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the court held that the union of the two words, placed in relief, and with characteristics determined and distinct, were a particular sign to indicate to the public that they belonged to the inventor thereof. This in effect decided that, by the manner of use, these words had acquired an individuality sufficient for the destined purpose. The same parties appeared before the Court of Paris, in 1864, on appeal. Held: “peppermint” is but the English appellation, but by long use in France it has become common to commerce. The simple indication of this product, in one language or the other, cannot be protected. The court plainly intimated that a particular form or disposition of letters might make it valid as a personal sign. This would virtually make it a distinctive sign of origin.
$ 166. When a chemical product takes naturally, in certain given conditions, the form of a known object, its denomination cannot become private property. The case of Barnett v. Kübler, in the Court of Paris, in 1866,2 illustrates this doctrine. Everybody knows, at least by name, the scientific toy called the “ Serpent of Pharaoh.” It is sold under the form of a little cone covered with tin-foil. When set on fire, it acquires an extraordinary development, and, with the movements, takes the form, length, and color of a real serpent. The demandant described its mode of manufacture. He employed the sulphocyanide of mercury, obtained by the action of nitrate of mercury on the sulphocyanide of potassium. The containing box had upon it a notice of “ Poison.” The demandant had patented the toy, but the patent had been invalidated, as being for a worthless invention. As inventor, he had given to it the name of “ Serpent of Pharaoh.” It was sometimes called the “ Artificial Serpent” and the “ Eggs of Pharaoh.” The defendant sold a similar article under the name of “Magic Serpent.” An action was brought for infringement of the alleged trade-mark. Among other things, the defence set up that the toy was
1 Annales de la Prop., tome x. p. 320. ? Ibid., tome xii. p. 144.
poisonous, and consequently contrary to law, and to the public security ; but on that point the court ruled, that as the attention of the Council of Health had several times been called to the article, and nothing had been done to prohibit the sale of it, the conclusion was warranted that it presented no serious danger, and therefore was not unlawful. The next question was this : Do the words “ Serpent of Pharoah,” as used, constitute a trade-mark? If yea, is the use by the defendant of the term “Magic Serpent” for a similar article an infringement upon that mark, as a colorable imitation? In support of the claim, the counsel, M. Pataille, eminent for learning in the law of the subject, argued thus : The words 6 eggs” and “serpent,” employed to designate the thing which was neither eggs nor a serpent, but which, upon combustion, gave a resemblance more or less removed, are clearly fancy names, belonging to him who first makes use of them. In support of that theory, he cited the decisions of the Court of Paris and the Court of Cassation in the instance of “ Pearls of Ether,” a title given to ether-pills, which, as pharmaceutical products, belong to the public in general, and by their form and silvery envelope resemble pearls, and which words notwithstanding were held to be a trade-mark. Held, the term “serpent” does not constitute a trade-mark, it being natural and necessary to describe the article. The use of the word “serpent” by the defendant is not piracy. So the words “ Night Blooming Cereus” were held to be invalid as a mark, being the proper descriptive appellation of an article. The same rule defeated the adoptor of the words " Desiccated Cod-fish.” 3
§ 167. Since the foregoing got into type, the following case arose. A claim was made to the exclusive use of the words, “ CABLE-TWIST TOBACCO,” as a trade-mark for plug chewingtobacco. The applicants 4 set forth that they had used said words for that purpose for about two years last past, i.e., from
1 Annales de la Prop., tome x. p. 340.
8 5 Abb. Pr. R. (N.s.) 218.
about the year 1870. The Examiner rejected the application, on the ground that the words “ Cable Twist” are purely descriptive of the goods to which they are attached. An interlocutory appeal was thereupon taken to the Commissioner, in person, the main question being this : Are those words the proper denomination of the article of manufacture ?
$ 168. Upon the argument, the counsel for the applicants produced a piece of the manufactured tobacco, and a drawing filed in the Office in an application for a patent for their mechanical process of coiling the tobacco into the exact representation of an ocean-telegraph cable, which thing, said the counsel, had first suggested the name. The new article of manufacture consists of a strand or rope of tobacco coiled spirally about a “ filler" or core, and then pressed flat, or into any other desired form. The object of the invention is alleged by the specification to be to provide a plug-tobacco in such shape, and of such arrangement, that the portion of it desired for use may be severed from it without uncoiling the remainder of the plug. After the coil is wound round the core, the bunch is placed in a mould, and reduced by hydraulic, or other, pressure to the shape of a flat plug. After this operation, a number of the plugs are placed in a tobacco-caddy and pressed; the process of filling and pressing being repeated until the caddy is full.
