
    JOHN THORNTON, et al., Appellants, v. ROBERT CROWLEY, Respondent.
    Before Speir and Freedman, JJ.
    
      Decided March 7, 1881.
    
      Trade-mark—infringement of—what constitutes.
    
    Appeal from judgment dismissing plaintiffs’ complaint upon the merits.
    This action was brought to restrain the defendant from the use of two labels used by him on papers of needles sold by him. The plaintiffs brought it as the representatives of the firm of James Smith & Son, of England, who are manufacturers of needles, and whose labels it is claimed the defendant fraudulently simulated.
    The complaint-alleges, among other things, “ that before the needles manufactured by said James Smith & Son are distributed to dealers in the United States, by the plaintiffs, they are usually packed into small packets or wrappers of twenty-five needles, each bearing the firm name of James Smith & Son, as a trademark, printed, pressed or stamped on labels. of two colors, red and blue, &c., &c., facsimiles of which labels are annexed; that such needles are known throughout the United States by two principal colors of packets and wrappers, viz. : red and blue, the red-label containing a crown stamped or pressed in said label, with, the words and letters ‘ Jas. Smith & Son’s Genuine Drill’d Ey’d Sharps (x) Warranted, John Thornton,’ running from No. 1 to 12, separate and assorted; and the blue label con taining the royal British coat of arms printed in black ink, with the words or letters ‘ Jas. Smith & Son’s Improv’d Drill’d Ey’d Sharps,’ running from No. 1 to 12, separate and assorted, warranted John Thornton, all of which appeals more plainly and fully in the foregoing labels forming a part of this complaint; and that the needles of the other manufacturers have never been enclosed in packets bearing labels of precisely the shade of colors nor the design of said labels and the printing and impression thereon, and adopted by said James Smith & Son as aforesaid, except in a simulated form by the defendant, Robert Crowley, as hereafter more particularly referred to, and others.”
    The court at General Term, said: “It is now so well settled that it is no longer necessary to cite authorities, that a trade-mark may consist of marks, forms, symbols or even words in common use, provided they are used in such a way as to designate the true origin or ownership of the article and have not already been appropriated by others in connection with the same article. In case of prior appropriation of part, or parts, by others, the combination-of the plaintiff, as a whole, must be new, and intended and calculated to designate origin or ownership. No right accrues to the use of mere generic words used to designate the article or its quality.
    “ In every case in which the interference of a court of equity is sought for the protection of a label or trade-mark, the plaintiff must, first of all things, bring himself within these rules. When he has done that, the court, upon proof of infringement, will liberally protect him, not because he has any property in the word or words or the combination, but upon the principle that defendant’s imitation constitutes a fraud upon one who has established a trade and a reputation. Plaintiff’s prior and exclusive right to the use having been established, the test is whether the imitation is calculated to deceive purchasers. Upon the question of tendency to deceive it, may not be necessary to show that a person giving ordinary attention, or any attention, is likely to be misled. Perhaps it is sufficient that the careless and unwary may be misled. Upon this point the authorities are not uniform. But before the court can be called upon to apply any test at all, plaintiff’s prior and exclusive right must be clearly established.
    ‘c In the case at bar, the plaintiffs failed to establish, such prior and exclusive right as was necessary to sustain the action.”
    After consideration of the testimony, the court farther said: “Upon this state of facts the learned chief justice who tried the case below, was correct in finding:
    “ ‘ First. The particulars, ■ except the firm name of James Smith & Son, and the name of agent, which make up the labels used by the plaintiffs and set forth in the complaint, have been used for many years in labels of the same character as such labels of the plaintiffs commonly and rightfully by persons engaged in the needle trade.
    “ ‘ Second. The appearance of such labels of the plaintiffs apart from the names aforesaid is such an appearance only as results from an ordinary and rightful use of these particulars in an appropriate manner without the intention of making by such use a definite effect of the whole taken together.
    “ ‘ Third. These particulars are not so employed in such labels of plaintiffs that an original design or combination has resulted which can be perceived and considered by itself apart from its components.
    
      ‘Fourth. The labels of the defendant which are set forth in the complaint could be mistaken for the aforesaid labels of the plaintiffs only on account of a resemblance in these particulars used in an ordinary and rightful manner as aforesaid.
    “ ‘ Fifth. The name of defendant’s firm appears prominently on his aforesaid labels, in the ordinary mode of observation, would be read first, and is conspicuously different from the firm name upon the plaintiff’s aforesaid labels.’
    “Upon these findings, the defendant was entitled to a dismissal of the complaint on the merits. The case of Walton v. Crowley (3 Blatchf. 440), is distinguishable in this, that in that case the defendant claimed the privilege of using a label similar to that of James Smith & Son, with the name of Smith at the top, on the ground that a firm of like name existed in this country, needles of which firm he had on sale. It was the use of this name which chiefly caused the court to order the temporary injunction. The present case is analogous to Popham v. Wilcox (38 Super. Ct. 274 ; affirmed 66 N. Y. 69), and should be determined by the same rule that was applied there.
    
      Coolz <& Schuclz, attorneys, and Douglas Campbell and George C. Lay, of counsel, for appellants. •
    
      'Albert G. McDonald, attorney, and Charles W. Sloane, of counsel, for respondent.
   Opinion by Freedman, J.; Speir, J., concurred.

Judgment affirmed, with costs.  