360

FEDERAL 'REPORTER.

purchasing a genuine Elk cigar, made by these complainants; and I do not see that the additional label put on the box in accordance with a. custom of the trade is in any just sense such a false representation as should invalidate the trade-mark. It is further urged as a defense that the complainants make different brands of cigars, all of which are cnl4ld" Elk." But if, as appears, these brands are designated by something which disting:uishes one from the other, then no 'deception is practiced. I see no reason why this trademark should not be used in good faith on different brands or grades of Cigars all of which are made by the complainants. , The defendant also claims that the complainants gave him permission to use this trade-mark on the goods sold by him, but the evidence does not, in my opinion, sustain his position. This seems to me a case where the defendant has wrongfully appropriated a trade-mark belonging to others, and ill none of the dt:fenses brought forward, can I find any justification for his 'action. Let an injunction issue aspra.yed for. Injunction granted

BROWN CHEMICAL Co. 17. FRlllDERICK STEARNS

& Co.

(Oiircuit Oowrt, E. D.ltlickigan. January 7,1889.) The words "Iron Bitters, "being indicative of the composition of the article so called. cannot be claimed as a trade-mark. 1 S.SA}4E.....:.DISHONEST COMPETITION IN ,TRADE. , , If onepersoJl can, by superior energy, by more extensive, advertising. by selling a better or more attractive article, or by greater frankness in disclosing the lngor.edients of his compound, outbid another in popular favor; he has a right to do so, provided he does n()t attempt to palm his goods off as those of another. This right is not impaired by an open avowal of his intention to compete with 'the other, or even to drive him out of the market. But he has no right, however honest his personal intentions, to use so much of his rival's name or trade-mark as will enable any dishonest trader, into whose hands his own goods may come, to sell them as tpe goods of his rival. It SAME. ' , Hence where plaintiff was the proprietor of a pre,paration known as "Brown's Iron Bitters, "and defendant of another, called Iron Tonic Bitters" . which it falsely stated to be made by "Brown & Co., ,New York," it was held that such statement should be enjoined. (Sllllabu8 by th8 Oourt.)

i.

,

TRADE-YARKS-"IRON BITTERS."

In Equity. ' This was a bill to restrain the illegal use of plaintiff's trade-mark. The bill alleged that the plaintiff many years ago adopted as a designation for a medicinal preparation the words" Brown's Iron Bitters," which designation it has since continuously used. That the preparation is now and has been known to consumers, and identified by the name "Iron
lIn general as to what words will be protected as a trade-mark, see Manufacturing Co. v. Stone Co., 85 Fed. Rep. 896, and note; Indurated Fibre Co. v. Fibre Ware Co., P98t, ,-, and note.

BROWN CHEMICAL CO. V. FREDERICK STEARNS & CO.

361

Bitters;" the word "Brown's'; being often omitted, or Idst sight of. That, iu order to distinguish its said medicine, plaintiff adopted a package consisting of a bottle of amber-colored glass, rectangular in shape, having one of its sides flat, and the other three depressed to resemble pariels, upon which it applied a white label. having upon it in cl>nspicuous characters the words "Iron -Bitters," with other descriptive and ornamental matter. That this bottle and label were placed in a carton or box of paste-board, around which was placed an exterior label or wrapper with the words "Iron Bitters" conspicuously displayed, so as to attract the attention of consumers, ahd it avers that by reason of these facts plaintiff' claims an exclusive right to the use of the words "Iron Bitters." and to the other features whereby its medicine is identified. That whether it has an exclusive right in the premises or not, the de'fendant, which is a Michigan corporation, has entered upon an unlawful and unfair competition, by putting up ita goods so that the packages resemble those of the plaintiff's, and selling them under the name df "Iron Tonic Bitters." That the defendant adopted ancl used a form of package corresponding in many particulars to those used by the plairitiff, its purpose being to sell the article upon the reputation established by the plaintiff for its iron bitters. The answer denied that the bottle was distinctive in its character, and averred that the shape and forrrl of the bottle were not important. It also averred that defendant has never in any manner imitated the plaintiff's package; that it is a corporation organized to carry on the business of manufacturing pharmacists, ana for the object of doing a legitimate business according to known 'and established jormulm, in opposition to all secret, quack medicines, for which reasons it has al ways been careful to avoid the use of any wrapper, label, or package which could possibly be mistaken by any person for those of any manufacturer of secret medicines; that it has made a preparationcalJed "Iron Tonic Bitters," made in accordance with the formula for bitter wine of iron, a standard and recognized medical preparation,'Which it has put up in bottles differing materially from plaintiff's; that it has never sold its" Iron Tonic Bitters" so that the bottle could be seen by the purchflser, but has put it in a carton or box, which has been inclosed in a wrapper which does not in any way resemble that of the plaintiff. ROWlaitdC02l. for plaintiff. Goo.H. Lothrqp, for defendant. BROWN, J. We had occasion several years ago, in the case of Burton v. Stratton, 12 Fed. Rep. 696, to make a somewhat careful examination of the law of trade-marks, and then found the following propositions abundantly sustained by authorities. 1. That words which are merely descriptive of the character, qualities, or composition of an article, or of the place where it is manufactured or produced, cannot be monopolized as a trade-mark. . 2. That a court of equity will enjoin unlawful competition in trade by means of labels of peculiar design or colors, or packages of distinctive

