
    Jeremiah Curtis, George N. Curtis and J. W. Curtis v. James Bryan.
    Equity will restrain a person from fraudulently using another’s trade-mark, and from imposing Ms goods thus trade-marked upon the public.
    One who in and by his trade-mark makes representations which deceive the public cannot ask a court of equity to restrain the use of such deceptive trademark by another. But a mere false or exaggerated statement in a public advertisement of the manufactured article, tending to recommend its use,to the public, will not deprive the owner ofia right to be protected in the exclusive use of his trade-mark.
    One who has fraudulently imitated the trade-mark of another, and offered for sale his own goods as those of the owner of the trade-mark, cannot be heard to raise the objection that the latter’s goods are injurious to health.
    Appeal from an order made at special term, denying a motion to dissolve an injunction. The facts in this case appear in the opinion of the court.
    
      Hatch & Hinsdale, for appellant.
    
      Sherwood & Howland, for respondents.
   By the Court.—Van Vorst, J.

Previous to the year 1844, Mrs. Charlotte N. "Winslow prepared a composition for children teething, which she used with success. In 1844, she gave the recipe to her son-in-law, Jeremiah Curtis, one of the plaintiffs in .this action, who commenced its manufacture and sale, under the name of Mrs. Winslow’s Soothing Syrup,” and with the approval of Mrs. Winslow, made that his trade-mark. Afterward Jeremiah Curtis associated with himself in business Benjamin A. Perkins. Curtis and Perkins, from and after the year 1845, prepared, manufactured and sold the preparation under the same name and trade-mark. Before the year 1852, they used a wrapper and label generally resembling that now in use. In 1852, they invented a wrapper, which has been continued from that time to the present.

In the year 1855, Perkins retired from the copartnership, and George Newman Curtis, and Jeremiah W. Curtis, with the plaintiff Jeremiah Curtis, became the proprietors of said article, title, and name, and are the present proprietors of the recipe for the medicine, and the trade-mark.

The preparation is put up in glass bottles, about five inches in length, and one inch in diameter, with the words Mrs. Winslow’s Soothing Syrup ” stamped upon them. Each bottle has on it a label in the English, French, German, «and Spanish languages, and is inclosed in a wrapper of yellow paper, with the Government proprietary revenue stamp of the plaintiffs thereon. Each label has on it two vignettes, and the words “ Mrs. Winslow’s Soothing Syrup, for children teething.” The plaintiffs claim, that the preparation is made of pure materials, and with great care; that they have made efforts, during many years, to introduce the preparation into general use in the United States, and foreign countries ; that they have expended in such efforts, and in advertising, eight hundred thousand dollars, and have caused it to be generally known by its distinctive name. Plaintiffs claim that the Sales of the article, under its peculiar name and title, have at all times steadily and rapidly increased, so that they sell over one million and a half bottles annually, and their annual receipts exceed $300,000. The preparation is well and favorably known in New York, and is purchased at wholesale hy druggists, chemists, and apothecaries. It appears, hy the evidence, that the medicine has given satisfaction, and has the reputation of being a safe and valuable preparation.

The defendant in this action, since the first day of January, 1867, has commenced the manufacture of a preparation, in color and appearance resembling that of the plaintiffs, under the name of “ Winslow’s Soothing Syrup, for children teething.” Defendant’s mixture is put up in glass bottles of nearly the same length, and of the same diameter, as those used by plaintiffs, with the words Mrs. H. M. Winslow’s Soothing Syrup ” stamped upon them. The label on the defendant’s bottle is of the same size, color, and style of printing as that of the plaintiffs. The printing on the label is in the English, French, German, and Spanish languages, and is in the same words as those on the plaintiffs’ label. The bottle of the defendant is inclosed in a wrapper of paper, with a stamp thereon, having the general appearance and style of the revenue proprietary Government stamp of the plaintiffs, and has figures resembling plaintiffs’ engraved thereon. The defendant having thus prepared his article, has introduced same for sale, and is selling same, under the name of “ Winslow’s Soothing Syrup.”

