Appeal of Pratt , 117 Pa. 401 ( 1888 )

Opinion,

Me. Justice Paxson:

This bill was filed in the court below to restrain the defendant from using plaintiffs’ trade-mark. The plaintiffs are farmers, residing in Delaware county, and engaged in the dairy business. They make what is now widely known in many portions of this country as the “ Darlington Butter,” an article of such superior quality as to command a ready sale and a high price. The plaijitiffs and their immediate ancestors have been engaged in making this butter for a period of about three quarters of a century. The business was commenced by Jesse Darlington, the grandfather of the plaintiffs, about the year 1810, who continued it to about 1831, when he relinquished it in favor of his son Jared Darlington, residing on the same farm. Jared continued it until his death in 1862. Since that time it has been conducted by three of his sons, and the widow of a deceased son, the plaintiffs in this bill. During all this period the butter has been stamped with a peculiar print, claimed as a trade-mark, the distinguishing features of which are a cornucopia and the name “ Darlington.” During the lifetime of the elder Darlingtons (Jesse and Jared) the name J. Darlington was imprinted on the margin below the lower or smaller end of the horn. Since the death of Jared, and the use of the trade-mark by an amicable understanding between his children, each of the plaintiffs has stamped his butter with the cornucopia, and his own or individual name, the name of Darlington being common to it all. So extensive has the business become that their aggregate production of butter amounts to over 2000 pounds weekly.

The defendant owns a farm in the same neighborhood and also makes butter for the market. He has been so engaged since 1873. For some years he used as a print for his butter a stamp which had on it the name of “ Pratt ” and the words “ Cumberland Dairy, 333,” which appears to be the print his father, Thomas Pratt, had used before him. Some time after the death of Jared Darlington, the defendant changed his print, using the cornucopia and stamping the butter with his name.

The court below granted the injunction prayed for in the bill, from which decree the defendant appealed and removed the record into this court for review.

If the defendant’s print is an imitation of that of the plaintiffs, if it is calculated to deceive and mislead, the motive of the defendant in adopting it is not material so far as the law of the case is concerned, however much it might affect it in a moral point of view. The protection which equity extends in .such cases is for the benefit of the manufacturer and to secure to him the fruits of his reputation, skill and industry. The protection of the public is another consideration and one that does not usually enter into such cases. A man may be adjudged a wrong-doer and yet have no intention or thought of fraud; as where two traders take the same symbol, each in ignorance that the other uses it or with an honest doubt as to who has the legal right therein: Brown on Trade Marks, § 449. The question therefore is whether the defendant’s label or mark is calculated to deceive the public and to lead them to suppose they are purchasing an article manufactured by the complainants instead of the defendant.

The master finds as a fact that defendant’s print is calculated to mislead the public. In this we cannot say that he committed an'error. It is true, the two prints when placed side by side present several points of dissimilarity, and the fact that defendant’s butter is stamped with his own name was pressed as a reason why there was no danger of deception. The defendant denies any intention of deception, and in this he is sustained by the master. But the thought naturally suggests itself, why did the defendant abandon the trade-mark or print which he had used for years and his father before him, and adopt the symbol rvhich had been in use in the Darlington family for over seventy years, unless at some time or in some way he hoped to benefit by the wide reputation which the Darlington butter had obtained ?

The master has found, and we think correctly, that the distinguishing feature of the plaintiffs’ trade-mark is the cornucopia. It is a symbol, a device, which the plaintiffs have adopted to mark their butter. Had they used merely the name “ Darling-ton,” any other person of that name could have stamped his butter as Darlington’s butter. The mere name of a person or of a place, cannot as a general rule be appropriated as a trademark ; at least not in the sense of preventing another person having the same name or residing in the same place, from using it. Nor can any word which is generally used' to designate the name or quality of an article be so appropriated. Tins is familiar law and hardly needs the citation of authority. It is sufficient to refer to Glendon Iron Company v. Uhler, 75 Pa. 467 ;■ Brown on Trade Marks, §§ 167, 177, 182, 195, 243. But when the plaintiffs adopted the cornucopia as a device or symbol to mark their’butter, they acquired a property in such device or symbol, which they cannot be deprived of by any other Darlington, or .any other person whatever. This device when applied to a pound of butter means “ Darling-ton Butter,” and is so understood, and in this way indicates origin and ownership. The name of the particular plaintiff stamped upon each pound in addition to the symbol, indicates which particular Darlington made that pound of butter.

