
    (Butler County, O., Common Pleas Court.)
    March Term, 1897.
    JOHN S. REEDER v. BENJAMIN F. F. BRODT.
    
      Jurisdiction of Common Pleas Court in enjoining ,the use of another's trade-mark—
    The court of common pleas has jurisdiction to hear an application for an injunction restraining defendant from the use of certain symbols, figures and words, the exclusive use of which plaintiff claims as a trade-mark in his business. The relief sought is clearly within the common law powers of a court of chancery, and the power to grant this relief, in a proper case, exists, independent of any act of congress.
    
      Property in trade marks—
    Property in trade-marks does not derive its existence_fro_m_any act of congress.
    
      What is á trade-mark — ~
    A trade-mark is an arbitrary symbol affix"ed by a manufacturer or merchant to a vendible commodity. The principal purpose of a trade-mark is to guarantee the genuineness of a product, and to denote origin and thus protect the purchaser as well as the vendor.
    
      Using trade marks resembling those used by another person — Effect—
    No trader can adopt a trade-mark so resemoling that of another as that ordinary purchasers, buying with ordinary caution, are likely to be misled.
   NEILAN, J.

This case was heard upon an application by plaintiff for an injunction, perpetually restraining defendant from the use of certain symbols, figures and words, the exclusive use of which plaintiff claims as a trade-mark in his business.

His petition states, in substance, that for many years he has been engaged in the city of Hamilton, Ohio, in the manufacturo, sale and use of a certain material used for painting the metal roofs of buildings, and for painting structural iron work generally ; that he has designated said commercial article, and it is known to the trade and public generally throughout the United States aDd Canada, as “American Cold Japan,” which words with the symbol of a metal ventilator, having thereon the number “77” in a white circle, and the letters “R. A. C. J.” at the bottom, he had registered under the copyright laws of the United States, in 1896.

He alleges that the ingredients composing the paint and the manner of their compounding are secrets, known only to himself; that he ha3 spent large sums of money and much time in advertising his business of manufacturing and selling said paint, and in building up and maintaining a market therefor; that he has established an extensive and lucrative business, which, with the “good will” connected therewith and said trademark, are of great value.

He says that defendant, well knowing the premises, and intending to defraud and in jure him, by depriving him of the fruits of his labors and the large expenditures of money by him made in advertising his said paint, and in establishing a market therefor, and intending to convert to his own use the reputation acquired by plaintiff’s paint, the good will connected therewith, and his said trade-mark, is now engaged in manufacturing, in the city of Hamilton, Ohio, and selling throughout the country,a roofing material or paint, similar in appearance to his, and is advertising the same to the trade as “American Cold Japan,” and is wrongfully using plaintiff’s trade-mark without authority orccnsent of plaintiff,and is extensively advertising, by printed circulars and in newspapers, plaintiff’s trade-mark as his own, and by placing the same on the packages sent out and offered for sale by h m, except that he places his own name before the woids “American Cold Japan.”

That defendant intends to continue the manufacture and sale of his said paint, using plaintiff’s said trade-mark,and plaintiff’s style and form of advertising with plaintiff’s testimonials and recommendations, which, he alleges, defendant has wrongfully appropriated, unless restrained by the order of this court.

Many other allegations are contained in plaintiff’s petition, but the foregoing are sufficient to show the general nature of plaintiff’s cause of action, and the relief sought.

He prays the court that he be decreed to be the exclusive owner of said name, “American Cold Japan, and said trade.-mark and the good will of said business; that defendant be perpetually enjoined from using said name, trade-mark, testimonials and recommendations, in advertising and selling his goods.

Defendant filed his answer, in which he sets up two defenses.

He first denies that this court has jurisdiction of the subject-matter of the action ; alleging that it is “based upon a certain device and trade-mark copy-righted by plaintiff under the laws of the United States, in the year 1896,and that the only jurisdiction over an infringement of the same, is m the courts of the United States.

