
    MESSEROLE against TYNBERG.
    
      New York Common Pleas, Special Term;
    
    
      Sept., 1868.
    Trademark.—Injunctions. —Burden of Proof.
    In an action brought to enjoin the defendant from using the plaintiff’s trademark, if the plaintiffs can be pronounced the first to use the word claimed by them, although it be a popular term, and one in general use,—e. g., the word Bismarck,-—as a designation of a particular style of goods made by them, and to have acquired by its manufacture and sale under that name a valuable interest in such designation, the defendant must be es-topped from using it for the same purpose. Tho plaintiffs had the right to appropriate such name, in- common with others, for a new purpose, and having done so, are entitled to avail themselves of all the advantages of their superior diligence and industry.
    There is no reason for making any distinction between a common word or term used for an original or new purpose which has accomplished its object, and a new design adopted by a manufacturer. Both give currency to the articles to which they are applied, and distinguish them from other manufactures of a similar character.
    All the essential requisites to the plaintiff’s right to protection flow from the prior use of a term, symbol, or word, which has created for his manufacture a celebrity or value; and the burden of showing that the claim of priority is unfounded, or the absence of any injury resulting from its imitation, rests upon the defendant.
    Motion to dissolve an injunction.
    This action was brought by Cornelius M. Messerole and James L. Libby against Morris A. Tynberg. The plaintiffs claimed an exclusive right to use the word “Bismarck ’ ’ in its application to paper collars. They obtained a preliminary injunction against an infringement by the defendant, which the defendant now moved to dissolve. -
    
      Spring & Wetmore, for the motion.
    