Except there be some legal justification for his acts, the defendant, under the well-settled principles' as clearly and repeatedly announced by courts of equity, is infringing upon and invading the plaintiffs’ rights. A trade-mark is property, and the proprietor thereof should be fully protected in its enjoyment, and in all the benefits and advantages which it confers. It is well settled by the determination of the courts of this country, and the English and French law is the same, that a person may, by priority of appropriation of names, letters, signs, figures, or symbols of .any kind, to distinguish his manufacture, acquire a property therein as a trade-mark, for the invasion of which an action will lie, and in the exclusive use of which he may have protection by injunction (Amoskeag Manufacturing Co. v. Spear, 2 Sandf. 599).

The defendant could have had but one object in so closely imitating the article prepared by plaintiff. His use of a bottle similar in size and form; his use of the labels in the different languages, and in the same words; the adoption of a stamp similar to that used by plaintiffs, and his selling his article under the name of “ Winslow’s,” or “ Mrs. JET. M. Winslow’s Soothing Syrup,” all clearly demonstrate that he designed to take advantage of the reputation which the plaintiffs had, by large expenditures of money, and great and persistent efforts, established for their article. It is quite evident that the defendant would seek to avail himself of, and turn to his own account, the labor and expense which the plaintiffs have borne for years, to bring their article into favorable notice and general use. By the arts he'used, defendant would have the public believe that the article he was selling was the plaintiffs’, and he would dispose of it as such.

Courts of equity do not regard with favor such practices, and will restrain a party from indulging in them. The direct consequences of the defendant’s acts is to deceive, and a party is presumed to intend the consequences of his acts.

The imitation of the plaintiffs’ trade-mark is so close, and the manner in which defendant’s article is put up so nearly resembles the plaintiffs’ article and mark, that the law must presume it to have been resorted to for the purpose of inducing the public to believe the article is that of the plaintiffs, whose trade-mark is imitated, and for the purpose of supplanting him in the good-will of his business (Taylor v. Carpenter, 2 Sand. Ch. R. 611, 612; Millington v. Fox, 3 Myl. & C. 338).

In Amoskeag Manufacturing Co. v. Spear (supra), the court says: “An injunction ought to be granted whenever the design of a person who imitates a trade-mark, his design either apparent or proved, is to impose his own goods upon the public as those of the owners of the mark; and the imitation is such that the success of the design is a probable, or even a possible, consequence.”

But the case is relieved of all doubt as to the intention of the defendant in so preparing, putting up, marking, and introducing his article. The proof shows clearly that defendant stated at the time that the stamp he had placed on his bottle was intended to imitate the Grovernment stamp upon the plaintiffs’ article, and that he intended to procure a Government stamp like the one used by the plaintiffs, .and that he also expected toisell his article on the demand made, and the advertising done, for Mrs. Winslow’s Soothing Syrup,” by Jeremiah Curtis & Sons. To justify the use by him of the name of Winslow,” in connection with the article introduced by him, the defendant claims that a variety of soothing syrups prior to 1843, called “ Winslow’s Soothing Syrup ” for children, was manufactured, prepared, and sold by John M. Winslow, a druggist of the city of Rochester, and that printed circulars bearing the name of such medicine were extensively circulated through the Northern States. The defendant avers, In his answer, that he purchased the formula of his remedy from John M. Winslow, on the 20th of March, 1867. That John M. Winslow is the original and first manufacturer of a similar medicine, bearing his name as originator. That as early as 1842, Winslow invented, and used his name in connection with the medicine.

I am entirely satisfied that this claim of the defendant, under the proofs in the case, is wholly unfounded, and is fraudulently put forth.

[After reciting the evidence tending to prove that the defendant’s claim to a prior use of the trade-mark was unfounded, the court proceeded :]

The defendant, in his answer, sets up two other matters of defeuse to the plaintiffs’ action.

The first, that the advertisement of the plaintiffs, in respect to their medicine, is false ; that in the notices which the plaintiffs have given in the public prints, of them “compound, they have made statements which are not true. It is well and clearly established'that if a person, in and by his trade-mark, makes representations which deceive the public, he cannot appeal to the equitable interposition of the courts in his own behalf for protection in the exclusive enjoyment of such false trade-mark.

