
    AMOSKEAG MANUFACTURING COMPANY against GARNER.
    
      Supreme Court, First District ; Special Term,
    
      May, 1869.
    Trademarks. —Ih-jukctiok.
    The use of an arbitrarily selected word as a trademark by the manufacturers upon unprinted cotton cloths, does not give them the right to enjoin other persons from using the same word as a trademark upon prints or calicoes.
    It makes no difference that the plaintiffs are a corporation, and the word forms a part of their corporate name.
    A long delay (in this case of nine years) to commence proceedings to enjoin an alleged infringement of a trademark, is a good reason for refusing an injunction. f>'
    Motion to dissolve an injunction.
    This action was brought by the Amoskeag Manufacturing Co., a corporation of New Hampshire, against William T. Garner and Samuel W. Johnson.
    It appeared by the complaint that the plaintiffs had been, for thirty-seven years, large manufacturers of cotton cloths, and owned the Amoskeag Falls, where their mills were ; “that the word ‘ Amoskeag’ is an Indian proper name given to the falls before mentioned by the aborigines ; that the plaintiffs have always been known by that name ; that no other manufacturing establishment in the world, is known by that name; that the word ‘ Amoskeag ’ has not now, and never had, any general use or signification, except as applied to the falls, and to the plaintiffs’ business.” They also alleged that it had been “their invariable custom to stamp or print their name upon goods of their manufacture, sometimes in full, as ‘ Amoskeag Manufacturing Company,’ at others, ‘ Amoskeag M. Co.,’ or ‘A. M. C. ;’ upon others, ‘Amoskeag,’ followed by the name of the particular article intended to "be designated, as ‘Amoskeag Cotton,’ or ‘Amoskeag Duck ;’ ” they claimed that the distinctive word of their name is the word “Amoskeag,” a-nd that it always appeared in full, or that it was indicated by its initial letter.
    And the plaintiffs alleged that the defendants used this mark or label upon printed goods or calicoes manufactured by the defendants.
    The injunction sought for was granted by a judge of the court; and the defendants now moved to dissolve it.
    
      jffvarts, Southrnayd & Choate, for the plaintiffs.
    
      Luther R. Marsh, William K. Thorn, and J. Lang-don Ward, for the defendants.
   G. G. Barnard, J. (after reviewing and recapitulating at great length and in detail the voluminous affidavits presented).

Notwithstanding the mass of faóts grouped together in the foregoing statement of the contents of the papers, it seems to me that none of the material questions of fact are much, if at all, in doubt.

The conviction is forced upon my mind from the papers, and the failure of the plaintiffs to show specifically (for they must have it in their power so to do), %ohen they commenced manufacturing print cloths, that they in fact commenced their manufacture after the introduction by the defendants of the “Amoskeag Prints” in the market. The defendants set forth clearly and with emphasis in their moving papers that they introduced this print at least nine years ago ; indeed, Mr. Pink-ham’s affidavit shows that nine years ago they were openly and prominently introduced in Boston, and that the plaintiffs must have known of this ; and numerous brokers, who have excellent opportunities for knowing, say that they never ’knew, nor heard of the plaintiffs manufacturing print cloths ; that they never bought or sold any; they express the belief that the plaintiffs never manufactured any print cloths. The plaintiffs answer this by the affidavit of Sterett, of • this city, a member of the firm of Gardner, Brewer & Co., doing business here as agents of the plaintiffs, that for many years last past the plaintiffs manufactured print cloths, and he refers as confirmatory of this statement to a correspondence with a Philadelphia house in 1865. This is not satisfactory. The plaintiffs know when they commenced the manufacture of print cloths ; they had an opportunity to state it, and, failing to do so, when the fact is of great importance to them, the presumption is that it was after the introduction of the defendants’ prints into the market that they commenced manufacturing print cloths.

