ficial compounds, or products, originated by the science, or skill, or diligence of man; and that this water, not being the creation of man's skill or industry, but being the gift of nature to all, no one could bottle and name the elements, and claim. exclusively the new appellation by which they have become known in the market. It was said by counsel that one might as well bottle the pure air of the mountain, and prevent another from selling the same air by the same name. A preliminary injunction having been dissolved at special term by Rosekranz, J., the plaintiff appealed to the general term, which affirmed the action of dissolution. James, J., in rendering the opinion of the court in banc, said that he was not aware that the question of the application of the law of trade-marks to names given to spontaneous or natural products had, prior to that time, ever come before the courts for adjudication; and that, in all the cases, the principle of the law is stated and restated, as applicable to protect the skill, industry, and enterprise of mechanics, manufacturers, and inventors, and hence only applicable to artificial products. He seems to have excluded from consideration the idea of commerce, which may deal in commodities with which the skilled industrial classes have nothing to do; and which, although natural products, as coal, marble, or animal deposits, like guano, have distinctive marks entitled to protection. The case went to the highest court. The true principle involved had by that time become clearly apparent. § 147. The Court of Appeals considered these two questions: 1. Can the owner of a peculiar product of nature be protected in the exclusive use of a name belonging to it alone, and employed by him as his trade-mark in the sale thereof? 2. Does the name or trade-mark used in the case before us by the plaintiffs indicate the origin, ownership, or place of that product, and is it one in the exclusive use of which the plaintiffs should be protected? The court, by Folger, J., said, inter alia, that here is a particular article of which the owners. It is a matter If one use the of this spring possess the only source, and which can be had only from them. The violation and the wrong are the same whether the commodity is one which the hand has made, or which Nature has put into the hand of man. Certainly so, if into the hand of but one man has it been put. of property, and the profitable use of property. name of another for the purpose of securing to himself, in the disposition of property, advantages which belong to that other, the fraud is complete, and the remedy ought to be complete. By the application of capital, business sagacity, and enterprise, this spring and its products have become extensively known, and favorably received. When one wishes for the medicinal water which he has used before, he inquires for it by its specific name. And it is this name, the trade-mark of the plaintiffs, which is the short phrase between buyer and seller which indicates the wish to buy and the power to sell water from that origin, that place, of that ownership. This phrase, this device, is the trade-mark of the plaintiffs, and is of value to them, as thus designating the verity of its origin. They have the right to be protected in its exclusive use, for none other can use it with equal truth, and none other has equal right to employ it for the same purpose. Held, the words "Congress Water" are, under the circumstances set forth, a valid trade-mark indicating origin, and also ownership. The judgment below was reversed, with costs, and a new trial ordered. § 148. In Falkinburg v. Lucy, before all the justices of the Supreme Court of California, in 1868,1 the court said that the owner of a mark would be protected in its exclusive use, but only so far as it serves to indicate the origin, or ownership, of the goods to which it is affixed, to the exclusion of such symbols, figures, and combinations of words which may be interblended with it indicating the name, kind, or quality of the article. In this case, the plaintiffs claimed the entire label as their 1 35 Cal. 52. trade-mark, and asked to be protected in the use of it as a whole. The court said: "Only so much of their label as serves to indicate that they are the manufacturers or vendors of the washing-powder can be considered as constituting the legitimate characteristics of a common-law trade-mark." The symbol must tell its own story. It does not serve its intended and true purpose until associated with a certain person or article. In Filley v. Fassett, before the Supreme Court of Missouri, in bane, in 1869, it was held that the words. "Charter Oak," cast on cooking-stoves, were sufficient to point out the true source and origin of the stoves, and were therefore possessed of the requisite characteristics of a trademark. In Fetridge v. Wells, in 1857,2 Duer, J., held that the words"The Balm of Thousand Flowers"- might suffice for this purpose, unless, of course, they were descriptive or fraudulent. Boardman v. The Meriden Britannia Co., in the Supreme Court of Connecticut, in 1868,8 fully recognizes and enunciates