Gillott v. Esterbrook

The following opinion was delivered by the justice, at special term.

Potter, J.

“ The facts established by the evidence show that the plaintiff is a manufacturer-of steel pens at Birmingham, England. That he commenced the manufacture of pens as far back as the year 1825, and has an agency at 91 John street, Sew York, where his pens are consigned to his agent, and where he sells to the trade and others at wholesale and retail to a large amount. Among the varieties of pens made by the plaintiff is a flexible, bronzed, double ground, extra fine pointed slip pen, with an oval opening in the upper'part of the split. It is not quite certain when this character of pen was first made by plaintiff, but it is certain it was as early as the year 1839. At that time they were introduced on cards of one dozen each, with holders, but about the year 1843 they were put up in what are called block paper boxes, containing each twelve dozen, called one gross. The marks by which this particular pen is distinguished upon the pen itself are as follows:

These marks are impressed upon the pen. This pen has become well known to the trade dealers as a popular and valuable pen, was in great demand, and was the most prominent pen to be found in the market, producing large sales, and selling from twenty-five to one hundred per cent above the imitations of it. It was known and ordered by stationers and other dealers by its number, 303, to distinguish it from other pens made by the plaintiff of other patterns, numbers, and varieties of flexibility and point.

It is satisfactorily established by the evidence that the plaintiff first adopted the marks that are impressed upon this pen before they or any other of them had been used by others; and that such marks altogether, at the time of their selection, were made to distinguish this pattern or character of this pen from other patterns made by him. The numerals 303 thereon were arbitrarily selected by plaintiff as other trade marks are selected,, and of themselves, express no quality or size of the pen; and at the time this pen was introduced no other pen was known having those'numerals stamped upon it. The plaintiff had no letters patent for this pen. The plaintiff’s pen in question, since 1842, has been put up in boxes of a size just sufficient to contain one gross. The boxes were covered with ornamental figured paper. Lengthwise of the box, and partly under the bottom, is a label of different colored fancy paper with an ornamental border on the label, upon which is printed these words, “ these pens are manufactured under Joseph G-illott’s own superintendence.” On the top of the box, in the centre of the label, is the plaintiff’s name in larger letters than the other print; on the label above the name is the word. Ho. (abbreviation for number,) and. below the name, in large and. conspicuous type, are the numerals 303. Upon the bottom of the box is the word “caution.” The terms of the caution are in fine print, to the purport that disreputable persons have tried to impose upon the .public a spurious pen under a mis-spélled name, Grillotte, to which is added a fac simile of the defendant’s signature, “Jos. Grillott.” The plaintiff claims protection not only in the marks impressed upon the pen but also in the exclusive use of this box with its fancy covering, label, name, number, numerals and “caution” in their combination as apart of his trade marks.

The defendants, under the name and style of E. Esterbrook & Co. are manufacturers of steel pens at Camden, Hew Jersey, where they commenced the manufacture four or five years ago. They manufacture also a pen in shape, color, size, pattern, flexibility and fineness of point so closely resembling the pen of the plaintiff above described, as to require an adept or expert to distinguish them in those respects. The defendants have also impressed upon their pen in the same place as upon the plaintiff’s pen the numeral “303,” and also the name of the defendants’ firm, “Esterbrook & Co.’s,” and below the name of the firm also the same words, “extra fine,” that are upon the plaintiff’s pen. They also put up their said pens in paper boxes of the same size, and covered with ornamental paper similar to that upon the plaintiff’s boxes, and with a fancy paper label, also similar to that on the plaintiff’s, which also extends round the box lengthwise and to about the same extent, with the same words printed on the label as is on the plaintiff’s, except the name, which is “ Esterbrook & Co.’s,” instead of Joseph Grillo tt. Above the name on the label, in like manner as on the plaintiff’s, is the word Ho. and below the name, equally so as on the plaintiff’s? or still more conspicuously, are the numerals 303. On the bottom of the box is also the word “caution ,” but the language of the caution is different in its purport, and states that the fac simile of their signature is sufficient security against foreign imitation. This is signed “ Esterbrook & Co.” These are the leading features of the case, but some other facts will be referred . to in the discussion. The plaintiff claims that the defendants should be enjoined from the marks which are upon either the plaintiff’s pen or boxes—as a gross interference with his rights. The law in relation to trade marks, in late years, has been much discussed in our courts, still however, leaving many questions unsettled, so' that what is proper to be done in cases of this kind depends more or less upon the circumstances that attend them. The questions presented in the adjudicated cases have been variant in their features, and partially so conflicting that we are compelled to look at a few general principles that seem to be settled, and then resort to analogies, in order to determine from them what should he held in the particular case, and then deal with it according to the nature of its peculiar circumstances.