$ 169. It was conceded by the counsel that any article's appropriate name, which has become a part of our common language, cannot be registered or recognised as a valid trademark; but it was strenuously denied that the words “ CableTwist,” as here used, could be brought within the rule. It was admitted that the words“ Cable,” “Twist,” and “Tobacco," are the common property of the public, and the words “ CableTwist,” when combined, are also in general use, designating as they do a kind or class of tobacco ; but the counsel denied that such is the case in respect to the combination of the three words. "Cable-Twist Tobacco," it was contended, is a combination quite unknown to the public, except as the mark or symbol of a particular firm, — the kind or class being twist, and the word cable being purely fanciful. The objection that the word cable is descriptive seemed to the counsel to be untenable. The case was instanced of the famous smokingtobacco put up in green drums, and sealed with green wax, and having applied to it as a trade mark the words “Green Seal Tobacco.”
§ 170. The Examiner replied that the color of the drum and wax were mere marks or symbols of the merchandise; and as green paint or green wax cannot enter into the composition of tobacco, the color in such case cannot be deemed to be descriptive, any more than the color of wax on bottles, as illustrated in the French case of Badoit v. André, in the Court of Appeal of Lyons, in 1851.1 (In that case, the parties both sold the water of Saint Galmier, though each drew from a different spring. They had adopted very dissimilar exterior signs to distinguish their bottles. Badoit used a green seal, bearing the inscription “ Mineral Water of Saint Galmier, Badoit Spring,” &c. André, who had quite another kind of designation, in 1850, without abandoning his peculiar mode of indication, all at once adopted the green wax. The court held that the color of the wax, as thus employed to seal bottles of mineral-water, constituted a trade-mark, and a sign of goodwill worthy of protection as the exclusive property of the plaintiff; and the defendant was accordingly enjoined from using for that purpose wax of the same color as that used by the plaintiff.)
§ 171. The counsel further said, inter alia, that one might make candy, and color it to resemble a cable, and mould it into an exact representation of the applicants' tobacco, and use the words “ Cable-Twist Candy,” and enjoy the exclusive right of the employment thereof for that purpose. The words would necessarily be descriptive. The public would come to
| Le Technologiste, tome xiii. p. 213.
know the candy as “ Cable-Twist Candy.” The words might in time become the appropriate name of the article; and still the sole right to use the designation would remain in him who first applied it to candy. That is, that any person might apply the term cable-twist to any goods, as a fancy name, and hold the same as a valid trade-mark, although the words might possibly be to some extent descriptive.
$ 172. The case of “ Brown's Jamaica Ginger” was cited as an illustration of the idea ; and the remarks of Paxson, J., in the suit of The Dixon Crucible Co. v. Guggenheim, were relied on as confirming the same. We turn to that case, and ascertain that what the judge said was this : “ Our late fellowtownsman, Frederick Brown, for many years before his death, prepared and sold a valuable article of Jamaica ginger. It was known as his article, and protected by his trade-mark. His son continues its manufacture. No one doubts his right to do so, or that equity would restrain an unlawful interference with his rights." The article would be “protected by his trademark,” says the judge. He did not say what that trade-mark was. Was it the mere appellation of “ Brown's Jamaica Ginger,” as the counsel contended ? It assuredly was not. The Patent Office has answered that question. Upon the application of the very gentleman mentioned, as successor in business, the point was passed upon. Mr. Brown applied for the registration of a fac-simile of the signature of his father and predecessor, as his lawful trade-mark for Jamaica ginger; and his claim was allowed. The name of the commodity does not constitute any essential part of that mark.
§ 173. The counsel then said, that a fine-cut chewingtobacco of a bright-yellow color, might be properly marked 6 Yellow Moss Chewing-Tobacco.” (Conceded, and for this reason: the first term is purely fanciful. Yellow moss does not enter into the composition of chewing-tobacco.)
13 Am. Law Times R. (St.) 288, and 2 Brewster, 321. 2 Frederick Brown, No. 715.