LN'S

JACK," and "PHIL SHERIDAN "2 authenticate particular manufacture of cigars, or of chewing or smoking tobacco.

§ 219. New Words. The coiner of a new word, employed by him to designate an article made or sold by him, may obtain such a right to that name as to entitle him to the sole use of it, as against others who attempt its use for the sale of a similar article. The introducer of a new word, or of new words into a language, may by a parity of reasoning acquire the same right, on the same terms. He is virtually a coiner of a word who first applies it as an arbitrary symbol, to express the origin of the article of merchandise to which it is affixed. We need not strain a point to inquire into the question of the possible coincidence of a supposed neologism with a word or term used in some language other than our own. Is it new in its present application? Has it ever been used before as applicable to similar articles? Does the word proposed to be adopted denote only the nature, kind, or quality of the goods bearing it? If so, it cannot be exclusively appropriated, lest the whole language should gradually be laid under prohibition. Is it the necessary name of the article, the term by which it is known to commerce in general? Yea. Then it cannot be made a private mark. The present nomenclature of chemistry is a remarkable instance of the formation of new words; yet no one would pretend that when a new term has been struck into definite form, by the rules laid down for the combination of scientific terms, that because he was perchance the first who used it, he could interdict all others from its use. If that could be done, the slightest modification of a word would vest in somebody an exclusive title, and fetter the common language, until it would not be safe to add a particle, or inflect a syllable. Has the claimant the exclusive right to make and vend the new article? If yes, he may coin for it a new name, and, so long as he continues to possess the monopoly, he has 2 Smith, Crosby, & Co., No. 244.

1 J. W. Carroll, No. 158.

the sole title to the name. The following case will illustrate this well-settled doctrine.

§ 220. In Caswell v. Davis,1 at a special term of the New York Common Pleas, in 1867, the plaintiffs claimed the name affixed by them to the medicine which was first compounded by them in 1861, "FERRO-PHOSPHORATED ELIXIR OF CALISAYA BARK," as a trade-mark. They based their claim on priority of adoption. The plaintiffs did not seek to enjoin the defendant from manufacturing and selling his compound, or any other mixture composed of any elements; but insisted that he should not sell it with a label bearing upon it the name above given. There was some evidence tending to show that similar preparations, in some of the essential elements, had been made. and were in use before the plaintiffs experimented on, or produced their article; but it was not established that any mixture composed of all the ingredients used by the plaintiffs, or having a name in all respects similar to that adopted and applied by them, was in use or known to the public before the plaintiffs introduced their medicine. The Elixir of Calisaya, or Peruvian Bark, was in use, and perhaps in solution with iron in some form. But this case shows that this composition, with its peculiar and specific substances, was first introduced by the plaintiffs under its peculiar name, "Ferro-phosphorated Elixir of Calisaya Bark," and that they first applied the specific word "ferro-phosphorated" to any medicine. The article compounded by the plaintiffs, as a whole, was original with them. In the condition in which it was presented to the public it was new. As it was a recent composition, it would, of necessity, require a characteristic name, if its elements were to be indicated in its appellation. Compounded of substances known principally in chemistry, which science has a nomenclature peculiar to itself, the words to distinguish it would be in a language familiar to chemists, and that limited class of persons who deal in drugs and chemicals. It is true that the meaning of the

1 4 Abb. Pr. R. (N.s.) 6, and 35 How. Pr. R. 75.

words, singly, which mark the compound in question, is known to a large class of persons other than those designated; but, so far as the word "ferro-phosphorated" is concerned, it cannot be said that it is in common or general use, or that it is even understood by the great number of persons who take the remedy on the advice of physicians, as indicating the true nature and character of the mixture. They may, and doubtless do, in most cases, understand that the medicine prescribed contains Peruvian bark and iron; but as they read the label on the bottle they do not learn from it what the article really is, although its elements generally are indicated by the words used. They are not like words in common use, in any true sense, words which carry to the mind of all classes of persons, the instant the eye lights on them, the true character of the contents of the package upon which they are placed. All understand what mean the words " tobacco," "gin," "brandy," "cotton yarn;" but the words "Ferro-phosphorated Elixir of Calisaya Bark" would be unintelligible to most persons. Such is nearly the precise language of Van Vorst, J. In discussing the novelty of the term employed by the plaintiffs, he further said: "Ferrum,' of which ferro' is a form, is a common word in the Latin; and phosphorated' is recognized by Webster as an English word. But I am of the opinion that no such word as 'ferro' and 'phosphorated'in combination is to be found in any language, except the forming of it by the plaintiffs has had the effect to introduce it; and if so, plaintiffs are entitled to the credit and use of it. The combined word, I am satisfied, is philologically incorrect. I do not suggest that the word is meaningless, or that its elements do not indicate in a general way some of the ingredients of the preparation; but it does not do so chemically, or in an exact sense, and was doubtless arbitrarily arranged and invented by plaintiffs." There was a fact, also, which had some influence on the mind of the court. Several physicians testified that they had used this remedy for years; and that when they prescribed Ferro-phosphorated Elixir of Calisaya Bark" they intended

