
    Joseph Burnett et al., Plaintiffs and Respondents, v. Edward and Henry L. Phalon, Defendants and Appellants.
    1. It having been found as facts by the Judge, before whom this action was tried at Special Term, that the plaintiffs in ifov., 1856, “ compounded from ' cocoanut oil and other ingredients a mixture to be used as a hair wash, for-which they devised as a trade-mark * * * the name or word‘Oocoaine;’ that they published the same very extensively, with notice that they had adopted the said name or title as their trade-mark;” and that the defendants in Uov., 1858, “ commenced the preparation and sale of a similar compound, in bottles * * *, and with labels under the name and title of‘Cocoine;’ and further, (as the fifth finding,) “that the defendants well knowing that the name, word or title of ‘ Cocoaine ’ was, and for a considerable time had been, the trade-mark of the plaintiffs, with the wrongful intention of inducing the public to believe that the compound sold by themselves under the name, word or title of ‘ Cocoine ’ was that of the plaim- ■ tiffs, and with the wrongful intention of securing to themselves the benefit of the skill, labor and expense of the plaintiffs, have so closely imitated and used the aforesaid trade-mark of the plaintiffs as tú deceive the public and to injure and damage the plaintiffs; that the word, name, title or device ‘ Gocoine ’ is a spurious and unlawful imitation by the defendants of the word, name, title or device * Coeoaine,’ the aforesaid trade-mark of the plaintiffs.”—It tucts held, that the plaintiffs were entitled to a judgment enjoining the defendants from manufacturing, using, selling or in any manner disposing of a compound or preparation with the name, word or title of “ Gocoine” printed or stamped upon the bottles, labels, wrappers, covers or packages thereof
    2. The evidence on which the facts were found is stated in the opinions delivered, Robertson, J,, dissenting from the conclusion that it was siiffi- ■ eient to sustain them.
    (Before Bosworth, Ch. J., and Moncrief and Robertson, J. J.)
    Submitted, February 11, 1862;
    decided, March 15, 1862.
    The plaintiffs, Joseph Burnett and William Otis Edmands, who were druggists and partners in business, in the year 1857, in, the Oity of Boston, commenced the manufacture and sale of au article of hair oil, compounded of various ingredients, of which the essential element was coeoanut oil. It was supposed by them to be a new article, and they alleged that they invented for it a new name, which was “ Coeoaine,” and that as soon as they commenced the sale of the article, they gave notice, through the newspapers and by their circulars, that they had adopted the word “ Coeoaine ” as their trade-mark.
    Edward Phalon, one of the defendants, had sold a similar preparation of coeoanut oil since 1840; and, in 1858, the defendants commenced the manufacture and sale of such a preparation, under the name of “ Coeoiné.”
    The plaintiffs brought this action to restrain the defend-: ants from using the word “ Gocoine ” in the sale of their article, claiming that the use of that word was an infringment of the exclusive right of the plaintiffs to the use 'of the word “ Oocoaine.” They also claimed damages for thé injuries which they alleged they had sustained by the infringment.
    The action was tried at a Special Term on the 21st day of April, 1859, before Mr. Justice Pierreport, and the plaintiffs had a judgment perpetually restraining the defendants from-using the word “ Gocoine.” •-
    
      The following opinion was rendered by the Judge:
    Pierrespont, J. It appeared before me, upon the trial of this cause, that the plaintiffs, in November, 1856, compounded from cocoanut oil and other ingredients, a mixture to be used upon the human hair; that they devised a name never before used, by which to mark his said compound, t@ wit: the name or word “ Cocoainethat they forthwith published in all their circulars and in all the principal newspapers in the country, and especially in the City of New York, where the defendants reside, that they had adopted the above mentioned name or title as a “ trademark,” to secure the public and the proprietors against imposition, and that all unauthorized use of this trademark would be promptly prosecuted.
    ' The plaintiffs introduced this article upon the market, and spent, between November, 1856, and November, 1858, some ten thousand dollars in advertising the same. The demand for the article rapidly increased, the sale became large, and the profits were by no means inconsiderable. Each bottle containing the mixture had upon it the following label:
    “A PERFECT HAIR-DRESSING.
    A PROMOTER OF THE GROWTH OF HAIR.
    A PREPARATION FREE FROM IRRITATING MATTER
    BURNETT’S COCOAINE.
    For preserving and beautifying the Hair, and rendering it dark and glossy.
    The Cocoaine holds, in liquid: form, .a large proportion of deodorized Cocoanut Oil, prepared expressly for this purpose.
    No' other compound possesses the peculiar properties which so exactly suit the various conditions of the human hair.
    It softens: the hair when hard and dry. It soothes the irritated scalp-skin. It affords, the'richest lustre. It remains longest in effect. It is the best and cheapest hair-dressing in the world.
    Directions,—Apply with the hand or a soft brush every other day, or as often as the case may require, rubbing it thoroughly into the roots of the hair.
    To remove Dandruff, Scurff, &c., wash the head with Burnett’s Kalliston, rub dry with a towel, and apply the Oocoaine as directed.
    Prepared only by
    JOSEPH BUBHETT & CO.,
    