For a second defense, he says, he denies that the ingredients composing said paint are known only to plaintiff. He says he knows them equally with plaintiff; that he acquired this knowledge at the same time and place, and from the same person plaintiff did ; that- they both acquired this knowledge about 1890, from a man named Green ; that they were in partnership until 'he latter part of that year, during which time they, together, manufactured this paint and sold it under the name of “Green’s American Roofing Paint.

He says that plaintiff sold his manufacture of said paint as “Reeder’s American Cold Japan; that in his pretended copy-right, he omits the word “Reeder, and uses therein the words. American Cold Japan only in connection with the symbol of the ventilator, number “77”in a white circle,substantially as alleged in plaintiff’s petition.

He says he never used any part of said symbol; that he has used the words “American Cold Japan.” preceded by his own name, and since 1895, he has sold his goods under the name of “Brodt’s American Cold Japan.”

He says the words, “American Cold Japan.” are not the subject of copy-right or trade mark; that the word “American” is simply a geographical name which belongs to everyone, and that no person has an exclusive right to its use; that the words “Cold Japan,’’are merely descriptive of tne article; that the word “Cold” is used for the reason that said Japan is used withuut being heated, and the word “Japan” being the natural meaning of the article itself when so manufactured and used as a japan, and for no other purpose.

He denies that plaintiff has any right to the exclusive use of those words.trade-mark or trade name; that he intends to continue the manufacture, sale and use of “Brodt’s American Cold Japan, ” called a roofing material, but denies that lie will violate any right of plaintiff by so doing; and he denies generally and specifically, every other matter stated in plaintiff’s petition, and asks to be dismissed with his costs.

Plaintiff, by reply, denies all material affirmative allegations of the answer.

These substantially constitute the issues presented by the pleadings.

A vast amount of evidence, both oral and documentary, was presented by the parties, much of which, in the light of subsequent examination of the authorities by the court, is irrelevant.

The first question to be decided is, has this court jurisdiction to hear and determine the issues involved.

Upon that question the court is clearly of the opinion that it possesses lull and complete authority.

The reliet sought is clearly within the common law powers of a court of chancery, and the power to grant this relief, in a proper case, exists, independent of any act of congress.

Such acts simply fortify the common law right to trade-marks by conferring a statutory title upon the owner. “Property in trade-marks does not derive its existence from an act of congress.” 100 U. S., 83.

Law books and state reports are filled with cases in which state courts exercised jurisdiction to hear and determine the rights of litigants in trade-mark cases. Bispham’s Principéis of Equity, p. 509; Boardman v. Meriden Britannia Co., 35 Conn.,413; Emerson v. Badger, 101 Mass., 82; Taylor v. Carpenter, 2 Sand. Chan., 603.

The next question is, has plaintiff estaolished his right to the exclusive use of the words “American Cold Japan,” in connection with the other words and symbols of his trade-mark?

If so, is he entitled to an injunction against the defendant for infringement?

If defendant has used only a portion of said trade mark,to-wit: the words, “American Cold Japan,” does such use constitute an infringement?

The evidence in this case discloses the following facts: In the summer of 1890,plain-tiff and defendant entered into a partuership with one Green, who possessed the secret of compounding a mixture for the preservation of tin and iron roofs and structural iron work in general, which they made and sold under -the name of “Green’s American Roofing Paint. ”

By the terms of this partnership, Green received half the proceeds of the business, plaintiff and defendant, the other half, in equal parts. Plaintiff furnished all the money used in the business, besides giving his time and labor thereto with the others. There is no pretense that defendant ever furnished any money.

This arrangement continued until September 2, 1890, when Reeder purchased from Green, for 812,000, the secret of compounding this mixture,and all his interests in the partnership business. This contract is in writing, and was witnessed by defendant who had full knowledge of the transaction.

Thereafter Reeder continued the business himself, Brodt working for him by the day, during the remainder of that season, which ended when the weather became too cold for out-door work, after which time Brodt had no further connection with Reeders’ business.

