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...C.i:.(&cnuL..
LAW BOOKS

.'^7 So. Sptiag U.. Room 210

Ml'rual ^r^




THE LIBRARY

OF

THE UNIVERSITY

OF CALIFORNIA

LOS ANGELES

SCHOOL or LAW



V



The Law of Trademarks
^ Tradenames



and



Unfair Competition



Including Trade Secrets; Goodwill; The Federal Trademark
Acts of 1870. 1881 and 1905; The Trademark
Registration Acts of the States and Terri-
tories; and the Canadian Trademark
and Design Act; with Forms



By

JAMES LOVE HOPKINS



THIRD EDITION



Cincinnati

THE W. H. ANDERSON COMPANY

1917



T
1917



C'OrYRIC.IlT. lit 17

nv
THE \V. II. ANDERSON COMPANY



INTRODUCING THE THIRD EDITION



With the present revision this book becomes the first Amer-
ican text on the subject to attain a third edition. This fact
would have been im]iossible had it not been for the generous
use given the earlier editions by the judges and lawyers of
this country, and for the many and kindly suggestions and
criticism from my professional brethren which have lightened
my labors, all of which I take equal pride and ])leasure in
here acknowledging.

A quarter of a century has elapsed since I first ventured
upon the literature of this division of the law, and engaged
in its practice. I trust that these pages may reflect to the
reader something of the fascination and charm the subject
has ever had for the author.

JAMES LOVE HOPKINS.

Chemical Building, St. Louis.
December 1, 1916.



Ui



GG^S?



AUTHOR'S NOTE

(FROM I UK SKCONI) KDI'I'ION.)



Froude, in his essay on the Science of History, said, "Opin-
ions alter, manners change, creeds rise and fall, but the moral
law is written on the tablets of eternity.''

In the law of trademarks is contained the first recognition
by the courts of the princ'ij)le that no man sliould be permitted
to pass off his goods as those of another. Does the fact that
this department of our law is of so recent origin import that,
in the past, English speaking traders were more honest in their
dealings? The answer to that question must be looked for in
the pages of history. Even if Napoleon was correct in his
assertion that history was "but a fiction agreed upon," it con-
tains the only evidence available for our jjurpose. Further-
more, Buckle's theory that history, though conflicting as to
the character and achievements of individuals, is still har-
monious as to the manners of a given period, leads us to be-
lieve that the authors to whom we purpose to briefly refer
may, for the purpose of our inquiry, be deemed authoritative.

Writing of the conditions existing in England during the
Anglo-Saxon period, Hume says "Whatever we may imagine
concerning the usual truth and sincerity of men who live in
a rude and barbarous state, there is much more falsehood,
and even perjury among them, than among civilized nations;
virtue, which is nothing but a more enlarged and more cul-
tivated reason, never flourishes to any degree, nor is founded
on steady principles of honour, except where a good education
becomes general ; and where men are taught the pernicious
consequences of vice, treachery and immorality. Even super-
stition, though more prevalent among ignorant nations, is
but a poor supply for the defects in knowledge and educa-
tion ; our European ancestors, who employed every moment
the expedient of swearing on extraordinary crosses, and relics,
were less honourable in all engagements than their posterity,



Vi Al'TIIOR S N'OTE.

wlio, from oxprriciu'c, liavf oiuittcd tli<»s(» iiicfTrc'tual securi-
ties. This ^'t'lM'fal proiuMU'ss to ix-rjiiry was fiim-li iiuTcased
by the usual want of (lisconmuMit in jiul^'cs. wlio could not
disi'uss an intrirati' ovidcnco. and were oldij^oil to number,
not weijrh. the testimony of the witnesses. "

Daniel I)e Foe (whom Taine describes as "one of those
indefati^'al)Ie labourers aiul obstinate eond)atants, who. ill-
treatetl. «'aluniniatrd. imprisoiied. sucfcrdcd l>y tlieir upright-
ness, eommon sense, and enerjry in ^'aininj; Kn^rland over to
their side") p»d)lished in 172") and 1727 his book. "The Com-
plete Enplish Tradesman." in wliitli he treats of the ethics
of En^'lish trade. In that W(»rk he refers to the "shop rhe-
toriek" and "tlux of falsehoods" used by tradesmen in dispos-
ing of their wares, and the connnon practice of keeping on
hand a bap of si)urious or debased coin from which to make
eljange. Charles Lamb said this work was "of a vile and
debasing tendency." The French critic is prol)ably the bet-
ter judge of Dc Foe.