      Boston.
    
    [Entered according to Act of Congress, in the year 1857, by Joseph Burnett & Co., in the Clerk’s Office of the District Court of Massachusetts.]”
    About two years after the first introduction of this article by the plaintiffs, Phalon & Son, the defendants, residents of the City of Hew York, commenced the sale of a somewhat similar preparation, put up in bottles not very unlike those of the plaintiffs, and each bottle having upon it a label as follows:
    “ [Entered according to Act of Congress, in the year 1858, by Phalon & Son, in the Clerk’s Office of the District Court of the U. S. for the Southern District of Hew York.]
    
      PHALON & SON’S GOGOLNE FOB THE HAIB. ■ Prepared from highly purified Cocoa Oil.
    This preparation possesses extraordinary properties for preserving and beautifying the hair, and also restoring its natural luxuriant and glossy appearance. Apply frequently, by thoroughly rubbing it with the hands into the roots of the hair. When chilled, warm in a water bath or by the fire.
    PHALOH & SOH, Perfumers,
    Hos. 197, 497 and 517 Broadway,
    
      New Yorlc.” ■
    
    This mixture has also had a very large sale, with much profit to the defendants.
    
      The plaintiff claims that the defendants have pirated his trade-mark, and asks that damages may be awarded, and that an injunction may issue against them.
    The defendants contend that the plaintiffs’ compound is an imposition; that their mixture is superior; that the plaintiffs can have no property in the word “ Oocoaine,” and that “ Oocoine ” is not the same, but a different name, •and not calculated to mislead the public; and furthermore, that it is correctly compounded from the French.
    There is no evidence that the plaintiffs have committed any fraud upon the public; and which is the superior of the two mixtures, the Court will not consider.
    If the plaintiff cannot acquire any property or exclusive •right in this name, word or device thus contrived and adopted as his trade-mark, then there is no ground for this action; and if the defendants have adopted a device or name so differing from that adopted by the plaintiff as in no wise to deceive the public or do injury to the plaintiff, then the defendants are not liable in this suit.
    By the statute of this State, it is a misdemeanor punishable by imprisonment “ to forge or counterfeit, or cause “ or procure to be forged or counterfeited, any representar tion, likeness, similitude, copy or imitation of the private “ stamp, wrapper or label usually affixed by any mechanic “ or manufacturer to, and used by such mechanic or man- “ ufacturer on or in the sale of any goods, wares or mer- “ chandise, with intent to deceive or. defraud the purchaser “ or manufacturer of any goods, wares or merchandise “ whatsoever.” (Laws of 1850, ch. 123, § 1; same stat. 2 R. S., 4 ed., 880, § 49.)
    Thus our Legislature has declared in strongest terms its reprobation of all infringements by one citizen upon another’s trade-mark; and, long prior to any statutes upon the subject, it was settled law that a manufacturer, by priority of appropriation of names, marks or symbols, to distinguish his manufactures, acquired a property therein as a trade-mark, for the invasion of which an action would lie, and in the exclusive use of which he might be protected by injunction. This rule of law was recognized so long ago as the case of Southern v. Sow, in Pophain’s Reports, (page 143,) and in the case of Croft v. Say, (7 Beavan Rep., 84,) Lord Laxgdale said: “No man has a “ right to dress himself in colors or adopt and bear sym- “ bols to which he has no peculiar or exclusive right, and “thereby personate another person, for the purpose of “inducing the public to suppose either that he is that “ other person, or that he is connected with and selling ‘ the manufacture of such other person, while he is really “ selling his own.”
    This was the somewhat noted case of the “Day & Martin Blacking.” The defendants made and sold the genuine blacking; their names were Day & Martin; their label had the No. 97 1-2 Holborn Hill, and their device was the Royal Arms of England—whereas the plaintiff, who was the surviving partner of the original “Day &• Martin,” had upon his label No. 97 High Holborn, and the arms of Day & Martin, quite different from the Royal Arms, and yet the Court directed an injunction to issue.
    Lord Lakgdale said, “ the defendants’ contrivances were “ calculated to mislead the bulk of the unwary public into “ the impression that the new concern was connected with “ the old manufactory; and thus to benefit the defendants “ to the injury of the plaintiff and to deceive the public.”
    In the case of Pidding v. Sow, (8 Simon’s Rep., 477,) the Vice-Chancellor said: “The defendant was not at “ liberty to make and sell a mixture of his own under “ the same designation as the plaintiff had appropriated.”
    In the case before us, the plaintiff Burnett contrived a name unknown to any language, and sold his mixture under that appropriated designation for two years; advertising during the entire time, and in nearly every important journal in the city, that he had adopted that word or name as his “ trade-marled
    
