
    THE INDIA RUBBER COMPANY, Plaintiff and Respondent, v. THE RUBBER COMB AND JEWELRY COMPANY, et al., Defendants and Appellants.
    Fraudulent simulation of labels.—Injunction.
    In this case the following facts appeared:
    The labels used by defendants in their business were in undoubted imitation of those used by plaintiff, and the greater part of the details were so like the corresponding details of plaintiff’s labels, that it was plainly defendants’ intention to represent that the goods upon which the same were to be placed were made by plaintiff. Held, that the plaintiff was entitled to protection against this.
    The manner in which defendants printed their name upon the labels in question was likely to draw attention, from the difference between it and plaintiff’s name, and lead the ordinary reader to believe it to be plaintiff’s name. Held, that in such case the intent being evident, the plaintiff is responsible for the effect produced, though the name used was its proper cmpoi'ate name.
    
    As to that part of the judgment herein against the use of portions of the labels, the cowrt held: Whether a name can be a trademark or not, there is no doubt that a defendant may be enjoined from using a plaintiff’s name. It was contended that plaintiff’s name really expressed a kind of trade, and that, as the trade is open to all, there can be no exclusive right to words that intelligibly designate the same. But it appeared that there had been a purpose to use a name, in imitation of plaintiff’s, on a label, and the case made it proper to consider whether there was not danger of a use of it apart from the same. No closeness of reasoning, based on the fact that it has never been used by itself, is called for in a case which discloses a meditated general wrong. Nor is it material that the name is described in the pleadings and findings as a trademark.
    As to the use of the numbers “ 3,101 ” and “ 33,” the principles of Gillott v. Esterbrook (48 N. Y. 375) apply. In that-case and this, the numbers were selected arbitrarily, and were used to distinguish one pattern or character of goods from another, and the plaintiff is entitled to protection in his use of the same.
    
      Before Sedgwick and Van Vorst, JJ.
    
      Decided May 16, 1879.
    
      The court further held, as to the continuance of the injunction: Such an actual use, and danger or threat of further use, appeared, that the plaintiff, if otherwise entitled, would not be deprived of his remedy by injunction, though shortly before the service of summons, &c., the defendant had stopped Using the labels in question.
    So far as the right to an injunction is concerned, there is no need of proof that any one has been or is likely to be deceived by the simulated label. If a court cannot judge, from the resemblance, the effect likely to be produced, it certainly may infer, from a fraudulent intent in circumstances which would permit its consummation, that it is likely that the intent will be successful.
    This is an appeal from an interlocutory judgment entered upon the decision of the special term of this court, perpetually enjoining the defendants from using any and all of the plaintiff’s labels and trademarks set forth in the complaint, and ordering a reference to ascertain the amount of the plaintiff’s damages sustained thereby.
    The action was for an injunction against the defendants using plaintiff’s labels and trademarks, and for damages.
    