In 1859 Herbert Spencer in his essay on "The Morals of
Trade," treats of the ethics of the same tradesmen more than
a century later. He refers to "the often-told tale of adul-
terations," and .says, "It is not true, as many suppose, that
only the lower classes of llie commercial world are guilty of
fraudulent dealing. Those above them are to a great extent
blameworthy. On the average, men who deal in bales and
tons differ biit little in morality from men who deal in yards
and pounds. Illicit praetiees of every form and shade, from
venial deception up to all but direct theft, nuiy be brought
home to the higher grades of our commercial world. Tricks
innumerable, lies acted or uttered, elaborately-devised frauds,
are prevalent; many of them established as 'customs of the
trade': nay. not only established, but defended. • • •
We cannot here enlarge on the not uncommon trick of using
false trademarks, or of imitating another maker's wrappers.
• • • Omitting the highest mercantile classes, a few of the
less eommon trades, and those exceptional cases where an
entire command of the market has been obtained, the uniform
testimony of competent judges is. that success is incompatible
with strict integrity. To live in the commercial world it



author's note. vii

appears necessary to adopt its ("thical code;; immIIht exceeding
nor falling short of it— neither being less lioiiest nor more
honest. Tiiose who sink below its standard are expelled;
while those who rise above it are either ])ulled down to it or
ruined. As, in self-defense, the civilized man becomes savage
among savages; so it seems that in self-defense, the scrupulous
trader is obliged to become as little scrupulous as his com-
petitors. It has i)een said that the law of the animal creation
is_'eat and be eaten'; aiul of our trading community it may
similarly be said that its law is— cheat and be cheated. A
system of keen competition, carried on, as it is, without
adequate moral restraint, is very much a system of commer-
cial cannibalism. Its alternatives are — use the same weapons
as your antagonists or be conquered and devoured."

If the statements of those three writers are to be accepted
as evidence, and they would seem to be the best evidence, as
to the ethics of trade in England at the several periods re-
ferred to, it would appear that the present condition of trade
as to fairness in competition is far more wholesome. That
bettered condition must be attributed largely to the judicial
evolution of the principles treated in this book.

In this conclusion, the author is supported by Sir Frederick
Pollock. In his First Book of Jurisprudence he says, "Rules
of law may Avell have, in particular circumstances, an effec-
tive influence in maintaining, reinforcing, and even elevating
the standard of current morality. The moral ideal present to
lawgivers and judges, if it does not always come up to the
highest that has been conceived, will at least be, generally
speaking,, above the common average of practice; it will rep-
resent the standard of the best sort of citizens. This is
especially the case in matters of good faith, whether we look
to commercial honesty or to relations of personal confidence.
With few exceptions, the law has, in such matters, been con-
stantly ahead not only of the practice but of the ordinary pro-
fessions of business men."

Ethical evolution and organic evolution alike are accom-
plished slowly, and the possibilities of each are alike limitless.
From the days when the Anglo-Saxon judges numbered the
witnesses because of inability to weigh their testimony, to the



Vin AUTHOR S NOTE.

era wliou the requirement of fairness in trade was established,
the English-speaking ])eople have made immeasurable ethical
l)ri)gress. To that progress, the science of law has made many
contributions, and has been indispensable.

We are dealing in the subjects comprised in this book
witii the highest ethical development of that wiiicii we term
the common law. The standard set for the regulation of com-
petition by the modern decisions evidences the high degree of
ethical development of the modern judiciary. It is not to be
expected that all of the decisions should reach the same alti-
tude as the foremost. To say this, is merely to say that the
judges who wrote the opinions were not of equal ability and
learning. It is impossible that they should be. But on the
whole, the body of cases with which we here deal, forms the
most convincing proof which we have of the steady improve-
ment of the morals of trade, and the gradual extinction of
that "commercial cannibalism" of which Spencer wrote less
than fifty years ago. It is doubtful whether jurisprudence has,
during any corresponding period in the world's history, been
of greater value to the advancement of civilization than it
has in dealing with the subjects here considered, during the
past half century.

