RICHTER· ft. ANCHOR REMEDY eO·.
(Oircuit Oourt, W. D. PennsyllVatnia. September 14, 1899.)
TRADE-MARX AT COMMON LAW-RIGHTS OF FOREIGNERS.
A foreigner engage4 in manufacturing and selling medical preparations in bis own country, under a reg'istered·trade-mark, has no common-law right to such trade-mark in the United States, such as will enable him to claim the same, on establishing a branch business here, as against a domestic firm which had an established business under a similar trade-mark, adopted in good faith, before be had I\old any goods in this country.
A fOI"6igner who registerll in this country a trade-mark consistIng of "a red anchqr, in a white oval or field, " in connection with particular words,cannot afterwards enlarge hIS rights as against persons having in good faith an established business undertbe symbol of an anchor. bta new,registration, claim. ing broadly the use of the picture of an anchor. .
In Equity. Suit by F. Ad. Riohter & Co. flgflinst the Anohor Remfor infringement of a trade-mark. Bill dismissed. edy A· .". Brieaen, W. Bakewell, and W. L. Pierce, for complainant. A. H. (Jlarke and Barton &; Barton, for defendants. Before ACHESON, Cirouit Judge, and BUFFIl'iGTON, District Judge. ACHESON, Circuit Judge. In the fall of 1887 the defendants, under the name of the Anchor Remedy Company, engaged, and have since continued, in business, at the city of Pittsburgh, as manufacturers and vendors of proprietary medicines of their compounding, marking their labels, wrappers, and bottles with their business name, and with the representation of a black anchor, and designating their compounds "Anchor Liniment," "Anchor Rheumatic Remedy," etc. In adopting this name and symbol the defendants acted in good faith, believing such use to be original with them. Their labels, wrappers, and packages have been always distinctly marked "Prepared by the Anchor Remedy Company, Pittsburgh, Pa." . "Laboratory, corner Liberty and Fourth streets, Pittsburgh, Pa." The plaintiff, Dr, F. Ad. Richter, a citizen and resident of Germany, by his bill, filed November 13, 1890, seeks to restrain the defendants" from selling proprietary medicines having thereon any labels, or wrapped in any wrappers, or contained in any bottles, having printed, blown, or otherwise applied the word 'Anchor.' or the pictorial representation of an. anchor, and from using the word'Anchor 'as part of their firm name, or the pictorial representation of an anchor in any connection whatsoever in their said business." In effect, the plaintiff claims an exclusive right to use in the United States the word" Anchor," and the symbol of an anchor, in connection with the manufacture or sale of medical compounds. The bill, which describes the plaintiff as "a citizen of the empire of Germany, doing business as l!"', Ad. Richter &00., in the city, county, and state of New York," sets forth that he has been in the city of New York, "for a number of years last past," in the sale of proprietary medicines manufactured at his factory; and that, about the year 1869,
"your orator, being so engaged in the sale of proprietary medicines, adopted, applied, and used, lIS a trade·mark of certaiu proprietary medicines of his manufacture, the pictorial representation of an anchor, and the word symbol 'Anchor,' which trade-mark or' emblem was by him applied and used by printing upon labels, blown into ,bottles, and and that the same was registered on July 23, 1889, in the UnHed States, agreeably to the act of oongress. The proofs show that tlie'plain'tit;1"s factory is at Ruqolstadt, Germany, where his goods are and always have been manufactured, marked, labeled, and put up for the market. All the plaintiff's medical compounds-of which we have many specimens-are unmistakably German preparations, with. ,r>l.jnted labels, directions, etc:, thereon in that language, although having also labels in English; and they are all distinctly marked, "Manufactured by F. Ad. Richter & Co." The bill, it will be perceived, is quite indefinite as to the length of had been engaged in the city of New York in the sale his'medicines before- this suit was brought. ,Nor do his proofs certainly 6x the date when his bl'ancn saleshouse was established in that city. It was, undoubtedly', after May 1, 1887, for Charles Bernhart Druguliri, :who opened tha:thouse for the plaintiff, did not leave Rudolstadt until that date. Prior to that time the plaintiff had no establishment itiitheUnited States.' Neither had he ever Jsold any of his medical cOIhpounds in comitry before he opened his New York branehh.onse. . It is true thereihlid been previously some importations, to a' limited extent, into the United States' of the ,plaintiff's medicines, but byi'drhggistsand others who sent 'orders for the medicines to Rudolstadt to supply persons who had· lived in Europe, and there had used thern .. : ' ., . Prior to his engaging in business: ·in New York the plaintiff's use of the word "Anchor" and symbol df.'an,anchor was:in the empire of Germany, and itis in evidence :thathw:there registered the picture of an allehor as a;trade-markdn May:l. 1875; for chemical pharmaceutical preparations and specialties, :soaps, liquors, and other designated things; on February 2'5; 1876, for pharmacelitical preparations· and speoialties and other named articles; on February 25, 1878, for pharmaceutical preparations; oriMay 181 1880, for chemical and pharmaceutical preparations ofauY'kind, etc.; on June 7:,1880, for alcoholic drinks of any kind and other specified articles; and on March 7 1 1885, for a number 'of things, including all kinds of toys for children, tobacco and tobacco fabrics; and the certificates before us show registered announcements at various dates of the further "retention" of the trade-mark. 'We have not been shown the law of the German empire in relation to trademarks, nor have we any evidence as to what rights, if any, the owner of la trade-mark there has outside of his registration. As stated in the bill of complaint, on July 23,1889, the plaintiff registered in the United States patent office. under the act of congress of March 3, 1881,:an ',anchor trade-mark for medical compounds. But, as ,we have seen, thllt registry was long after the defendants had engaged in
RICHTER V. ANCHOR REMEDY CO.
