Gilman v. Hunnewell , 1877 Mass. LEXIS 88 ( 1877 )

Gray, C. J.

A trade-mark may consist of a name, or a device, or a peculiar arrangement of words, lines or figures in the form of a label, which has been adopted and used by a person in his business to designate goods of a particular kind manufactured by him, and which no other person has an equal right to use. The right in a trade-mark, so applied, is recognized as property which a court of chancery will protect by injunction. Hall v. Barrows, 4 De G., J. & S. 150, 158. Ainsworth v. Walmsley, L. R. 1 Eq. 518, 524, 525. Maxwell v. Hogg, L. R. 2 Ch. 307, 314.

A mere general description, by words in common use, of a kind of article, or of its nature or qualities, cannot of itself be the subject of a trade-mark. Singleton v. Bolton, 3 Doug. 293. Spottiswoode v. Clark, 1 Coop. temp. Cottenham, 254, 264. Thomson v. Winchester, 19 Pick. 214. Canal Co. v. Clark, 13 Wall. 311, 323, 324. Raggett v. Findlater, L. R. 17 Eq. 29. Caswell v. Davis, 58 N. Y. 223, 233. The Gen. Sts. c. 56, §§ 1,4, have not enlarged in this respect the law governing courts of chancery; but reenact, with some amendments, the St. of 1852, c. 197, which was passed before general jurisdiction in equity had been conferred upon this court; and only protect, as a trademark, “any peculiar name, letters, marks, device or figures,” against the unauthorized use of “the same or any similar names,” &c., “for the purpose of falsely representing any articles to have been manufactured by, or to be of the same kind, character or quality as that manufactured or sold by the persons rightfully using such name,” &c. See Ames v. King, 2 Gray, 379.

A person may have a right in his own name as a trade-mark, as against a person of a different name. Millington v. Fox, 3 Myl. & Cr. 338. Dent v. Turpin, 2 Johns. & Hem. 139. But he cannot have such a right as against another person of the same name, unless the defendant uses a form of stamp or label so like that used by the plaintiff as to represent that the defendant’s goods are of the plaintiff’s manufacture. Sykes v. Sykes, 3 B. & C. 541; S. C. 5 D. & R. 292. Croft v. Day, 7 Beav. 84. Holloway v. Holloway, 13 Beav. 209. Burgess v. Burgess, 3 De G., M. & G. 896. Rogers v. Taintor, 97 Mass. 291, 296. Meneely v. Meneely, 62 N. Y. 427.

All the authorities agree that the court will not restrain a defendant from the use of a label, on the ground that it infringes the plaintiff’s trade-mark, unless the form of the printed words, the words themselves, and the figures, lines and devices, are so similar that any person, with such reasonable care and observation as the public generally are capable of using and may be expected to exercise, would mistake the one for the other.

In the light of these general rules, we proceed to examine the facts relating to the different medicines, respectively called by the plaintiffs “ The Universal Cough Remedy,” “ HunneweU’s Eclectic Pills ” and “ Alterative Laxative Pills.” In doing this, it must be borne in mind that labels upon such small articles aa vials or pill-boxes usually, and indeed necessarily, bear a consid» erable resemblance to one another in form and arrangement, which appears greater when they are detached and spread upon the record, than when they are upon the articles and in a trader’s or druggist’s shop.

The plaintiffs cannot have a trade-mark in the descriptive words “ Cough Remedy,” or in the more extended description, “ A sure remedy for chronic or common cough, sore throat, and other minor throat complaints so often by neglect the forerunner of consumption.” And the defendants have not copied “ The Universal,” prefixed by the plaintiffs to the words “ Cough Remedy.”

The plaintiffs rely on the resemblance of the labels printed on the four sides of the paper covering or wrapper of each of their vials to the label pasted upon three sides of each of the defendants’ vials, and to an additional label wrapped about the latter.