1st. It seems to be settled in equity that every man has a right to his own labor, and has a right to select a device or symbol by which to designate his goods and manufactures, so that they may be distinguished from those of others, and so that persons desiring to trade with or deal in that kind of commodity may be able to recognize it as his, and that he may thus secure the profits which their superior repute as his may he the means of gaining. The device so selected is called a trade mark, and a court of equity will exercise its power to protect the owner of such trade mark in the exclusive enjoyment thereof when so chosen. .The principle, in.short, is this, that no man has a right to sell his own goods as the goods off another, and the courts will lend their aid to prevent the imposition ; but there is a limitation to this right. The trade mark which is entitled to protection • must be such as will identify the article to which it is affixed as that of the person adopting it, and distinguish it from others. The principle above laid down and its limitation is so fully discussed by Buer, J. in the case of The. Amoskeag Manufacturing Co. v. Spear, (2 Sandf. 599,) that little can be added in that particular. I regard this case as approaching more nearly in its features to that than any other, and so far as that similarity extends, that case is controlling. The case of Stokes v. Landgraff, (17 Barb. 608,) is to the same effect. The right to this benefit of the property in a trade mark, and of protection by the courts, depends also upon the priority of the selection or appropriation of the device, symbol or mark which is to distinguish the article manufactured, and the wrongs for which the courts in such cases will furnish a remedy consists in the act by others of misrepresenting to the public by the use of the same mark, the goods or wares of such other persons as having been manufactured by the true proprietor of that mark, and thereby depriving him, to a greater or less extent, of the benefit of the good will of his establishment, and the reputation he may have secured for his articles. (Stokes v. Landgraff, supra, 609. Taylor v. Carpenter, 11 Paige, 292.)

2d. A word that is well known in the language, and which is the name of an article, or words that merely indicate the quality of. an article, can not, it seems, be so exclusively appropriated as a trade mark. Nor can the appropriated name of a manufactured article, if the article is a known substance or production, be exclusively used as a trade mark, except to those who have an exclusive property in the article itself; though a mere name may be protected as a trade mark where it is used merely to indicate the true origin^ or ownership of the article offered for sale, or where a new preparation or compound is made, and a distinctive and specific name is necessarily given to it which has not before . by adoption and use become known. (Fetridge v. Wells, 4 Abb. 144. 2 Sandf. 599. 17 Barb. 608. Wolfe v. Goulard, 18 How. Pr. 64, 67.)

The proper application of the principles of law contained in these two divisions or heads, collected from the cases cited, will be sufficient, when adapted to the facts, to determine the case before me. It is quite clear to me that the plaintiff is not entitled to all the relief he claims. He asks, as we have seen, to be protected separately and in combination in the exclusive use of the box in which his pens are put up, with its fancy paper covering, not only, but in its fancy label, and the words printed thereon, with the word “caution” upon the bottom, and the words of the caution all in combination. The evidence does not sustain the plaintiff’s claim in being first in priority of time in the manufacture of the boxes, or in selecting the fancy colored paper with which the boxes of their labels are covered, or in directing the size of the box. The plaintiff does not manufacture boxes. On the contrary, the manufacture of boxes is shown to be a distinct trade or occupation, carried on by other parties, who doubtless have a right to supply orders and furnish boxes of any size, pattern, or covering, not to one person only, but to all persons. Besides, if such a claim could be sustained -by any one, the original manufacturers of boxes ought to have the priority of right to the trade mark on their boxes, and as an invention or device of their own, useful in the putting up of pens, and claim that no pen manufacturer should use boxes in imitation of his. The manufacturer of boxes would have as good a natural right to claim that all pens put up in boxes should be put up in his design of boxes as the pen manufacturer has to claim the benefits of that form of box which he has selected for its size, shape, or covering.

