620
FEDERAL
time the circumstances occurred which gave Carter the color of title to this property, on the strength of which his assignee is now threatening to commit the wrong complained of, or from the time when the proceeding for the sale was commenced, or first came to the knowledge of the plamtiff? In my judgment, there can be but one answer to this question. As I have said, this is a suit to prevent a wrongful sale of the premises, which will have the effect to cast a cloud upon the plaintiff's title, and the right to maintain it could not have accrued until something was done by the ddendant to manifest his intention or purpose to make such sale. The mere fact that the assignee had the game show of right to make this sale five years ago as now, is not material. He never had the legal right to sell, and the plaintiff -could not have maintained a suit to enjoin him from doing an illegal act that he had not attempted, and, for aught that appeared, never would. If this was a suit to annular set aside the deed to Carter, so far as block 67 is concerned, upon the ground that it constituted a cloud on the plaintifI's title to the existing block G7, the statute, if applicable, would doubtless be a bar to the relief sought. But tJis suit goes no further Lack thun the wrongful attempt of the defendant to sell, and is limited in its object to the prevention of that wrong. q'he case of Bailey v. Glover, 21 Wall. 346, is not in Thr.t was a suit by the assignee to set aside a fraudulent conveyance by the bankrupt, and of course the cause of action-the right to have such conveyance set aside-accrued as soon as it was made. The conveyance the title, suLject to the rigbt of the creditcrs to have it set aside for fraud, and the interest to the grantee therein was ad· verse to the creditors from the date of the transacticIl, anil would, by lapse of time, ripen into an absolute estate in the pran-.isGs. In "e Estes, 6 Sawy. 4(jO; [So C. 3 .FED. REP. 10':1:.1 The demurrer is oyerruled.
IIOSTETTI:R
and others
'Z'.
FRIES
and others.
(r.:i"cuit Court, S. D. lYew York.
.1Ilay 31, IS83.)
OF Ky.w .4 TITTCU;-nrmrr TO OF. 'VlJcn a ncw' :.rtic!c is marie a namc nllBt be given to it, and t:1is name becomes, hy common acccptaton, the nppropriate de.-;eriptivc term hy which it is known, and therdore ],ecolllcs puhlic pr,1perty, so that all who have the right to mnnufnctur'J aud ,cll 1 he preparation have 1I1l' right to designate and sell it b,· the name by which alone it is known. provided care is ohserved to sell the pi'eparatiou as the mauufacture of the seller, aDd not the preparation made uy another,
2.
TnADE-)L\HK-DEFIXITlOX.
A trade-mark consists of a worr"!, mark, or device adopted hy a manufactnrer or to distinguish llis produdiun from otller productions of the same alticle.
HOSTETTER l'J:FRIES.
621
3.
S.uIE-N.urE INDICATING KIND OR DESCRIPTION OF TrnNG.
A name alone is not a trarle-mark when it is underslood to signify, not the particular manufacture of a certain proprietor, but the kind or description of thing which is manufactured. SA)IE-l;;.TUNCTION HEFUSED.
4.
Complainants claimed the right to use the name" Dr..J. Hostetter's Stomach Bitter," in connection with certain laheL" bottles, and other devices which designated the preparation as of their own manufacture and indicated it5 o'rigin and in their bill thcy averred that defcndants were selling to the trade an ext{'act out of which it was claimed Hostetlcr's Bitters could he made, with directions how to make such titters, and that the retail dea lcrs were making thc<c hitters and refil1ing complainaut's bottles, with thcir lahels and devices thereon, and thns selling them. lIeld, that defendants had the rigat to sell their extract as charged, as no pun.laser conld suppose that he was purehaslllg the preparation made lIy complainants; that they could not he held responsible for the acts of third parties; and that an injunctIOn would not be grantcd.
In Equity. A. n. Clark and James Watson, for complainants. 1. A. Englehart and A. J. Dittenhoefer, for defendant. \VALMCE, J. The motion for a preliminary injunction mnst be denied, because it does not appear from the bill and afiidavits that defendants are infringing the complainant's trade-mark. Complainants' property consists in the right to use the name "Dr. J. Hostetter's Stomach Bitters" in connection "'ith certain labels, bottles, and other devices, which designate the preparation as of their own manufacture, and indicate its origin. The bill alleges that the defendants are engaged in manufacturing and selling certain essences, oils, and extracts which they represent can be so manipulated and used as to produce a good imitation of various "'ell-known brands of bitters, among them an imitation of H08tetter's Bitters; that they sell the same to compounders and jobbers, with instructions to the pnrchaser as to the mode of compounding the bitters and selling them as the genuine article; and that such purchasers compound the essence and sell the bitters made thereby to retail dealers, and the latter procure the second-hand empty bottles that have been sold by the complainants, having the labels thereon, and refill them with the bitters compounlled from the defendants' essences and palm them off upon the :?ulJlic as the genuine bitters of the complainants' manufacture. The complainants have neither the exclusive right to make bitters compounded after the formula of Dr. Hostetter, nor the exclusive right to sell bitters by the name of Hostetter's Bitters. The preparation never had any name until it "'as offered to the public and christened. 'When a new article is made a name must be given to it, and this name becomes by common acceptation the appropriate descriptiYe term by which it is known, and ther8fore becomes public property. If this were not so any person could acquire the exclusive right to a formula by giying a name to the compound produced, not only when the compound has not been patented, but ,,·hen it micrht not be the subject of a patent. All who haye the right to
622
FEDERAL REPORTER.