The use of the defendant’s name on a spurious trade-mark is no defence to a bill for an injunction to prevent a piracy: The Dixon. Crucible Company v. Guggenheim, 7 Phila. 416 ; Gillott v. Esterbrook, 47 Barb. 455; Boardman v. Meriden Britannia Co., Conn. 402. It is a circumstance, and nothing more, to be considered in connection with the whole appearance of the trade-mark, to determine whether it is an imitation.

It was urged, however, that conceding this symbol to have been a valid trade-mark in the hands of Jesse Darlington, or even of Jared, that upon the death of the latter, it ceased to be the property of any one, and that its use by several members of the family of the latter, destroyed its distinctive features and left it open to the public to appropriate it.

We cannot assent to this proposition. We do not think it necessary, however, to enter upon an elaborate discussion as to the modes by which a trade-mark may be transferred, nor how far it is descendible upon the death of the person who originally appropriated it. We do not see that the exigencies of this case require it. When Jared Darlington died, his children appropriated this device or symbol to their own use. They did so before any one else appropriated or attempted to appropriate it. By an amicable arrangement between themselves each one was allowed to use the cornucopia, as a device, each pound of butter being stamped in addition with the name of its manufacturer. It was all Darlington butter. There was no fraud upon the public nor any one else in this. It was not sold as the butter of either Jesse or Jared Darlington. They were both deceased and it is fair to presume their customers knew it. The business was continued by their descendants bearing the name of Darlington, in the same place and with tbe same skill. There is no pretence that the butter now made by the present members of the family is not equal in every respect to the best made by their ancestors. Under such circumstances their trade-mark cannot be interfered with by a stranger who has never acquired a right in any way to use it. There is no analogy between this case and the Howqua Tea case: Pidding v. How, 8 Simons 477; the Night Blooming Cereus case, Phalon v. Wright, 5 Phila. 467; the Balm of a Thousand Flowers case, Fetridge v. Wells, 13 How. Pr. R. 385, and other instances in which courts of equity have refused to enjoin because of the fraud practiced upon the public. It is not the province of a chancellor to aid any one in fraud and imposition. The fact that the plaintiffs' at rare intervals purchased milk or cream from others to enable them to supply their customers Avith butter, and in yet rarer instances purchased small amounts of butter for the same purpose is not of sufficient importance to require discussion. It was not done for the purpose of imposing upon or deceiving their customers. The latter are not complaining and the defendant has no standing to do so. There was no fraud iii it. If the plaintiffs were to purchase all their cream from other farmers and manufacture it into butter the defendant would have no right to pirate their trade-mark.

While the cases are not uniform upon the subject there is ample and recent authority for saying not only that a business and its accompanying trade-mark may pass from a parent to his children Avithout administration, but that the business may be divided among the children, and each will have the right to the trade-mark to the exclusion of all the world except his co-heirs. In the Leather Cloth Company v. American Leather Cloth Company, 11 H. of L. 523, it was said by Lord Cranworth: “ The right to a trade-mark may, in general, treating it as property or as an accessory of property, be sold and transferred upon a sale and transfer of the manufactory of the goods on Avhich the mark has been used to be affixed, and may be laAvfully used by the purchaser. Difficulties, however, may arise Avhere the trade-mark consists merely of the name of the manufacturer. When he dies, those who succeed him (grandchildren or married daughters, for instance), though they may not bear the same name, yet ordinarily continue to use the original name as a trade-mark, and they would be protected against any infringement of the exclusive right to that mark. They would be so protected, because according to the usages of trade they would be understood as meaning no more by the use of their grandfather’s or father’s name, than that they were carrying on the manufacture formerly carried on by him.” In Kidd v. Johnson, 100 U. S. 617, it was said by Mr. Justice Field : “ When a trade-mark is affixed to articles manufactured at a particular establishment and acquires a special reputation in connection with the place of manufacture, and that establishment is transferred either by contract or operation of law to others, the right to the use of the trade-mark may be lawfully transferred with it.” To the same point are Milling Company v. Robinson, 20 Fed. R. 217; Southron v. Reynolds, 12 Law Times N. S. 75; Dent v. Turpin, 9 Weekly R. 548; see also Dixon Crucible Company v. Guggenheim, supra.

Wo have not before us any question arising between the children of Jared Darlington as to their respective rights to use this trade-mark as against each other; on the contrary, the contention is between them and a stranger who shows no right whatever. We find no error in this record.

The decree is affirmed and the appeal dismissed at the cost of the appellant.