It is a remarkable fact that in this department of the law
which has. less than any other, been hampered by statutes
and precedents, and which, more than any other, rests uiK)n a
foundation purely ethical, there should be found so great har-
mony between so many independent jurisdictions, English and
American. Such legislation as has been effected in the United
States has been desultory and comparatively ineffective. Its
most admirable quality is its non-interference with common-
law trademark rights.

In submitting this more comprehensive work to the pro-
fession, it is a subject of gratification to the author that his
former book entitled "The Law of Unfair Trade" has been so
generally accepted, and used as a working tool. The present
work, it is hoped, will be found more adequate. The late
cases have been exhaustively dealt with. The addition of
the statutes and forms for registration employed in the several
states and territories, and the Dominion of Caiuida, is intended



AUTHOR S NOTES. IX

to facilitate the business of the practitioner, in registration
and litigation outside of the state in which he resides. The
forms of pleading liave been added to from the best sources.
The recently enacted federal trademark act, together with the
rules and forms prescribed by the Commissioner of Patents
for the registration of trademarks and patent office i)ractice
under the act, is reproduced in the appendix. Mobile the acts
of 1870 and 1881 have been preserved, with their annotations.

THE AUTnOR.
St. Louis, October 1, 1905,



CONTENTS

CIIAPTKK I.
PREFATORY.

SECTION. I'ACJK.

1. Primitive mercliandiae inaikH I

2. The neod of lt'j;al n-straiiit of unfair tradi- -i

3. Trademark di-fiiu'd '^

4. Tradename defined 10

5. Earliest reco^Miition ol trademarkH l'>

0. The evolution of llu- law of trademarks 10

7. Tlie relative protection given l)y patents and trademarks KJ

8. Trademarks distinguishcvl from patents and copyriglits 17

9. Function 1'

10. Nature of the right to a trademark IB

11. The test of exclusivenesa 20

12. Requisites of a valid trademark 20

13. Perpetual existence , 21

14. Territorial limiLdtion 21

15. The necessity of user .• • 2r>

16. How trademark rights may be acquired 26

17. Trademarks as subject of sale, assignment or becjuest 27

18. A8signal)ility of distillery brands and the like 38

19. Unfair competition '-^^

20. Historical 40

21. Property right as the basis of the action for unfair competition. 4r>

22. Unfair competition distinguished from trademark infringement. 47

23. Trade slander and libel •">'^

24. Are trademark rights monopolistic in ,"haracter ? .')(>

25. Title 57

26. Licenses '"'^

27. Trademarks as subjects of taxation 60

CHAPTER n.
THE ACQUISITION OF A TRAE>EI\1ARK.

28. Who may acquire ,. • 61

29. User 63

30. Affixing the mark , 6.1

31. Registration not a means of acquiring 65

32. Acquisition by assignment 67

33. Acquisition by an alien f>'^

34. Priority of appropriation 69

35. Acquisition of the right to use the name of another 73

xi



.\ii CONTK.NTS.

niAl'TKli III.

WHAI lONSTriTTKS A VALID TltADKM Ai;K
SECTION. PAGE.