ture and sell the preparation have the right to designate and sell it by the name by which alone it is known, provided care is observed to sell the preparation as the manufacture of the seller and not the preparation made by another. A trade-mark consists of a word, mark, or device adopted by a manufacturer or vendor to distinguish his production from other productions of. the same article. A name alone is not a trade-mark when it is understood to signify, not the particular manufacture of a certain proprietor, but the kind or description of thing which is manufactured. Singer lI1anuj'g Co. v. Loog, 15 neporter, 53G; Wheeler cf; JVilson }.[anttJ'g Co. v. Shakespear, 39 Law J. Ch. 36; Young v. Macrae, 9 Jur. (N. S.) 322. Obviously, no one would be deceived into the supposition that the defendants were selling the complainants' production when they only profess to sell an extract from which Hostetter's Bitters can be made. but Defendants not only have the right to make and sell the they have the legal right to make and sell a preparatiun which they call Hostetter's Bitters, provided they do not employ the bottles, labels, symbols, or devices whiob have been used by the complainant to distinguish their own production of that preparation, or such equivalents as may deceive the public in that regard. If the bill had distinctly alleged that the defendants were engaged in a scheme to put upon the market and palm off upon the public a preparation of their own as the complainants' preparation, and these allegations were shown to be true, the defendants conld not escape an injunction merely upon the ground that they had not sold the preparation themselves. But all the general allegations of fraud and conspiracy in the bill are resolved into the specific acts of wrong-doing particularly stated; that is, selling the extract and informing their customers how it may be made into Hostetter's Bitters. The actionable transgression of the complainants' rights is that committed by the retail purchasers who buy from the defendants' customers-those who use the bottles, labels, and symbols which constitute the complainant's trade-mark. '1'he defendants may be instrumental in effecting the wrong by providing some of the means employed, but they only do what the law permits them to do. And even ifJit could be assumed that they contemplated the further wrong-doing of the retailers, the law does not visit motives or intent unaccompanied by a wrongful overt act. The bill, however, does not allege that they are participants in the "Violation of the complainants' rights further than by selling the extract, and giving instructions how it can be made into Hostetter's Bitters. The motion is denied. See Wilcox (f, Gibbs Sewin.!J-mac71!1Je Co. v. The Gibbm.s Frame, infra; Burton v. Stratton, 12 FED. REP. 696, and note, 704; Shaw Stocking Co. v. Mack,
ld. 707, and nvte, 7l7.-lED.
:!lLCOX & GIBBS SEWING'MACUINE CO. t'. THE GIBBENS FRAME.
623
WILCOX
&
CO. v.
THE GIBBENS FRAME.
(Cir,cuit Court, S. D. New York. 1. TRADE-MARK PATENT. FORM OR
August 4, 1883.) EXPIRATION OF
SUAPE OF PATENTED 1tIACHINE -
'While no one has the right to make and sell his own wares as the wares of another, evcry one hail 1 he right to make and sell any wares not protected bv patents; and a manufacturlll' of a patented articlfo1, after the expiration of the patent, has a right to represent that it was made according to the patent, and to use the nama of the patentee for that purpose. 2. SAME-HIGII'!' 'tn USE Fnmr OR SnAPE OF 1tlACfIINE. 'Where frames for sewing-machines in the form of the letter G have been so extens{vely manufactured and sold by the inventor, during the time they were protected hy patents, that the machines containing this feature corne to be lulown in the trade therehy, aftcr the expiration of the patents, the patentee cannot, by claiming such form or shape of frame as a trade-mark, prevent others from using such frames in sewing-machi.nes manufactured amI sold by them. 3. DEsc:;.rrT'lYE OF QUALITY OR STYLE. Anything descriptive of the properties, style, or quality of an article merely, is open to all. .
In Equity. Stephen A. TValker and A. C. Brown, for orator. J. Hampden Dougherty and Joseph C. Fraley, for defendant. 'VIIEELER, J. This suit was brought in the supreme court of the state to restrain the use of frames in sewing-machines in the shape Qf the Roman capital letter G. A preliminary injunction restraining such use until further order was granted ex parte; and before further proceedings the cause was removed to this court. It has now been heard on motion to dissolve this injunction . . As the case now stands it appears that letters patent No. 21,129 were granted to James E. A. Gibbs, unde'!." date of August 10, 1855, for improvements in sewing-machines, the drawings and model of which showed this frame, but it was not claimed as a part of the patented invention; that design letters patent No. 1,206, under date of Feb. ruary 21, 1860, were granted to him for this form of frame; that upon the surrender of the original patent No. 21,129, reissued letters patent No. 2,655, under date of June 18, 1867, W"ere granted to him, in which this shape of frame was particularly described, and its advantages set forth as, "W"hich not only stamps it with a peculiar character, but is also exceedingly useful, as it affords the greatest possible space for the cloth or material to be seW"ed of being turned and tW"isted under the needle and upon the table;" and there was claimed as a part of the patented invention, "combining with the vibrat.ing needle-arm a frame-shape substantially like the Roman let· tel' G, as herein shoW"n and described, and for the purposes set forth." The orator operated under these patents until they expirec1.-the design patent, February 21, 1867, and the reissue patent, August 10, 1872. The orator registered this form of the frame as a trade-mark, and obtained certificate 8,3b6, dated from June 14, 1881, in the