 875, 877-878;
Lever v.
Goodwin, L.R. 36 Ch.Div. 1, 3;
Enoch Morgan's Sons Co. v.
Whittier-Coburn Co., 118 F. 657, 661. One who induces another
to commit a
Page 265 U. S. 531
fraud and furnishes the means of consummating it is equally
guilty and liable for the injury.
Hostetter Co. v.
Brueggeman-Reinert Distilling Co., 46 F. 188, 189.
The charge of unfair competition being established, it follows
that equity will afford relief by injunction to prevent such unfair
competition for the future. Several acts of unfair competition
having been shown, we are warranted in concluding that petitioner
is willing to continue that course of conduct unless restrained.
Hennessy v. Wine Growers' Assn., 212 F. 308, 311. It
remains to consider the character and extent of this relief.
Respondent has no exclusive right to the use of its formula.
Chocolate is used as an ingredient not alone for the purpose of
imparting a distinctive color, but for the purpose of also making
the preparation peculiarly agreeable to the palate, to say nothing
of its effect as a suspending medium. While it is not a medicinal
element in the preparation, it serves a substantial and desirable
use, which prevents it from being a mere matter of dress. It does
not merely serve the incidental use of identifying the respondent's
preparation,
Coco-Cola Co. v. Gay-Ola Co., supra, p. 724,
and it is doubtful whether it should be called a nonessential. The
petitioner or any one else is at liberty under the law to
manufacture and market an exactly similar preparation containing
chocolate and to notify the public that it is being done.
Saxlehner v. Wagner, 216 U. S. 375,
216 U. S. 380;
Chadwick v. Covell, 151 Mass.190. But the imitator of
another's goods must sell them as his own production. He cannot
lawfully palm them off on the public as the goods of his
competitor. The manufacturer or vendor is entitled to the
reputation which his goods have acquired, and the public to the
means of distinguishing between them and other goods, and
protection is accorded against unfair dealing whether there be a
technical trademark or not. The wrong is in the sale of the goods
of one manufacturer or vendor as those
Page 265 U. S. 532
of another.
Elgin National Watch Co. v. Illinois Watch
Co., 179 U. S. 665,
179 U. S. 674.
If petitioner had been content to manufacture the preparation and
let it make its own way in the field of open and fair competition,
there would be nothing more to be said. It was not thus content,
however, but availed itself of unfair means, either expressly or
tacitly, to impose its preparation on the ultimate purchaser as and
for the product of respondent.
Nevertheless, the right to which respondent is entitled is that
of being protected against unfair competition, not of having the
aid of a decree to create or support, or assist in creating or
supporting, a monopoly of the sale of a preparation which everyone,
including petitioner, is free to make and vend. The legal wrong
does not consist in the mere use of chocolate as an ingredient, but
in the unfair and fraudulent advantage which is taken of such use
to pass off the product as that of respondent. The use
disassociated from the fraud is entirely lawful, and it is a
against the fraud that the injunction lies. But respondent, being
entitled to relief, is entitled to effective relief, and any doubt
in respect of the extent thereof must be resolved in its favor as
the innocent producer and against the petitioner, which has shown
by its conduct that it is not to be trusted. Clearly, the relief
should extend far enough to enjoin petitioner and its various
agents from directly or indirectly representing or suggesting to
its customers the feasibility or possibility of passing off
Quin-Coco for Coco-Quinine. The circuit court of appeals held that
petitioner should be unconditionally enjoined from the use of
chocolate. We think this goes too far, but, having regard to the
past conduct of petitioner, the practices or some druggists to
which it has led, and the right of respondent to an effective
remedy, we think the decree fairly may require that the original
packages sold to druggists shall not only bear labels clearly
distinguishing petitioner's bottled product from the bottled
product of
Page 265 U. S. 533
respondent, but that these labels shall state affirmatively that
the preparation is not to be sold or dispensed as Coco-Quinine or
be used in filling prescriptions or orders calling for the latter.
With these general suggestions, the details and form of the
injunction can be more satisfactorily determined by the district
court. The decree of the circuit court of appeals is reversed, and
the cause remanded to the district court for further proceedings in
conformity with this opinion.
Reversed.