Messerole v. Tynberg

Upon the conclusion of the arguments on the motion which was made to dissolve the injunction *414granted herein, I was impressed with the belief that the application must be denied; and subsequent examination of the proofs, papers and authorities, confirmed that view. The subject of trademarks is exhausted by the briefs of the respective counsel, and an array made of American and English cases which shows their zeal and industry.

Due consideration of the whole case results, however, in this proposition : If the plaintiffs can be pronounced the first to use the word “Bismarck,” although a popular term and one in general use, as a designation of a particular style of paper collars made by them, and to have acquired by its manufacture and sale under that name a valuable interest in such designation, the defendant must be estopped from using it for the same purpose. The plaintiffs had the right to appropriate such name, in common with others, for a new purpose ; and having done so, are entitled to avail themselves of all the advantages of their superior diligence and industry. There is no reason for making any distinction between a common word or term used for an original or new purpose which has accomplished its object, and a new design adopted by a' manufacturer. Both give currency to the articles to which they are applied, and distinguish them from other manufactures of a similar character/ All persons stand alike on this theory, and all are entitled to protection. This*rule is logically and justly evoked from the decisions relating to trademarks, although, as I have had occasion to observe in another case, it- may be said that there is a seeming although not real absence of uniformity in the doctrines established by them. I do not deem it necessary to analyze them. It is more practical and quite sufficient to state what in my judgment is applicable to this case as one of the results of these determinations, and it is this:

Whenever a trademark is employed to designate a particular manufacture, whether the term used is a popular one formed of words or symbols common to the world, or one expressly created for the purpose to which it is applied, and the manufacture acquires reputation and becomes valuable as an article of merchandise, an imitator *415thereof, for a kindred or similar manufacture, is presumed to intend wrongfully, and the burden rests upon him to show that there is either no property in the term or symbol, arising from priority of use for the article to which it has been applied, or that no deceit or injury can result from the imitation (Piddings v. Howe, 8 Sim.,479; Knott v. Morgan, 2 Keen, 213; Barrows v. Knight, 6 R. I., 434; Marsh v. Billings, 7 Cush., 323; Braham v. Bustard, 9 Law Times N. S., 199 ; Harper v. Pearson, 3 Id., 547; Hall v. Burrows, 9 Id., 561; Smith v. Woodruff, 48 Barb., 439 ; Howard v. Henriques, 3 Sandf., 725 ; Stone v. Carlan, 13 Law Rep., 360; Matsell v. Flanagan, 2 Abb. Pr. N. S., 459 ; Colfeen v. Brunton, 4 McLean, 516; Edelstein v. Edelstein, 1 De G., J. & S., 185; Walton v. Crowley, 3 Blatchf., 447; Davis v. Kendall, 2 R. I., 570.; Newman v. Alvord, 49 Barb., 588.

The cases have become numerous because success provokes rivalry, and fair dealing does not always characterize competition. I have been unable to yield to the conviction which some persons seem to entertain, that it is fair dealing designedly to appropriate for the same object a word, symbol, or term first employed by another for a particular purpose, although such word, symbol, or term is one in general use, and belongs in common to the world. The word, symbol, or term, abstractly considered, is not the subject of special right or property, but it may become so when the application of it identifies a particular manufacture, and the thing made and the word, term, or symbol, as applied to it, are synonymous. “ Property in a word for all purposes cannot exist, but property in a word as applied by way of stamp upon a stick of liquorice, does exist the moment the liquorice once gets into the market so stamped. Reputation in the market, whereby the stamp gets currency and an indication of superior-quality, or of some other circumstance which would render the article so stamped acceptable to the public, is property.” Lord Westbury, in Me Andrews v. Bassett (10 Jur. N. S:, 550).

There is a class of cases, such as Corwin v. Daly (7 *416Bosw., 222), where the plaintiff endeavored to appropriate the name of “Club House Gin;” and Binninger v. Wattles (28 How. Pr., 206), where the designation employed by the plaintiff was “Old London Dock Gin,” which would seem to conflict with the rule stated; but such is not the fact. The distinction between these and cases kindred to these is pointed out by Judge Daniels in commenting upon them, as he did in Newman y. Alvord (supra).

After showing that the protection sought in those cases was denied upon the ground that the terms adopted were previously in popular use for the same purpose as that to which the plaintiffs claimed the right specifically to appropriate them, he said : But neither these decisions, nor any others to which they refer, sanction the conclusion that because a term is in popular use it can be burdened with no new use of a special and exclusive character for the purpose of identifying the trade and manufacture of a particular individual. It is to be observed also that the rule which originally prescribed that fraud was a necessary element in the plaintiff’s case to be affirmatively established by him has ceased to exist (cases supra). And all the essential requisites to the plaintiff’s right to protection flow from the prior use of a term, symbol, or word which has created for his manufacture a celebrity or value, and the burden of showing that the claim of priority is unfounded, or the absence of any injury resulting from its imitation, rests upon the defendant.

This case demands a decision upon the precise proposition considered, inasmuch as the word Bismarck was applied to men and to things of various kinds prior to the use of it by the plaintiffs to distinguish their manufacture of paper collars, and was a popular term. The plaintiffs, however, were, in my judgment, the first to employ it as they did, and their collars, thus designated, acquired a valuable reputation in the market. It follows as a natural deduction that the imitation of the plaintiff’s mark was predicated on the reputation which their paper collars of that name had acquired, and of which the defendant sought ti avail himself. If competition, fair and honor*417able, as I understand it, had alone stimulated the defendant, he should have relied upon the quality or some attribute of his manufacture, and selected some distinctive appellation for it. It is the policy of the law to encourage enterprize, but not at the expense of superior diligence and industry. The market is closed against no one who, in a fair and honest spirit of rivalry, seeks to monopolize the entire trade in one or more articles of merchandise, but the elements of fraud, deceit, or malappropriation of another’s rights can receive no countenance from courts of equitable jurisdiction.

It is unnecessary, however, to pursue this subject further, except to say that the defendant may not be subject to the charge of unfair dealing in fact. If he honestly believes himself entitled to use the mark introduced by the plaintiffs from a conviction that they were not the originators of it, for the purposes to which they applied it, the general observations herein contained about fair dealing may not apply to him, although the legal results would be the same. I have considered this case in a general sense, without intending to reflect upon the defendant particularly.

The motion to dissolve the injunction must, for the reasons assigned, be denied, with ten dollars costs.