128 U.S. 686
9 S.Ct. 200
32 L.Ed. 569
STACHELBERG et al.
December 17, 1888.
This is a trade-mark case. The principal relief asked by the appellants, who were the plaintiffs below, is a decree enjoining the appellee, who was the defendant below, his agents and servants, from using as a trade name in their business of manufacturing and selling cigars, the words 'Normandie,' or 'E. P. Normanda,' or 'La Normanda,' or 'Normanda;' such use of those words being, it is alleged, a violation of the right of the plaintiffs to the exclusive use of the words 'La Normandi' and 'Normandi' in their business of manufacturing and selling cigars of a certain kind.
It is alleged, among other things, that one Asher Bijur, of New York, was engaged from 1858 to 1865 in manufacturing and packing cigars of various grades and shapes, some of which, of superior quality, were called 'La Normandi,' and were put up in boxes containing 250 each, labeled and branded with those words; that, being of fine stock, skillfully made, and of a shape that pleased the eye, his cigars of that kind became widely known, gaining great favor with the public, particularly in the New England states; that the first use by any one engaged in the manufacture, packing, or sale of cigars, of the words 'La Normandi' or 'Normandi' was by him, those words constituting his trade-mark for cigars of the above description; that on or about February, 1865, he assigned, sold, transferred, and conveyed to the plaintiff Michael Stachelberg, his heirs and assigns, all his right, title and interest in and to the exclusive use of the words 'La Normandi' and 'Normandi;' that on or about January 1, 1873, the plaintiffs formed a partnership under the firm name of M. Stachelberg & Co., said trade-mark becoming their joint property; that since said assignment they have been engaged in manufacturing cigars under the names 'La Normandi' and 'Normandi,' bestowing great care upon their packing, putting them up in bunches, (each bunch being tied with a peculiar colored and striped ribbon,) and offering them for sale in boxes containing 250 cigars each, branded with the words 'La Normandi;' and that they have incurred great expense in bringing such cigars, so named, to public attention, whereby large profits have accrued from their sale. The bill also states that on the 19th of February, 1876, the plaintiffs deposited in the patent-office at Washington the name 'Normandi' as a trade-mark, and March 7, 1876, received from that office a certificate showing such record; that after said assignment, and up to the date of and since such deposit, they have used the word 'Normandi,' with the prefix 'La,' and that by virtue of such assignment, and of their uninterrupted use of the words "La Normandi," they acquired and have the sole and exclusive right to use them as a trade-mark. It is further alleged that since January 1, 1881, the defendant, Ponce, has been manufacturing, and causing to be manufactured, and offering for sale, cigars substantially similar in shape, size, and outward appearance to their La Normandi cigars, and has put them in boxes of the same pattern, generl shape, and size, and tied with ribbon colored and striped, and resembling the ribbons used by them, his boxes being branded some with "Normanda," some "E.P. Normanda," and others "Normandie;" whereby the defendant has fraudulently imposed, and, unless restrained from so doing, will continue to impose, upon the public his cigars as the real "La Normandi" cigars, manufactured, put up, and sold first by Bijur, and afterwards by the plaintiffs, and whereby, also, great and irreperable injury will be done to the plaintiffs in their business.
The defendant admits in his answer that he has sold cigars under the brand or label of 'La Normanda;' but those words, he alleges, have always been accompanied on the boxes or packages containing them by the words 'E. P.,' or 'E. Ponce,' or 'Ernesto Ponce,' and sometimes by the words, 'Portland, Maine,' thus indicating the manufacturer, and the place at which his cigars were made. Denying that his trade-mark infringes the alleged trade name of the plaintiffs, or that he intends to use any trade name of theirs, he insists that Bijur did not, and could not, have an exclusive right to the words 'La Normandi' as a trade-mark; that the words 'Normandi' and 'Normanda' are of foreign origin, and of different significations, the former being a geographical and the latter a personal name; that the word 'Normanda' has long been publicly used as a name or designation for cigars, was stamped upon boxes and packages containing them long prior to any of the alleged rights of the complainants; and that such terms were in public use as a designating mark for a manufacture of cigars at Havana as early as 1861, and were so used, in that year, as a brand for cigars put up and sold by him, as well as by others. He contends that there is nothing in the shape or size of his cigars, or in the manner in which he bundles or ties them up, which can be exclusively appropriated by the plaintiffs. In respect to the use of the words 'La Normandie,' he denies that he has ever manufactured, or ordered to be manufactured, any cigars branded with those words, although in the course of his business he has bought and sold other and common brands of cigars marked in that way.
