796
J'EDERAL'REPORTER,
vol. 45.
BATTLE (0IrcwU
& CO.
FINLAY
et al.
Oowrt,E. D. Louiriana. April S, 1891.)
TJuD:e.-X.RK-INJ!'RINGEMlilNT-EvroENOl!i·
.In a suit for infringing a trade.'mark, it appeared that for many years plaintiff had manufactured and sold a chemical preparation for inedicinal purposes under the Dame of "Bromidia," a word coined for and arbitrarily applied to the preparation, and that in 18811t had registered that word as a trade-mark in the patent office; that defendants sUbsequently manufactured and 'sold a similar compound, intended for the same uses, which they labeled, "Compound Elixir Chloral & Bromide of Potassium, " underneath which in large letters, the most prominent and conspicuous word oD'the label is the word " Bromidia, "while below, in smaller type, though distinct and of good size, is a ststeinent that· it is prepared by defendants. B el.d an infringement of the trade-mark, by which incautious purchasers are likely to be deceived, and that an injunction pendente Ute must be granted.
In Equity.
Motion for preliminary injunction.
" R. S..McDonald, for B. R. FOrman. for defendants; PARDEE, J. On this preliminary bearing the case plainants and their assignors, from about 1877, adopted forthei.r use as a trade-mark, (for a chemical or medicinal preparation mantlfactured by them under an alleged private formula, composed of chloral hydrate, mide of potassium, extractofcannabis indica; andex.tract of hyoscyamus,) the word "Bromidia," a word coined for and arbitrarily applied to the preparation aforesaid; that thereafter they manufa.ctured thiil said preparation, put it in the market with the said label , "Bromidia," and built up and established a business in themanufactureQf saidp:t:e}jaratioll, P:tIt., ting it for sale on the market in packages marked with and by the said trade-mark, so that the same became known thro1;lghoQt the trade' and to the publip,. and became and is valuable to the. cpmpla·inants; and that in 1881, under the law, of the United States entitled ",All act to authorize the registration of tradermarks,and to; protect the trade-mark was duly registered in' the that the defendant& are engaged in the manufacture ofa chemical'.or medicinal preparation of the same componen.t:parts as the complainants' the same,and used for tbesame.purposes, which theyJabel "Compound Elixir Chloral & Bromide of PotassIum," underneath. which, in larger letters, and as themostpromincmt and conspicUoUS mark on the label, appears the word'" Broroidia," and at the bottom oLthe label, in letters decidedly smaller, though of g.Qod size and distinct; the words, "Prepared by Finlay & Brunswig, Manufacturing Chemists, New Orleans;" and that the defendantsintheir·tl'tLde, when called upqn for "Bromidia," either by written or verbal order,supply the article of their own preparationlabeled as above. The defendants, in their al1swel', admitting the manufacture of the preparationafore.said since January 1,1888, assert that the word "Bromidia," used by them,' indicates that the. chief com· ponent part of is brqmic:Je,and does not in any way dicate the origin of the preparation, nor the persons. by whOm it
. llATTLE &: CO.· V. FINLAY·.
797
ufactured or put up or offered for sale, but indicates solely the fact that its p.rincipal ingredient is bromide of potassium, commonly called" bromide;" and again, that they had put upon theireaid label in quotation marks the word" Bromidia" to indicate the chief component part of the said preparation, and in order tha.t the. purchllSers know that. their elixir of chloral'lJ.nd bromide of potassium was substantially the same, and used for the same purpose, producing the same medicinal effects, and possessing substantially the same component parts as "Bro. inidia," at).dthat their compound elixir of (lhloral and bromide of potassiutil"wl1S substantially the salliElthing as {iBromidia," and for no otherpu.rp.oae. And they llSSert, further, that-:"On each and everyone of their labels was printed in large letters, ·Prepared by Finlay & Brunswig,' which would render it impossible that the quot;.. lng of the word' Bromidia' on the label would lead anyone to suppose or to infer that the preparation manufactured and sold by defendants in any way emanated from, or was maliufacturedby, or originatedwitbthecompIainants;" i
There can be no question in this case but that the c()mplainants have a rightto and a property in the word "Bromidia" as a trade-mark, and that the. defendants are upon the same. The word is an arbitrary word, descriptive of nothing, unless it is of the complainants' goods, and that only for the reason that the complainants have introduced them to the pubHc under: !;luch arbitrary name. The defendants are confessedly, using it for the purpose of informing and satisfying the public tl:J.at tbeir preparation, "Compound Elixir Chloral ,$l Bromide of Potassium," is the same in substanCe, quality, and effect aa, the ants' "Bromidia." "Chancery protects trade-marks upon the ground that a party shall not be permitted to sell his own goods as the goods of another; and therefore he will not be allowed to use the names, marks, letters, or other indicia of another, by which he may pass off his own goods to purchasers as the manufacture of another." McLean v. Fleming, 96 U. S. 245. "A court of equity will enjoin unlawful competition in trade by means of a simulated label, or of the appropriation of a name; as where the defendant appropriates the name of an hotel conducted by the plaintiff, or imitates his label upon preparations." Burton v. Stratton, 12 Fed. Rep. 696, and cases there cited. The question, then, for decision in this case seems to be whether the defendants, in their use of the word "Bromidia," are in any way intending to or likely to deceive the purchasing public, so as to be enabled to pass off their own goods to supply a demand for the goods of complainants. Unless their object is to get some advantage from the use of the word "Bromidia," it is very difficult to see why they should use it. As they admit that they use it for the purpose of informing purchasers that their preparation is substantially the same as "Bromidia," they practically admit that by such use they are attempting to supply a demand for complainants' goods, and that through the use of complainants' trademark. For this they seek to justify by saying that as on their labels is'
J'E1)ERA'h 'REPORTER,
vol.'45.