There is the same reason for excluding an article or thing in common use from becoming a trade mark as there is of words—and this reasoning also applies to the labels, which are printed to order, and of any particular fancy of colors and of lettering, and .to the “caution” on the bottom. These labels and cautions (except the names of the parties) are composed of words in common use in our language, which, as we have shown above, can not be exclusively appropriated as trade marks. True, this selection of boxes, sizes, colors, labels, cautions, and style of lettering, may all be designed to aid in the perpetration of a fraud, and may be the most conclusive evidence of the intent to mislead and deceive the public and to commit a fraud upon the plaintiff in relation to some device of his connected with a trade mark; yet merely because they are such evidence, or because they have been used with such intent, it does not follow that their use can be legally enjoined and restrained.

It is where the person designing to practice a fraud by pirating a trade mark uses these evidences so connected with the trade mark itself as to effect a fraud, that he can be reached by the powers of the court. True, also, it is, that it is the right of the plaintiff to be protected against frauds, yet the fraud must be one in relation to a substantial legal right of the party, and protection will not, in all cases, be extended to the mere evidences of fraud alone; and the courts are bound to be especially cautious that in the exercise of the power to restrain injustice they do not encroach upon the public interest by giving an improper check to a worthy and laudable spirit of enterprise, emulation and competition, in any department of business. It must be admitted that every citizen has the right, if he will, to manufacture and to sell steel pens honestly" and fairly; he has the right to the use of his own name, and where there is no patent to be interfered with, he may make his pens of any pattern, shape, color, size, state of flexibility, or fineness of" point; he may sell them singly or in quantities, on cards or in boxes of large or small size, and with such ornamentation as fancy or interest may dictate ; he may imitate any pattern or quality of pen, even if known to be made by any other manufacturer; he may, if he can, make a superior article in material, pattern or quality, and if he can do so, he has the right to select a device, or symbol, as a trade mark to designate his manufacture from others; and if such device or symbol relates to the origin or ownership of the goods to. which they are affixed, his. legal right to protection is undoubted ; such protection is no restraint upon the freest exercise of talent,.enterprise and competition in trade, but rather a proper stimulant to encourage competition; his superior skill and enterprise gives him the right to its profits and advantages, and this is giving no encouragement to monopolies so destructive to the freedom of trade. It may be that in this case the defendant’s pen, in fact, is equal in merit, or even superior to the plaintiff’s; this was not an issue in the case—-the merit of the defendant’s pen was not in question, further than what may be the legal inference or presumptien.

Again, applying the principles above laid down to the case on trial, I see no legal reason why the defendants may not print upon the labels which pass lengthwise nearly around the boxes in which their pens are put up, the superscription “ These pens are manufactured under E. Bsterbrook & Oo.’s own superintendence,” notwithstanding this language, (except the ri^ime of the manufacturer) is the same as that employed by the plaintiff upon his labels, and is in close imitation thereof in the size, color and form of the label. It would otherwise create a monopoly not only in the sale of a particular kind of manufacture, more potent than a patent would confer, hut a monopoly in the use of words in our language by one man against the rest of the world, which public policy would not tolerate, The words on the defendants’ label are ethically and literally true, and their use ought not therefore to be enjoined. These remarks apply equally to the caution on the bottom of-the box. The words employed in‘both these respect by the defendants are as truthful in their application to his pen as those employed by the plaintiff to his, and it would be as unbecoming as it would be unjust for a court of equity to restrain the publication of a truth. ' There is another portion of the plaintiff’s designation of this pen which it appears to me is not subject to the rules we have last been discussing. This is the plaintiff’s selection and adoption of the numerals 303, which, together with his name,

are impressed upon his pen. These symbols or figures do not of themselves indicate any appropriate name of this pen, nor any mode or process by which it is manufactured. They do not indicate the quality of the pen—but, connected as they are with the plaintiff's name, they indicate the origin and ownership of the pen, and were intended by him, with the addition of the words “ extra fine,” impressed thereon, also to designate the pattern of this pen as distinguished from other pens of his manufacture represented by other numerals, and also to distinguish it as the pen of his manufacture by those peculiar marks or devices. The marks last named, except perhaps the words “extra fine,” seems to be within the rule that allows a device to become a trade mark. The impression of these same numerals on the defendants’ pen indicates no quality of their pen, and as they are not claimed by the defendants to be their trade mark by a prior adoption, no good, legal or honest reason is shown by them for their selection, adoption, or use. When the defendants commenced manufacturing their pen, there was in the market a well known, valuable, popular pen known to all the dealers and stationers as “ Grillo tt’s 303 extra fine pen it was' the oldest, most noted, most valuable and most patronized pen in the market. It was so well known and noted that it was ordered by its numerals or number 303 by those in the trade —the 303 pen was an established article. Though the imitations of it by others are numerous, the value of the plaintiff's pen, taking price as the test of value, is far above all others—the object of imitation seemed to be to equal the 303 pen. If these numerals are a trade mark of the plaintiff's, if he was the first person who employed them to indicate the true ownership and manufacture of this pen, as we find the facts to be, the selection by others of this same trade mark, in whole or in part, has a direct tendency to defeat the object and advantage of its selection, and to deprive the plaintiff of the profits which might otherwise arise from his enterprise and skill in furnishing a superior article of manufacture. It is but the dictate of common sense to say that it is only a superior article that is ever attempted to be imitated; there can be no object to imitate a common or an inferior article.