    The “ Coeoaine,” as he called it, had a great sale, and after its reputation was established through the energy, skill, and money of the plaintiffs, the defendants then commenced the sale of their mixture, under the designation of Phalon & Son’s “Cocoine.”
    Was “this contrivance calculated to mislead the bulk “ of the unwary purchasers; and thus to benefit the defend- “ ants, to injure the plaintiff, and to deceive the public?”
    I have no doubt that an honest answer from the defendants would be affirmative. If Burnett’s “Cocoaine” had proved destructive to the human hair, Phalon’s “ Cocoine” would not have been introduced under that designation. It was the success of the former that introduced the latter; and where one intentionally (as in this case) so closely imitates the trade-mark of another, the law presumes it to have been done for the purpose of inducing the public to believe that the article is that of him whose trade-mark is imitated, and for the purpose of supplanting him in the good-will of his trade or business. (Taylor v. Carpenter, 2 Sandf. Ch. R., 603, affirmed in the Court of Errors.)
    ■ Every man has a right to the reward of his skill, his energy, and his honest enterprise; and when he has appropriated, as his trade-mark, letters combined into a wurd, before unknown, and has used that word, and has long published it to the world as his adopted “ trade-marh,” he has acquired rights in it which the Courts will protect.
    The proof is clear that the plaintiff had for nearly two years advertised his mixture in nearly every newspaper in this city, and had published in the same papers that he had adopted the word “ Cocoaine” as his trade-mark. The defendant was himself a witness, and he did not suggest that these notices had not been brought home to ■’his knowledge; the conclusion is irresistible, that he was ■aware of their publication, and that he intentionally ■adopted “ Cocoi'ne” as a close imitation of “ Cocoaine,” and for the purpose of deriving profit from the simulated trade-mark
    Ho one can appropriate a word in general use as his trade-mark, and restrain others from using that word. Burnett cannot acquire property in the word Gin, Wine, Brandy,, or Ale, or in any other word known to the language and in common use to designate things, or the qualities of things. But the word appropriated by the plaintiffs is not of- that character, and it is no hardship to the defendants to be restrained from its use as a trademark ; he can adopt another designation for Ms mixture; there is no necessity whatever for this close imitation of the plaintiffs’ mark, and the defendants can scarcely have any other motive than by this similitude to derive advantage from the plaintiffs’ toil. To this they have no right.
    There are some features of novelty in this case, but the general principles which govern it are well settled. (Gout v. Aleploglu, 6 Beav. R., 69; Perry v. Trueffitt, 6 Beav. R., 66 ; Goats v. Holbrook, 2 Sandf. Ch: R., 596; Partridge v. Menck, 2 Sandf. Ch. R., 622; Howard v. Henrigues, S Sandf. S. C. R., 725, [Case of the Irving House;] Stokes v. Landgraff, 17 Barb., 608; Clark v. Clark, 25 Barb., 76; Brooklyn White Lead Co., v. Masury, 25 Barb., 416; Taylor v. Carpenter, 11 Paige, 292.)
    The plaintiffs are entitled to judgment, and an injunction must issue. The order to be settled on notice.
    Upon the usual reference to ascertain plaintiffs’ damages, they were assessed at a nominal sum by reason of Ms refusal to disclose the ingredients of his preparation. The proceedings on this matter are reported in 11 Abbott’s Pr., 157 and 12 Id., 186.
    The defendants moved at Special Term for a new trial, wMch was denied, the decision of which motion is réported in 4 Bosworth, 622. Pinal judgment having now been entered against the defendants, they .appealed both from the judgment and from the order denying a new trial.
    