their said business, and, indeed, after this dispute had arisen between them and the plaintiff, and this lawsuit had been threatened. A facsimile of the plaintiff's trade-mark, as alleged to be used by him, accompanied his 1889 registered declaration, which latter contains the following statement: "My trade-mark consists of the representation or picture of an anchor and the word symbol ·Anchor.' These have generally been arranged as shown in the accompanying facsimile, which contains, in an ornamental panel, two representations of an anchor in white upon a black groundwork, surrounded by a white border of oval shape. and the word symbol 'Anchor,' in connection with the words' Pain Expeller,' or other words relating to the medical compounds in connection with which the trade-mark is used; but the words ·Pain Expeller,' the color of the representation of the anchor, and the color and shape of the groundwork and surrounding 1>order are immaterial, and the words' Pain Expeller,' and the border and special groundwork,may be omitted altogether without materially altering the character of my trade-mark. I prefer tonseboththe representation or picture of an anchor and the word symbol 'Anchor,' but the picture of an anchor may be used alone with<lUt materially affecting the character Of my trade-mark, the essential feature of which is the picture or representation of an anchor. This trade-mark I have used continuously in my business since the 1st day of March. 1869, and it Wa.!! registered for the German empire on the 20th day of May, 1875." The said registered facsimile, besides the characteristics above tioned, contains printed lengthwise along the face of the panel above the designation "Anchor Pain Expeller" the words "Genuine is only"" and below said designation the words, "Of Richter's Manufactory." . The defendants never used this facsimile, nor anything (aside from the word" Anchor," and the symbol thereof) having the remotest resemblance to it.. The plaintiff's bill rests upon his registered trade-ma.rIiof 1889, and also upon his supposed common-law right to the exclusive use upon medical compounds of the word" Anchor" and its emblem: But the proofs reveal the important fact (undisclosed by the bill) that on July 7, 1885, the plaintiff, as the sole proprietor of the house ofF. Ad. Richter & Co., registered in the United States patent office an anchor trade-mark declared of record to have been "adopted" by him for his use as a "trade-niark for medical compounds," which is much more limited in its scope than the registered trade-mark of 1889. His declaration in this 1885 registration contains the following statement, which is here inserted at length for the sake of comparison between it and his statement already quoted: "My trade-mark consists of letters and words and an arbitrary symbol. These have generally been ananged as shown in the accompanying facsimile, which facsimile is a representation of a red anchor in a white oval space or field,with the words ·Schutz.Marke" and ·Trade-Mark' on the oval border, of black or gray color, and the words' Garantie de I' Authenticite' above the representation of the red anchor, and' Beweis der Echtheit' below the representation of;the red anchor, the whole being surrounded by a border of black or gray color, with small anchors in the corners; but the outside border may be omitted at pleasure, without materially altering the character of my trade-mark, the essential feature of which is the representation of a red anchor in the oval space or field. This trade-mark I have used continuously
in my empire
it: was ; for the German
It i$ the defeQ9ants have. infringed the rights 01 the his original United States registration. Neither can it be successfully maintained that by virtue of his second United States could acquire any new righ,ts to the prejudice of the in their previously establisheq, business. Nor do we perceive any ,good basis for the claim that. independently of his United States registrations, the plaintiff had acquired, as against the defendants, a. right to the exclusive use in the United States of the word l'Anchor"i,alld inconn,ection with the manufacture and sale have seeri, prior to his first registration, of the plaintiff hl\q,.never ·sold' il;l. :the tJniteq States alilY of his medicines, Nor had he himself made any'importations thereof before that registration. no trade in :this country, we: do not see how the plaintiff coU!d,well hllve here a trade-mark. Browne, Trade§§ 46,' 54. To sustain: present pretensions in that might,indeed, precedent, in view of the great .numberand varililty Qf'l"rticles to which his anchor trademark as registered in Germany applies. But, furthermore, certainly a trade-mark maY ,be abandoned, (Id. § 674,) anq what clearer evidence of abandonment of. the r,ight to ',u,illimited use. of the anchor emblem C9,Uld therebEl.tl)an .was :tht;! .restricted registration on.Ju1t'..7J·.. ... ?,. IIeth. . ·b.:.Y .' g.ave public. nP.ti.ce to all traders, and . .