priritedil1lllirge letter$jthe words; "Prepared. by Fi11111.y.&iBruDswig"Man.. one can be deceived.. Ihth:ecase of Robert8 v. sMtdlin, 8 Biss.398,which ,seems to be' a casevfJrysimilar ,to this, the . ' r," ' ,I, ,d'; [." 1 'using o'atneu'poo:tflewrapper or envelope, the phblio(arenot decl'ived,-'-' it.would;perhaps be enough to say that. when goods acquire a'specific name. the'IlllrchMer .rarely l00klJ w,see wllohas manufactured the goods by that name. 4". f'Qr inlltance, fact, theSe have acquired among the or uSElra,' thedeslgpation of' Parabola' to such an extent that the purch'aser would simply ask for' Parabola needles.' he might be supplied with the', Parabola' needlesrt1anufactured by Clarke & Somi,instead of, those manufactUred, by complainant,:.to,the direct injury of the complainaat' the .abridging of his trade." I" ' impose, upon the trade the.cpUlpJllinant had a be 'protected. Many cases might be cited to show that the infringement of a trade-mark cannot.be j.ustified on the ground that it is accom panied by marks and advertisements showhig ,thattbe goods so marked are manufactured by patties, the true test being (i) w hetlier. the trade-mark is infringed i and (2) whether incautious purchasers may be deceived. Wherever it appears that an incautious or ordinarily unsuspecting purchaser is liable to deceived. by the 'wrongful Use .:orthe trade-mark, eqUity never fails to give' a remedy. In the instant case it seems to be clear that the defendants are complainantl5' property withOut their consent, and to ·. In my opinion the injunction peru;lente lite prayed for should issue, and it is so ordered.
PRICE BAXIN(H?OWDER CO. 1/. F;YFE.
799
(c
."
:
!'JuDlI-MABE-CRBJ.JI
,
On motion tor preliminary injunCtion,' to restrain the use of the word" Cream" in ,oonnection with the wordll !';Baking-PoWder, " it appeared that. COmplainant, since 1866, had manufacturedaud 801d au article which it desigllated as "Dr. Price'8 'Cream ;'that the word "Cream" had not been' used on packages of baking-pow<ler before tb,at andtbat it is not descriptive 9f an ingredient of tbeartiole, or of its qUality or lUnd. QfJld, that the be granted.
,b' ,',.
'Motion for, preliminarY illjunQtiou. ,Davis,. Ke1kJgg & Severance,; for' Lawler&: Durment, . ,';,"', -,.> ,
j-
,""'1
,J. 'A a injunction to strain the .use of the word,'.'Crealll." in,connection with the words" Powder," which is manllfactured and put upon the by the fendant,. JlQd, is aJleged,in packages having labels and wrapperS similar ip·,design to. t1lOs6, upon the goods of complainant, and exact enough ,to deceive. The il! organized under the laws of the state of Illinoi!l, and a citizen thereof. and uses in trade the word" Cream" incpmbinatiQnwith the wordi!" Dr. Price's" or "Price's Baking Powder;" aQd the c:iefend,ant, a, of MiQnesota, affixes the word" Cream," in cOqlbinlltion with the Baking to the packages containing the article he manufactures sells. It is conceded that the bakiqg in cans, and ,d,esignated as .stated with the word "Cream," has been manufactured ,and, ,sold since. 1866 by the complainant or,tbose from wllo}:Dit de.rives ownership; and the defendant in his opposition to this Ipotion IUlmits that he has been familiar with the. article, and halldled it, "Dr. Price's Cream BakingUlore than 15. years. He urges, however, that the .complainant no property iJ;l and is not entitled to protection in the exc).usiveusj:l,of the worli in combination the other words a trade-Ipark. The chief s,md essential feature of. the words used by trade is the word "Qraam," andin.tpe affidavit orde{endaQt not appear, thisworq had been.' on packag,es containing baking-powder before it was adopted by. or its grantors. This word then, by association, as early as 1866, pointed distinctively to the origin or ownership of the article to which it is applied. Since that time, upon the wrappers of cans containing this article, put up by others, and earlier than the defendant's manufacture, the words "Pure Cream-Tartar Baking-Powder" is printed. This is of no importance on this motion, although the phrase is a singular one. Tartar, when pure, is called" cream of tartar." and the phrase" pure creamtartar" would appear to be tautological. The complainant is certainly entitled to protection in the use of this word, in connection with the baking-powder it manufactures, unless it is adopted and used as descrip-
"as