
    LAUFERTY v. WHEELER.
    
      N. Y. Common Pleas ; Special Term,
    September, 1882.
    Trade-mark.—Arbitrary Appropriation of Word.—Use of Corporate Name by Individual.—Violation of Patent Laws.
    The arbitrary use by a manufacturer, of a word which is in no way descriptive of the article produced, e. g., the word “ Alderney ” in connection with oleomargarine—where its use has originated with the manufacturer, and it has been first adopted by him, and forms an integral part of the label stamped upon all his goods—may be protected as a trade-mark.
    
    The fact that the words “patent Sept.” are stamped upon plaintiff’s goods will not deprive him of the right to protect his trade-mark, where it appears that an application for a patent for an improvement in the process of manufacture has been examined and allowed, and information given that letters-patent will be forwarded in the month of September.
    In such case, the manufacturer is also within the exception contained in the act of 1882—prohibiting the coloring of oleomargarine— which saves rights obtained by a patent, &c.
    The use by an individual, of a name such as would be appropriate to a corporation, is not a violation of any statute of the state, and will not deprive the person using it of the right of protection of a trademark upon which it is employed.
    Motion to continue an injunction.
    The plaintiff, Emanuel Lauferty, brought this action against Thomas Wheeler, The Alderney Manufacturing Company, and others, to restrain an alleged infringement of plaintiff’s trade-mark, and for an accounting for sales, and for damages. The complaint alleged in substance that the plaintiff is a manufacturer of oleomargarine in the city of New York, which for two years past he has offered for sale and sold in that city and elsewhere under the name, style and trade-mark adopted by plaintiff for that purpose in the month of August, 1880, of “Alderney Manufacturing Company Oleomargarine Butter. E. Lauferty, Proprietor.” That packages containing the oleomargarine so offered for sale and sold by plaintiff, have been marked and labeled with such device and trade-mark, which has also been used upon his business cards, letter-heads; bill-heads, brands and signs. That plaintiff’s oleomargarine sold under said trade-mark has become widely and favorably known and commands an extensive sale, and is known and spoken of by the public by terms of which the word “Alderney” is the distinctive feature.
    That defendants, with knowledge of these facts, and with intent to deceive the public, organized a corporation under the laws of this State for the manufacture and sale of oleomargarine under the a name practically the same as plaintiff’s said name and trade-mark, to wit: “Alderney Manufacturing Company.” That such corporation, defendant, thereafter commenced the sale of oleomargarine under that name and trade-mark, with intent to deceive the public, and to divert plaintiff’s business and the profits flowing therefrom. That defendants have been requested to desist from such infringement, but have refused to do so. The further facts sufficiently appear from the opinion.
    
      John N. Lewis (Coudert Brothers), for plaintiff.
    
      William, H. De Wolf and Theodore Fitch, for defendants.
    
      
       Compare Morgan’s Sons’ Co. v. Troxell, 11 Abb. N. C. 86 ; Howard v. Park, 21 Am. L. Reg. N. S. 644, 648, n.; and as to penal provisions, Penal Code, § 364, as amended by L. 1882, c. 384.
    
   Van Brunt, J.

The defendants in this action claim the injunction should be dissolved upon the following grounds:

1st. That the words u Alderney Manufacturing Company” never was the trade-mark of the plaintiff. 2d. That his use of these words was a violation of the statute and an attempt to mislead the public. 3d. That the plaintiff is carrying on his business in violation of the laws of this State in respect to the coloring of the oleomargarine manufactured by him. 4th. That he is violating the United States statute in having the word “ Patent Sept.” upon the goods sold by him when he has no patent. 5th. That the plaintiff could not acquire a trade-mark in the words, “ Alderney Manufacturing Company.” We will very briefly consider these propositions in their inverse order.