Brodt testified that while the partnership was in operation, Green imparted to both Reeder and himself,the secret of compounding this paint. Reeder denies this, and says that Green retained the secret until the making of the written contract of September 2, 1890, and that Green refused to make that contract, or impart the secret to him until Brodt made an affidavit in writing, that he had not divulged to any person any information he may have obtained as to the secret methods of manufacturing Green’s paints or inventive processes of any kind or description — and further, that he would not divulge such knowledge'to anyone.

This affidavit was produced in evidence by plaintiff, dated September 1, 1890, although it is claimed it was sworn to by Brodt at the time the contract between Reeder and Green was executed.

In 1891, plaintiff abandoned the name “Green’s American Roofing Paint”by which it had been previously known, and adopte^ the name “American Gold Japan.” By this name it has been known ever since, and by this name he has advertised it extensively at much expenditure of time and money, throughout this country.

He is the first and only person to use this name to this kind of goods,unitl about September, 1895, at which time defendant began the manufacture,sale and use of a similar paint which he claimed to the public, and still claims, is the same article as plaintiff’s, and which he advertises extensively in the same territory and offers to sell it to plaintiff’s customers, as “American Cold Japan. ”

From 1890, until September, 1895,defend-ant was not engaged in any way with the manfuacture, sale or use of this article. At the latter date he advertised in The Hamilton Daily News under the caption of “A New Business,” that he was formerly with John S. Reeder; that he is “now proprietor of the widely known and celebrated‘Green’s American Cold Japan,”’ and in a long article, which the evidence shows, he caused to be published in that paper, under that caption, most of which was taken bodily from Reeders’ circulars and advertisements, he advertised his business of manufacturing, selling and using “American Cold Japan.” He also issued folded circulars similar in general style and appearance to plaintiff’s, much of the contents of which are so near like the contents of plaintiff’s circulars, as to justify the belief that they were taken bodily from plaintiff’s circulars and plaintiff’s other advertisements.

The evidence shows that plaintiff, shortly after commencing this business, opened an office and established a general agency in Pittsburg, and that he had advertised extensively there. The evidence also shows that defendant, in 1896, established an agency and had an office in the same city and building, and under the direction and management of the same person, who for several years previously, had been in plaintiff’s employ in that territory. Defendant advertised in the same newspapers there and in substantially identical language employed by plaintiff,printing the words “American Cold Japan” in large, prominent type, and that the goods were manufactured at Hamilton, Ohio, the same place as plaintiff’s.

Many other facts and circumstances were adduced in evidence, which tend strongly to prove that defendant sought to appropriate to his own benefit the fruit of plaintiff’s labor and money.

Whether plaintiff is possessed of a legal trade-mark or not, or whether he is entitled to the exclusive use of the words, “American Cold Japan,” or not, he is entitled to the lawful protection of his property and business from ‘‘unlawful competition in trade,” by means of simulated circulars,advertisements and general line of business. Brown on Trade-Marks, p. 119.

The court has no difficulty, however, in reaching the conclusion that plaintiff is entitled to the exclusive use of the words “American Cold Japan.”

What may be used as a trade mark, is defined by Justice Clifford in the supreme court of the United States, in McLean v. Fiemimng, 6 Otto, 215, as follows:

“Words or devices, or even a name in certain cases, may be adopted as trade-marks, which are not the original invention of the party who appropriates the same to that use; and courts of equity will protect the proprietor against any fraudulent use or imitation of the device by other dealers or manufacturers.
“Phrases,or even words in commmon use, may be adopted for the purpose, if, at the time of their adoption, they were not employed by another to designate the same or similar articles of production or sale. Stamps or trade-marks of the kind are employed to point out the origin, ownership, or place of manufacture or sale of the articles to which it is affixed, or to give notice to the public who is- the producer, or where it may be purchased. ”
“A trade mark may consist of a name, symbol, figure, letter, form or device, if adopted and used by a manufacturer or merchant in order to designate the goods he manufactures or sells, to distinguish the same from those manufactured or sold by another, to the end that the goods may be known in the market as his, and to enable him to secure such profits as result from his reputation for skill, industry and fidelity.” Upton Trade-Marks, 9.
“A trade-mark may consist of a token, letter sign or seal. Names,ciphers,monograms, pictures and figures, may be used and numerals united.” Shaw Stocking Co. v. Mack, 12 Fed. Rep., 707.

