
    WILLIAM H. POPHAM, Plaintiff and Respondent, v. WILLIAM J. WILCOX, and Others, Defendants and Appellants.
    Before Feeedman, Van Yobst, and Speib, JJ.
    
      Decided December 9, 1874.
    Teade-Maek.
    In the case at bar, plaintiff and defendants were refiners of lard, and packed the same for market, in tin vessels, each of which bore the figure of a pig, or swine, with the words, “Trade-Mark,” stamped in the metal. The plaintiff claimed this device or design of a pig, or swine, to his exclusive use, as a trade-mark to be placed upon packages of refined lard made by him, and that defendants be enjoined and restrained from using such device and design.
    It appearing, from the evidence:
    1. That, although the plaintiff claims to have used this design for fifteen years, yet, on the witness-stand, he could not tell who invented the device for use, on either crude or refined lard.
    2. That, since 1845, the figure of a pig or swine had been extensively used on packages of natural or crude lard, by many persons; and, since 1856, on packages of refined lard packed in wooden vessels; and that, from 1860 to 1868, one Brewster, a refiner, used the said device on tin boxes, although not stamped into the metal of the packages; and, for a long time past,Am 'packages had been used by the trade, for packing and shipping refined lard.
    
      Held, that these facts establish in the plaintiff no exclusive right to the use of the figure or device of a pig, or swine, on tin packages of crude or refined lard. There is nothing, either in the device itself, or in the combination in which it is or has been used by the plaintiff, which gives him any exclusive right to the same.
    Sfeie, J., differs widely from his associates in conclusions of fact and law. (See dissenting opinion.)
    Appeal from judgment.
    
      At the time of the commencement of the action, both plaintiff and defendants were, and they still are refiners of lard in the city of New York, and largely engaged in that business. The action was brought to restrain an alleged violation by defendants of plaintiff ’ s trade-mark, and for damages. The said trade-mark consisted of a device or mark, in a circular or semicircular form, containing the figure of a pig or hog, and the word “trade-mark” adjoining the same, and in addition thereto, the plaintiff’s name and place of business, and the name of the article, viz: “prime leaf-lard.” The answer contained a denial of the plaintiff’s exclusive right to use the device of a hog or swine upon packages of lard, and also a denial that the brand used by defendants is in any manner an imitation of plaintiff’s, or in any respect calculated to deceive or mislead the public.
    Upon the trial at special term, the plaintiff had judgment, and defendants appealed.
    
      Luther R. Marsh, counsel for appellants.
    
      S. F. Cowdrey, counsel for respondent.
   By the Court.—Freedman, J.

On the motion for the continuance of the injunction during the pendency of the action, it was held (14 Abb. Pr. N. S. 206), that, for the purposes of that motion, it sufficiently appeared that the plaintiff had the right to the exclusive use of the device adopted by him as a trade-mark. The rights of the parties were thereupon determined as they appeared by affidavit, and I have no hesitation in saying that in my opinion they were correctly determined upon the proof then before the court. Consequently, if the proof given upon the trial established the same facts, as appeared on the motion, and no others, the judgment should be affirmed.

But the oral testimony given upon such trial, materially changed the case previously made by the1 plaintiff.

The following facts then appeared a,nd were found' by the learned j udge who tried the cause, viz.:

I. For more than twenty-five years past, dowm to this action, large quantities of lard, in a crude or natural state, have been sent from other parts of this-country, especially from the west, to this city, and here-dealt in as articles of trade and commerce ; and during-that time there has been, in the city and neighborhood,, a business of refining such crude or natural lard. The-product of such business was, among other names, called refined lard. Refined lard is whiter and harder than crude or natural lard, and better fitted to be sent-to hot climates; but refining does not change its appearance, except to the eye of an expert. It had a, better price in market. The principal market for refined lard has been in California, the West Indies, and the western coast of South America. Down to about the year 1861, the business of making refined lard was-small; but since that time it has greatly increased, and become important. The best quality, both of crude-lard and of refined lard, has been commercially known, as prime leaf lard ; but the business of dealing in crude- or natural lard is a different one from that of making and dealing in refined lard, and the former is, in general, carried on separately from the latter. During that time, the commercial demand, here, for refined lard, has been for the purpose of shipping it to or througk tropical climates; and of crude lard, for the purpose of supplying other markets. Refined lard has been packed, for exportation, in tin and wooden vessels, but much larger quantities in tin than in wooden vessels.

II. The plaintiff has been, for fifteen years before this action, in the business of making and selling re' fined lard, and during that time has, in that business, packed the lard made by him for sale, in tin cases and pails, and in wooden kegs, tubs, barrels, and tierces, -and habitually and generally stamped or painted upon such packages a figure of a swine, together with words showing the quality of the lard: “Pig Prime Leaf Lárd,” and his name and place of business. This figure, thus used by the plaintiff, is so shaped as to represent a domesticated swine, pig, or hog.

