
    Charles Schendel et al., Resp’ts, v. Samuel Silver et al., App’lts.
    
      (Supreme Court, General Term, First Department,
    
    
      Filed February 18, 1892.)
    
    1. Trade-mark. •
    A trade-mark may be acquired in the words “ nickel-in ” to designate a. brand of cigars, as such combination is not in any manner descriptive of the article, does not denote its grade or quality, and is purely arbitrary and fanciful.
    2. Same —Infringement.
    The owner of such trade-ihark is entitled to be protected against the use* of the words “ Nickel-saved ” by another manufacturer where it appears that his devices have also been simulated and the public has been deceived.
    Appeal from judgment entered after trial at special term.
    
      Marshall P. Stafford, for app’lts; Benedict S. Wise, for resp’ts.
   Van Brunt, P. J.

This action was brought to restrain an infringement of a trade-mark. The respondents were manufacturers of cigars, doing business in the city of New York. In July,. 1889, they adopted as the designation of the brand of cigars which, they manufactured the words, “ Nickel-In.” This designation, appeared prominently in their places of business, and was affixed to their packages and impressed upon their boxes.

In the year 1890, one of the defendants, in conjunction with others, opened a cigar store in Brooklyn, which he called the- Nickel-saved ” cigar store. In this store the defendant copied the various devices of the plaintiff to attract trade, and also attached the words “ Nickel-saved ” as a trade-mark to his cigars. . The plaintiffs gave evidence upon the trial showing that persons had been deceived in purchasing the cigars manufactured by the defendant, supposing them to be those manufactured by the plaintiffs.

There can be no contention whatever that the adoption of the trade-mark, “ Nickel-saved ” bv the defendant was not in the hope that he might deceive the public into purchasing his cigars, supposing them to be those manufactured by the plaintiffs, and which had acquired a reputation. And the only question which it is necessary to discuss upon this appeal is as to whether the plaintiffs. can acquire a trade-mark in the combination of the words “ Nickel-In,” in connection with the manufacture and sale of cigars.

In the decision in the case of Selchow v. Baker, 93 N. Y., 59, it seems to us that the right to acquire such a trade-mark is clearly recognized. In that case it was held that the manufacturer who has invented a new name, consisting either of a new word, or of a word or words in common use, which he has applied for the first time to his own manufactures, or to articles manufactured for him, to distinguish it from those manufactured and sold by others, if the name be not generic or descriptive of the article and not used to denote grade or quality, but is arbitrary and fanciful, 'is entitled to be protected in its use, even though it has become so generally known as to be adopted by the public as -descriptive of the article.

In that case the plaintiffs had adapted the name of “ sliced animals ” to certain toys which they had manufactured and which represented various objects in detached pieces to be put together by the child using the toys, thereby forming the complete object. .And it was held that this was an arbitrary use of a word or words ■in common use, not at all generic or descriptive of the article, and which did not denote its grade or quality; and that, therefore, the plaintiffs could acquire a trademark therein. So in the case at bar the plaintiffs invented a combination of words in common use for the purpose of representing articles of their manufacture. These words were not in any manner descriptive of the article; neither did they denote their grade or quality, but were arbitrary and fanciful, and originated with the plaintiffs. This would seem clearly to entitle them to the protection given to trade-marks in the use of the name in connection with the manufacture of articles sold by them.

It is true that the name used by the defendants consisted of the words “Nickel-Saved.” But it is apparent that this combination was resorted to for the purpose of possibly escaping the. result of an infringement of a trade-mark, but being so near a resemblance "thereto as to deceive the public..

We think, therefore, that the plaintiff was entitled to be prdtected from this fraudulent invasion of the rights which he had acquired, and that the judgment appealed from should be affirmed, with costs.

O’Brien, J., concurs in result  