แ

6

the medicine of that name manufactured and sold by the plaintiffs. Another fact appeared. The defendant was in the employment of the plaintiffs when the experiments were made which resulted in the production of the article. He availed himself of the information gained while in a confidential relation. Held, that the plaintiffs are entitled to the exclusive use of the word "ferro-phosphorated" alone or in combination with any other words, and that their label to that extent is a proper subject of a trade-mark.

§ 221. If the compound word thus protected by the court had been philologically correct, and were necessary to denote the article to which it was affixed, it could not have been sustained as a mark of commerce. It was a newly-coined arbitrary term, and a symbol not understood, unless by its association with a particular article of merchandise.

§ 222. Many authors, judges, and lawyers have cited Gout v. Aleploglu, to show that an ordinary word in a foreign language, meaning warranted or approved, may be a trade-mark. They err in so doing. This case, heard in 1833 in England, seems to have been as follows: The plaintiff, Gout, had long manufactured watches for the Turkish market. These watches had acquired great repute in Turkey, and were known by certain marks engraved thereon. These marks consisted of words in Turkish characters, viz., the name of the maker, and the name "Pessendede," which in the Turkish signifies warranted or approved. There were also other marks: "R. G." and a crescent put in relief, and a sprig and crescent. Now it would be folly to say that the word Pessendede, which had no use except in the market to which the watches were sent, and which was of no use elsewhere, could be exclusively appropriated. The word might with truth be used by many fair dealers for its legitimate purpose; and, being a common word expressing quality, no one could claim it to the exclusion of all others. We must look closer, and ascertain the facts.

6 6 Beav. 69.

§ 223. In 1831, the defendant applied to the plaintiff to manufacture watches to be consigned to Constantinople; but conceiving that he might thereby injure his agent there, the plaintiff refused to execute the order. Subsequently, the defendant got the Messrs. Parkinson to manufacture watches for him. On these were engraved, in Turkish characters, the words "Ralph Gout," and "Pessendede," on the same parts of the watches as the plaintiff used for that purpose. The defendant then sent them to Constantinople, and sold them, to the injury of the plaintiff's trade. We see that he simulated the name of the plaintiff, in addition to copying a word that had doubtless become associated with the article. It was a part-imitation of the plaintiff's lawful commercial sign. The initials R. G., the crescent in relief, and the sprig and crescent, were omitted by the pirate, but he took enough of the plaintiff's mark to enable him to accomplish his object, which was to divert another man's trade into his own channel. The Vice-Chancellor granted an injunction, restraining the defendant from sending, or, permitting to go to Turkey, or to any other place, and from selling and disposing of any watches with the name of the plaintiff thereon in Turkish characters, or the word "Pessendede" in Turkish characters, or any watches in imitation of the plaintiff's watches; and also restraining Aleploglu and the Messrs. Parkinson from manufacturing or vending such watches. In non-legal language this means just this, and no more: The defendant must discontinue his piratical tricks. He has imposed upon the public, and by his fraudulent acts has damaged the plaintiff by a part-imitation of his commercial marks. He cannot escape by mere evasion. But the court did not decide that the Turkish word "Pessendede" was a trade-mark.

§ 224. In the Tribunal of Commerce of the Seine, in 1861 (Abadie & Co. v. Proudhon & Co.1), the plaintiffs showed that they made in a particular manner cigarette-paper, called by them "PAPIER DE RIZ." This paper they put into the market

1 Annales de la Prop., tome vii. p. 95.