It is to be observed that the plaintiff in this action does not claim any right to the exclusive use of the words Manufacturing Co. as any part of his trademark, but limits his claim to the exclusive use of the word “ Alderney” in connection with oleomargarine. The papers in this case seem to show that the plaintiff has used this word in connection with the oleomargarine manufactured by him, that he originated it, that he first adopted it, and that it forms an integral part of the label stamped upon all the goods manufactured by him, different grades being marked by additional symbols. In respect to- oleomargarine, the use of the word “Alderney” is entirely arbitrary and in no respect descriptive of the article ; and the case of Hier v. Abrahams (82 N. Y. 579), sustains as a trade-mark the application of such arbitrary word, even if used in connection with others.. The plaintiff does not make a trade-mark of his name, but he has adopted a word as part of his trade-mark, and the defendants, by being incorporated under a like name, claim the right to deprive him of the exclusive use of that word in the new connection in which he had placed it.

The fourth ground is that the plaintiff is violating the United States statute in having the words “ Patent Sept.” upon the goods sold by him. It is observed that it is not claimed that the use. of the word “ patent” has been resorted to by the plaintiff until very recently. It appears that application has been made on'June 9,1882, for a patent for an improvement in the process of manufacturing oleomargarine butter, by Henry Lauferty, and that on August 31, notice was received from the United States patent-office that the application had been examined and allowed, and under this process the plaintiff has been manufacturing. It further appears that Mr. Lauferty was informed that his letters patent would beiorwarded to him in September, this motion being heard in that month ; and there is no evidence that prior to that time the word “ Patent” was used. Although perhaps not strictly entitled to use the word until the actual receipt of the letters patent, the case differs from that of the Consolidated Fruit Jar Company v. Burrell, in that in the latter case there was not the slightest pretense that there was any patent applied for or about to be issued.

The third objection does not seem to be well taken. I cannot see but that the application for a patent being allowed and the right to a patent complete, the mere formality of delivering the patent only remaining to be performed, brings the manufacturer certainly within the spirit of the exception contained in the laws of 1882.

The second ground for a dissolution of the injunction is that the use of the words “Alderney Manufacturing Co.” is a violation of the statute. I have read the statute in vain to find any prohibition therein contained which is applicable to the case at bar.

The''statute of 1833 merely forbids the use of the name of a partner not interested in the business, and the use of the words, “ and Company,” or “ & Co.” unless representing an actual partner. The plaintiff in this action does not use the name of a partner not interested in the business, neither does he use the words “ and Company,” or, “ & Co.” in any form, therefore there does not seem to be any violation whatever of any statute.

The case of Crawford v. Collins (45 Barb. 269) expressly holds that the.giving to a firm the name of a company is no violation of law, and that the parties to-a copartnership may give it just such names as they please (except of course, as prohibited by statute).

The case of the “Galaxy Publishing Co.” (McNair v. Cleare, 10 Phila. 155) differs materially from the case at bar. In that case, upon the bill-head, envelopes, letter-heads, &c., appeared the name of a president and secretary, the court holding that this was an attempt to hold out to the world that the firm was a corporation, and that this was a fraud. But even if the case was entirely in point, I should follow the law as laid down by our own courts. I cannot see possibly how any fraud can be perpetrated upon the public by parties engaged in business assuming as a firm name words which might be applicable to a corporation. The creditors of a firm cannot suffer if, instead of dealing with a corporation, they are dealing with a firm, because, if they are dealing wi th a corporation, they can reach only the property of the corporation, but if they are dealing with a firm, they can reach not only the property of the firm, but also the individual property of its members.

The first objection seems to have been already discussed. I think that it clearly appears that the plaintiff has used the word “ Alderney,” together with others, in connection with his business, for a considerable period of time prior to the organization of the defendant.

Perhaps the undertaking upon the injunction should be increased in amount. An injunction will be issued restraining the defendants from the use in any way of the word “Alderney” in connection with the manufacture and sale of oleomargarine, upon the plaintiffs giving an undertaking in $2,500.

There was no appeal. 
      
       See mem. in 1 Monthly L. Bul. 82.
     
      
       The acts of 1882 (c. 214, 215) prohibiting the coloring of oleomargarine, contain the following exception: ‘ ‘ But nothing in this act shall be so construed as to interfere with or abridge any right obtained, secured or guaranteed by a law of congress, or by any patent duly granted by the United States government.”
     