of each cake was attached an octagonal pink label, with the words printed thereon: "GENUINE YANKEE SOAP, manufactured at Manchester, Conn., by Williams & Brothers, Chemists and Apothecaries. To prevent counterfeits, their signature will be upon each cake." Upon the other side of each cake was attached another octagonal pink label, with the words printed thereon: "THE GENUINE YANKEE SOAP is warranted superior to any foreign compound for shaving and the toilet, affording a copious and heavy lather, which does not dry on the face, leaving the skin soft and smooth." And at one end of each cake was attached another pink label with the words in writing, or in resemblance to writing: "Williams & Bros." The said soap was put up in pasteboard boxes, containing one dozen cakes each, and each box was covered with a brown paper wrapper, with the words thereon: "One dozen Genuine Yankee Soap, warranted superior to any foreign compound for shaving and the toilet. Manufactured at Manchester, Conn., by Williams & Brothers, Chemists and Apothecaries. To prevent counterfeits, their signature will be upon each cake."

§ 121. It was alleged that the defendant manufactured soap of an inferior quality, put up in a style and manner precisely similar to the plaintiffs'; that it was cut up into cakes of the same size as those of the plaintiffs', each cake encased in tinfoil; and upon each cake were three labels of the same form as the plaintiffs'. Upon one were printed the words: "GENUINE YANKEE SOAP, manufactured at New York, by L. Williams & Co. To prevent counterfeits, their signature will be upon each cake." Upon another were printed the words: "THE GENUINE YANKEE SOAP is warranted superior to any foreign compound for shaving and the toilet, affording a copious and heavy lather, which does not dry on the face, leaving the skin soft and smooth." And upon the third were the words, in writing, or in a resemblance to writing: "L. WILLIAMS & Co." Each box was covered with a brown paper wrapper, with the words thereon: "One Dozen Genuine Yankee Soap, warranted superior to any foreign

compound for shaving and the toilet. Manufactured by L. Williams & Co., New York. To prevent counterfeits, their signature will be upon each label." Upon these several labels the arrangement of the lines, the form of the letters, and style of printing were, in almost every particular, an exact copy of the labels used by the plaintiffs. It was further alleged that the name of L. Williams & Co. was fictitious, and used to deceive.

§ 122. The defendant's answer denied that the plaintiffs had any exclusive right to use the designation "Genuine Yankee Soap," averring that that term described a particular style and quality of soap, and did not identify the person or persons by whom, or the place where, it was manufactured; and that the article known in the market by that name had been for years manufactured by different manufacturers of soap in different parts of the United States, and sold by that name, and could not be appropriated by the plaintiffs. It further denied that the name L. Williams & Co. was fictitious, or used as a colorable imitation, assimilating the trade-mark of the plaintiffs, and deduced the title of the defendant to its use from a firm of that name, who had assigned the business and name to the defendant.

§ 123. An injunction was granted at special term, restraining the defendant from " selling, or in any way disposing of any soap in boxes or otherwise, with labels or wrappers containing the words 'Genuine Yankee Soap' printed or written thereon; and from advertising, selling, or offering to sell, any soap whatever (unless the same has been manufactured by or procured from the plaintiffs), as and for the Genuine Yankee Soap,'" &c. From the order so made, the defendant appealed.

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§ 124. In delivering the opinion of the court in banc, Woodruff, J., said: "The defendant is engaged in a gross and palpable endeavor, by imitating the marks and labels used by the plaintiffs, to deceive the public, and obtain patronage which would in all probability be attracted to the plaintiffs. This the defendant is doing, not only by closely imitating the plaintiffs'