      Jacob & Koch, attorneys, and Yeaman & Curtis, of counsel, for appellants, urged:
    I. The words “ The India Rubber Comb Company,” the only trademark claimed or described in the complaint, are not and cannot become or be made a trademark (Browne on Tradem. §§ 138, 161, 162, 164, 350, and cases cited). The complaint has not been amended, to claim that anything else enters into the composition of the trademark (see also In re Simpson, 10 Off. Gaz. Pat). The numerals cannot of themselves be a trademark, such as 101, 2 and 32 (Browne on Tradem. §§ 225-233, 442. If the engraving or picture of plaintiff’s factory may be used as a trademark, so may the engraving or picture of the defendant’s factory, especially as they are so unlike as never to deceive or mislead. If the trademark claimed be valid, then the defendants have not used it. The plaintiffs use the words “ India” and “N. Y.,” the defendants do not. The defendants use the word “Jewelry,” which the plaintiffs do not. The defendants use the monogram, while the plaintiffs do not. The plaintiff uses the words (expressing a fraud and falsehood) “ Sole manufacturers of Goodyear’s India Rubber and Gutta Percha Combs,” which the defendants do not. The defendant company has the right to use its own corporate name, and has done so. The plaintiffs never had any trademark or property in the numerals 101, 2 and 32, as claimed. It was not the first or only one who used them, and if it ever acquired any such right, it has been abandoned to the public by acquiescence in their long use by other traders and manufacturers. Fifteen years’ public, open and notorious use by others, is an insurmountable obstacle to the present assertion of exclusive right.'
    II. If a liberal construction of the complaint would make it a cause of action for fraudulent simulation of labels as distinguished from trademarks, what some writers call unfair and immoral competition (a case not claimed in the complaint), then the plaintiff cannot recover, for the reasons above expressed, especially the differences pointed out under figure 4 of Point I., and also for the following reasons : 1. No intent to defraud has been shown, which must be done to entitle plaintiff to injunction. 2. No actual or successful fraud or deceit has been shown by a single instance of sale of defendants’ goods as and for plaintiff’s, nor of any one calling for or ordering plaintiff’s goods and getting defendants’ instead, which is necessary to entitle plaintiff to judgment for damages or for an accounting. 3. No attempt was made to show either such fraudulent intent, or such actual fraudulent sales. 4. It has not been shown, nor has any attempt been made to show, that any ordinary purchaser looking at either the goods or the labels would mistake the defendants’ for the plaintiff’s. 5. Neither the plaintiff nor the defendants retail goods. They both sell to jobbers, who supply retail dealers, who supply consumers. They each sell at wholesale, in large, paper-wrapped packages, as exhibited in court, the plaintiff putting on these large packages a green label with black letters, and the defendant a white label with blue letters. Nothing could be more distinctly and even glaringly different. If any witness had come into court and said he had been deceived or could be deceived by mistaking one of these labels for the other, the court would simply not have believed him.
    III. The case of Gillott v. Esterbrook (48 N. Y. 374), does not hold that numbers by themselves may be a trademark, but only that they can be used in connection with other things. The plaintiff’s trademark is described as “ The India Rubber Comb Co.,” without numbers. When this was offered for registration at Washington, and rejected, as stated by plaintiff’s counsel, the engraving of the factory was added, and it was then registered. The trademark and specifications as registered not claiming the right to the use of numbers 101, 3, 33, nor in any way alluding to them, is conclusive evidence that they had never been relied upon as a trademark, or, if so relied on, had been abandoned. The claim and sworn application state, “Our trademark” consists of the words “India Rubber Comb Company, arranged in connection with a representation of our factory at College Point, Long Island.” The document further states that this trademark may be accompanied by a border, but proceeds to allege that the essential features are the words “ India Rubber Comb Company, arranged in connection with a representation of the' India Rubber Comb Company’s factory at College Point, Long Island.” Thus the numbers 101, 2 and 32 are expressly excluded in two ways; by stating what may accompany the trademark, and by stating the essential features of the trademark. They further say “This trademark we have used in our business for three years last past.” The plaintiff cannot have two trademarks, nor dozens or hundreds of them, as it ivould have if each label with a' different number on it be a different trademark. In its complaint it describes one without number, sues the defendant on that description, and to sustain the cause of action puts in evidence a certificate of registration making no claim to numbers as a part of its trademark, and containing a specimen label wdth numbers not mentioned in the complaint or the evidence, to wit, 1 doz.,-No. 4 -7% inch. The plaintiff must abide by its own description and registration. It cannot register one thing and claim another.
    IY. There was an element, a finding of fact, in Gillott v. Esterbrook, that broadly distinguishes it from this case. The trial judge found, and the court of appeals expressly rely upon the finding, “that the said use by the defendants of said numerals 303, was with a knowledge by them of the rights of the plaintiff to the same, and wdth the intent to obtain for themselves the profits and advantages to which the plaintiff was exclusively entitled in the use of his said trademark, and to mislead the public, and to defraud the plaintiff in that respect.” In this case we have not the knowledge by defendants, of plaintiff’s rights, if it had any, and any such knowledge, as well as the right, is negatived by the long and general use by others. Neither have we the intent to obtain plaintiff’s profits ; nor the intent to mislead the public and defraud the plaintiff, all which are found in the case of Grillott; and none of which are proved in this case.
    Y. Particular attention is called to the case of Singer Manufacturing Co. v. Wilson (2 Ch. Div. App. 434), a late English case, which perhaps, more nearly than any other case, contains the whole law of trademarks and fraudulent imitations of labels. The case of Boardman v. Meriden Britannia Co. (Cox Tradem. Cas. 490), is not similar in its facts. The case, like Grillott’s IsTo. 303, holds that a number can only be a part of a trademark in connection with other things. When any mark, symbol or device is used merely to indicate the ■ name, quality, style, or size of an article, it cannot be protected as a trademark (see also Coddington's Digest of Tradem. 265).
    YI. Although, by the long-continued use of certain letters, figures, words, marks or symbols, which do not of themselves and were not designed to indicate the origin or ownership of the goods to which they are attached, but, only to designate the nature, kind, or quality of the different varieties of the article, and because so marked the goods have become known as those of the manufacturer who first used them, such fact cannot alter the original meaning of the words or symbols, or the intent with which they were first used as denoting the name of the thing or its general or relative quality, or take from others the right to employ them in the same sense (Candee v. Deere, 54 Ill. 439).
    YII. There is no case to be found in which a plaintiff has been allowed to sell the same goods under more than one trademark. The idea of identity, oneness, is necessary to and so embraced in the conception of a trademark, as applicable to a certain kind or line of goods, that divisibility or plurality at once destroys both the conception and the thing. The same trader or manufacturer may have one trademark for his woolen goods, another for his cotton goods, another for his silk goods, and another for his combs, if he makes so many articles. But he cannot have three trademarks for the same comb. In this case the plaintiff has declared on one trademark, its corporate name : “ The India Rubber Comb Companyit has put in evidence eight, all differing in some respects from each other, and has recovered on five, three being always annexed to one article.
    VIII. The motions to dismiss plaintiff’s complaint, arid again, at conclusion of plaintiff’s testimony, should have been granted. And even if there had been any grounds for retaining the complaint as to the defendant company, the motion to dismiss as to the individual defendants, Sonneborn, Dittenhoefer and Cohn, should have been granted. There was no evidence whatever upon which to base a judgment against them. It is proved, and no attempt made to contradict it, that they were not in the business, individually or personally. That they were officers of the defendant, the Rubber Comb and Jewelry Company, can in no way make them personally responsible. If they had been manufacturers, on their own account, they could not be joined.' It would be a case of alleged wrongs by different parties. Therefore the objection of improper joinder of parties should have been sustained, and all these three defendants should have had judgment for costs.
    