The following definition of a trade-mark is taken from Knight’s American Mechanical Dictionary, and is perhaps as correct as it is possible to make it:

Trade-Mark: — “ An arbitrary symbol affixed by a manufacturer or merchant to a vendible commodity. The principal purpose of a trade-mark, is, to guarantee the genuineaess of a product. It is, in fact, the commercial substitute for one’s autograph. In all ages it has been used to denote origin, and thus to protect the purchaser as well as the vendor.”

Here is a trade-mark or trade name, arbitrarily adopted,by the plaintiff for use upon the artic'e he manufactures and sells; a name purely fanciful and which in no manner indicates the nature of the article or its component parts.

Plaintiff is entitled to protection upon the ground that he has valuable interest in the good will of his business; which good will defendant is seeking to appropriate to himself by simulating the name and trade mark of plaintiff and the general manner in which plaintiff conducts his business.

In such case, it is immaterial whether defendant’s goods are the same as plaintiff’s, whether they are as good, or even better, in value or quantity — but a court of equity proceeds upon the ground that complainant has a valuable interest in the good will of his trade or business, and that, having adopted a particular label, sign or trade mark, indicating to his customers that the article bearing it is made or sold by him or by his authority, or that he carries on business at a particular place, he is entitled to protection against whoever attempts to deprive him of his trade or customers by using such labels, signs or trade-mark, without his knowledge or consent.” McLean v. Fleming, 6 Otto, 245.

“The basis of the action of a court of equity to restrain the infringement of the right to a trade mark is fraud on the part of defendant. ” Delaware & Hudson Canal Co. v. Clark, 7 Blatch., 112.

“But trade marks are protected on the ground of property, and not exclusively on the ground of fraud. And damages will be allowed for an unauthorized though unintentional, use of a trade-mark.” Oakes v. Tousmierre, 4 Wood, 547.

“Equity gives relief for the infringement of a trade-mark upon the ground that one person is hot allowed to offer his goods for sale representing them to be the manufacture of another.” Manhattan Medicine Co. v. Wood, 4 Clifford, 461.

Defendant’s agent at Pittsburg says, he expressly stated to customers that he was not selling them “Reeder’s American Cold Japan,,” but “Brodt’s American Cold Japan,” and hence, defendant says, he was not selling his goods as the goods of another.

But while it is true as to that particular agent and locality, it is not true as to the thousands of others who read his circulars and other advertising matter, and were governed by the name of the article, regardless of the name of the manufacturer.

“What degree of resemblance is necessary to constitute an infringement of a trademark is incapable ot exact definition. But the rule is, that no trader can adopt a trademark so resembling that of another as that ordinary purchasers, buying with ordinary caution, are likely to be misled.” McLean v. Fleming, 6. Otto, 245. Manhattan Medicine Co. v. Wood, 4 Clifford, 461. Gorham Co. v. White, 14 Wallace, 28.

In the case of The N. K. Fairbank Co. v. R. W. Bell Manufacturing Co., decided last year by the United States circuit court of appeals of the second circuit of New York, reversing the decree of the circuit court which had refused to enjoin the defendant, the court say: “We have the case of a manufacturer who is careful always to sell its goods as its own, but who puts them up in style of package so similar to that used by one of its competitors earlier in the market, that unscrupulous dealers who purchase from the manufacturer in order to sell at retail to consumers, are enabled to delude a large number of such retail purchasers by palming upon them the goods of the manufacturer as those of its competitor. That this is an unfair competition seems apparent, both on reason and authority.”