      Eusebius W. Dodge, for defendants; (appellants.)
    I. Plaintiffs’ judgment rests solely on the ground that he contrived a name unknown to any language, and appropriated it as a trade-mark. But in truth, the word ,is a properly compounded word, and the legitimate name for preparation of cocoanut oil, being compounded of the well known words “cocoa” and “olein.” II. The word “ Cocoaine,” when applied to an article of perfumery, fairly imports that it is a preparation of cocoanut oil, and thus, when used as the name of a cosmetic, indicates the nature of the compound, so that it cannot be urged that “ Cocoaine” is a mere fancy term, having none of the attributes of words or names in common use.
    In support of the doctrine that no person can have property in any word used to indicate the name or quality of goods, see the leading cases of The Amoskeag Manufacturing Company v. Spear, (2 Sandf. S. C. R., 599,) Fetridge v. Wells, (4 Abbott’s Pr. R., 144; S. C., 13 How.Pr. R., 385,) Stokes v. Landgraff, (17 Barb., 608,) Williams v. Johnson, (2 Bosw., 1,) Wolfe v. Goulard, (18 How. Pr. R., 64,) Corwin et al. v. Daly et al., (7 Bosw., 222,) Upton’s TradeMarks, 187.
    The name of a factory, hotel, store or saloon, when employed as a trade-mark, will be protected by injunction for the reason that such names serve to guide the public to a person’s place of business; and in that respect they indicate the owner or whoever may be entitled to the good will of the establishment. (See Howard v. Henriques et al., 3 Sandf. S. C. R., 725; Knott v. Morgan, 2 Keen’s R., 213;, Stone et al. v. Carlan et al., 3 Code R., 67; Marsh v. Billings, 7 Cushing’s R., 322; Genin v. Chadsey, 12 Abbott’s R., 69.)
    It will be seen that this distinction has heretofore been observed in applying the law in this class of cases, and it should still be followed.
    III. If the Court shall be of the opinion that the mere contrivance or invention of a word, gives to the inventor an exclusive right to its use as the name of an article of his manufacture, then it is submitted that the defendants should have a new trial upon their newly discovered evidence.
    
      John Sherwood, for plaintiffs, (respondents.)
    I. The fact that plaintiffs had acquired a right to the word Cocoaine, has been decided by the Judge, and is supported by clear evidence.
    The colorable evasion, in leaving out a single letter, only adds to the probability of an intention to defraud plaintiffs and the public. (Taylor v. Carpenter, 2 Sandf. Ch., 613, and cases.)
    II. The word does indicate the origin of the article, but it does not follow that there could be no property in it. The word is not in use in the English language, or as far as appears, in any language;, and the cases which declare that the name of a thing cannot be taken as a trade-mark, apply to such names as are generally used and known.
    The leading case of Gout v. Aleploglu, (6 Beavan, 69,) is directly in point; here the use of the word “Passendede” as a trade-mark was protected. So is Wolfe v. Goulard, (18 How. Pr., 64.) And see Stokes v. Landgraff, (17 Barb., 608.)
    The rule laid down in Amoskeag Mfg. Co. v. Spear, is against the defendant, for he could not with equal truth, use the word “Cocoaine,” for it had no meaning, (besides suggesting its origin from cocoa,) and the word was a novel and original one, and having no signification in any language.
    The distinction raised by defendants’ counsel, between signs of places of business and other trade-marks, is not supported by the cases cited.
    Nor is this distinction well founded in, principle, for the word Cocoaine, after its adoption and publication by the plaintiffs, directed the public to them as the manufacturers of the article.
    There is no decision that the word or device adopted to indicate ownership, or origin, shall not also convey the idea or name of the article to which, for the first time, it is applied. Nor could there be any reason for any such position.
    The word Cocoaine is not, in fact, descriptive, nor does it indicate quality. It is merely suggestive. No one could tell, from seeing the word alone, what the compound is, or its object, quality, or nature.
    