      Abbett & Fuller, attorneys, and Messrs. Fuller & Gilhooly, of counsel, for respondent, urged:
    I. The plaintiff’s name, “ The India Rubber Comb Company,” used on or in connection with its manufactures, is a valid trademark, of which the plaintiff is entitled to the exclusive use (Newby v. Oregon Central Rw. Co., 1 Deady, 609). In the matter of the India Rubber Comb Company (Off. Gaz. Pat., November 30, 1875), the opinion of the commissioner contains a citation and discussion of the cases on this point, and he holds that said words constitute a valid trademark (see, also, Colman v. Crump, 70 N. Y. 578). This particular trademark, to wit: the words “The India Rubber Comb Company,” has been 'sustained by the superior court in the case of India Rubber Co. v. Meyer.
    II. The plaintiff is entitled to the exclusive use of the numbers “101” and “32,” as applied to combs, and the number “2,” as applied to hair-pins (see Gillott v. Esterbrook, 48 N. Y. 374, 377).
    III. The plaintiff is entitled to the exclusive use of the cut or representation of a building, as shown in the exhibits annexed to the complaint, in connection with combs, and any simulation of such cut should be enjoined. Such a device is a good trademark (Smith v. Reynolds, 10 Blatchf. 100; Kinney v. Basch [unreported]; Coddington Dig. Tradem. 85; Faber v. Hovey, Id. 242; Colman v. Crump, 70 N. Y. 573).
    IV. The defendants are joint tort feasors, and as such may be sued jointly. The defendant, Dittenhoeffer, is the president of the Rubber Comb and Jewelry Company; the defendant, Sonneborn, is secretary and treasurer; and the defendant, Cohn, is a salesman and corporator (see Goodyear v. Phelps, 3 Blatchf. 91; Poppenhusen v. Falke, 4 Id. 493).
    V. “ Where the imitation of plaintiff’s trademark is close, and the manner in which defendants’ articles are put up nearly resembles the plaintiff’s, 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 plaintiff, whose trademark is imitated, and for the purpose of supplanting him in the good-will of his business (Curtis v. Bryan, 2 Daly, 312; Taylor v. Carpenter, 11 Paige, 292; Brahan v. Bustard, 9 Law Times, N. S. 199; S. C., 2 New R. 572; Amoskeag Manuf’g Co. v. Spear, 2 Sandf. 599-608; Edelsten v. Edelsten, 9 Jur. N. S. 479; Colman v. Crump, 70 N. Y. 573) And in order to entitle plaintiff to relief, it is not necessary that the imitation should be so close as to deceive persons seeing the two. trademarks side by side (Seixo v. Provezende, Law R., 1 Ch. 192). In a recent case in the house of lords (Worthersspoon v. Currie, 42 Law J. R. N. S. Ch. 130), Lord Chelmsford lays down the rule, that, to establish a case of infringement, it is sufficient if the resemblance is such as to be likely to make unwary purchasers suppose they are purchasing plaintiff’s articles. See, also, in the case of Blackwell v. Armistead (5 Amer. Law Times, 85), decided in 1872.
    VI. In the case of Gillott v. Esterbrook (48 N. Y. 374), the court of appeals held that the use and advertisement of a trademark by others for a period of fifteen years, where plaintiff had no knowledge of such practice, or acquiesced in the same, did not preclude the owner from enforcing his sole right. And in a suit to enjoin defendants from selling “ Charter Oak” stoves bearing a certain trademark, the fact that parties in other localities manufactured “Charter Oak” stoves, and sent them into the market to compete with plaintiff’s manufactures, in no way aids the defense, unless it appears that the plaintiff assented to or acquiesced in such infringement of his rights (Supreme Ct. of Mo., Filley v. Fassett, 44 Mo. 168). So, in the case of Kinahan v. Bolton (15 Irish Ch. 75), the lord chancellor held that in order to prove acquiescence by a firm in the piratical use of their trademark, knowledge of such use must be proved, and that is not accomplished by the proof of publication of advertisements, which could have been an invasion of the rights of the firm if those advertisements have been issued, not steadily or uniformly,- but interchangeably with other ¡advertisements in some respects similar, but not infringing the rights of the firm.
    