Again, it is clear from the papers before me, that the plaintiffs are not printers; that, if it is conceded that they manufacture the fabric, it is indisputable that they do not stamp the devices, designs, figures and colors upon the cloth. It is equally clear that these labels do not represent the defendants as manufacturers of the fabric, but as printers; they represent that the defendants invent, contrive, and with their skill make and stamp upon standard fabrics the designs, figures and colors which are upon the prints ; that the process of making print cloths is one thing; that the defendants’ process is radically and essentially a different thing; that the first process requires as its foundation raw cotton, machinery and labor of one kind and of a certain character; that the defendants’ process takes any other manufacturer’s standard goods when finished by him as print cloths, and with coloring material, chemicals, different machinery and different workmen, stamp and imprint upon the standard fabric, colored figures, devices and characters ; that the two processes are never carried on in the same factory, or by the same manufacturer as one branch of manufacture ; that the manufacturers of print cloths and of prints throughout the country so understand it; that the trade so understand it; that the dealers in prints and calicoes never inquire as to the manfacturer of the fabric, but that they inquire simply as to the reputation, character and skill of the printer in producing fi :ed and fast colors,—colors which will wear well, endure exposure to the air and sun, and stand washing; and that it would not make the slightest difference in the world to learn that the print or calico is the plaintiffs’ or any other manufacturers’ make.

These conclusions are founded upon the statements of dealers in the trade throughout the country, by the most extensive manufacturers of fabrics, and by experienced printers, by brokers familiar with the manufacture of print cloths and of prints and calicoes, and the plaintiffs have wholly failed to answer them. It is no answer to these prominent, undisguised and unmistakable facts to say that one man in Boston supposed he purchased plaintiffs’ goods when he purchased “ Amoskeag prints nor for one man in Hew York to say that it was believed and understood that the defendants intended to represent their goods as of the plaintiffs’ manufacture ; nor for seven others to say that the labels are calculated to produce the impression that the prints or calicoes are manufactured by the plaintiffs. These are not facts to be regarded as outweighing those presented by the defendants.

The plaintiffs’ counsel, in his third point, says: “But the plaintiffs had never printed any of their cloths, and, therefore, had never used their name on any prints.” This statement is in consonance with all the facts of the case ; but, nevertheless, the plaintiffs’ counsel insists that, inasmuch as “the fabric and substance of the article is the same, the difference being in the coloring only,” the defendants have invaded the plaintiffs’ trademark. The plaintiffs concede that they have never manufactured prints; that they have never had a trademark for prints; that they have never placed their distinctive name of “Amoskeag” on prints, but because they have placed it on everything else in the shape of cotton goods except prints, they insist that they, only, have the right to put it there, and that if any one else, however honestly it may be done, places it there, he invades their trademark, and must be enjoined. To this doctrine I cannot yield assent. I cannot subscribe to it; and, in my judgment, it is an unsound doctrine, and one which has not yet, and never will obtain a foothold in this or any other country where the principles of equity are intelligently applied and fairly administered. The plaintiffs have the right to use this word as they used it prior to the use of the words employed by the defendants as their trademark, and any one who appropriates it to his use without the plaintiffs’ consent, invades their rights, must respond in damages, and will be enjoined. The plaintiffs applied it to the great variety of goods manufactured by them, most clearly, except print cloths ; and for the purposes of this case, I think it makes no difference whether they applied it to print cloths or not. When the defendants, manufacturing as they do print cloths, apply to them the word “Amoskeag,” or call them “Amoskeag print cloths,” it will be time enough to determine whether it is an invasion of the plaintiffs’ rights. It may be conceded that, to the goods of the plaintiffs to which they applied this word, it became a trademark ; that it was the sign, the ear-mark by which the goods so labeled were known in the community; it was their advertisement giving character and reputation to the articles upon which it was thus stamped, and if the defendants have placed it upon goods such as the plaintiffs have been in the habit of stamping it upon, it may be granted they have done the plaintiffs an injury; that they have deceived and are deceiving the community who are acquainted with the plaintiffs’ trademark. If the plaintiffs placed this word upon prints or calicoes of their manufacture, as they have upon their ginghams, the defendants, by placing it'upon their prints and calicoes, would invade their trademark, and should be enjoined. But they have done no such thing; and right here is the difficulty in the plaintiffs’ case, and which, in the end, must defeat this action. They never manufactured prints or calicoes ; they never had a trademark for prints or calicoes, and consequently the defendants have not invaded any right of the plaintiffs. I deny emphatically that the doctrine. of trademarks is capable of indefinite expansion ; that when a word of meaning, a geographical word, is used as a trademark and first applied to one branch of manufacturing cotton goods, when there are subsequently invented several distinct branches to it, like Aaron’s rod, it swallows up all the subsequent branches. The doctrine of trademarks must not be extended beyond its just limits; or, in a country like ours, filled as it is with enterprise, capital, skill, inventive genius, and with men possessed of progressive ideas, it will in the end be productive of greater injury than good. Protect those who have made a name and reputation in trade or manufacture by calling a given article a given name, for to that extent it is their property; but if there is an article in the trade or in the range of manufactures to which it has not been applied, as to that article any one has the right to give it any name he may select; and if he selects a name which has been applied to some other article or thing, the owner of that article or thing has no right to complain. It follows from these views that as to prints the plaintiffs never had a trademark ; that as to prints and calicoes, the defendants had the right to apply any word of significance, any word having a geographical meaning, not previously applied to those articles ; and when they selected a word applied by the plaintiffs to goods other than prints, no rights of the plaintiffs were invaded, although the word forms a part of the plaintiffs’ corporate name; any other rule would be impracticable.