But the label upon the plaintiffs’ wrapper and that pasted upon the defendants’ vial differ in color, the plaintiffs’ being white, and the defendants’ yellow; and the style of type and of the border of the two is wholly different. Upon the front or principal side, the plaintiffs’ label bears the title of “ The Universal Cough Remedy,” and a picture of a chemist; the defendants’ label, “ Hunnewell’s Celebrated Cough Remedy,” *n different type, and without any picture; and the only other words of the plaintiffs’ label, which are substantially repeated upon the defendants’ label, are the words of description, already quoted, which are also quite different in type and arrangement. Upon the second or right side, the plaintiffs’ label bears the name of their assignor, “ John L. Hunnewell,” and the defendants’ bears their own copartnership name, “ Hunnewell & Co.” Upon the third or left side are differing references to other medicines. The label wrapped about the defendants’ vial bears a greater general resemblance to the front and back of the plaintiffs’ label, but still maintains the diversity, in the name, or title of the medicine, between “ The Universal Cough Remedy” and “Hunnewell’s Celebrated. Cough Remedy,” and copies a part only of the description of the supposed virtues of the medicine.

The only other resemblance between the labels used by the parties consists in the fact that the “ special directions ” for the use of the medicine, printed in ordinary type, without any peculiar or distinctive marks, on a little label pasted upon the plaintiffs’ vial, are similarly printed on a like label upon the defendants’ vial, as well as on the lower part of the label wrapped around the latter as already mentioned.

There does not appear to us to be anything, either in the general appearance, or in the contents, the form, the marks, or the arrangement of words, of the defendants’ labels, which would lead any one, using reasonable care and observation, to believe that the defendants’ cough remedy was manufactured by the plaintiffs, or that it was the same medicine as that sold by them.

Every case of trade-marks depends very much upon its own circumstances. But our conclusion is supported by the decisions entitled to most weight in those cases most nearly analogous to the case before us. Leather Cloth Co. v. American Leather Cloth Co. 11 H. L. Cas. 523. Partridge v. Menck, 2 Sandf. Ch. 622 ; 2 Barb. Ch. 101; 1 How. App. Cas. 547, 553. Blackwell v. Crabb, before Vice Chancellor Wood, 36 L. J. (N. S.) Ch. 504. Emerson v. Badger, 101 Mass. 82.

In regard to the pills, the plaintiffs’ case is even weaker. As to one kind of pill, the form and appearance of the principal labels are entirely different; the plaintiffs have no trade-mark in the words “ Hunnewell’s Pills; ” the defendants have not used the word “ Eclectic,” but have made the name, selected by themselves, of “ Family Pills,” the most conspicuous words upon their label; and the only resemblance between the labels of the parties is in the description, in small type, of the qualities and uses of the medicine. As to the other kind of pill, both labels consist exclusively of a description of its nature and its composition according to the formula of a third person (to which the plaintiffs are not shown to have any peculiar right), and the defendants have substituted in clear type, upon their label, their own partnership name and address, for those of John L. HunSewell upon the plaintiffs’ label.

The circulars distributed by the defendants, after stating, in a manner which is not shown to be in any respect untrue, the former relation of the defendant Edwin Hunnewell to John L. Hunnewell, under whom the plaintiffs claim, give notice of the defendants’ intention to manufacture and offer for sale similar medicines; but in no way assert or intimate that these are to be manufactured by the plaintiffs or by John L. Hunnewell, and, on the contrary, print in the largest type the words “Universal” and “ Eclectic ” in the names of the plaintiffs’ medicines, and “ Celebrated ” and “ Family ” in those of the defendants’ medicines.

The judge before whom the case was heard has found that there was no proof of fraud or intent to defraud, or of any representation by the defendants that their medicines were of the plaintiffs’ manufacture, other than the sale of them under the circumstances alleged, and the labels, packages and circulars. For the reasons already stated, we are of opinion that these do not warrant the court in inferring any such fraud or misrepresentation.

The cases cited in the able and elaborate argument for the plaintiffs, so far as they have not been already referred to, may be distinguished and classified as follows :

1st. Those of a fancy name, either invented by the plaintiff, or arbitrarily applied by him to his goods, newspaper or hotel; as, for instance, “ Eureka Shirt,” Ford v. Foster, L. R. 7 Ch. 611; “ Persian Thread,” Taylor v. Carpenter, 3 Story, 458, and 2 Woodb. & Min. 1; Same v. Same, 2 Sandf. Ch. 603, and 11 Paige, 292; “Vegetable Painkiller,” Davis v. Kendall, 2 R. I. 566; “ Congress Spring,” Congress Spring Co. v. High Rook Spring Co. 45 N. Y. 291; “ Cocoaine,” Burnett v. Phalon, 3 Keyes, 594; “New Era,” Bell v. Locke, 8 Paige, 75; “Revere House,” Marsh v. Billings, 7 Cush. 322; “ What Cheer House,” Woodward v. Lazar, 21 Cal. 448.