      VII. In the case of Dale v. Smithson (12 Abb. Pr. 237), the general term of the common pleas expressly hold that the plaintiff is entitled to protection in the exclusive use of his trademark, although it contains a fictitious name as the name of the manufacturers of the article, provided it does not misrepresent the quality and substance of the manufactured article, and it is not used with fraudulent intent. In the case of Curtis v. Bryan (36 How. Pr. 33) the general term of the common pleas held that false and exaggerated statements in advertisements of the manufactured article, not contained in the label sued on, do not deprive the owner of his right to protection in his exclusive use of his trademark.
    VIII. The main inquiry in such cases is,- are the ultimate customers deceived ? (Coats v. Holbrook, 2 Sandf. Ch. 586; 3 Barn. & Cress. 541; 5 Dowl. & R. 292).
    IX. A reference was properly ordered to ascertain the amount of damages sustained by the plaintiff (Blackwell v. Armistead, 5 Amer. Law Times, 85, decided in 1872; Taylor v. Carpenter, Cox Amer. Tradem. Cases, 32; Blofield v. Payne, 4 Barn. & A. 410; 3 Mylne & Cr. 338; Bailey v. Taylor, 1 Russ. & M. 73; Whittington v. Wooler, 2 Swanst. 428). See also a decision of the general term, supreme court, first department, Dec. 30, 1875, in the case of Faber v. Hovey [unreported]; Coddington Dig. Tradem. 242).
    X. The well-known case of Boardman v. Meriden Britannia Co. (35 Conn. 402, and Cox Amer. Tradem. Cas. 490) resembles in almost every particular the one at bar.
   By the Court.—Sedgwick, J.