It was in proof that the alleged trade-mark, La Normandi, was used by the assignor of the plaintiffs as part of a label that consisted of those words printed at the top thereof; a picture immediately below those words of the interior of a cigar factory while occupied by the employes of the manufacturer; and a fac simile of Bijur's signature, together with the initials 'A. B.' The label used by the plaintiff consists of the words 'La Normandi' at its top, beneath those words a picture of the interior of a cigar factory as above stated, and at the bottom of the picture the following words, and a fac simile signature of M. Stachelberg, to-wit: 'Genuine La Normandi Segars are branded with my initials and the labels inside are signed in my own handwriting. M. Stachelberg. Entered according to act of Congr. A. D. 1866, by M. Stachelberg in the Clerk's Office of the Dis. Court of the Southern District of N. Y.'
By the decree below the bill was dismissed, upon the ground that when a right to the use of a trade-mark is transferred, either by the act of the original owner or by operation of law, 'the fact of transfer should be stated in connection with its use; otherwise, a deception would be practiced upon the public.' Stachelberg v. Ponce, 23 Feb. Rep. 430.
Rowland Cox, for appellant.
Wm. Henry Clifford, for appellee.
Mr. Justice HARLAN, after stating the facts in the foregoing language, delivered the opinion of the court.
We are of opinion that the plaintiffs are not entitled to an injunction restraining the defendant from using the words 'La Normanda' or 'Normanda' as part of a brand or label for cigars manufactured or sold by him. If it was satisfactorily shown that those words were not used in the trade to designate a particular kind of cigars until after the words 'La Normandi' or 'Normandi' had become a part of the established trade-mark of Bijur, it might be necessary to consider whether the former words, taken in connection with the entire label or brand used by the defendant, his mode of packing his cigars, and their size and appearance, were calculated to deceive the public by inducing the belief that they were the same cigars as La Normandi cigars, manufactured and sold by Bijur and by the plaintiffs. But no such case is made by the proof. On the contrary, it appears, by a preponderance of evidence: (1) That the mode in which Bijur, and after him Stachelberg & Co., packed their La Normandi cigars, the kind of boxes used by them, the number of cigars in each bunch, the particular color of the ribbon or tape around each bunch of 25, the putting of 250 cigars in each box, and the size and shape of the cigars, were all old in the trade, preceding, in point of time, the adoption by Bijur of the words 'La Normandi' as part of his trade name; (2) that for several years prior to the adoption by Bijur of his trademark, and from about that date until the bringing of this suit, cigars resembling the La Normandi cigars in size and shape, in the color of the ribbon or tape by which the bunches of 25 were tied, and in the manner in which they were put up and packed, were and have been made and sold in quite large numbers, in different parts of this country, under the name of 'La Normanda.' An effort is made to discredit the evidence establishing these facts by showing by witnesses engaged for many years in the business of manufacturing and selling cigars that they never knew or heard of any being sold under the name of 'La Normanda.' But the evidence to that effect is entirely negative in its character, and is not sufficient to overcome the direct, positive testimony of witnesses, some of whom, as early as 1853, actually manufactured and sold 'La Normanda' cigars of the kind above described, while others remember that domestic cigars under that designation were in the market before Bijur commenced the manufacture of the 'La Normandi' cigars. In this view of the evidence the plaintiffs are not entitled to the relief asked. The adoption by Bijur of the words 'La Normandi,' as part of his trade-mark, could not take away the right previously acquired by the public in the use of the words 'La Normanda,' as indicating a particular kind of cigars.
This conclusion is sufficient to dispose of the case, and renders it unnecessary to consider other grounds upon which, it is insisted, the decree below should be sustained.
The decree is affirmed.
Affirming 23 Fed. Rep. 430.