2d. Those in which the name of a place had been so used as to become a trade-mark, and was protected as such, without regard to the particular form of the label; such as “ Glenfield Starch,” Wotherspoon v. Currie, L. R. 5 H. L. 508, 513 ; “ Anatolia Liquorice,” M’Andrew v. Bassett, 10 Jur. (N. S.) 492, and 4 De G., J. & S. 380 ; “ Seixo Wine,” Seixo v. Provezende, L. R. 1 Ch. 192; “ Akron Cement,” Newman v. Alvord, 51 N. Y. 189

3d. Those in which the inventor of a new process, and persons claiming under him', were held entitled to the exclusive use of the word “ original,” or equivalent expressions. Cocks v. Chandler, L. R. 11 Eq. 446, 449, and Lazenby v. White, there cited. James v. James, L. R. 13 Eq. 421.

4th. Those in which the labels of the parties are set out in the reports, and appear upon inspection to be hardly distinguishable from each other. Walton v. Crowley, 3 Blatchf. C. C. 440. Boardman v. Meriden Britannia Co. 35 Conn. 402. Burke v. Cassin, 45 Cal. 467.

5th. Those in which the variation appeared to the court to be merely colorable, but the form and particulars of the marks or labels are not given in the reports. Blofeld v. Payne, 4 B. & Ad. 410; S. C. 1 Nev. & Man. 353. Coffeen v. Brunton, 4 McLean, 516, and 5 McLean, 256. Bradley v. Norton, 33 Conn. 157. Meriden Britannia Co. v. Parker, 39 Conn. 450. Stonebraker v. Stonebraker, 33 Md. 252. Dixon v. Wondra, decided by Chief Justice Bigelow, in 1866, would appear by the papers on file to come within this class.

6th. A decision affirming the right of a corporation to restrain the use by a new corporation of a name bearing some resemblance to that under which the first corporation had been established— the correctness of which we need not consider, as it has no application to the case before us. Holmes, Booth & Haydens v. Holmes, Booth & Atwood Manuf. Co. 37 Conn. 278.

7th. Numerous cases in inferior courts of New York and Pennsylvania, none of which are so peculiar in their circumstances as to demand special notice. ^*

Upon full consideration of the subject, we are of opinion that the plaintiffs are not entitled to relief upon any of the grounds alleged in their bill, and therefore the decree must be affirmed and the Bill dismissed.

* Merrimack Manuf. Co. v. Garner, 2 Abb. Pr. 318; 4 E. D. Smith, 387. Felridge v. Merchant, 4 Abb. Pr. 156. Clark v. Clark, 25 Barb. 76. Comstock v. White, 18 How. Pr. 421, Corwin v. Daly, 7 Bosw. 222. Bininger v. Wattles, 28 How. Pr. 206. Gillott v. Esterbrook, 47 Barb. 455. Lockwood v. Bostwick, 2 Daly, 521. Town v. Stetson, 3 Daly, 53. Lea v. Wolf, 13 Abb. Pr. (N. S.) 389, and 15 Abb. Pr. (N. S.) 1. Cook v. Starkweather, 13 Abb Pr. (N. S.) 392. Brown v. Mercer, 5 Jones & Spen. 265. Popham v. Wilcox, 6 Jones & Spen. 274. Gouraud v. Trust, 3 Hun, 627. Godillot v. Hazard, 49 How. Pr. 5. Dixon Crucible Co. v. Guggenheim, 2 Brewst. 321. Rowley v Houghton, 2 Brewst. 303. Fulton v. Sellers, 4 Brewst. 42. Cox’s Amer Trade-Mark Cas. 155, 194, 206, 232, 265, 318, 340, 514, 555, 559. 486.