·' others, m tbeliQlwd StateR, that,he ndopted as h1s trade-mark for medicl;ll compqund!l' nottbe of an anchorgenerally, but "a red anchor in the [white] oval $Pta9¢Qr tield." . Thi's limited registration was the. veri dEllib<m;\te act()f theI>la,intiff, and he must abide the consequeJ;lces·. If.would' 1?e a perversi()u of the right to registration under the liet of CQngress; ofwhich the :plaintiff availed himself, and would a fraud on other traders, now toassert rights the anchor as. a symbol tha,n his public registry in.1885 disclosed. True, section 10 of act declares" that nothing in'this act shall prevent, lessen,impeach. or avoid any remedy, at law orin equity, wbich aqy party aggrieved by any wrongful use ofany trademark might have had if the provisions of this act had not been passed." But the act requires that theappliciHion for registl;ation shall be accompailied by Ii written declaration,verified by the applicant, that the description and facsimile presented for registry truly represent the tradenlark; and section 10 gives nocoun:tenance to the idea that a person, availing himself of the benefits oftlul'act; may regil'lter as his trade-mark peculiar representation of a cOIIlluon emblem, exhibiting special and distinguishing features and a particular comhination, and yet afterwards claim the emblem pure and simple; without regard to such featllres or combination. 'fo tolerate this would be to defeat the very purpose of the act. . We have only to add specimens of the plaintiff's goods before us as exhibits. have impressed thereon his red anohor symbol, and
MUNICIPAL SIGNAL CO. V,. GAMEWELL FIRE ALARM TEL. CO.
it is a conspicuous and distinguishIng sign. But then, again, the defendants' medical compounds in themselves are unlike in appearance those of the plaintiff, and theirlabels, wrappers, and phials,in size, color, and general effect, are widely d.ifferent from his. We are altogether convinced, notonly by the testimony, but by our own inspection, that the defendants' goods as put upon the market are so easily distinguishable from those of the plaintiff that no purchaser or consumer using the slightest the one for the other. It isnot shown that. any attention could one has ever been misled. The defendants' labels, indeed, point directly and unequivocally to proprietorship and origin. And, finally, we do not find in this record a particle of evidence tending to oonvict the defendants of any attempt or purpose to deceive the public or to perpetrate a fraud upon the plaintiff. In Desmond's Appeal, 103 Pa. St. 126, the supreme court of Pennsylvania held that the appropriation, as a trade-mark applied to compound medicines, of the word "Samaritan" in one combination of words, did not prevent its being used in other combinations; and hence that the use by the defendants of the name" Samaritan's Nervine" did not violate the plaintiff's trade-marks "Samaritan's Gift" and "Samaritan's Root and Herb Juices." The same learned court in Heinz v. Lutz, 146 Pa. St. 592, 609, 23 At!. Rep. 314, declared that" a court of equity will not restrain a person from using a device, on the ground that it infringes plaintiff's trade-mark, unless it is so similar in appearance that any person using 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;" citing Gilman v. Hunnewell, 122 Mass. 139, and Desmond's Appeal, supra. And this doctrine was distinctly approvt.'<l by the supreme court of the United States in Manufacturing Co. v. Trainer, 101 U. S. 51, 56. Upon the whole case, then, we are of the opinion that the plaintiff is not entitled to equitable relief. Let a decree be drawn dismissing the bill of complaint, with costs. BUFFINGTON, District Judge, concurs.
CO. et aI.
Co. et ale
(Circuit Court, D. Massachusetts. August 10, 1892.)
INvENTIONs-COMBINATION-SIGNAL ALARMS. Letters patent No. 178,750, iSSUed June 13, 1876, to Henry Ennis, for an improvement in telegraphio fire alarms, oover adevioe consisting of a hammer arm for operating a bell, a penoil for recording a message on a traveling strip of paper, and a pen!lll for reoording the time of day on the faoe of a rotating olock dial, aU oonnected by arms and pivots to the armature of an· eleotrocmagnet, so as to be simultaneously operated by an electric current. Claim 1 is for a telegraphic receiving instrument adapted:to register a message and record the time of its recep-