85 FEDERAL REPORTER.
prise." The. court, while dismissing the libel on the ground that nothing but a commercial transaction with the Dominican republic was involved,said':
"If there were reasonable grounds to suspect that the Madrid is not designed Samana, to be delivered tllere in completion of a contract of sale to to' go the Dominican republic, but to go direct to Hippolyte, taking her armament, by a preconcerted arrangement, frllm the Carondelet on the hIgh seas, in that case, whether the Carondelet could' or could not be refused a clearance under section' 5290, the MadrId, according to the cases of The Meteor [17 Fed. Cas. 178] and The Mary N. Hogan" 18 Fed. 538, mIght be, seized and forfeited under section 5283; but not the ,Carondelet; for the latter, upon the facts assumed, would not be designed 'to cruise or commit hostilitieS' against anyone, bUt on.ly to complete the, arming of the Madrid, which is not a ground for forfeiting the Carondelet. 'She might be captured by the belligerents, but would not come within our
I am forced to the conclusion that the proceedings against the Laurada cannot be sustained; and the libel is therefore dismissed.
(Circult Court, S. D. New York.
March 19, 1898.)
BASIS Oll' RIGnT TO TRADE.YARjl:-PRIORITY-USE-INVENTION.
The' exclusIve right to the use of a trade-mark' or device rests, not on invention, but on such use as makes it point out the origin of the claimant's goOds, and must be early enough for that,but absolute priority, or invention, is not req uired. '
SAME-PERMITTIl!JG USE BY ANOTHER-INFRINGEMENT.
Where the long and successful use of a trade-mark or name by plaintiff Is clearly establlshed, the fact that he has recognized and permitted the limited use thereof by another, which does not appear to have misled any· body, Is not sufficient to defeat the owner's right to prevent others from using it. ,
SAME-WHAT MAY BE ApPROPRIATED.
"Swan Down," as applled tOR complexion powder, is not descriptive, so as to prevent 'its appropriation as a trade-mark therefor.
This was a suit in equity by Hentry Tetlow ,against Herman Tappan for alleged infringement of a trade mark or name. Rowland Cox, for plaintiff. Francis Eastlack, Jr., for defendant. WHEELER, District Judge. This suit is brought against giving currency in trade to complexion powder of the defendant by using the words "Swan Down" upon labels resembling- those of the plaintiff, whereby the complexion powder of the defendant is made to appear to customers as that of the plaintiff. The long and successful use of these words by the plaintiff upon labels and boxes of a popular com· plexionpowder put up by him at Philadelphia is well made to appear and is not much questioned. One Henry H. Burrington appears to have used these words upon t\,simUar toilet preparation in a small way at Providence, a long time before, and till after, the plaintiff began using them, and to have copyrighted them. BUrrington brought suit court of the United States for the against the plaintiff in the Eastern district of Pennsylyania for the use of these wOMs, which was
TETLOW V. TAPPAN.
settled, and assignment made by to the plaintiff of "all of the right, title, and interest, jf any there be, which I have, or claim to have, in and to the use and emplo,}'ment of the words 'Swan Down,' as and for a name, title, designation, or trade-mark, for any or article for the toilet, skin, or complexion, and the sole ar..d exclusive right to use and employ the said words, name, or designation of 'Swan Down' for such preparation or article; saving and reserving, however, to myself and to Wm. H. Savournin, of the city of Philadelphia. respectively, the personal privilege and authority to use the same name or designation for the article now manufactured and sold by me and the said Savournin, respectively, by and under said name," for $550. This use by Burrington, and recognition of it by the plaintiff, are relied upon by the defendant here to defeat any right which the plaintiff might otherwise have; and the defendant denies that his use of the words has any tendency to represent that his powder is the plaintiff's. In Mill Co. v. Alcorn, 150 U. S. 460, 14 Sup. Ct. 151, Mr. Justice Jackson for the court said, in enumerating the requisites of a valid trade-mark, "that the exclusive right to the use of the mark or device as a trade-mark or device is founded on priority of appropriation; that is to say, the claimant of the trade-mark must have been the first to nse or employ the same on like articles of production." Much reliance is placed in behalf of the defendant upon this statement; and if it means absolute priority, like that required of an inventor in a patent under an absolute statute, it would stand squarely in the way of the plaintiff's right. But a trade-mal'k