FlllDEJ3.4L .REPORTER,

'. i

ehapes,1J:).Wpded ·to. e,nable the ,defendant to Pfl,SS his goods off· as those the plaiJ;ltiff. . ,'. . . . (1) Unger the first of these rules" we are satisfied. that no monopoly can of th.e wqrds "iron bitters," which are indicative of the ·compositiqnot the article, ,and were Boheld in Ohemical 00. v.Myer, 31 Rep. 453.' , , . (2) The evidence that designed to compete with the plaintiffin the sale of iron bitters,ll,nd, if possible, to it in the market,.is ahundant; but the ayidEmce that this was done by any unfair or ill,egal lUeans/ or by 'an endeavor induce the pUblic to buy its goods the impression that they, were buying the goods of the plaintiff, · quite inconclusive. If one person can by superior energy, by more advertising, by selling a better·or more attractive article, or by l ;reater in disclosing the of his compound, ?utbi.d ,l;tqotQer, in popular favOJ:, he has a perfect rIght to do so. Nor IS thIS an open avowal of his intention to, compete with the ,even to:drive him out of,tbemarket. It is the policy of the '1lJ.w¥> encourage competition in business" and to discourage monopolies ;,*pere, they are riot protected, ,bylaw, provided it. be accomplished by and honora9lemethodsof dealing. Apparell:tlyfor the purpose of :the plailltiU, the defendant announced in its catalogue that, ithaq,'J:no patents, no trl,l.de-marks, no secret processes,i" that one t4,e features of its business was to put up whllt are known as non-secret medicipes; and, to put them up avowedly to replace quack. secret, or :Pllrtented in .the.!!aies, of retail 'druggists; simulating, them in those.'points, ,deservedly pOPU1l;tf, but not imitating or copying them , 1'9is leading featl;lre of its business it amplifies at consider'a.ble length,and sets forth why, in its opinion, such methods be to it!! to .the prepamtl,on m questlOll, It announces: "Our Iron TODlc ,BItters IS an elegant prtlparation;' a plealsant bitter and appetizer; replaces perfectly the pat·ented nostninis called 'Harper's Iron Tonic,' and 'Brown's Iron BitThese bi'tters it put up in bottles of siI,Qilar shape and color to but qf larger I\ize l and with a wholly different label,-so .'alffereI}t, indeed, it is scarcelyclaimedto be.aninfringement. Upon 'ihiEdabel the words "Iron" Tonic Bitters' are conspicuously displayed, with the name of the defendant as manufacturer"and with a notice that it is put up according to the recognized formula (or wine of iron. This bottle was packed in a paper box or carton, which was itself inclosed in "n Ill-pel wholly different in design fron;lthllt of the plaintiff; · .iii'- no similarity in the' .packages, except in the of a many contilining medicinal preparations,addc'ould never deceive an intendingpurcqaser, as they are l;WW from the carton.. insists, 40""e,VE;lr, t4at, the sImdal'1ty m shape and color of the bottles IS of itself suffiCi'eili evicf,ence of an intent to deceive, and l'eli,es in that connection UpOIl tbecaseof-PoodCo. v. Baumbach, 32 Fed. Rep. 205. In this case, defendant an unusual style of bottle, viz., a cham-

BROWN CHEMIOA!,' 'COo 'V.J,°REDERICIt STEARNS & CO.