The plaintiffs, for over thirty-seven years, have manufactured almost every conceivable cotton fabric ; to these they have applied this word in a variety of ways, but they never manufactured prints ; they never applied it to prints; they could have done so if they had desired to, but they did not, and do not; they say they will not do it themselves, nor will they permit others to do it. This is a sort of a dog in the manger policy, which courts of equity will not enforce. Corporations and vast monopolies must be protected in their legal and well ascertained rights, but it is not incumbent upon courts of equity to prevent others from doing what corporations and monopolies have failed to do, and do not do, simply because they prefer not to do it.

I have examined the cases cited by the plaintiffs’ counsel, and many others, and no case,—no principle established by any reported case which has fallen under my observation,—sustains the plaintiffs’ views.

The counsel for the plaintiffs says the distinction between the print'cloths and prints, as applied to the entire class of cotton goods, is a distinction without a difference. In this proposition, I think the plaintiffs’ radical error exists. As I have before remarked, with -the light thrown upon the distinction by the testimony of manufacturers of print cloths and of prints, by the testimony of cloth brokers, traders and merchants, the difference is as wide as that between day and'night. The distinction is as great as that which exists between the raw cotton and print cloths; for print cloths, after all, are cotton: the distinction is as great as that between the rough, unhewn marble, and the same marble after passing through the hands of skill and art, for sculptured art is marble still; it is as great as the distinction between the canvas before and after genius and skill have placed upon it their creations ; it is as great as the difference between crude brass before and after it has passed through the hands of the “cunning workmanindeed, these examples might be multiplied without number. A certain kind of skill produces the raw cotton, a higher degree of skill produces the print cloth, a still higher, and, indeed, the highest degree of skill, produces the print, the calico ; each is a distinct process, each requires a peculiar process, not applicable to the other. The raw cotton manufacturer may have his trademark, and undoubtedly in many instances has it. The print cloth manufacturer may have his, and so may the print manufacturer. Suppose the print manufacturer adopts the raw cotton trademark word, or nice nersa, or that the print cloth manufacturer adopts the raw cotton trademark, would an - injunction be issued for the invasion of a trademark in either case ?

The argument of the plaintiffs is, that the distinction between print cloths and prints is for manufacturers and experts ; that they neither know or care for the difference in the mode of coloring them ; good cotton stuff of good color is the thing needed.

