CARROLL ". ERTHEIJ,P'oB.
689
QY the peculiar distinctive designation of "Lone Jack," and
bought and sold, undE1r that name; that respondent, intending wrongfully to usurp complainant's reputation, and to deceive the public into supposing that they were buying complainant's tobacco, colorably imitated complainant's trademark, and in July, 1879, began to affix to goods of sub· stantially the same descriptive properties as complainant's the word-symbol "Lone Jack," and to sell smoking tobaMo wrapped in papers and bearing a label containing, as its most prominent characteristic, the said word-symb'ol, and that the public had been deceived thereby into buying respondent's tobacco, supposing it to have been manufactured by complainant. The bill prayed for an injunction and account. The answer denied that complainant had any proprietary or exclusive interest in the word-symbol "Lone Jack" by itself, and alleged that complainant's trade-mark only gave him the right to use the words "Lone Jack" in qonnection with the words "The Celebrated" above the bust of a man smoking a pipe, and with the words on each side of said ltnst, "Or seek no further, for better can't be found," and below said bust the words "Smoking tobacco, manufactured by John W. Carroll, Lynchburg, Virginia." It denied that complainant had ever applied said trade-mark to cigarettes, or to any other article than smoking tobacco, or that he had made or sold cigarettes by the name of "Lone Jack." It alleged that what is known by smokers and to the trade as smoking tobacco is a distinct article of merchandise from cigarette tobacco, and cannot be used for the manufacture of cigarettes, and that cigarette tobacco paid a special tax to the United States government. It further alleged that respondent had, in May, 1879, adopted and was entitled to a trade-mark for cigarettes consisting of the words "Lone Jack" above and the word "Cigarettes" below the figure of the jack of spades, and the name "Ertheiler & Co., New York," below, and "The best" below all; and that the sales of cigarettes under this trade-mark were the only sales by defendant plained of by plaintiff. The answer further denied that thefe v.l,no.9-44
690
FEDERAL
was any resemblance between the trade-marks, or any attempt at imitation; or that respondent had any intention to usurp complainant's reputation, or deceive the public; or that the public were deceived. Both parties filed affidavits in support of the facts respectively alleged in the bill and answer. William Henry Browne and George Harding, for complainant. Field, Dorsheimer, Bacon it Deyo, for respondent. BUTLER, J. It would be unwise to say more at this time than is necessary to explain the action of the court in disposing of the interlocutory motion now before it. The plaintiff's exclusive right to the trade-mark, as a designation of his smoking tobacco, is not doubted. The defence rests upon a denial-first, that the defendant has used the trade-mark; and, second, that he has used it as a designation of "smoking tobacco." The second branch may, tly, be noticed first. While the revenue laws, for most purposes of taxation, distinguished between smoking tobacco and cigarettes, there is, we believe, no substantial difference. Cigarettes consists of smoking tobacco, similar in all material respects to that used in pipes. The circumstance that a longer "cut" than that commonly used in pipes is most convenientfor cigarettes is' not important, nor that the tobacco is smoked in paper instead of pipes. It may all be used for either purpose, and is all embraced in the term "smoking tobacco." We do not believe the public or the trade draw such a distinction as the defendant sets up. We have not overlooked the statements contained in his affidavits, but the method pursued in obtaining this testimony, generally, does not recommend it to our confidence. The affidavits seem to have been prepared without seeing the witnesses, and sent over the country to be signed by those who might be found willing to sign them. They are, generally, similar in language, and printed. This method of obtaining testimony is not worthy of encouragement. If the public and trade draw such a distinction, and, therefore, do not suppose the defendant's cigarettes to be made of the plaintiff's tobacco, (and the defendani
CABROLL V. ERTREILER.
