
    Schendel et al. v. Silver et al.
    
    
      (Supreme Court, General Term, First Department.
    
    February 18, 1892.)
    1. Trade-Mark—What will be Protected—Arbitrary Words.
    The words “Nickel-In, ” used to designate a brand of cigars, being original, arbitrary, and fanciful, and not descriptive of the articles, their grade or quality, are' entitled to the protection given to trade-marks. Selchow v. Baker, 93 N. Y. 59.. followed.
    2. Same—Infringement—Imitation.
    The words “Nickel-Saved. ” used to designate a brand of cigars, is a sufficiently close resemblance to the words “Nickel-In, ” used in connection with the manufacture and sale of similar articles, to entitle the originator of the latter term to-restrain the use of the former.
    Appeal from special term, New York county.
    Action by Charles Schendel and Michael Deutsch against Samuel Silver and-others to restrain infringement of a trade-mark. Judgment for plaintiffs. Defendant Silver appeals.
    Affirmed.
    Argued before Van Brunt, P. J., and O’Brien, J.
    
      Marshall P. Stafford, for appellant. Joseph L. Levy, (Benedict S. Wise,. of counsel,) for respondents.
   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 plaintiffs 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” by 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, he 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 trade-mark 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 plaintiffs were entitled to be protected from this fraudulent invasion of the rights which they had acquired; and that the judgment appealed from should be affirmed, with costs.

O’Brien, J., concurs in result.  