The answer of the defendant corporation admits that it is, and since its organization, has been, engaged in the sale of combs and hairpins, “ and that it has affixed thereto labels similar to those shown in plaintiff’s Exhibit A 1, and. used Exhibits Bl, 0 1 and D 1, for only a short time, and but few of them; but denies that the same were fraudulent imitations of plaintiff’s labels.” This answer was sworn to December 14, 1877. The corporation defendant was- incorporated January 16, 1877. The testimony bearing on the time through which the defendant used the labels, and the admissions of the answer, sufficiently showed such an actual use, and danger or threat of further use., that the plaintiff, if otherwise entitled, would not be deprived of his remedy by injunction, even if the court were satisfied that shortly before the service of summons the defendant had stopped using them.

The labels, Exhibits C1 and D 1, seem to have been those not used by the defendant corporation. The defendant Sonneborn, in his answer, alleges that these - labels were devised and used before, but not after, the incorporation of defendant. His evidence did not clearly show that these labels had not been used after the incorporation, and on the whole case it appeared that the admission of the answer of the defendant corporation was correct. These labels were in undoubted and designed imitation of plaintiff’s labels, Exhibits C and D. The defendants used as their name, which it was not, the words, “ The India Rubber Comb and Jewelry Co.,” and the greatest part of the other details were so nearly like the corresponding details of plaintiffs’ labels that there could be no doubt that defendant’s intention was to represent by their labels that the goods on which they were to be in some fashion placed were goods made by the plaintiff, and in the nature of things it was likely that the intention would be successfully carried out.

With these facts in their minds the defendants proceeded to devise or use for combs the labels, Exhibit A 1, and Exhibit B 1, and made as much of an imitation as the first, excepting the word “India” is left out. The ' right to use their name, as changed into “ The Rubber Comb and Jewelry Co.,” is maintained, on the ground that the defendant, having been incorporated by the latter name, there was a clear legal right to use it upon their goods. Without adverting to an important consideration that they, under the statutes of this State, took and composed that name according to their pleasure, with perhaps a view to the future, which may lead to different rights to those that refer to a name involuntarily bestowed upon a natural person, it is certain that there is some limitation of the usé of a lawful name. If. a right name is used intentionally in a manner that draws attention from a difference between it and another name, so that the effect produced is that of the other name, there is a responsibility for the effect. It is, as to the effect, not the use of the right name. In the present case the way in which the defendants printed their name: The Rubber Comb and Jewelry Co.,” viz., upon pieces of paper like those used by the plaintiff, in ink of a like color, and at the top of several colorable imitations of a picture of factory, of description of goods, and of the words, “ warranted not to warp or split, and can be cleaned in warm water,” was likely to draw the attention from the difference of name, and to lead the ordinary reader not to perceive it, but to think that it was plaintiff’s name. The labels themselves, and the testimony in the case, keeping in mind that the labels were made shortly after what was beyond doubt an intentional imitation, prove that the use of defendant’s name on the later ones was intended to produce an impression that it was the plaintiff’s name. A little fact is very significant to show that the defendants had in mind the character of plaintiff’s labels when they made theirs. On plaintiff’s labels was ‘ ‘ warranted not to warp or split, and can be cleaned in warm water.” The defendants, on their first labels, copied this in its very words. On their later, they placed, ‘1 warranted not to warp or split, and can be cleaned in hot water,” It would seem as if the change of'“warm” to “hot” was a preparation of evidence.

In such case it is so easy to give a distinguishing mark that shall have no doubt about it, that it can almost be said that merely the failure to do it shows an actual purpose not to do it. The sum of this part of’ the case is, that the plaintiff proved that the labels of defendant, when placed upon goods, were a representation that the goods were the manufacture of plaintiff. The law gives protection against this. .