It was so decided in Fettrich v. Wells (13 How. Pr. 385), which was a case in which the plaintiff endeavored to restrain the defendant from imitating and using his trade-mark. The plaintiff was manufacturing and selling an article of liquid soap, compounded of palm oil, potash, alcohol and sugar, highly scented, under the name of “ Balm of a Thousand Flowers.” The name itself contained a falsehood, and was used to deceive the public. (Florell v. Harrison, 19 Eng. L. & Eq. R. 15; but see Holloway v. Holloway, 13 Bea. 213; Stewart v. Smithson, 1 Hilton, 119.) But in all these cases, the fraud appeared in the trade-mark itself. I cannot understand how the right of a plaintiff to be protected in a trade-mark adopted by him is to be affected by advertisements of his article in the newspapers. The trade-mark is one thing, the notices or commendations of his medicines, when the inventor offers them for sale, is quite another. If the trade-mark contained a false statement, and the advertisements of the plaintiffs tended to establish it, they might be used for that purpose; and, except as it bore on that question, it would not answer to determine the right of a plaintiff to protection in his trade-mark by the standard of credit allowed to an advertisement of the qualities of the article.

The advertisement particularly criticised is in these words: Mrs. Winslow, an experienced nurse and female physician, presents to the attention of mothers her Soothing Syrup.” The .objection is, that the advertisement holds out the idea that Mrs. Winslow is still living, and herself offers the medicine, whereas the truth is, that she has been for many years dead. And furthermore, the defendant denies that she was, in her lifetime, an experienced nurse and female physician. Neither of these statements, whether true or false, affect the trade-mark one way or the other. If they are not true, they do not impeach or throw any discredit upon it. But with respect to the advertisement itself, while it is not literally true that Mrs. Winslow presents the medicine herself, still the fact is, that she did, in her lifetime, prepare the formula for the preparation, and did reduce it to practical use, and did transfer the same to her son-in-law, Jeremiah Curtis, and did acquiesce in and ad,opt the use by him of her name in connection with the mixture, and her name properly indicates its true origin. The names of the plaintiffs, as the present proprietors of the- article, are plainly printed on each package, which clearly avoids all appearance of deception.

The case does show clearly that Mrs. Winslow was an experienced nurse, that she was shilled in the cure of the diseases of women and children, and that she acted in and conducted a certain class of cases herself as a female physician.

The other defense interposed by the defendant is, that the medicine is not what by the advertisement it purports to be— that it is not perfectly safe or harmless, but, on the other hand, it contains ingredients which are injurious and baneful to children.

It is difficult to conceive upon what principle of equity this defendant should be heard to raise this objection. His own conduct in regard to the subject-matter is an unequivocal concession to the goodness and value of the plaintiffs’ article. He interposes this objection, to avoid an injunction which restrains him from imitating the plaintiffs’ article. After the plaintiffs’ preparation had been in use for nearly twenty-five years, its sale having steadily increased during all that time, the'defendant appears, and places upon the market an article which, by the practices and arts to which he has had recourse, he would have the public purchase as the plaintiffs’ article.

If the article was not a good one, why should the defendant imitate it ? If it was injurious to health, it is not reasonable to suppose that a prudent man would venture to introduce a similar article under the same name, and hope to succeed.

The defendant has not supported his charge by any proof or chemical analysis of the compound by any expert. On the other hand, the plaintiffs say that the composition of their article is a valuable secret, which they possess, and intend to preserve. They deny that the composition of the article is truly set forth by the defendant. They aver that it is made of pure materials, and is carefully prepared. Plaintiffs have also produced affidavits of thirty druggists and apothecaries of the city of New York, and several persons from other places, who have been engaged in the sale of plaintiffs’ medicines for many years past, some of them as long as fifteen years, and they concur in stating that the plaintiffs’ preparation has been • well and favorably known in the drug trade during all the time in which they have been engaged in selling it; that it has given universal satisfaction to the public, and has a very high reputation as a safe and valuable medicine.

Experience is an excellent teacher, and the fair trial of an article will furnish unerring evidence of its worthlessness or value. It is obviously true that if a medicine can stand the test of twenty years of experimental use, and grow steadily and constantly in favor, its properties cannot be injurious. But, as before observed, the good faith of this defendant, in raising the objection, may reasonably be questioned, and I am satisfied that it does not lie in his mouth to make it. If a man’s acts are any indication of his belief, on any subject, the conduct and admissions of the defendant constitute a complete refutation to this objection. A man’s faith is shown by his works.

The defendant is now properly restrained from using or interfering with the plaintiffs’trade-mark. The order of Judge Brady, denying the motion to dissolve the injunction, from which this appeal is taken, is affirmed, with costs.  