
    IDA HORNBOSTEL, Appellant, v. FRANCIS S. KINNEY and THE KINNEY TOBACCO CO., Respondents.
    
      Patent—me of—royalties—Oonstruetion of agreement as to.—Trademark.—Sweet Garporal.
    
    Plaintiff and defendant, Erancis S. Kinney, entered into an agreement, whereby plaintiff granted said defendant the exclusive use of a certain patented process for treating and curing tobacco during the continuance of the patent, and defendant agreed to pay one cent a pound for every pound of tobacco treated by him by said process; and whereby it was further agreed that should defendant fail to use the process in the treatment of 250,000 pounds of tobacco annually, the license for the exclusive use should cease; but defendant was still to have a license, not exclusive, to use the process in the manufacture of cigarettes and smoking tobacco. At the time of making this agreement, defendant was selling a cigarette, to which he had given the name of “ Caporal.” • He proposed to call cigarettes made according to said process “ Sweet Caporal,” to which plaintiff assented, and he did make cigarettes according to that process and sell them under that title up to a certain period (up to which all royal, ties were paid), after which, neither he nor his transferee, the other defendant, used the process, but they continued to sell cigarettes under the name of “Sweet Caporal.”
    
      Held, that defendant, Erancis S. Kinney, was not, under the agreement, bound to continue the use of the process, but was only bound to pay a royalty on such cigarettes as he should manufacture under the process; and that defendants, not having manufactured under that process since the period up to which all royalties had been paid, plaintiff had no claim against them for royalties.
    
      Held farther, that as the word “Caporal” had been applied to cigarettes by defendant, Erancis S. Kinney, before he had ever used the process in question, and as the word “Sweet ” prefixed to it was only descriptive of qualhy, the plaintiff could have no right to the exclusive use of those words, either separately or in conjunction, as a trade-mark applicable to cigarettes; and consequently, as there was no evidence of any agreement, as to the use of the name of “ Sweet Caporal,” specially on cigarettes treated under the process in question, or that plaintiff or her assignees should have any exclusive right to use such a name as a trade-mark, plaintiff was not entitled to an injunction restraining defendants from using that name as applied to cigarettes.
    Before Sedgwick, Oh. J., O’Gorman and Ingraham, JJ.
    
      Decided April 6, 1885.
    
      Appeal from a judgment entered on dismissal of plaintiff’s complaint.
    The facts appear in the opinion.
    
      Johnston & Tilton, attorneys, and Albert Mathews, of counsel for appellant.
    
      Charles B. Meyer, attorney, and John S. Davenport, of counsel for respondents.
   By the Court.—O’Gorman, J.

The action was tried at special term, without a jury.

The relief asked for by plaintiff was, (1) That defendants be enjoined from the use of the name Sweet Cap-oral ” on cigarettes; and (2) That they pay annually a royalty of „one cent a pound on two. hundred and fifty thousand pounds of tobacco.

The material facts are these : Charles Hornbostel, claiming to have invented a new process for treating and curing tobacco, assigned to his wife, the plaintiff, his right to a patent for the same, which had been applied for by him, and letters patent were issued to her therefor on May 1, 1879. In December, 1878, plaintiff had entered into an agreement in writing with defendant, Francis S. Kinney, whereby she granted to him the exclusive use of the said process during the continuance of the patent, and also agreed to provide him with materials necessary to enable him to make use of the patent. Kinney, on his side, agreed to pay her one cent a pound for every pound of tobacco treated by him by said process ; and should he fail to use the process in treatment of at least two hundred and fifty thousand pounds of tobacco annually, the license for the exclusive use of the process was to cease; but Kinney was still to have a license,—not exclusive,— to use the process in the manufacture of cigarettes and smoking tobacco. Subsequently, and, as it would appear, for better security to defendants, on March 16, 1879, the plaintiff conveyed to said Kinney the exclusive right to use the process in the United States.

Charles Hornbostel had been in communication with Kinney on the subject of this process as early as October, 1878, and was making experiments therein. Kinney, at the time, was in the tobacco business, and selling a cigarette to which he had given the name of “ Caporal.” He proposed to call cigarettes made according to the Hornbostel process “ Sweet Caporal,” to which Charles Hornbostel assented, and cigarettes were made and sold by Kinney according to this process, under that title, up to December, 1879, and royalties were paid to plaintiff thereon.

In December, 1879, Kinney transferred his business to the “ Kinney Tobacco Company,” the other defendant, and about that time Kinney complained to Charles Hornbostel that the process did not work well, and was no good, and offered to return the assignment of the patent which plaintiff had given him, which offer Charles Hornbostel declined.

There is no evidence that, after that time, Kinney or the defendant company used the Hornbostel process, but they did sell cigarettes under the name of “Sweet Caporal.”

On these facts, there appears no cause of action against the defendants, or either of them. Defendant Kinney was not bound under his agreement to continue to use the Hornbostel process, but only to pay a royalty on such cigarettes as he should manufacture under the process ; and as to the defendants, the “Kinney Tobacco Company,” they entered into no agreement with plaintiff on the subject, and were under no obligations whatever to her. Plaintiff, therefore, has no legal claim on defendants, or on Kinney, for payment of royalties after December, 1879, when the defendants ceased to use the Hornbostel process.

As to the use of the word “Caporal” as a special name for cigarettes, it had been used by Kinney on cigarettes manufactured by him before he had ever used the Hornbostel process ; and as to the words “ Sweet Caporal,” there is no evidence of any agreement as to the use of that name specially on cigarettes treated under that process, or that either Charles Hornbostel or the plaintiff had any exclusive right to use such a name as a trademark. The word “ sweet,” added to the name Caporal ” formerly used by defendant Kinney on cigarettes of his own manufacture, was only a description of the quality of the article, which might be equally applied to cigarettes manufactured by others, and did not constitute a trademark to which any one could have an exclusive use (Godillot v. Hazard, 44 Super. Ct. 427 ; Coleman v. Crump, 70 N. Y. 573 ; Royal Baking Powder Co. v. Sherrell, 93 Ib. 331; Van Bill v. Prescott, 82 Ib. 630).

The judgment should be affirmed, with costs.

Sedgwick, Oh. J., and Ingraham, J., concurred.  