If the imitator by his skill can make or has made an article to sell superior to that of any prior manufacturer, instead of an ambition to be only equal, his aspiration would be to obtain the reputation and secure the profits of his own superior skill and enterprise by a trade mark of his own: in other words, the appropriating of the trade mark of another is the tacit admission that the simulated article is inferior. It necessarily follows as a logical deduction from these facts, that the simulation of this pen by the defendants proceeded from the hope of gain to result to themselves by the use of the device “ 303 ” and the words “ extra fine,” so selected by the plaintiff as symbols and terms by which his valuable and popular pen was notoriously distinguished among all dealers in the trade ; this must have been done by the defendants in the expectation that the more unwary of purchasers would be thereby misled. It is too remote a probability to suppose that the defendants, by any accidental choice of a trade mark to distinguish their pen, just happened to select the figures 303 for that purpose ; indeed this is not set up or claimed by them : any other set of numerals or any other device or symbols will represent the defendants’ pen just as well as “303,” unless the design is to defraud the plaintiff. It is no hardship upon the defendants to have them stand upon the merits of their own pen unaided by the reputation of the plaintiff as a manufacturer, or by the merits of his pen." If the defendants’ pen is superior to the plaintiff’s it will become popular upon its own merits ; if it is inferior to the plaintiff’s the public should not be misled or defrauded by the use of his trade mark by others.

It is true that the imitation is but partial—and though there is in the imitation a mingling in part of words adopted by the plaintiff as a trade mark, which the law does not protect, with the devices which are by law protected, and though it may be that the pattern, size, color, and flexibility of the defendants’ pen and the boxes in which they are put up, as well as the labels and cautions, are all ingenious imitations designed to accomplish the same improper object, to wit, gain to the defendants to the injury .of the plaintiff’s reputation as a manufacturer, and loss of his profits, I am unable to see upon authority that the inhibition which this court can grant can be made to go beyond that of restraining the defendants from the use of the numerals “303” impressed upon their pens and printed upon the labels of the boxes in which their pens are put up. The defendants' pen may be “extra fine,” and if so, they have a right to call them so. All manufacturers have the right to make extra fine pens, and to advertise this quality any where upon the pens, upon the labels, or in publications elsewhere, but they must advertise them as their own; so far as they have done this under their own name they are to be tolerated—but it appears to me that it would be no more deceptive- or fraudulent to use the plaintiff’s name than it is to use his lawful trade mark by which his manufacture is known ; the one perhaps as much as the other is connected with his reputation as a manufacturer-, and the cause of his gains. It is not necessary for the plaintiff, in order to receive the protection of this court, that he show that his whole trade mark has been pirated or simulated. A false impression can as well be conveyed to the mind of the public, and especially to the unwary, by a partial as by a total counterfeit.

' The design to defraud may be as apparent and is generally more injurious in the partial than in the entire imitation. Where the trade mark is a conspicuous device connected with the name of the true proprietor, of course the imitator would desire to avoid the offense of forgery, and would omit on his own article the name of the true proprietor and substitute his own ; but the real device might be copied with the imitator’s name and other words of the original added which may be also true as regards the imitator’s article, and yet as effectually mislead the public as in any other way.