Here may be noticed the allegation that plaintiffs had abandoned any exclusive right they may have had by acquiescing in the use of this kind of labels by others, for years. The facts did not sustain the allegation. If there were proof (which was not clear) that there was such a use by others, there was no proof of acquiescence by plaintiffs in it.

As to the sale of goods by the plaintiffs, under the name of the United States Company, the defendants’ requests to the court do not claim that the labels or marks in question were used. I cannot ascertain from the evidence that the defendants attempted to prove it.

Another allegation is that the label of plaintiff should not be protected, because it had on its face the words “Sole manufacturers of Goodyear’s India Rubber and Gutta Percha Combs,” and that this was false and fraudulent to purchasers. Whether it was or was not false was a question of fact. The court could not take judicial cognizance of what Goodyear’s India Rubber and Gutta Percha Combs were. It was possible that a party should be the only manufacturer of such combs, and that, at least a claim to be so was not fraudulent. .• The burden was upon defendant to show the falsity and fraudulent intent, but no testimony as to them was given.

It is also claimed that there was no proof that any one in the market had been, or, by an expert, that any one was likely to be deceived into the belief that goods having defendants’ labels were made by plaintiff. So far as a right to a preventive remedy by injunction is concerned, I do not think that such proof was necessary.

If a court could not judge from a resemblance that it was likely to produce the effect that the original or true one would produce, and which, 1 think, it can, certainly it may infer from a fraudulent intent of a person in circumstances which would permit the consummation of it, that it is likely that the intent will be successful, and others will be deceived.

For these reasons, the judgment against the use of the labels must be sustained, and I proceed to that part against the use of portions' of it.

Whether a name can be a trademark, technically, is doubted by the learned counsel; but I do not understand them to doubt that a defendant may be enjoined from using the plaintiff’s name. The position was not taken, if it be sound ; and as to this, impression is given that what the words of plaintiff’s name really expressed is a kind of trade, and that, as the trade is open to all, the plaintiff can have no exclusive right to words that intelligibly designate the trade. On the facts, I think it was shown that there had been a purpose to use a name in imitation of plaintiff's on a label, and the case made it proper to consider whether there ivas not danger of a use of it apart from the labels. Ho closeness of reasoning, based on the fact that it has never been used by itself, is called for in a case which discloses a meditated general wrong. It does not seem to be material that the name is said, in the pleadings and findings, to be a trademark. The material thing is stopping its use by defendants.

As to the use of the numbers, “2,” “101,” and 1 ‘ 32, ’ ’ I am not able to see that the principles of Gillott v. Esterbrook (48 N. Y. 375), should not be applied. In that case and in this, the numbers were used to distinguish one pattern or character of goods from other patterns. In this case, the defendant’s labels prove that the numbers were useful in the market to designate these patterns. The numbers were selected arbitrarily, and of themselves expressed no size or quality. The findings as to defendants’ knowledge of the plaintiff’s use of the numbers to designate their goods, and of the fraudulent intent as to plaintiffs and third. persons, were substantially the same in the ■ two cases. It was not shown in this case that the plaintiffs had acquiesced in the use of these numbers by others. I am of opinion, however, that the terms of the judgment were too broad in restraining the defendants from using in any way the cut or representation of a factory, on their goods. The plaintiff had never used that as a trademark by itself, in the same sense that the numbers were used. The defendants are still at liberty to use a picture of a factory in a proper manner. The judgment should have been confined to the use of an imitation, colorable or other, of the picture of. a factory, used by plaintiffs. This is, however, hardly more than a matter of form, which could have been corrected upon suggestion, on the settlement of the judgment. The judgment should be modified by striking out the absolute prohibition of the use of a picture of a factory, and confining the imitation to a picture like that used by the plaintiffs.

The case disclosed individual acts by the defendants other than corporation, jointly with the corporation, and there was a joint liability to the plaintiff.

The judgment, after being modified in the manner that has been stated, is affirmed, with costs.

Van Vorst, J., concurred.  