Certainly this argument shows that the trade cannot be misled, and it is difficult to see how the masses who use calicoes can be. They never use print cloth, as I understand it, until after it has been printed; and thus it will be impossible for the masses who use prints or calicoes to know anything of print cloths. This is the first inference from the papers before me ; but I think the intelligence of those who use prints, calicoes and ginghams, &c., is underrated. 1 have exhibited the specimens of prints and ginghams submitted, to the humblest servant women, and they at once declare their preference for the print, and show a perfect familiarity both with the print and gingham. It is clear that the trade is not deceived, and I think it is equally clear that the masses are not; that the consumers and small dealers are not. When the pertinent fact is borne in mind that the plaintiffs have never manufactured or sold calicoes, it will be impossible to come to the conclusion that those who have never used them or, seen them, or ever heard of them as of plaintiffs’ manufacture, can be induced to purchase the defendants’ calicoes, because ' the word “Amoskeag” is upon them. The plaintiffs never had any name or reputation, good or bad, for producing calicoes / they have a good name as manufacturers of other goods, and when the defendants shall use the word “Amoskeag ” upon goods manufactured and sold by the plaintiffs, they will do them an injury, may deceive the public, and will be enjoined. But as it is, the plaintiffs are not injured ; their sales of prints cannot be lessened or injured, for they never sold or manufactured any; their sale or manufacture of goods other than prints cannot be injured by the defendants’ conduct, because, as to such goods, the defendants do not apply the word “Amoskeag.” These views, if sound, are also fatal to the plaintiffs’ case, "because all the authorities agree that the plaintiffs must be injured by the invasion of their trademark, and that the public must be deceived or imposed upon. Besides, this court will not aid a party, when, by so doing, it works wrong and oppression.

In this case it is apparent that the defendants’ labels have been well known in the markets of the country, from Boston to St. Louis, for years; in the former market, near the plaintiffs’ place of manufacture, for at least nine years. I am well satisfied that the plaintiffs were aware of these labels long ago ; indeed they nowhere say to the contrary ; they must therefore be regarded as having winked at, connived at, the use of this word; they may have supposed it could not in the end injure them; that they could, when they saw fit, enjoin the defendants, and thus prevent the continuance of the use of it by them ; the defendants have gone on for years, confessedly their right to do so unquestioned, notwithstanding one of the plaintiffs’ affidavits says it was understood and believed in New York that the label was employed to produce the impression that the prints were manufactured by plaintiffs, and that was nine years ago; they have built up by degrees, and by their skill, enterprise and capital, a good name and reputation for these prints; their sales are large; their damage, by reason of this injunction, being $3,000 a day; the plaintiffs, after thus lying by, suddenly,, when the leading member of the defendants’ firm is compelled to pay a sum of money larger than the plaintiffs’ capital of three million dollars, discover that their trademark has been invaded, their good name for manufacturing everything besides prints has been invaded, and they and the public injured by the defendants manufacturing and selling what the plaintiffs never manufactured or sold,—prints, calicoes. If the plaintiffs’ views can be sustained,, a great injury and wrong certainly will be done in the name of law and equity ; the defendants will be enjoined, and their trademark and valuable trade secured by their invention, as represented by these labels, will be destroyed. It will-be blotted out. Or shall the plaintiffs succeed to it ? Shall they secure it \ The strong arm of equity is never stretched forth and employed, not only to work wrong and oppression, but to enable a party to obtain a dishonest, unconscientious advantage, by appropriating to himself the fruits of another’s industry, skill and capital. The plaintiffs do not manufacture prints ; if the injunc-' tion stands, the defendants cannot manufacture or' sell prints with these labels upon them ; to fill the void thus created, the plaintiffs claim they may, for the first time, manufacture the prints or calicoes, imprint upon them “ Amoskeag Prints,” take them into the markets of the country, and sell them upon the strength and reputation which the defendants’ prints have acquired. And the plaintiffs claim that this they shall be enabled to do through the intervention of a court of equity. When such results can be produced in a civil tribunal, organized by the laws, and in conformity to the constitution, it deserves to be called by some other name than a court of law or a court of equity.

Frankness constrains me to say I am unfavorably impressed by the plaintiffs’ course in selecting the time they did for obtaining and serving their injunction. The defendant, Garner, states facts and circumstances, and charges an intent on the part of the plaintiffs, calling, upon them to deny that they designed by these proceedings to embarrass them, financially, by arresting their business immediately after being compelled to pay out a sum of money larger than the plaintiffs’ capital of three millions; and how do they deny it ? By producing the affidavit of a mere agent of the plaintiffs, Sterett. It would have been much more satisfactory to have had an affidavit, at least from the treasurer, verifying the complaint.