Injunction was allowed in this case, although the symbols were clearly and distinctly different, and, in addition, the defendant company was located in New York, while the complainant company was located in Illinois.

The case at bar is a much stronger case than that. The principal place of business, and the place of manufacture of both,are in Hamilton, which name, when printed conspiciously in connection with the name “American Cold Japan,” is calculated to mislead and deceive persons of ordinary intelligence.

“If the form, marks, contents, words, or the special arrangement of the same, or the general appearance of the alleged infringer’s device is such as would be likely to mislead one in the ordinary course of purchasing the goods and induce him to believe that he was purchasing the genuine article, then there is an infringement.” McLean v. Fleming, 6 Otto, 245.

“In order to constitute an infringement of a trade-mark, it is not necessary that the imitation should amount to a forgery or be so close as to deceive a wholesale dealer. It is sufficient if it is calculated to deceive the unpractical and unwary customer.” Blackwell v. Armstead, 3 Hughes, 163.

“The imitation of an established trademark will be enjoined though it is not exactly copied in every particular. It is enough that the representations employed bear such a resemblance to the genuine as to be calculated to deceive the public and make the articles to which it is affixed pass for the genuine.” Walton v. Crowley, 31 Batch., 40.

Defendant claims that by using his own name on his goods, he sufficiently informs the public, and that no purchaser can be misled.

On this point, Judge Paidee,of the United States court of Louisana, in case of Battle & Co. v. Finlay et al., decided in 1891,used this language : “That by reason of defend-, ants using their own name upon the wrapper or envelope, the public are not deceived, it would perhaps be enough to say, that when goods acquire a specific name,the purchaser rarely looks to see who have manufactured the goods by that name.”

To the same effect is 128 U. S., 51; 8 Bis-sell, 401; 2 Brewster, (Pa.,) 316; High, sec. 1071.

That the whole trade-mark is not infringed is no defense. High, sec. 1067; Buckland v. Rice, 40 Ohio St., 526.

While the latter case does not decide this particular question, it does decide that a portion of a trade-mark will be protected, although a part, thereof may be a misrepresentation.

It is claimed in argument, that plaintiff’s trade-mark is false, in this, that he represents as true by the number “77,” matters about which he has no positive evidence.

To which it is 8 sufficient answer to say, that the trade-mark itself, makes no representation whatever, and whatever is said by way of advertising's an immaterial matter, incapable of deceiving anyone.

It is urged that one Allen, in his own name, registered plaintiff’s trade-mark with the librarian of Congress, in August, 1893, and hence plaintiff is not entitled to protec tion.

lo this it is sufficient to say. that plaintiff had no knowledge thereof, and never consented thereto.

Allen, at the time he procured such pretended copy-right, was in partnership with one Ackley, and they were at the time the agents of plaintiff for the sale of his paint.

Allen swore on the trial, that he got this copy-right to protect himself from his partner. How, or from what, he did not explain.'

It is sufficient to say, that plaintiff had nothing to do with it,never consented to it, and is not bound by it.

It follows from what has been said, that plaintiff is entitled to the relief prayed for. not only on the ground of copy-right, but also, and perhaps for greater reason, that defendant is wrongfully appropriating to himself the good will and business of plaintiff.

Plaintiff is decreed to be entitled to the exclusive, use of his said trade-mark, and of the words, “American Cold Japan” in connection with the manufacture, use and sale of his paint; and defendant is perpetually enjoined from using said words in any way in connection with the manufacture, use or sale of his said roofing material, and from any and all acts which tend to deprive plaintiff of the good will of his said business.

The court makes no finding as to whether or not defendant is possessed of the secret of manufacturing “Green’s American Roofing Paint,’’ or of his right to manufacture, use and sell the same, or what he claims is said paint.

Defendant is ordered to pay costs.  