691
so understands,) why does he adopt the designation by which this tobacco is familiarly known, and persist in using it? The dominating characteristic of the plaintiff's trade-mark is the name "Lone Jack." His tobacco has come to be known and described by this name, throughout the country, to such an extent that the accompanying device has ceased to be important, if it ever was sO,-doubtless rarely observed, and slightly remembered. At home and abroad, to the trade and the public, it is familiarly known as "Lone Jack," and is thus designated as the plaintiff's manufacture by purchasers and sellers. The defendant's application of this name to his smoking tobacco is an adoption and use of the essential part of the plaintiff's trade-mark. Surrounding it with a different device signifies nothing to the public, who attach no importance to the device of the plaintiff. The defendant's name upon the cigarettes, if recognized, (and it would not be without close inspection,) would not inform the public that the tobacco is not of the plaintiff's manufacture; That the defendant's act is calculated to mislead can hardly be doubted; that it has misled, the plaintiff's affidavits, we think, show; and the inference that the defendant supposed it would mislead, and intended it should, cannot well be avoided. Why otherwise did he adopt this particular name? He knew it to be the recognized designation of the plaintiff's tobacco, which had become popular with consumers and the trade. Did he not expect the public to be influenced thereby and his business increased? An affirmative answer cannot well be avoided. IT he did not,however, the injunction will do him no harm, for he has not yet had time to establish a reputation of his own under this name. Whether the plaintiff commenced putting up his tobacco in the form of cigarettes before the defendant applied the designation "Lone Jack" to his cigarettes need not be considered at this time. 'The law involved is, we believe, well settled, and is so fully stated in every aspect suggested by the learned counsel for the defendant in McLane v. Fleming, 6 Otto, 245, and Singer
FEDERAL REPORTER.
Sewing Machine Co. v. Wilson, 8 Ls.w Reports, (appeal eases,) 376,that no more is deemed necessary than a reference to these cases. A preliminary injunction as prayed for will be granted. An injunction was subsequently issued restraining respondent, until the further order of the court, from selling cigaIetteli or smoking tobacco in any form bearing the trade-mark "Lone Jack." l{O'l'lIl.-l:lee Sawyt1l' v. Horn,
2lJr.
JOHNSTON,
Receiver, etc.,
f7.
ROB and April 9, 1880.)
(Oircuit Oowrt, E. D. Missouri. TIONS.-A
EQUITABLE JURISDICTION OIl' FEDERAL COURTS-STATUTE OIl'
LIMIT.....
federal court will assume equitable jurisdiction of a suit by. receiver of a bank against the estate of & decedent for the recovery of · debt alleged to have been fraudulently concealed, although the claim is barred by the statute of limitations of the state in which such coun has territorial jurisdiction.
tn Equity. Demurrer to bill. John B. Henderson and Patrick et Frank, for complainant. Glover et Shepley, for respondents. MCCRARY, J. The claim sued on originated in the execution of two promissory notes by John J. Roe, one dated February 28, 1867, for $65,000, and the other dated March 4, 1867, for $35,000, payable on call and to himself. The fraud and breach of trust charged against said John J. Roe as a director of the National Bank of the State of Missouri, is alleged as having been committed on the fourteenth day of April, 1868, and consisted, as the bill avers, in certain entries upon the books of said bank made by said Roe, who was one of the directors, in collusion with the other directors of the bank. It is averred that said notes, and other similar notes given by other directors, had been discounted by the bank and were held by it as part of the assets, and that on the date last named entries were fraudulently made upon
JOHNSTON 11. ROE.
693
the books of the bank showing payment thereof, though no part of said notes, or either of them, except interest up to that time, had been paid, and no payment thereon has been since made. This of course makes, if true, a clear case of indebtedness from said Roe to the bank. The indebtedness, according to these allegations, accrued as early as the fourteenth day of April, 1868. John 1. Roe died on the fourteenth day of February, 1870. His estate was administered upon under the laws of Missouri, and this chim was not proven before the probate court. Said estate has been fully administered by the administrator, and the administration closed. Certain real and personal property left by the deceased having passed to the defendants herein, as his heirs, this suit is intended to subject the same to the payment of the plaintiff's demand, the bill for this purpose having been filed on the seventeenth day of June, 1879. It will thus be seen that the cause of action accrued nearly two years before the death of John J. Roe, and more than 10 years prior to the bringing of this suit, and is therefore barred by the statute of limitations of Missouri, (if that statute is to be followed here,) unless the plaintiff has taken the case out of the statute by the allegations of his bill concerning the concealment of the alleged fraud and its discovery. Upon this point the bill alleges, in substance, that the fraud complained of was concealed by the directors of the bank, (said John J. Roe, up the time of his death, being one of them,) in collusion with the cashier, whereby the said national bank, and its stockholders and creditors, were. kept in ignorance of t,he facts until July 10, 1877, when the fraud was discovered by the complainant. It is further alleged that the claim here sued upon arises out of the breach of an express trust by the said John J. Roe and his associates, and for that reason said statute of limitations does not affect the complainant's right of recovery herein, and it is alleged generally "that, in consequence of said fraud, and the concealment thereof as aforesaid, the claim here sued upon is, in equity, excepted from the operation of the statute of limitations, in