:UJ. Tlu* jri-noral rulf 75

.{7. It must In- truthful 75

38. A dislionost luhi-l will invalidate 7ii

30. Tlie cast's of false representation in connection with trademarks. 78

40. Manhattan M«'dicine ("o. v. Wood 80

41. The .similar eases — Assij,'nment must be made jjulilie in con-

junetittn with the trade mark, wlu-n 81

42. Unautliori/.i'd use of words "patent" or "patented" 81

43. Use of such word as a trademark wlicn' then- has been a patent. 84

44. The effect of expiration of the patent upon the collocation of

color used in the patented article 87

45. Names of patented articles 88

46. Generic term, delined 93

47. Illustrations of ;,'fneri<. t«'rm8 98

48. E.xamples of valid trademarks, fancy, arbitrarj' or distinctive

words 114

49. Generic terms judicially defined 132

50. Marks common to the trade 134

51. The name ;;iven an unpatented invention by the inventor 130

52. Necessary name of a product 13(»

53. The tradtmark<-d article not a trademark 139

)4. Paekafzes as tradi-marks 140

)5. Pictures as tradt-marks 141

)6. Words as trademarks 141

w . Method of arran^jinj,' fjoods as trademark 142

")8. Words taken from the dead lan<,aia^'es 143

■>9. Words and phrases from modern foreign languages 143

60. Words become generic through use 148

61. The use of generic nanus protected 149

62. "Distinctive names," under the Food and Drugs Act (June 30,

190U, Chap. 3015, 34 Stat, at L. 7(18 154

63. Systems of licensing and inspection of goods mad from a basic

ingredient bearing a trademark 155

64. The teat of "origin or ownership" 157

05. Geographical names 159

66. Ah employed l)y sole owner of a natural product and its place

of production 160

67. When geographical names will be protected as trademarks 160

68. Gef)graphical names — The underlying principle 161

09. A falw gef»gTaphieal name vitiates trademark 165

70. The right to eom|)lain of unfair use of geographical name 166

71. When relief will be granted against fraudulent use of geograph-

ical names 167

72. Proper numes as trademark 168



CONTENTS. Xlll

SEX3TI0N. TAOK.

73. "Secondary meaning" doctrine a|)i)li(>d to proper names 1(J!)

74. Namea of celebrities 170

75. In general, of one's own name , 171

76. The use of proper namea in trade 172

77. The proper name cases classified 174

78. Fictitious proper names 1K2

79. Revocation of license to use one's own name 182

80. Corporate names ,. . . IH'.i

81. Names of unincorporated associations .... A'. 190

82. "Secondary meanin-j;" defined 190

83. Words of double meaning 194

84. The mark'L validity to be judged as of the date of its adoption . . 195

CHAPTER IV.

TRADEMARK RIGHTS IN TITLES OF BOOKS, PERIODICALS
AND PLAYS.

85. Trademark in title of a book 196

86. Trademark in title of periodical 198

87. Play titles as trademarks 202

88. Infringement of book titles and play titles by motion picture

titles 204

CHAPTER V.

THE LOSS OF THE RIGHT TO A TRADEMARK'S USE.

89. Laches 206

90. Laches and acquiescence distinguished 208

91. Acquiescence 209

92. Caution notices to infringers as evidence of acqiiiscence 210

93. Abandonment 210

CHAPTER VI.

GOODWILL.

94. Defined 218

95. In particular cases 221

96. As a subject of sale 225

97. Goodwill subject to proceedings in eminent domain 229

98. Goodwill in its relation to firm and other names 229

99. Rights of vendor 230

100. Right of vendee to reassign 233

101. Covenants not to re-engage in business 233

102. The valuation of goodwill 23S

103. Competition between vendor and vendee 239

104. Partnership goodwill 243

105. Remedies 245

106. Breach of covenant not to re-engage 247

107. Remedy as to infringement of tradenames identified with good-

will 252



Xiv CONTT-rNTS.

("llAriHU \ 11.

T1L\I)K SKCKKTS; KKMIT t>F 1MMVA( Y.
S»XTIOX. PAOE.

IdS. Trndo w-cn'tH^lntrodvutory 2ri3

Un». I'r<>t<vtii>n in .iiuity 255

110. TrH(l«nuirks «)H jinxluctM of wrtTrt jinn'ortwH '265

111. Actions unil drft-nm-H . . 266

112. The riglit of privacy 267

CIIAPTEK \ ill.
inkuin<;i:.mi:nt.

1 i;j. Of infrinpomont ponorally 279

1 14. No trademark in form, si/A', nmttTiul or color 280

1 1.".. The early adjudications 283

1 1(5. Infringement of color 284

1 17. Infringement of size and form — Distinctive dress 287

118. Intent and scienter 293

119. What persons lial)le , 295

120. Of lahels, generally 296

121. Of packages, generally 297

122. The engraver or manufacturer of tlie lalx>l 298

123. Of counterfeiting trademarks 300

124. Of imitation of trademarks , 300

125. C'oloralile imitation 300

126. The test of prohaliility of di-ception 301

127. The degree of resemldance which constitutes infringement 302

128. The degree of care expected of the purcliaser 304

129. Infringement must he l>y use on same class of goods 307

130. The value of proof of fraudulent intent 310

131. The manner of establishing fraudulent intent 311

132. Infringing hy refilling trademarked packages 313

133. Packages distinguished from their contents 314

134. Infringenn-nt hy refitting and reselling worn trademarked

artieh-s . . . . " 315

135. Infringement hy applying a manufacturer's trach mark to goods

of his to which he does not iiittiid its a])pru'!itinn 315

130. Substitution ,. . . 317

137. The tiBe of misleading signs and circulars 319

138. Infringement by a non-identical word or mark 321

139. Patent oflice rulings on similarity of alleged conflicting marks. . 330

140. MiKcellaneotis matters relating to infringement 330

141. The use of letters and numerals 33S

142. The judicial t«'st of infringement 342

143. Kestraint of us*- of misleading a<lvi rtiscments and Hie like 347

144. Infringement in another jurisdiction 34S

145. Trademarks of variable sound and pronunciation 349



CONTENTS. XV
BECTION. PAOK.