It was offered as a part of the defense that a very large number of stationers, as well as other manufacturers than the defendants, have for years been engaged in vending and manufacturing pens similar to the plaintiff’s, impressed in like manner with the figures “303” and “extra fine,” put up in boxes similar in size, ornamentation, label and caution, except only in the name of the manufacturer. That stationers in Bew York, for fifteen years or more, have been advertising and selling similar pens as “ 303, extra fine pens,” “ Manufactured under their own superintendence,” and who have never manufactured a pen, or superintended its manufacture, who during all that time have had all their pens manufactured by English manufacturing houses in Birmingham, or by the defendants in this country, according to all orders sent by the dealers as to pattern, device and marks; that such orders were governed by the demand of the market which dictated the selection of the most popular character of pen, and chiefly the “ 303 ” “ extra fine,” made in almost exact imitation of the plaintiff’s pen, and put up in the same manner with the same accompanying devices. There was, however, no evidence of the plaintiff’s actual knowledge of this .practice. The legal effect of this evidence is : 1st. That it is no defense that the fraud has been multiplied. 2d. That acquiescence can not be inferred, and it is revocable if it could be. The moral effect' is a perverted and corrupted state of commercial integrity and honor in this respect which can not too soon* be exposed and corrected. When frauds are openly and publicly known, tolerated, encouraged and made common; when unrighteous gain is regarded in a community as being above honor and integrity; when prosperous overreaching and imposition passes for laudable enterprise; public expose becomes an imperative duty by all engaged in the administration of the laws.

I do not intend, as far as my official duties are concerned, that the Court of Equity shall hear the reproach of passively tolerating, or even of failing to expose, such a corrupted state of public sentiment in regard to the rights of persons coming before it, especially when the exposure is directly connected with a legitimate claim for protection to honest enterprise and skill.

It appearing to me from the evidence that the plaintiff, at a time prior to that of its use by any other manufacturer, selected the device “ 303 ” as a trade mark for a pattern of a pen manufactured by him; that he obtained and secured thereby a valuable interest in the good will of his manufacture of that pen; that having appropriated to-himself this device to be engraven or impressed upon his said pen as a trade mark, which in connection with his name also impressed on said pen, indicated that such pen was manufactured and sold by him; the plaintiff has established a right, and is entitled to protection by perpetual injunction against the defendants’ impressing or otherwise using the figures or numerals “303” (which is a part of the plaintiff’s trade mark) upon their pens, or upon the labels or boxes in which, the said pens are put up by the defendants.”

The defendants excepted to the findings “ that the plaintiff, by the adoption and continued use of said numerals 303 on said pen as his trade mark, in manner aforesaid, became entitled to the exclusive use thereof and to the profits and advantages to be derived therefrom ; and that he is entitled to a perpetual injunction restraining the defendants from infringing said trade mark, and from the use thereof, and from making or selling pens with said numerals impressed thereon, or impressed on the box or package containing the same.” Also, to the findings “that the defendants, by their unlawful use thereof, in manner aforesaid, have infringed the rights of the plaintiff, and are liable to the damages he has thereby sustained, and the gains and profits he has thereby lost and been deprived of.” Also to the decision of the court wherein and whereby it is “ordered and adjudged that the said defendants Richard Ester brook, Richard Esterbrook, Jr. Joel Cadbury, Jr. and James Bromsgrove, and each of them, their- agents and servants, do absolutely and perpetually desist and refrain from infringing or using the said trade mark of the plaintiff, and from making or selling pens with said numerals 303 impressed thereon, or impressed on the boxes or packages containing steel pens.” Also to the decision of the court by which it is “ordered that the defendants pay to the plaintiff the costs of this suit.” 1

Wm. A. Coursen, for the appellants.

I. The court erred in not granting the defendants’ motion to dismiss the complaint. There was no evidence that the plaintiff did first adopt the use of the figures “ 303” as a trade mark, or for any other purpose.

II. If it should be admitted that the plaintiff first adopted the use of the figures “303” to imprint the same on boxes or impress them upon steel pens, yet the plaintiff never could and can not appropriate to himself for a trade mark, or otherwise, the exclusive use of any words or figures which have no relation to the origin or ownership of the goods impressed, but are only meant to indicate their name or quality. In this connection, we contend that the use of the figures “ 303” was intended by the plaintiff himself, upon the first use of them by him, to designate only a pen of peculiar fineness of point, and that, undoubtedly, long before the defendants commenced the manufacture of steel pens, dealers in and manufacturers of steel pens understood and universally agreed that the figures “ 303” impressed upon steel pens indicated solely that the pens were of a peculiarly fine point. The testimony on this point is overwhelmingly in favor of the position contended for by the defendants; and, really, the testimony is almost (if not quite) all one way. As to the law governing this and similar cases, we refer the court to Corwin v. Daly, (7 Bos. 222 ;) Stokes v. Landgraff, (17 Barb. 608 ;) Amoskeag Man. Co. v. Spear, (2 Sandf. 599.)