      Clarence A. Seward, opposed.
    The fact that an injunction was issued establishes the plaintiff ’ s prima facie 
      right. The defendant claims to have successfully attacked such prima facie right: 1. Upon the fact of priority of appropriation. 2. Upon the law.
    I. Upon the affidavits the defendants do not show a prior use of the trademark in question.
    II. One of the main elements which determines commercial profits is the quality which arises from integrity and skill, and which is known as “ character,” good will” or “reputation.” When this is attached to person or locality, the protection of the law is unnecessary. When natural identification becomes impossible, the genuineness of the commodity can be guaranteed by representation only; in other words, by a mark, name or symbol, which assures the consumer that the manufacture is genuine. Such name, mark, or symbol, then becomes the .trademark of the tradesman. The protection of the law is necessary to insure the efficacy of the mark, to protect him whom it represents from injury, and the public from imposition.
    .The law of trademark is of comparatively recent origin. The principle upon which it is based is old, and is found in the maxim—sic utere tuo, ut non alienum laedas. The rivalry and competition of an increasing trade have rendered it necessary that equity should enforce the maxim, and its decisions, in so doing, constitute the law of trademarks.
    III. Trademarks are variously described as names, titles, insignia, devices, indicia, letters, forms, words, symbols and accompaniments, including the style of putting up, and the envelope of the commodity. These marks have been protected by the court for two reasons: First, To prevent imposition upon the public; and, Secondly, To protect the right of the manufacturer to his property in the mark. The cases all arrange themselves under these two subdivisions.
    1. The court will protect the trademark, to prevent imposition upon the public (Southern v. How, Cro. Jac., 470 ; Singleton v. Bolton, 3 Doug., 293 ; Blanchard v. Hill, 2 Atk., 484; Crawshay v. Thompson, 4 Mann. & G., 357, 386 ; Day v. Day, Eden on Inj., 314; Canham v. Jones, 2 Ves. & B., 218; Perry v. Truefit, 6 Beav., 66 ; Snowden v. Noah, Hopk., 352; Bell v. Locke, 8 Paige, 75). 2. The court will protect the right of property of the manufacturer in his trademark (Clark v. Clark, 25 Barb., 76; Brooklyn White Lead Co. v. Masury, Id., 416 ; Burnett v. Phalon, 22 law Rep., 220; S. C., 9 Bosw., 192,196.
    IV. The defendant has a right to manufacture and sell paper collars under such name as he may select, provided that "by so doing he does not select a name which others have appropriated, and which identifies in the market their manufacture. He has no right to take a word previously appropriated by the plaintiffs, and apply it in the same way in which the plaintiffs use it (Morrison v. Salmon, 2 M & G., 385 ; Rodgers v. Nowill, 5 M. G. & S., 110 ; S. C., 17 Eng. Law & Eg., 83; Croft v. Day, 7 Beav '., 84; Blofeld v. Payne, 4 B. & A., 409 ; Sykes v. Sykes, 3 B. & C., 541; Millington v. Fox, 3 M. & C., 339 ; Pidding v. How, 8 Sim., 477; Knott v. Morgan, 2 Keen, 213; Flavell v. Harrison, 19 Eng. Law & Eq., 15; Clement v. Maddick, 22 Law Rep., 428; Taylor v. Carpenter, 3 Story, 458; 11 Paige, 292; Coffeen v. Brunton, 4 McLean, 516 ; 5 Id., 256 ; Groutt v. Aleploghler, 6 Beav., 69 ; S. C., 7 Am. Jur., 277; Christy v. Murphy, 12 How. Pr., 77; Amoskeag Manufg. Co. v, Spear, 2 Sandf., 599; Howard v. Henriques, 3 Id., 725; Stone v. Carlan, 13 Law Rep., 360; Grillott v. Kettle, 3 Duer, 624; Fetridge v. Merchant, 4 Abb. Pr., 156; “ The Medicated Mexican Balm,” 6 Beav., 66, and “The Chinese Liniment,” 4 McLean, 516 ; Williams v. Johnson, 2 Bosw., 1 ; Howe v. Searing, 6 Bosw., 354; S. C., 10 Abb. Pr., 264; Comstock v. Moore, 18 How. Pr., 421; Grillott v. Esterhrook, 47 Barb., 480 ; Marsh v. Billings, 7 Cush., 322; Seixo v. Provezende, 1 Eng. Law Rep., Ch. Ap., 197; Braham v. Bustard, 9 Law Times N. S., 199). The defendant here insists that "because “Bismarck” is the name of a distinguished Herman citizen, no such, exclusive right to the same can he successfully claimed "by the plaintiffs, for the reason that the law does not permit the use "by one man of the name of another, to the exclusion of the right of all others to use the same name. This is' fallacious (Matsell v. Flanagan, 2 Abb. Pr. N. S., 459; Smith v. Woodruff, 48 Barb., 439; Barrows v. Knight, 6 R. I., 434; Me Andrews v. Bassett, 10 Jur. N. S., 550 ; Dent v. Turpin, 7 Id., 673 ; Callada v. Bard, 7 N. C. L. J., 132; Harper v. Pierson, 3 Law Times N. S., 347 ; Braham v. Bustard (supra) ; Hall v. Barnes, 9 Law Times N. S., 561.
    V. Upon the general objections, we answer: 1. The owner of a trademark will not be deprived of a remedy in equity, even if it is shown that all who buy goods bearing the mark, from the defendant, were well aware that the goods were not of the plaintiffs’ manufacture. It is enough if the goods were supplied by the defendant for the purpose of being sold again in the market. It is not necessary to say that any person was deceived, if the resemblance in the article is such as would be likely to cause one mark to be mistaken for another (Eldestein v. Eldestein, 1 De G., J. & Sm., 185). 2. If the goods of the manufacturer have, from a mark or device he has used, become known in the market- by a particular name, the adoption by a rival trader of any mark which will cause the goods to bear the same name in the market, may be as much a violation of the rights of that rival, as the actual copying of his device (Seixo v. Provezende, supra). 3. The plaintiff is not bound to prove that the defendant has copied his mark in every particular. If the indicia or signs used tend in any way to induce the belief on the part of the purchaser that he is buying the plaintiff’s manufacture, the court will grant the injunction. The court will do this until the merits of the case can be ascertained and determined (Walton v. Crowley, 3 Blotchf., 447). The relief of the court is given because the mark is a sign or representation importing (and so understood and acted upon by the public) that the article to which it is attached is the manufacture or production which is generally known in the market under that denomination.
   Brady, J.

Upon the conclusion of the arguments on the motion which was made to dissolve the injunction granted herein, I was impressed with the belief that the application must be denied; and subsequent examination of the proofs, papers and authorities, confirmed that view. The subject of trademarks is exhausted by the briefs of the respective counsel, and an array made of American and English cases which shows their zeal and industry.

Due consideration of the whole case results, however, in this proposition : If the plaintiffs can be pronounced the first to use the word “Bismarck,” although a popular term and one in general use, as a designation of a particular style of paper collars made by them, and to have acquired by its manufacture and sale under that name a valuable interest in such designation, the defendant must be estopped from using it for the same purpose. The plaintiffs had the right to appropriate such name, in common with others, for a new purpose ; and having done so, are entitled to avail themselves of all the advantages of their superior diligence and industry. There is no reason for making any distinction between a common word or term used for an original or new purpose which has accomplished its object, and a new design adopted by a' manufacturer. Both give currency to the articles to which they are applied, and distinguish them from other manufactures of a similar character/ All persons stand alike on this theory, and all are entitled to protection. This*rule is logically and justly evoked from the decisions relating to trademarks, although, as I have had occasion to observe in another case, it- may be said that there is a seeming although not real absence of uniformity in the doctrines established by them. I do not deem it necessary to analyze them. It is more practical and quite sufficient to state what in my judgment is applicable to this case as one of the results of these determinations, and it is this:

Whenever a trademark is employed to designate a particular manufacture, whether the term used is a popular one formed of words or symbols common to the world, or one expressly created for the purpose to which it is applied, and the manufacture acquires reputation and becomes valuable as an article of merchandise, an imitator thereof, for a kindred or similar manufacture, is presumed to intend wrongfully, and the burden rests upon him to show that there is either no property in the term or symbol, arising from priority of use for the article to which it has been applied, or that no deceit or injury can result from the imitation (Piddings v. Howe, 8 Sim.,479; Knott v. Morgan, 2 Keen, 213; Barrows v. Knight, 6 R. I., 434; Marsh v. Billings, 7 Cush., 323; Braham v. Bustard, 9 Law Times N. S., 199 ; Harper v. Pearson, 3 Id., 547; Hall v. Burrows, 9 Id., 561; Smith v. Woodruff, 48 Barb., 439 ; Howard v. Henriques, 3 Sandf., 725 ; Stone v. Carlan, 13 Law Rep., 360; Matsell v. Flanagan, 2 Abb. Pr. N. S., 459 ; Colfeen v. Brunton, 4 McLean, 516; Edelstein v. Edelstein, 1 De G., J. & S., 185; Walton v. Crowley, 3 Blatchf., 447; Davis v. Kendall, 2 R. I., 570.; Newman v. Alvord, 49 Barb., 588.

The cases have become numerous because success provokes rivalry, and fair dealing does not always characterize competition. I have been unable to yield to the conviction which some persons seem to entertain, that it is fair dealing designedly to appropriate for the same object a word, symbol, or term first employed by another for a particular purpose, although such word, symbol, or term is one in general use, and belongs in common to the world. The word, symbol, or term, abstractly considered, is not the subject of special right or property, but it may become so when the application of it identifies a particular manufacture, and the thing made and the word, term, or symbol, as applied to it, are synonymous. “ Property in a word for all purposes cannot exist, but property in a word as applied by way of stamp upon a stick of liquorice, does exist the moment the liquorice once gets into the market so stamped. Reputation in the market, whereby the stamp gets currency and an indication of superior-quality, or of some other circumstance which would render the article so stamped acceptable to the public, is property.” Lord Westbury, in Me Andrews v. Bassett (10 Jur. N. S:, 550).

There is a class of cases, such as Corwin v. Daly (7 Bosw., 222), where the plaintiff endeavored to appropriate the name of “Club House Gin;” and Binninger v. Wattles (28 How. Pr., 206), where the designation employed by the plaintiff was “Old London Dock Gin,” which would seem to conflict with the rule stated; but such is not the fact. The distinction between these and cases kindred to these is pointed out by Judge Daniels in commenting upon them, as he did in Newman y. Alvord (supra).

After showing that the protection sought in those cases was denied upon the ground that the terms adopted were previously in popular use for the same purpose as that to which the plaintiffs claimed the right specifically to appropriate them, he said : But neither these decisions, nor any others to which they refer, sanction the conclusion that because a term is in popular use it can be burdened with no new use of a special and exclusive character for the purpose of identifying the trade and manufacture of a particular individual. It is to be observed also that the rule which originally prescribed that fraud was a necessary element in the plaintiff’s case to be affirmatively established by him has ceased to exist (cases supra). And all the essential requisites to the plaintiff’s right to protection flow from the prior use of a term, symbol, or word which has created for his manufacture a celebrity or value, and the burden of showing that the claim of priority is unfounded, or the absence of any injury resulting from its imitation, rests upon the defendant.

This case demands a decision upon the precise proposition considered, inasmuch as the word Bismarck was applied to men and to things of various kinds prior to the use of it by the plaintiffs to distinguish their manufacture of paper collars, and was a popular term. The plaintiffs, however, were, in my judgment, the first to employ it as they did, and their collars, thus designated, acquired a valuable reputation in the market. It follows as a natural deduction that the imitation of the plaintiff’s mark was predicated on the reputation which their paper collars of that name had acquired, and of which the defendant sought ti avail himself. If competition, fair and honorable, as I understand it, had alone stimulated the defendant, he should have relied upon the quality or some attribute of his manufacture, and selected some distinctive appellation for it. It is the policy of the law to encourage enterprize, but not at the expense of superior diligence and industry. The market is closed against no one who, in a fair and honest spirit of rivalry, seeks to monopolize the entire trade in one or more articles of merchandise, but the elements of fraud, deceit, or malappropriation of another’s rights can receive no countenance from courts of equitable jurisdiction.

It is unnecessary, however, to pursue this subject further, except to say that the defendant may not be subject to the charge of unfair dealing in fact. If he honestly believes himself entitled to use the mark introduced by the plaintiffs from a conviction that they were not the originators of it, for the purposes to which they applied it, the general observations herein contained about fair dealing may not apply to him, although the legal results would be the same. I have considered this case in a general sense, without intending to reflect upon the defendant particularly.

The motion to dissolve the injunction must, for the reasons assigned, be denied, with ten dollars costs.  