If it is necessary, to maintain an injunction, for the plaintiffs to establish an intent on the part of the defendants to defraud the plaintiffs, or to deceive the public (and I do not mean to express an opinion upon this subject, although many authorities seem to hold that it is), I think that they have entirely failed so to do. The defendants, when they introduced these prints, in the light of the evidence before me, knew that the plaintiffs did not man. ufacture print cloth; they knew that the plaintiffs had never manufactured prints or calicoes ; consequently, they knew that the plaintiffs had no reputation, good or bad, as to prints or calicoes; they knew that the trader or the consumer never, in purchasing calicoes, inquired after the manufacturer of the fabric, any more than they inquired after the raw cotton out of which the print cloth was made ; they knew that standard print cloths were all that were necessary to make desirable prints; that the character of the print depended, with the trade and with the consumer, upon the skill and reputation of the printer for producing superior devices, designs, figures and fast colors; they well knew that their prints must stand or fall as they produced, or failed to produce, fast colors: knowing these things, they undertook the enterprise of adding another name to the already long list of names upon their labels; they had already some names other than Indian names ; they had already several Indian names ; they added “Amoskeag Prints ” to the list to designate another grade of prints; the fabric of these prints contained sixty threads by sixty-four threads to an inch; after a while they concluded to improve the fabric by substituting “ standard,” containing sixty-four threads by sixty-four threads to an inch; they also improved the colors, and when thus really improved in fabric and coloring, they truthfully called it “Amoskeag Improved ;” they introduced it to the trade as their production; the trade so understood it almost universally, except a single Boston merchant. They selected this word, as the defendant, Garner, says, for the simple purpose of designating this class of prints from some thirty other varieties, as he selected the other Indian names; that the word has a proper significance as applied to manufacturers, and that it is a fair sounding name. The conclusion is irresistible, it seems to me, that the defendants acted in the best of faith in selecting this word ; that they could not, and did not, and do not injure the plaintiffs, or deceive the public ; that the trade well understood (as well as the public generally, so far as they have knowledge upon these subjects) that the prints and calicoes were of Grarner & Co.’s production ; indeed, I am satisfied, from the whole' case, that the plaintiffs so understood it, at all events until very recently ; otherwise, it is impossible to account for their long silence, and for their toleration of what they now claim to be an invasion, a piracy of their trademark, to their great damage.

My conclusions are:

1. That the plaintiffs did not manufacture print cloths prior to the introduction of the labels by the defendants.

2. That they never manufactured or sold prints or calicoes.

3. That they had no trademark or property in the word “Amoskeag,” as applied to prints or calicoes.

4. That the arts of manufacturing print cloths and prints and calicoes are essentially distinct and different as to material, machinery, factory, neatness or the reverse, skill and workmanship.

5. That the trade generally, and the consumer, in purchasing prints or calicoes, never take into account, in the slightest degree, the manufacturer or the place-of manufacturing the fabric or print cloth.

6: That the sole inquiry made by the trade generally, and by the consumer, in purchasing prints or calicoes, is as to the character and reputation of the printer’s skill in producing desirable and fast colors.

7. That the trade generally, as well as consumers, well know and understand the difference between prints or calicoes, and ginghams, &c.

7. That the defendants first applied the word “Amoskeag ” to their prints and calicoes, and that in so doing they did not invade the plaintiffs’ right to use it as to their goods, as they always had used it.

9. That the defendants, in so applying that word to their prints, did not intend to represent their calicoes as of the plaintiffs’ manufacture.

10. That in so applying it they did not intend to injure the plaintiffs, nor to deceive the public, and that, in fact, the plaintiffs have not been injured, nor have the public been misled or deceived.

11. That the sole and only object and design of the defendants in using the word and devices upon their. labels was and is to distinguish these calicoes from other grades and varieties manufactured and sold by them.

12. That the trade so understood it; that- the consumers so regarded it as well as the plaintiffs.

13. That these prints were introduced into the markets of the country, and particularly into the Boston market, more than nine years ago, to all the trade, as Garner & Co.’s production ; that the trade throughout the country so understood it, as well as consumers ; and the conclusion that the plaintiffs so understood it is irresistible from the indisputable facts before me.

14. That these prints have acquired, through the skill, industry and capital of the defendants, a high reputation in the markets of the country; that the plaintiffs, well knowing these facts, never questioned in any way or manner the right of the defendants to use the word “ Amoskeag,” and by their silence consented to, if they did not encourage, the defendants in the use of this word upon their labels introducing these prints to the trade generally throughout the country.

