
    Rebecca Babbitt, App'lt, v. David S. Brown et al., Resp'ts.
    
      (Supreme Court, General Term, First Department,
    
    
      Filed April 14, 1893.)
    
    1. Trade-mark—Descriptive words—Size and color of package.
    No trade-mark can be acquired in the words “trade-mark” or “best soap,” nor in the size or color of the wrappers.
    2. Same.
    Plaintiff's soap was marked “B. T. Babbitt. Trade-Mark, Best Soap,” and defendants’ “B. T. Butler’s, Trade-Mark, Best Soap.” They were of different sizes and shapes, and were each enclosed in orange-colored wrappers of about the same size, but of different general appearance, and having only the words “ Irade-mark ” and “ best soap ” in common. There-was no proof that anyone had been deceived into buying defendants’ soap for that of the plaintiff. Held, that no case for an injunction was made out.
    Appeal from a judgment dismissing the complaint in an action, to restrain the alleged infringement of a trade-mark.
    
      Robert Hunter McGrath, Jr., and Daniel G. Rollins, for app’lt; Rowland Cox, for resp’ts.
   Van Brunt, P. J.

This action was instituted to enjoin an alleged infringement of what is designated a “ trade-marlr,” and. for an accounting for profits and damages. The plaintiff is the successor of B. T. Babbitt, who for many years prior to his-death carried on the business of manufacturing soap in the city of New York, and during that period manufactured an article known as “ . T. Babbitt’s Best Soap.” This soap was prepared for sale in cushion-shaped cakes, upon one side of which was stamped, in large script letters, “ B. T. Babbitt.” Immediately below that, and in smaller full-faced capital letters, was the word “ Trade-Mark,” preceded by a device known as an “arrow ” pointing to the right, and followed by a like device pointing to the left. On the third line were the words “ Best Soap ” in large full-faced capital letters. Upon the opposite side of the cake were the words B. T. Babbitt, New York City.’’ These cakes were wrapped in an orange-colored wrapper, upon which appeared the same words, similarly arranged, but in larger letters. The defendants are manufacturing and selling soap made in cushion-shaped cakes of a somewhat different size and shape from the plaintiff’s. These cakes have stamped upon each face the words-“B. T. Butler’s,” occupying one line; on a second line the word “ Trade-Mark,” preceded and followed by a device known as an “arrow,” andón the third line the words “Best Soap;” and are wrapped in an orange-colored paper, of about the same size as that of the-plaintiff, but differing in general appearance, and the printing thereon being dissimilar, with the exception of the words, “ TradeMark, Best Soap.” No proof whatever was offered upon the trial that any person had been deceived into buying the soap of the defendants supposing it was that of the plaintiff.

Upon these facts we fail to see how it was possible to sustain an injunction against the defendants. In the case of Morgan v. Troxell, 89 N. Y., 292, it was expressly held that a party cannot acquire a trade-mark simply in the form and color of the package or the manner in which it is wrapped, and that mere general resemblance forms no ground for interference, as the products of dealers can be distinguished only by the brands, marks or names which may be put upon them, and these can be protected as trademarks only as far as they are new and comply with the other conditions necessary to constitute a trade-mark. When there is a simulation of a trade-mark, and the intent becomes a subject of inquiry, the form, color and general appearance of the packages may be material; but, to sustain an action, there must be an imitation of something that can legally be appropriated as a trade-mark. When we apply these rules to the case at bar, and it being conceded that no trade-mark can be acquired in the words “ Trade-Mark. Best Soap,” no matter what type they may be printed in, there seems to be nothing upon which to found a claim of an infringement of any trade-mark owned by the plaintiff. As already suggested, the cakes were of different size and different form, the only words in common upon them being the words “ Trade-Mark. Best Soap and these are the only words in common upon the wrapper. The only resemblance seems to be in the size and color of the wrappers, and in such size and color, as already suggested, the plaintiff cannot acquire a trademark. As was said in Richardson & Boynton Co. v. Richardson & Morgan Co., 27 St. Rep., 808.

“ In cases of this description, each contains features peculiar to> itself, and the right to relief depends rather on questions of fact than on questions of law. The rule which governs adjudications in respect to questions such as that presented by the case at bar is reasonably plain, and it is distinctly held that such a similarity of names as is likely to produce confusion in the minds of ordinary unsuspecting persons will be restrained. Therefore the question involved in this case is, was there such a similarity of names? We might indulge in speculation in reference to the likelihood of confusion arising from similarity of these names in the conduct of business, and that such similarity was calculated to deceive and impose upon the public, and upon the purchasers of goods of the character in which the parties to Jhis action were accustomed to deal But the most satisfactory evidence in reference to the results likely to follow from alleged similarity is evidence of actual cases in which such deception and imposition has occurred.”

Applying these suggestions to the case at bar, it appears that there is no proof that anybody has been deceived ; and we cannot see that there is any likelihood of anybody being deceived. Any acquaintance with the particular characteristics of the wrappers and form of the cakes of the plaintiff’s merchandise would at once detect the difference, if an attempt was made to impose upon purchasers the defendants’ merchandise. "We think the judgment should be affirmed," with costs.

O’Brien and Follett, JJ., concur.  