Davis v. Kendall

Counsel

Carpenter and Bradley, for the plaintiff, contended, that whenever an article of a specific manufacture was universally sold with a given mark upon it, that mark, whether a letter, a figure, a stanza of poetry, or a name, became the vendor's trade-mark, and invested him with a right of property, which was infringed whenever the same mark was so applied to articles of another's manufacture as to mislead the unwary public to purchase them, in the belief that they were purchasing the article to which such mark was originally applied. The word Pain-Killer was the plaintiff's trade mark, he having first invented the term and used it in this particular way, and though he had thus acquired no exclusive right to the use of the word generally, he had no exclusive right to its use as by him applied. If the defendant had used this term in such a way as to mislead the public and gain for himself the benefit of a reputation which belonged solely to the plaintiff, the plaintiff was entitled to judgment, and whether such use by the defendant was intentional or accidental was immaterial. 23 Am. Jurist, 138; 1 Chitty's Pract. 731; 2 Story's Eq. Jur. § 951; Taylor v. Carpenter, 3 Story, 458; Colts v. Colbrook, 2 Sand. 586; Knot v. Morgan, 2 Keen, 213; Thomson v. Winsor, 19 Pick. 214; Millington v. Fox, 3 M. Cr. 338; 21 Merch. Mag. 199; 14 Ibid. 330. Ames, for the defendant, contended, that there was a distinction between trade-marks and names; a trade-mark was a mark used as a symbol to designate articles made or sold by a particular person; names were either purely arbitrary, or the names of the maker or vendor, or such as were descriptive of the article; if one man adopted the trade-mark of another, which had acquired a reputation, or either of the first two classes of names, he manifestly could have done it only for the purpose of benefiting by the reputation of the articles, the trade-mark or name on which were adopted, and so if the defendant had labelled his article "Perry Davis's Pain-Killer," or had imitated the plaintiff's label, so that the public would be deceived, he would be liable. But the word Pain-killer was a term descriptive of the article sold, and, as there was no patent right to the English language, so the plaintiff could not prohibit the application of a common English word to an article described by it. The analysis of the cases showed that the manufacturer of an article had no right to any particular name, but must further show that the person using such name intended to pass off his manufactures as those of the person whose name or mark he used, or that he had used this name or mark in such a way that people of ordinary intelligence would be misled. Blofield v. Payne, 4 Barn. Ad. 410; Blanchard v. Hill, 2 Atk. 484; Millington v. Fox, 3 M. Cr. 339; Bell v. Locke, 8 Paige, 75; Sykes v. Sykes, 3 Barn. Cress. 541; Colts v. Holbrook, 2 Saund. 594.