15. That, under these circumstances, to deprive the defendants of the use of these labels will work to them great and irreparable injury, wrong and hardship, and at the same time give to the plaintiffs a dishonest and unconsoientious advantage as the fruits of the plaintiffs* own wrong and negligence. The rule is that the plaintiffs must not be guilty of any improper delay in applying for relief {Hilliard on Inj., 34, § 43; Gray v. Ohio, &c., 1 Grant, 412; Wood v. Sutcliffe, 2 Sim. N. S., 168). If a party will lie Tby and be guilty of laches in the enforcements of his rights, he thereby in many cases forfeits his rights to the relief by injunction (Tash v. Adams, 10 Cush.253; Binney’s Case, 2 Bland, 90; Sheldon v. Rockwell, 9 Wis., 166). In Lewis v. Chapman (3 Beav., 133), a delay of six years and a half was the only ground assigned for refusing an injunction to restrain the piracy of a publication, when the plaintiff’s rights were admitted but for the delay (and see Saunders v. Smith, 3 Myl. & &, 711; Smith v. Adams, 6 Paige, 443 ; Coolers v. Hunter, 4 Rand., 58).

16. That the design and object of the plaintiffs in enjoining the defendants at this particular time from using these labels was and is to produce financial embarrassment to them, by destroying their profitable trade, immediately after the payment by the leading member of the defendants’ firm, in pursuance of the terms of his father’s will, of the sum of $3,225,000.

17. That to uphold the injunction upon the papers before me would be grossly inequitable and unjust to the defendants, would enable the plaintiffs to profit largely by their own wrong and negligence, and will thus turn this court into an engine to oppress and destroy, when its true office is to relieve a party from hardship and oppression, and to protect him in the enjoyment of his rights when they are illegally and wrongfully invaded or threatened with injury.-

18. That as to these prints or calicoes, the labels are the defendants’ trademark and property, and whoever invades them does an injury to the defendants’- rights of property ; they are the defendants’ property and trademarks as to these prints, to the same extent that the word “Amoskeag” is the plaintiffs’ trademark and property when applied to goods of the plaintiffs’ manufacture.

19. That the plaintiffs cannot be protected in the use of the word “ Amoskeag ” upon the ground that it is its name, or part of its name, but they can and must be protected in its use so far as they have applied it to goods manufactured by them, and no farther; and when it shall appear that they have applied it as their trademark to prints and calicoes, before it was thus applied by the defendants, the defendants can be, and must be, enjoined from using it; but until this does appear, the use of the word by the defendants is lawful; it is not an invasion of the plaintiffs’ rights of property, and they cannot be enjoined. The following cases and authorities sustain these views: Fetridge v. Wells (13 How. Pr., 385); Howe v. Searing (19 Id., 14); McCardle v. PecS (28 Id., 123); Edelsten v. Edelsten (1 De Gex, J. & S., 185); Hall v. Burrows (10 Jur. N. S., 55 Ch. ; S. C., 9 Jur., 483); Amoskeag Manufg. Co. v. Spear (2 Sandf., 599, 607) ; Brooklyn White Lead Co. v. Masury (25 Barb., 416); Blofield v. Payne (4 Barn. & Ad., 410); Crawshay v. Thompson (4 Mann. & Gr., 357) ; Knott v. Colgan (12 N. Y. [2 Kern.], 213); Croft v. Day (7 Beav., 84); Millington Fox (3 Milne & C., 338); Corwin v. Daly (7 Bosw., 222); Bininger v. Wattels (28 How. Pr., 206); Burnett v. Phalon (9 Bosw., 192). These are cases upon the subject of trademark, and sustain my views as expressed above.

20. That it will be inequitable and unjust to continue the injunction, and the plaintiffs have been guilty of laches (See 2 Story Eq. Jur., § 959, a ; Hilliard on Inj., §§ 17-43 ; Lewis v. Chapman, 3 Beav., 133 ; Gray v. Ohio, 1 Grant, 412). The injunction was undoubtedly properly granted by Cabdozo, J., upon the complaint and affidavits presented to him. Indeed, it was his imperative duty, upon those papers, to grant it, as it is mine, from the whole, as it now appears, to dissolve it.

Injunction dissolved, with costs.  