And the defendants appealed from the whole of the judgment, to the general term.

Judge Potter, in his opinion, says (writing of Amoskeag Man. Co. v. Spear) : “I regard this case as approaching more nearly in its. features to that than any other, and, so far as that similarity extends, that case is controlling.” We cheerfully agree with Judge Potter in his opinion, and are much disappointed that his. decision in this action is so completely at variance with his own opinion. In the case mentioned there was no question as to the prior adoption by the Amoskeag Man. Co. of the letters “ A. C. A.” to indicate that goods of some sort, so marked, were manufactured by that company; but the testimony and the order of the court in that case show that the letters, as used, suggested only the quality of the goods. In fact, it was admitted that the final letter “A” alone signified that the goods marked with the three letters were the best quality of goods manufactured by the plaintiff in that case. In the action now before the court it may be contended that there is a dispute as to the meaning or intention of the plaintiff in the use of the figures “ 303.” However, the testimony of his own witnesses, and of all the witnesses of the defense, is decidedly clear and invariable to the effect that those figures are used to indicate the fineness of point (or quality) of the pens upon which the figures may be impressed. If there does exist any difference between the two cases, then this case is even stronger, in the position assumed by the justice in the Amoskeag Co. case, than was that case itself. In this action, not only is the proof of the real use and intention of the figures “ 303” practically invariable, but. there is the further uncontroverted testimony that the plaintiff made use, at the same time, of various figures or numbers, impressed upon his pens, and in every instance of such use of numbers or figures by the plaintiff he clearly intended to, and did, designate pens of a specific quality as to size, shape or point. The case of Stokes v. Landgraff contains, in brief, the same law as enunciated in the case above cited, and this latter Case has the additional strength of an affirmance of the judgment at the general term of the Supreme Court.

' III. The figures “ 303” do not indicate or in any manner suggest to dealers that the pens, with those figures impressed upon them, are the pens of any particular manufacturen The figures are as definitely applied to and do designate only the fineness of point of the pens (irrespective of the manufacturer,) as do the numbers or figures upon shoribags designate only the size of the shot in the bags.

IV. There is no pretense on the part of the plaintiff that the figures “ 303” denote, in themselves, any proprietorship, in the plaintiff, of those figures, or of the pens upon which the figures may be imprinted. Even the assumption (on the part of the plaintiff) that the figures indicate the “ pattern” of the pen not only does not strengthen the plaintiff's case, but the assumption is not founded in fact* because : 1. “Pattern” is certainly a quality of a pen, and not only of G-illott’s pens, but of the pens of all manufacturers, and unless the peculiar “pattern” of the pens with “303” impressed on them can be claimed exclusively by G-illott, his assumption that those figures only denote the “ pattern” of the pen is of no service to him. There is no claim or pretense of claim on behalf of the plaintiff to any patent for, or, to an exclusive right to the use of the alleged “pattern,” and the findings of1 the court in the case are directly at variance with any such claim did it exist. 2. The figures “ 303,” even as applied to the plaintiff’s pens can not be deemed to denote exclusively any peculiar “ pattern.” The plaintiff (by Owen his agent) says that the “pattern” of the ¡sens marked “303” is similar to that of the pens (of the plaintiff) marked “404.” The testimony, though it does not all apply specifically to G-illott's pens, serves to show, that the difference in pens, with various figures (or numbers) impressed upon them, consists almost entirely in the variety of points, and not in shape or “pattern.”

Y. The court will not interfere in cases where ordinary attention will enable the purchaser to ascertain whether .the goods purchased are pretended to have been manufactured by one or another manufacturer. In the case before the court, no one, except from utter (and it may be said) willful carelessness, could fail to understand that the pens of the defendants, when purchased, are expressly and very obviously declared to be manufactured by the defendants, and not by any other person. The declaration printed on the box, that the pens are manufactured by E. Esterbrook & Go., and the caution on the bottom of the boxes, should and (beyond any reasonable doubt), would arrest the attention of every purchaser. The questions as to the use of the boxes covered with colored paper, the labels running lengthwise around the boxes, the engraving and style of the labels, the words “ extra fine,” and the general use of a “ caution,” are all decided in this case in favor of the defendants ; and, with the explicit assertion upon the boxes (and upon each pen), that the defendants manufacture their own pens, we do not perceive the least room for'hesitating to afford the defendants full credit to their denial of any intention to sell their pens as being the pens of the plaintiff. The defendants not only disavow any desire or intent to acquire profit on the reputation of the plaintiff, but, on the contrary, the wish and hope of the defendants are to establish a reputation of their own for the pens manufactured by themselves. (See Partridge v. Menck, 2 Barb. Ch. 101, affirmed in Court of Appeals.)