      It is not a scientific ov technical term, and is not descriptive as denoting the quality or nature of the material.
    Common examples, such as “ oxyhydrogen- blow-pipe,” and similar names, do not apply, because they actually define, describe, designate and explain their subject.
    III. A new word may be adopted as a trade-mark. (See eases above cited.)
    Could not the plaintiffs adopt any peculiar and original arrangement of letters. How if, instead of using letters merely- as a symbol, the plaintiff coins from them a symbolic word which is new, and at the same time conveys an idea of the ingredients of which the preparation is composed, while it also designates it as of his manufacture, is not that word a device or symbol which he can appropriate, as well as any other arrangement of the same letters ?
    IV. The word Cocoaine never before existed in our language. It never existed as a substantive designating-any preparation. When used by defendants to designate a hair-wash, it derived that meaning solely from Burnett’s use.
    V. The criticism of the opinion in this case, in Upton’s Law of Trade-Marks, written during the pendency of the case, is no more authority than the brief of the defendants’ counsel, and the course of argument as to the use of a novel word, is certainly unsupported by any authorities.
    The conclusion of the writer, however, that the judgment ought to be sustained, but upon different grounds than those set forth in the opinion of Justice Pierreeost, is well founded, (pages 180, 182.)
    This case does present another ground, viz.:
    That the word “ Cocoaine,” by its appropriation, use for a long time, and known connection with the name of Burnett, had, by relation to his ownership, acquired a distinct recognized meaning, as the word which his compound was known by.
    VI. But the law does not favor those who, by imitations, appropriate to themselves the fruits of the ingenuity, labor, and enterprise of others; and the great majority of cases are decided upon the broad ground that there was a palpable attempt to imitate what others had invented and brought to the notice of the public. The actions of the inventor of the trade-mark are not the subject of investigation so much as those of the imitator. (Croft v. Day, 7 Beav., 84; Howard v. Henriques, 3 Sandf., 725; Sykes v. Sykes, 3 B. & C., 541; Rodgers v. Nowill, 5 Man., Gr. & Scott, 109; Morrison v. Salmon, 2 Man. & Gr., 385; Day v. Binning, 1 Coop. Ch. R., 489; Ransome v. Bentall, 3 Law Jour. R., N. S., 161; see also cases cited in Upton on Trade-Marks, page 122; see also Clark v. Clark, 25 Barb., 76; Brooklyn White Lead Co., v. Masury, 25 Id., 416; Williams v. Johnson, 2 Bosw., 1; Coffeen v. Brunton, 4 McLean, 516; Hine v. Lart, 10 Lond. Jur. R., 106.)
    VII. The motion for new trial on the ground of newly discovered evidence, was properly denied.
    VIII. It cannot be denied that in truth the defendants did intend to obtain the benefit and advantage of the skill and labor of, and the money expended by the plaintiffs, and that they knew that the word “ Cocoaine ” was meant to be the trade-mark of the plaintiffs, and that they deliberately invaded their rights in that respect, intending to defraud the plaintiffs, and to deceive the public.
   Bosworth, Ch. J.

That the judgment is just, on the facts found, I regard as free from serious doubt. I think the evidence warrants the findings. The only finding of fact, in respect to which there can be any doubt of the sufficiency of the evidence to justify it, is the fifth.

That finding states, that the defendants well knew that the plaintiff used the word “Cocoaire” as their trademark, and to indicate that the compound on which it was impressed, was their manufacture, and that the defendants fraudulently used the word “ Coedine” to induce the public to believe that the compound of their preparation, was in fact that of the plaintiffs, and that in this regard their attempt to deceive the public and defraud the plaintiffs has been successful.

Edward Phalon, one of the defendants, testified that he had been in the business of hair dressing 24 or 25 years; that he commenced manufacturing perfumery in June, 1852, and selling at wholesale and retail every kind of perfumery; that he has sold “a preparation of coeoanut oil,” as “a preparation of hair oil” at different times since 1840. He called it “a preparation of coeoanut oil” and sold it to customers, but not by wholesale, until 1858,' when he commenced selling it under the name “ Cocoike,” and with labels on the bottles, having that word impressed thereon.