this doctrine. § 149. As an instance of the disagreement of judicial minds as to what in contemplation of law constitutes indication of origin, we will cite Ferguson v. The Davol Mills, in the Common Pleas of Philadelphia, in 1868.4 The facts are briefly these: More than thirty years before, the complainants devised, and ever since used for certain goods, known as silesias or bleached and dyed cotton twillings, a certain mark, which consists of a circular label with the letter "K" in the centre, which letter is surrounded by plain lines and ornamental tracings, extending outward from the centre, and having nothing on it except the printed letters "No." at the top, and at the bottom of the same space the letters "Yds." By long use this mark had become identified with the said goods, and the goods came to be known in the markets of the world, and to the trade everywhere, by the said mark, and are 1 44 Mo. 173. 335 Conn. 402. 2 4 Abb. Pr. R. 144; 13 How. Pr. R. 385. known and called by the name of the "K" silesias. The defendants manufactured and offered for sale goods similar in appearance, but greatly inferior in quality to the complainants' "K" silesias, put up in wrappers similar to theirs, and a counterfeit of their label and mark. The defendants asserted that the use of the letter "K" and accompanying device, as printed by the complainants and pasted on their goods, did not constitute a trade-mark such as the law will protect. Allison, P. J., said: "The device and letter K,' which constitute the alleged trade-mark, have no name, words, signs, marks, by which in any possible manner or degree the origin or ownership of the silesias manufactured by the complainants are indicated, or the place of sale or manufacture pointed out, to distinguish them as the goods manufactured or sold by the complainants. And, failing in this, it follows that this application for an injunction cannot be granted. And this will justify itself when it is remembered that these circular lines and spaces, and intervening ornamental tracings and letter 'K' in the centre, with elliptical cross lines upon its face, affords no protection to the public against imposition by the complainants from the sale of a spurious or inferior article of silesia. They could flood the market with such inferior article, stamped with what they call their trade-mark, and the public would be wholly unable to ascertain who had manufactured and sold the goods. Protection is given only in consideration of the guaranty of the integrity of the manufacturer or merchant, certified by his trade-mark. When the device fails to accomplish this end, it is no trade-mark, and all claims founded thereon must be rejected. The simplest case of a trade-mark is the name and address of the claimant ; and it is absolutely requisite that a device or symbol should perform the office of a finger-board: should indicate the name and address of the manufacturer, to invest it with the attributes, and entitle it to the protection, of a trade-mark. The device of the complainants does not contain, within itself, a declaration to the public that Ferguson Brothers are the manufacturers of the silesias stamped with their device: it points to any other person as clearly as to them, and therefore it is obvious that the Davol Mills, or Fales, Wharton, & Co., in imitating this device and placing it on an article of silesias of their own manufacture and sale, have committed no legal wrong of which Ferguson Brothers have any right to complain. The morality of the use by them of the simulated label is another question; for simulated it is, beyond all doubt, so much like the original as to be scarcely distinguishable from it." Injunction refused. § 150. This decision is sui generis. The course of reasoning of the learned judge does not commend itself to any calm, thoughtful intellect. With all due deference to the opinion of Judge Allison, criticism is imperatively demanded; for it is the emanation of a respectable tribunal, and cannot be silently acquiesced in without positive injury to the cause of justice. It has been quoted in more than one case by counsel driven to desperate shifts, and has been strenuously urged as an authority. He has said that the device of concentric circles enclosing the letter "K" does not in any possible manner or degree indicate origin or ownership. Why not? Because, said he, the place of sale or manufacture is not pointed out; and he intimated that the device, to be a valid trade-mark, should contain the name and address of the claimant. If so, how could a great number of symbols reported in adjudicated cases have been recognized as perfectly valid, when those symbols were no more expressive than that under discussion? As instances, consider the distinctive names and designations "Excelsior," "Climax," "Empire," "Charter Oak," which were deemed perfectly good trade-marks for stoves; the word "Excelsior," for soap; 2 "Ethiopian," for stockings; "Cocoaine," for hair-oil; 4 "A C A," which the court virtually held might be a valid trade-mark. 2 9 L. T. R. (N.S.) 199. 3 10 Jur. 106. 5 2 Sand. S. C. 599. 1 44 Mo. 173. |