III. In the years 1856 to 1861, both inclusive, Mr. Johnson, in this city, was interested with, first, Mr. Bird, then Mr. Robins, and finally Mr. Brewster, in the business of making and selling refined lard. In such business, the refined lard was packed for sale in tin oases and pails, and kegs, tubs, barrels, and tierces; and, upon the wooden packages, the persons specified used, in connection with their names and the words, showing the quality of lard, the figure of a pig or hog, the same being painted or stenciled upon the wood. In 1865 or 1866, the defendants, at the request of a merchant in Liverpool, who, from time to time, bought from them quantities of refined lard, painted or stenciled upon the wooden vessels, in which the lard was shipped, the figure of a pig or hog. In 1861 or 1862, a •quantity of refined lard was, by some person in Boston, offered for sale in New York, and twelve caddies of such lard was sent to this city. The caddies were wooden vessels; upon them was placed a figure of a pig or hog, on silvered paper. The figure of a pig or hog has not been used, in the trade, upon tin vessels containing refined lard. '

Upon these findings, the exclusive right of the plaintiff to the use of said figure, should at least have been confiped to its use on tin vessels; and consequently the judgment grounded thereon, which secures to the plaintiff the exclusive right to the use of said figure -upon all kinds of packages of refined lard, is too •broad, in any aspect of the case.

The next question, therefore, is whether the plaintiff acquired an exclusive right to its use on tin vessels. He claims to have used it for fifteen years; but, on the witness-stand, he could not tell who invented the device for use, either on crude or refined lard.

The evidence establishes that, since 1845, the figure of a hog or swine has been extensively used, on natural or crude lard, by many persons, as a portion of, or in combination with their brands ; that, since 1856, it has been extensively used on refined lard, packed in wooden vessels; that, for a long time past, refined lard has. been and is still shipped, by the trade, to the- South American and other foreign ports, as well in tin as in wooden packages; and that, from 1860 to 1868, Amos H. Brewster, as a refiner, used the said figure or mark on tin boxes, though not on the tin packages themselves.

From these circumstances, it is evident that the plaintiff can have no exclusive right to the use of the figure of a pig or swine, on packages of natural or crude lard, nor to its use on wooden packages of refined lard; and that the defendants can not be restrained from its use on such packages. Nor can the defendants be enjoined from refining lard, or from putting it up in tin packages. Consequently, a judgment which secures to the plaintiff, exclusively, the right of the use of the device on tin packages, would not protect the plaintiff' so much in the use of his trade-mark, as in the manner of its use. It would be the vessel on which it is used to which the protection is really extended. But tin vessels were and are in common use, by the trade, for packing refined lard, and the vessels used by the plaintiff for exportation were, by the learned judge below, found to be of the same shape and size as those in common use ; from which fact, the inference may be fairly drawn that they are common merchandise, that can be readily bought, by all dealers, in open market.

There is nothing, therefore, either in the figure itself or in the con) bi nation in which it is used by the plaintiff, which gives the plaintiff an exclusive right.

The judgment should be reversed and a new trial ordered, with costs to appellant, to abide the event.

Yak Yokst, J., concurred.

Speir, J. [dissenting].

I think the learned judge, who heard the cause, was justified in finding that the appearance of the swine, as used by the defendants,— by which I understand his device,—was such as that it was likely to lead a part of the purchasers of refined lard in the market, who had seen plaintiff’s mark, and giving the attention usual in the trade, to mistake 'the mark, of which the swine was a part, for the trademark used by the plaintiff. Especially was it likely to mislead persons who had not seen the plaintiff’s trademark, and asking for his Pig Brand, and also persons in a foreign market asking for “Marcha Chancho,” or Pig Brand, to believe that the refined lard, put under defendant’s mark, was of the kind asked for.

Upon an attentive examination of the evidence, I do not find that any of the parties engaged, excepting the defendants, in the trade of buying or selling crude or refined lard, or engaged in the business of refining lard, used or adopted, at any time, this device of the plaintiff, as a trade-mark. The figure of the pig had been, by itself, used frequently by different parties engaged in the business. Formerly, this trade was limited to dealing in lard in the crude or natural state; while the business of refining lard has been only extensively carried on within the last few years. The figure of the pig was not connected with any symbol or device, nor was it claimed as a trade-mark until so claimed and appropriated by the plaintiff. It was generally used by painting or stenciling it on the heads of all kinds of -wooden vessels, or on silvered paper; but in no instance, in any manner, connecting it with a device at all resembling the plaintiff’s. The plaintiff had been exclusively in the use of his device, as a trade-mark, for ¡some fifteen years, and up to the time the defendants were restrained from simulating it; and during that time it had become generally known and distinguished from the refined lard made by others, and had commercially acquired the name of Popham’s Pig Brand, or the Pig Brand; and, in the foreign market, by the name of “Marcha Chancho.” By whom the symbol was invented or designed, is not material; it is enough .that the plaintiff has, by the appropriation of the device, acquired a property in its exclusive use. Under the circumstances, the attempt of the defendants to produce a general resemblance of the device in shape, size, color, material, and lettering, leads to the inference that it was done with the bad intent of invading the plaintiff’s rights.

The figure of the pig alone, without the device, or the shape, size, style, or material of the vessels upon which the figure alone was placed, do not, in my judgment, determine the rights of the parties. It -is the whole symbol appropriated by the plaintiff in his business, as his trade-mark, which has secured to him a property by his exclusive use, which the court protects .against all trespassers.

I am in favor of affirming the judgment, with costs.  