Ho one can readily believe, that an enterprising manufacturer of, and dealer in perfumery, and who had been selling at wholesale and at retail since June, 1852, every kind of perfumery, had failed to observe the advertisements of “ Burnett''s COCOAIHE” which were extensively published in the summer of 1857, in the City of Hew York, the defendant’s place of business, in the Herald, Tribune, Times, Evening Post, Express, Sun, Harper’s and Leslie’s Weekly, as well as in other papers, or that he was ignorant of the existence in the market, of an article thus advertised, and sold in New York, by A. D. & C. Sands, Lazell, Marsh & Hand, Hegeman & Co., Barnes & Park, E. C. Hell & Co., Carey, Howard & Sanger, I or T. Maxwell, Schieffelin Brothers, and many others, and the sales of which had increased from 500 dozen bottles in the six months commencing July 1, 1857, to 1,500 dozen in the second six months, and in the next six months to 300 dozen more.

Even if he had denied on oath that he had heard of the article; or, if having heard of it, that he was aware that this article of the plaintiffs’ manufacture was, or had become known to the public, by the word “Cocoaene,” it would require some credulity to credit it. But he makes no such denial, and there is no evidence opposed to deducing such inferences as would be naturally drawn from the testimony to which I have referred.

But this is not all. The defendants, according to their own testimony, had been selling, since 1840, substantially the same article as they, in 1858, denominated Cocoine; and had been selling it as “A preparation of cocoanut oil." Why, after transacting this item of their business, in this manner, for some eighteen years, do they resort to the means employed in 1858 to bring it before the public under the designation of “ Cocoine'’? The answer is found in the reputation, and extensive and largely increasing sales of Cocoaine.

And there cannot reasonably be assigned any other motive than the one stated in the fifth finding of facts.

The fact that Leopold Simon, (the defendants’ chemist, who entered into their employment about the first of March, 1858, and who, prior to that time, had followed the business of a chemist in Paris,) had never heard of the word Cocoaine until after he “composed” the name Cocoine, does not, in my view, tend to show the absence of a fraudulent intent in the defendants.

The defendants had been “frequently experimenting “with cocoanut oil, and selling” it since 1840, and selling it as a preparation of hair oil. , It was a simple matter to get up a label, and impress on it, and on the bottles containing their compound, the word “ Cocoaine,” omitting one letter only. But no plausible or rational explanation, except an intent to defraud, could be given of a transaction as bold as that would be. It was, undoubtedly, deemed wiser to instruct the chemist to compose a name, somewhat indicative of the substantial ingredient of the compound, without informing him of the fact that Burnett was manufacturing and selling largely a similar article, which was known as “Oocoaine.”

The reputation of the defendants may, justly, be assumed to be extended, creditable and valuable. They had used it, and had experienced all the benefit that eighteen years’ employment of it, in connection with their preparation and sale of cocoanut hair oil, could give to their compound.

Burnett, by great outlay and effort, had succeeded in creating an extensive demand for his own manufacture, known as “ Cocoaine.” The defendants, in 1858, with the intent and for the purpose stated in the fifth finding of facts, impressed on the bottles and labels containing and covering their compound the close imitation, “ Coeo'ine."

It seems to me, therefore, that the judgment cannot be reversed on the ground that this finding is contrary to evidence.

That the plaintiffs are entitled to the relief of an injunction against such a use of their trade-mark, on the facts found, I do not understand to be disputed. The cases cited, on the points of either counsel, establish that they are. (See Upton’s Trade-Marks, 180-185.)

That the plaintiffs recovered only nominal damages, considering the circumstances under which they were so assessed, I regard as of but little moment.

I think the judgment should be affirmed.

Moecriee, Justice, concurred in this opinion.

Robertson, J., (dissenting.)

The principle adopted by the learned Judge at Special Term, in deciding this case, was one of which I had occasion to approve in the case of Corwin v. Daily, recently decided in this Court, (7 Bosw., 222,) and is fully sustained by all the cases. It is that a manufacturer of, or dealer in, any article, has a right to designate them as being made or sold by him, by a mark, or device, formed of a combination of letters, (such as Cocoaine,) not constituting a word in any language, and that no other person has a right to use the same mark, or device, by an immaterial change, such as omitting a single letter, (as in Cocome,) so as to induce the unwary public to believe that the articles made or sold by the counterfeiters are the same as those of the original inventor of the mark.