marks and labels, but by falsely representing his soap as a Yankee manufacture, and made by persons named Williams, when, in truth, it is made in the city of New York by the defendant, William Johnson." After characterizing the acts of the defendant as a fraud upon the plaintiffs, the learned judge said of the latter: "They have adopted, in reference to their manufacture (of an article which any and every one may manufacture and sell, if he please), a form and size of cake, a particular mode of covering and packing, a combination of three labels on each cake, an exterior handbill upon the box, and have so arranged the whole as to suggest to any one desiring to purchase their soap, upon an inspection, that the article is theirs, and made by them, like that heretofore made, sold, and known as their manufacture. All this the defendant has copied, with an exactness which is calculated to deceive even the wary, much more to entrap those who are not in the exercise of a rigid scrutiny. It is true that the defendant has put upon his labels New York as the place of manufacture, and L. Williams & Co., instead of Williams & Brothers, as manufacturers. But the latter designation imports a falsehood, and tends rather to create than destroy the impression. that the soap is made by the plaintiffs; and the use of the word New York, in its obscure printing, if it be read, falls far short of suggesting to the public that it is not the soap manufactured by the plaintiffs. Whether upon taking the proofs in the cause it will appear that the particular words, Genuine Yankee Soap,' are to be deemed descriptive of the kind of soap which any one may make and sell by its proper name, or are terms properly designating the plaintiffs' manufacture, and so to be descriptive of their peculiar skill in making an article already in known and common use by its proper and only generic name-soap-is perhaps not free from doubt. is quite clear that so far as it indicates the place of manufacture, it is a fraud on the part of the defendant to use it. ... Without deciding whether the defendant may or may not use

It

either of the words 'Genuine' or Yankee' in any possible combination, we think it sufficient to say that he may not use the labels, or devices, or handbills which he is using, nor any other like labels, devices, or handbills used by the plaintiffs, as set forth in the bill of complaint, or any other similar labels, devices, or handbills calculated to deceive the public, or create the belief that the soap he sells is the soap made or sold by the plaintiffs under the name of Genuine Yankee Soap."

§ 125. A nutshell could contain this case, so far as trade-mark law is concerned. None of the words on the plaintiffs' labels are susceptible of being turned into trade-marks, except "Genuine" and "Yankee." The court did not decide their nature. It was not necessary so to do. We are warranted in going one step farther. Neither of those words can be made a trade-mark, nor are they such when combined.

§ 126. In the endeavor to ascertain the true nature of a trade-mark, we will examine The Leather Cloth Co. v. The American Leather Cloth Co. The plaintiffs' alleged trademark reads as follows: "CROCKETT INTERNATIONAL LEATHER CLOTH COMPANY, NEWARK, N. J., U. S. A. WEST HAM, ESSEX, ENGLAND," which words formed a circle. Within and near the top of that circle is the representation of an American eagle, with outstretched wings, and, over the eagle, the word "Excelsior." Below the eagle are the words: "CROCKETT & Co. TANNED LEATHER CLOTH. PATENTED JANY. 24, 56. J. R. & C. P. CROCKETT, MANUFACTURERS. + 12 YDS. +." Besides that, within the circle are two other similar crosses, and this character from the printer's font:---

§ 127. To enable a party to obtain the intervention of a court for an infringement of a trade-mark, he must first establish the fact of his having a trade-mark. He cannot apply that name to any thing that he chooses, despite its utter lack of suitableness for the purpose. The law will examine and apply the proper term of the thing presented. 1 11 Jur. (N.s.) 513.

Now, what is the essential constituent element of this stamp? Is it the eagle, the words, or both? We must not be misled by the application of the term trade-mark to the whole stamp, or label, even by a court. In the House of Lords, on appeal from the Lord Chancellor, Lord Cranworth said: "The plaintiffs' trade-mark, if trade-mark it is to be called, is contained in a circle. . . . Each of the trade-marks, it is true, as well that of the plaintiffs as that of the defendants, contains within its periphery an eagle, but not at all resembling each other. The rest of the device, if it is to be called device, consists merely of words intended to indicate the nature or quality of the article, the place of its manufacture, and the names of the manufacturers." Lord Kingsdown, in the same case, uses this language: "The plaintiffs' trade-mark, or what they call such," &c. It is undeniable that he used the term trade-mark to indicate the subject before the court; but it was not necessary to define that particular subject. The term was a convenient one by which to express the collocation of words and the eagle. The real question under consideration was, whether the defendants had been guilty of a fraud upon the public, in selling their goods as the plaintiffs'. The Lord Chancellor, whose decision was in process of affirmation, then rose to speak. His language, as to the matter of defining, relieves us from embarrassment. He saw the necessity of giving the alleged trade-mark its true name. He said: "I am satisfied that I assigned for my decision in the court below a ground narrower than I might have taken as the basis of that judgment. There were circumstances which induced me to think that it was necessary to consider the case from the particular point of view which I adopted, and having found that the ground was sufficient for the judgment which I gave, I did not enter into the consideration of the wider view of the subject, which has been so forcibly urged by my noble and learned friends. But, in truth, my lords, not only do I concur with them, but I am satisfied that I ought to have regarded this affix to the plaintiffs'