VI. Gould we overlook all the proof as to the use of the figures “ 303” and the intent of the manufacturer and the understanding of dealers in pens, that the said figures indicate only pens of a peculiar fineness of point, and if the court should go further and find that the plaintiff did originate the use of the said figures or numerals, and did and does apply the same to the identification, in some way, of himself as man ufacturer of the pens, even yet we should contend that the plaintiff had not, at the Commencement of this action, any rights in the premises which could he legally enforced against the defendants, because:

The use of the figures “ 303” upon pens manufactured by others than the plaintiff, was commenced and had continued in general practice for more than twenty years before the defendants commenced the manufacture of steel pens. This use of the figures was general, and generally known. It existed to the greatest extent at Birmingham, England, where the plaintiff for more than twenty years has had his manufactory. Hundreds of thousunds of pens with the same figures “ 303” impressed upon them, and of the same pattern or style as the plaintiff’s, have been annually, for more than twenty years past, manufactured in Birmingham, right under the eyes and with the personal knowledge of the plaintiff. We do not forget that Judge Potter finds “ that the plaintiff had no knowledge of said practice, and did not authorize or acquiesce in the same.” This finding embraces the alleged ignorance of the plaintiff in regard to the manufacture of pens by other manufacturers, with “303” impressed upon them for the time above mentioned. We may, however, here be permitted to express our wonder at that finding of the learned justice who had before him, and had heard read, the notice published by the plaintiff for more than twenty successive years. By this notice the court will observe that the plaintiff, for more than twenty years, gave a caution to the public, which was “deemed necessary in consequence of other makers adopting the above designating number, by which the original Joseph G-illott’s Victoria pen is better known than by any other term.” This notice is exclusively respecting the pen marked by the number “ 303.”

VII. It is indisputable that steel pens with the figures “303” impressed upon them had been manufactured by various manufacturers at Birmingham, England, and sold by dealers in most parts of Europe, and of the United States, for a score of years before the defendants commenced their manufacture in this country. The defendants, when they started their business, found the public using large quantities of steel pens of various styles, sizes and patterns, and among other kinds of pens they readily perceived that an extra fine pointed pen, known as a “ 303” pen, was in great demand. That kind of pen was universally known in the market, and was so known not as the pen of Joseph G-illott, the plaintiff, or of any particular manufacturer.

There were pens with the figures “ 303 ” impressed thereon, manufactured and sold by Harrison & Bradford, M. L. Leman, and several others.

The public was informed that the pens were “303” of the manufacture of the above respective names or firms. These pens were all manufactured and impressed with the figures “ 303 ” at Birmingham, England, except those manufactured by Harrison & Bradford. It would have puzzled the defendants to decide whose pens they were imitating, or whose figures they were adopting, if by the use of the style and of the figures of the “ 303 ” pens they had in view the imitation of the style of pen or the adoption of the figures of any other manufacturer. But, in fact, the defendants are no more chargeable with an intent or attempt to imitate the plaintiff’s pens or adopt Ms figures by the manufacture and sale of the defendants’ “ 303 ” pens than would be any manufacturer of spool cotton, or of thread, or of needles, who should now commence the manufacture of any of those articles, and impress upon the spools or the papers holding or covering the articles, the appropriate designating numbers, thereby informing the public of the quality, fineness, peculiarity of texture, or size of the spool cotton, thread or needles.