If, however, it should appear, as is contended in this case on the part of the defendants, that the device used by them to indicate their. manufactures, is a word either actually in use to express the nature,- component parts, quality, or use of the article, or capable of being formed, according to the analogy of language, from other words, as a different part of speech, (such as Coco'ine,) and the plaintiffs have only adopted the same word, inserting a letter therein, in inventing his mark, so as to deprive it of its character as a word, the question would arise whether the defendant could be deprived of the right to use the combination of letters forming such word because it might resemble the device so adopted. The only remaining questions, therefore, in this case, are questions of fact, whether the term Cocome, with the diaeresis over the “i,” was a word in the French language, indicating the nature, ingredients, quality, or use of the liquid compound made by the defendants, and, if not, whether the defendants used’such word, or combination of letters, to mislead the public and make them believe that the commodities sold by them were the same as those sold by the plaintiffs.

It is somewhat remarkable, in this case, that the result of the report of the Keferee, is that the plaintiffs have sustained no damage, and the defendants made no profits, hitherto, by their' invasion of the plaintiffs* mark, and, to that extent, the basis of any equitable jurisdiction is taken away. I had occasion, in the case already adverted to, to trace the origin of the doctrine of trade-marks to the common liability of every one who palmed off upon the public his commodities as those of another man, to the deceived customer, and, indirectly, the supplanted competitor,. Equity seized on jurisdiction to prevent repetitions of the wrong, and, with its customary eagerness to amplify such jurisdiction and model the relief granted by it to every phase of such wrong, created the doctrine of what are called trade-marks. In doing so it has nearly established a common law copyright, of perpetual duration, permitting an injunction without a trial at law, calling upon the defendant for an account of his profits, and even attempting to reach what are claimed to be instruments prepared for future, fraud. This may be a very healthful jurisdiction, but, without great pare, its searching character may be made an instrument of wrong. Much is said of the injustice of allowing one man to. avail himself of the skill and expenditure of another by false representations, which is well founded; but where, instead of using the name of the owner, or vendor, strange devices and insignia are employed to indicate such ownership, or source, which do so but ambiguously, and require considerable familiarity and experience with them to connect them therewith, no great sympathy is created for those using such devices. Were they the subjects of copyright, or other modes of warning mankind against trespassing on a settled right, there would be greater justice in punishing the trespasser; but the most innocent may be caught unwarily in a litigation where a word is employed as a device, originating, in some measure, from the materials used in forming a composition, as in this case, where one of the plaintiffs admits that he framed Cocoaine as a word, and that it was suggested by the cocoanut oil employed in the manufacture of the article, while the discoverer of the word Cocoine claims that it is a word, framed according to the genius of the French language, to express the extract of that oil.

The learned Judge who refused a new trial in this case upon the newly discovered evidence, was undoubtedly correct in considering such evidence as merely cumulative, if the fact that Cocoine was a word known and in use before the adoption of the word Cocoaine by the plaintiffs, was a subject of conflicting evidence before the Court at Special Term, and material, on the original trial of the issues in this action. But, in reality, there was no conflicting evidence, and either the testimony on the first trial failed to make out the prior or proper use of Cocoine, as indicating something connected with cocoanut oil, or the learned Judge on such trial must have held that such use and connection was immaterial, and that no one had a right to use any word as a device for his commodities which resembled a combination of letters which formed no word, adopted by another, if he did it with intent to have them mistaken for each other; and that there was evidence of such intent in this case. That learned Judge, who does not agree with the plaintiffs in the view that Oocoaine is a word, but holds it to be merely a combination of letters, has not, either in his findings of fact or opinion, passed upon the question whether, upon the evidence, Cocoine was a word in the French language, but places his decision purely upon the ground that, after the plaintiffs had adopted Cocoaine, which was no word, the defendants could not employ the word Coeoine, even if it was a word, because it so nearly resembled the former as to be mistaken for it; and although we have a right to supply, as a fact found, that Cocoine was not a known word when the plaintiffs adopted Cocomne, if necessary to sustain the judgment, and the testimony warrants it, I think in this case the testimony of Simon, which was uncontradicted, does not warrant it. A word composed of the letters O-o-c-o-i-n-e was found in a scientific French dictionary, but with an accent over the final “e,” which renders the pronunciation different from what it would be without it. That word was, however, an adjective, and meant that which had the form of a cocoanut tree. In that form it was a botanical word. But the French language, as appeared, admits also of the formation of words to express a chemical result, and the termination “ine,” added to the name of a substance, expresses the "finest part or essence of it when reached by a chemical experiment and discovery, and there were two hundred words, with such termination, meaning extracts. The witness testified that by such rule Cocoine is a proper term in chemistry, and would mean the finest part of the cocoanut oil. Such testimony seems satisfactory to show that the term Cocoine could be very well adopted to signify an ex-tfactof cocoanut oil, find would be recognized as a French word expressing it by all who understood the French language and the rules of forming words in it. The question, therefore, comes back to the same point—whether the plaintiffs, by adopting the letters O-o-c-o-a-i-n-e in the order in which they did, precluded all the world from using the word Cocoine to designate an extract of cocoanut oil, if the intent were thereby to sell the commodity to which it was attached as the plaintiffs’, and such were the result.