rests on such use as makes it point out the origin of the plaintiff's goods, and not on invention; and the use must begin early enough, and be separate enough, for that. Use by anothel' before, at the same place, or neal' enough to start a similar right, would pl'event the use fl'om showing such origin. The other use might be so far away, or so small, as to have no effect upon the use in question, to prevent it from becoming a: representation of origin. In this case the use of the words by Burrington does not appear to have induced the plaintiff to adopt them, or to have been known to him, or to have led anybody to think that the plaintiff's goods, or the defendant's, were Burrington's, or to have done away with the effect of the use of the words by the defendant as a representation that his goods were of the same origin as the plaintiff's. Such a use cannot justly affect the right of the plaintiff or the liability of the defendant. The assignment had nothing to operate upon. The reservations were personal, and have been exhausted, without anything material here having been done under them, and the transaction seems to be now wholly immaterial to this controversy. A suggestion that the words are desCTiptive of quality of the article, rather than a designation of its origin, does not seem to he well founded. That the use of these words, with other configurations of labels similar to the plaintiff's upon boxes similar to his, as is shown and admitted to have been done by the defendant, would lead ordinary purchasers to think the article was of the same origin as the plaintiff's, is quite obvious. There are differences which, if studied, might inform customers that the producers were not the same, but this is not sufficient to prevent the deceit.
85 FEDERAL REPORTER. HIRAM WALKER & SONS v. HOCKSTAEDER et al.
(Circuit Court, N. D. Illinois, N. D. February 15, 1898.)
TRADE-MARlrS-INFRlNGEMENT-WrnSKY BOTTLE LABEl,S.
A label on whisky bottles which In size, shape, and color Is an evident irnitation of the label on a well-known brand of whisky, and which differs from it merely In some details of the Inscriptions on the label, is a fraud, the use of which wlll be enjoined.
SUI[ by Hiram Walker & Sons, a corporation, against the firm of Hockstaeder & Levy, for an injunction. Banning & Banning, for complainant. Zack Hofheimer, for defendants. GltOSSCUP, District Judge (orally). This is a bill by the complainant, a corporation organized the laws of the province of Ontario, Canada, to restrain the defendants, citizens of Illinois., from using the trade-marks., brands, and labels of the complainant's whiSky, known as "Canadian Club Whisky." It is conceded that the Canadian Club Whisky, manufactured by the com.plainant, has acquired a widespread reputation, and is favorably known to the trade. It is conceded that the defendants themselves do not manufacture whisky, but only manufacture bottles and furnish labels, the bottles to be filled with any character of whisky that the purchaser sees fit to put into them. The bottles of the complainant start at the top with a bronze band, upon which are the words "Canadian Club Whh,;ky." This is immediately succeeded underneath with a neck band, upon which appear the figures "1890," and in red ink upon these figures the words "H. Walker & Sons." Around the face of the bottle the 'oomplainant attaches a white label, upon which, in script, prominently appear the words "Canadian Club Whisky. Distilled and Bottled by Hiram Walker & Sons, Limited. Walkerville, Ontario, Canada." Near the center of this label is a crown, in green ink. Across the top of the bottle is a label or slip attached by the excise officers of the Canadian government; and bearing the genuine government stamp. The defendants attach a like capsule, precisely like it in color, but containing the words "Oanadian Rye Whisky" instead of the words "Oanadian Olub Whisky," the letters in each case beinl! about the same reddish color. Beneath this capsule the defendants enable their purchasers to attach a nl:'ck band, which in all essential particulal'!s is precisely like the com.plainant's band, except that the lettering is in black instead of red, and the words "H. S. Ramsay & Sons" instead of the complainant's name, and that the figures are in red instead of in dark blue. The defendants' label on the face of the body of the bottle is likewise upon a white piece of paper, upon which is printed, in script, "Oanadian Rye Whisky, Distilled and Bottled by H. S. Ramsay & Sons, London, Ontario, Canada." On the face of th1s label, near the center, is a green crown. The defendants have likewise printed on the face of this label the language used on the complainant's label, namely, "Matured in Cask in Warehouses, Which are 'Warmed During the