863

pagne bottle, with a label and wrapper sufficiently resembling plaintiff's label and wrapper to deeeiV'e fthe .geneI'!llpnblic, bearing the words, "Standard Nerve Food." The case differs from the one under consideration in the fact was' of unusual preparati.ons of that description, and there was no evidence that the bottle in RGarwnSQ as to conceal its shape from ,the purchaser. Upon the whoJe, think the evidence is quite insufficient to show any unlaWful coru:petition upon the part of the defendant, or any such imitation of its packages, labels, or wrappers as would induce. anyone to believe he,was buying the preparation of the plaintiff. ' .. , , (3) In a few cases, and to accommodate a particular dealer,t4e wards "Browij.& Co., N. Y. City," were printed upon the bottom of the label in the place of the name of the defendant. The evidence upon this' pointtends'to show that the witness Powell visited a druggist in Hamburg, Iowa, and asked for a bottle of Brown's Iron Bitters. He was informed by a member of the firm that they kept the bitters, and was toe-: fetred taa clerk, who handed him one of thedefenciant's packages,and On being if he didn't told, him that it was Browri's Iron know than,he 'article was made by the defendant, he acknowledged that he did, and said that he knew it was not the article made by the plaintiff. In explanation, the defendant states that one Snodgrass, or wh'dm the Hambu,g druggists were the successors, in November, 1882.; 'sent an orderfqr goods, not embracing any Iron TonicBitters,@nwhichhedF-" rected to be printed the name of Brown & Co., of New York andthat this practice has sipce been; followed without .noticeor speciaf attention on defendant's part. This appears to ,be a common practice amoog country dealers, as it enables them to do a jobbing business, which they CQuld not, do, if th\:Ji,rown, name, or that of the real ,manuJacturer,was, 0n the ,&oods.. 'JVbik defendant from the eharge , ,of a fraud\Jientdesign .on its part, and there is ,no evidence that any one , was b.ythislapel,or therebyjndu.ced to buy ,dEl-; fenda)Jt',s belief it was plaintiff's" 'one 'can, easily imagine. ,the etiect. of itrpight be to mislead intending· put--' chasers, and perhaps induce them think they were buying Brownlej Iron Bitters.)ndeed, of Powell in this Case indicates ,that' tbeHamburg: endeavored to:pa],m off the packa.geupon ,him asl nianufactured .py the plaintiff. ,To suqhefforts, whether innocent 'Of' has, no right. to lend itself. We believe the rule stated) by Lord.Wi'!'fjoN in JohnBton v.. Ewing. L. R. 7 App. Cas. 219,:232; tQGoi a,whpIesomo<)llEi: '''But no man; however honest his personal intentionsl! has a right to adopt and use so much of his rivaPs established tl1ade.: mark. as will enable any trader into whQse hands his own gqods may come to seg them as of his rivlj.I." To thiaextenkand: to this only, ,think plailltitfis entitled to its injl;lnction; but, as the besnlall,we do not t4in!\f. the parties to> the expP.nse of a: reference to a master to compute damAde.qrEleWill be ac;:corqallCe wiJ.4 J.qjs without costs to either p a r t y . ,
J

; ',',.' .. , _, ,J ., '. :/

864

FEDERAL REPORTER.

JENNINGS f1. JOHNSON.·

(OirCttit Oourt, lJ. Maine. April 26, 1888.,
1.

TRADE-MARKS-PROPRIETARY MEDICINE LABELS-lNFRINGEMh.

"Johnson's Anodyne Liniment" had been sold for more than 110 years In bottles of a certain size and style, having a blue wrapper, and a purplish label bearing a certain description and a/ac 8imile of the name of A. Johnson, the orig-inal proprietor. Defendant's article was called" Johnson's Anodyne Lini· ment," and appeared in the same size bottles, with a similar blue wrapper, and a label differing but little from that, of the genuine article, except in a not very marked difference in color, ,and bore the fac simile of defendant's name, "F. E. Johnson." Thore was evidence of actual deception. Held, that de· fendant should be'restrained from the' sale of his article in such form.
TO USE LABE:(,.

2.

a.

Plaintiff having been a member of the firm which prepared the liniment, and having purchased 'its business; may properly state on his labels that the ,liniment is prepared by lIuch firm.
SAME-AcTION FOR INFRINGEMENt.

,

Plaintiff having becomeso)e pr,oprietor of the business of preparing the liniment from the original proprietor through several mesne purchases, he has such a proprietary right as entitles him to maintain the suit for an in· jUllction.

In Equity. ,Suit by Stephen Jennings against Frank E. Johnson to restrain the of liniment in a for1D res,embling' that in which plaintiff's liniment sold. (hU8ten Browne and A. p.. BroWne, for complainant. W. H. Oliff01'fl, for defendant.
88

CoLT,J. The plaintiff in this case is the owner of s, remedy known "Johnson's Anodyne Liniment," and this suit is brought to enjoin the defendant from putting up and offering for sale a liniment of his own manufacture, ina form so closely resembling that of the 'plaintiff's'artiole that1he public are liable to be deceived thereby, and So portion of the plait).tiff?s business unlawfully taken away. The liniment was first prepared by Abner Johnson, about the year 1810. In 1846 he took his son, Thomas' Johnsoll,into partnership. In 1848 the business was conducted by. ThOlins Johfisonand his brother; 1. S. Johnson, the father having died that ,vear. In 1849, Thoma.s,Johnsori died, and the business was then carried on by 1. S. Johnson 'until 1866, when he sold a part'of his interestld 'the complainant. This continued until 1876, when the complainant bought out the entire interest of 1. S. Johnson, and became the sole: pro!Jrietor oithe business. ' . , Upon theeVJidllDce I think the 'complainant has shown such a pr6prietary:right: to this' business, and to the use of the bottles, labels, and wrappers with whioh: this medicine has been associated and identified, 'as entHIes' him to ma.intain this action against this defendant, and therefore
I

'.

1

'.

11.100.

H,Pu!?licatiol\ delayed because of failure torecehre copy of opinion at the 'tiirill it was '
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