It is plain that the plaintiffs could not prevent the honest application by the public of the term Oocoine to an extract of cocoanut oil, or anything of which it was the principal ingredient, or the sale of such commodity by that name. The question therefore arises whether the defendants could anticipate the innocent application of such name to such commodity by the public, and employ it with intent to divert the plaintiffs’ custom. After such name became honestly public property, and publicly known, the plaintiffs would certainly no longer rely upon a word so near it as Oocoaine to protect themselves against the danger of confusion of the two articles; but until some honest motive made the. application proper, they had a right to rely on protection against the dishonest adoption of the term merely to injure them.

I am, however, by no means satisfied that the evidence in this case warranted the finding, that the defendants adopted the term Oocoine with intent to have the public believe that it was the same article as the plaintiffs’. The cause of reasoning by which the learned Judge, before whom the issues were tried, arrived at that conclusion, was simply this :• that the plaintiffs had advertised extensively their adoption of the term Oocoaine; that the defendant must have known such advertisements, because he did not deny knowledge of them on his examination as a witness; and that, knowing them, his adoption of a word so nearly alike must be held to be in bad faith. The chemist employed by the defendants swears that, being employed by the latter, he invented the name spontaneously; that he consulted many authorities before he did. so, and had not heard of Oocoaine as the plaintiffs’’ trade-mark, and his testimony is uncontradicted. It»,was- the- business of the plaintiffs to make out bad faith affirmatively. Nothing can be inferred from a party, when on the stand as a witness, not volunteering, to deny knowledge of a notice. It was the duty of the plaintiffs to-have brought such know- • ledge home to him in some way. I do not think that the testimony bears out the inference of the learned Judge, that the plaintiffs had for nearly two years advertised their mixture in nearly every paper in Hew York. One of them testified merely that he advertised in some of the principal or leading papers; this being the only advertising, it was not prima facie evidence that the defendants had seen such notices, as it can hardly be presumed that every man reads all the newspapers. Without this presumption of knowledge by the defendants of the advertisements, there is no evidence to sustain bad faith on their part, and the evidence of one witness tends to show good faith.

For this reason alone I think there ought to be a new trial, as the question of good faith is vital to the plaintiffs’ right to interfere, particularly in a case of this kind where the word used by the defendants was appropriate to the article sold, was formed by a French chemist according to the analogies of the French language, and without knowledge of the plaintiffs’ trade-mark.

There appears, besides, to be an addition to the use of the word Coeoine in the defendants’ labels, besides the diaeresis over the “ i,” which should protect them either altogether or else in some degree from the charge of bad faith; the labels exhibited, and it is so charged in the complaint, have the name of the defendants’ firm prefixed to that title, thus showing the origin of the article sold, and this, in several cases, cited in Corwin v. Daly, (ubi supra,) has been held sufficient, unless some device is used to prevent its being noticed by the public. The value of such an addition in notifying the public as to the real manufacturer of the article sold, can be better determined on a new trial, by inspection. Ho notice seems to have been taken of it on the former one.

The judgment should therefore be reversed, and a new trial had, with costs, to abide the event.

Judgment affirmed.  