VIII. The cause of public morals appears to have been assumed by the court to be involved in this action. If that cause be at all interested, it is clear that it will be much better subserved by the defendants’ manufacturing and selling steel pens under and with their own signature, authority and open assertion of proprietorship than by having pens manufactured by the neighbors of the plaintiff, or by .the plaintiff in England, and sold here as having been manufactured by the defendants. It can not be disputed that the defendants would have no difficulty, and would meet with no opposition from the plaintiff,' in obtaining from the manufacturers at Birmingham, England, any desired quantity of steel pens with the figures “ 303 ” impressed on the pens and the pen boxes! We may here call the attention of the court to the testimony of the plaintiff’s agent, by which it appears the plaintiff has suffered no damage by any act of the defendants connected with the manufacture of steel pens. That testimony, in connection with the significant omission of the court (at special term) to find that the plaintiff is entitled to recover in this action any amount for damages, contributes some strength to the defendants’- claim for not only immunity but the negative protection of this court in their manufacture of steel pens in this country.

Gilbert Dean, for the respondent.

I. The evidence established beyond controversy the adoption by the plaintiff as early as the year 1839 of “Mo. 303” as his trade mark for this pen. “Mo. 303” may be made a trade mark of a manufacturer as well as any other word or device which does not itself by its common meaning import quality or character. Being wholly arbitrary and a combination of numerals, it is especially fitted for the use of a manufacturer of small articles, by which to make them known to the public, and to distinguish them from all others whether made by himself or other persons. It leaves all other combinations open to the public ; and this combination also as to all other articles. It is no objection to a trade mark that it is composed of a word or words in common use. A manufacturer is not obliged to go out of the language to find words for his trade mark ; symbols and devices may also be trade marks; and single letters and figures as well as words. All the cases support this. (Stokes v. Landgraff, 17 Barbour, 612. Bloss v. Bloomer, 23 id. 609. Clark v. Clark, 25 id. 79. Brooklyn White Lead Co. v Masury, Id. 418. Howard v. Henriques, 3 Sandf. 727.)

This trade mark is - protected by the statute of 1862. (Chap. 306, §§ 1 and 4. Upton on trade marks—passim.)

II. It is equally clear on the pleadings and proofs 'that the defendants infringe the plaintiff’s trade mark.

III. The defendants failed in their attempts to justify the use of the trade mark. 1. It is transparent on the whole case that the defendants adopted the mark “No. 303” on pens similar in appearance, and put up in boxes containing similar designs, because the plaintiff’s pens thus marked and put up had acquired a high reputation, and were very sale-able—indeed “ the most saleable of any pen in the market.” 2. The defendants also set up that it was used by the plaintiff and other parties and by themselves to denote the quality of the pens. Of this there was no proof, except the use of it by themselves and others on pens of similar patterns, as infringers. “No. 303’’ can not denote quality. It denotes a particular kind of pen of the plaintiff’s, and the infringements of the defendants and others, and the No. was entirely arbitrary as admitted, by every witness. 3. The defendants proved that others, dealers, not manufacturers, had for a number of years been infringing by using the mark “No. 303.” It was clearly shown that this was not done until the plaintiff had established the reputation of his pen “No. 303,” and that his use of that design was continuous and uninterrupted ; and under a constant protest against these infringements. Persons who fraudulently trespass on the rights of another, knowing such rights, do not acquire a right to do so. They all knew of Grillott’s right, and used this “No. 303,” put up in boxes of a particular form and design—because the plaintiff’s “ 303 ” was the most popular pen in the market. As to acquiescence, see Amoskeag Manufg. Co. v. Spear, (2 Sandf. 608, p. 615.) As to simulation of form, style and manner of label, see Wolf v. Goulard—opinion of Judge Leonard.

IV. The exceptions taken on the trial were not well taken.

Leonard, J.

The design to defraud by manufacturing and packing pens in all respects similar to the plaintiff’s, excepting only in the use of the name, appears very plainly. I can not reason so artificially as to disguise this conclusion from myself.

The plaintiff had the number “303 ” first in use. We see, by his notice or “ caution,” that he knew that others, also, had used the same combination of numbers, for the purpose of defrauding him; but it does not appear that he had discovered any individual whom he could attack as an offender. Nor can I believe that a “caution” to the public against the fraudulent use of his device can be deemed an acquiescence in the use by others of the particular arrangement of numbers upon steel pens and packing boxes, which the plaintiff had first adopted and used, and which had come to be a designation of a particular and popular pen with the public.

It is also to be observed that the defendants have not excepted to any fact as found by the judge. The exceptions are confined only to the conclusions of law. As the defendants have found no fault with the facts as found by the judge who tried the canse, the general term ought not to discover any; particularly as it does not aid the ends of justice.

I am for affirmance of the judgment, with costs.

Clerke, J. I concur in the conclusion at which Judge Leonard has arrived.