140. The ofTt'ct of ft plurality of mnrk-B for a flinplc nrtiflo 350

147. ConfuHion of iiiail inafttT uh t<Ht of tin- ri/,'lit to injunction .'ir»2

148. Hotel, restaurant and tlieat<'r nameH and rij^litH created thereby. . 354

149. Artistic productions as sulijects of unfair competition 350

150. Trade ri^^lits in patentable l»ut unpatented articles 357

151. "The right to imitate" 36H

152. The use of machine manufacturer's name in sale of rej)air parts. 35H

153. Solicitation of customers iiy former employee 351)

154. Inciting iireach of contract as unfair comijctition 363

155. Contracts relating to stock (piotations 366

156. Appropriation of "blind"' advertising as unfair coaipetition . . . . 366

157. The appropriation of ideas, aside from patent, trademark or

copyright, as unfair competition 368

158. Threats as unfair competition 372

159. Private actions for damages under the federal anti-trust acts... 37->

CHAPTER IX.

REGISTRATION.

160. Introductory . . » 378

161. The invalid registration acts 378

162. The power of congress to jjrotect trademarks 379

163. The constitutionality of the present registration act 37'*

164. The advantages of registration 384

1G5. The disadvantages of registration 386

166. Interferences 388

167. Between a registrant and an applicant 388

168. The preliminary statement 389

169. The issues in interference, opposition and cancellation pro-

ceedings 389

CHAPTER X.
COURTS, PARTIES AND PROCEDURE.

170. Introductory 391

171. Jurisdiction of United States District Courts 391

172. Jurisdiction of the state courts 395

173. Jurisdiction of the Federal Trade Commission 396

174. The eh>ments whereon jurisdiction must be predicated 398

175. The parties plaintiff 399

176. The parties defendant , 402

177. Forms of action 40.1

CHAPTER XI.

THE CRIMINAL PROSECUTION— FEDERAL AND STATE.

178. The Act of 1876 407

179. Section 3449, Revised Statutes , 408

180. Criminal liability at common law 410

181. Tlie penal statutes of the several states 411



xvi coNirrNTs.

ClIAl'TKH XII.

ACTIONS Al LAW
HFATION. I'AOE.

1S2. Til.- form of notion 412

183. T\h- (l.olaration 4i:{

184. I)»-f»>nm'« 417

183. L)am»gv» ....418

("IIAPTHK XIII.

THK ACTION IN Ki^ ITY.

180. The liapJH of i><|uital>I<- jurirtdiotion 424

187. Tin- bill in t-iiuity . . 42H

188. Tri-wntin;,' tho «l.fenm'8 432

189. The nnswj-r 4:{:{

15)0. rarticulars 434

101. Soandal and imp«'rtint'nc(» * . . . 43."»

1!>2. Till- di-ft-nsos in oquity 43rt

l!t3. The n-Iiof in t'<|iiity 451

194. Till- dirn-i' in unfair competition caws as to tho accounting 458

19'). Forbidding puldic-ation of tht- di-croi* 460

196. H«'>itrainin<; niitiri'j)n'st'ntationa concerning; the decree 460

197. I'unitive damufies in ifjuity 460

198. Increas*- of damages in equity 4(il

199. The defendant's credits upon accountinjj 401

200. Label designing as a judicial function 462

201. Appeals 464

202. Certiorari 46.')

CllAPTKR XIV.

MATTERS OF PRACTICK AM) FVIDENCE.

203. Matters of which courts will take judicial notice 467

204. E.vpert and other evidence on the qui-stion of infringement 467

20.'». Successive changes, approach to plaintilY's dress 470

206. Exhibits , 470

207. Discovery 471

208. Evidence of recognition by others of plaintill's riu'ht to tiie mark. 472

209. Cont«mpt8 473

210. AfTidavits 470

211. The taking of testimony 477

212. EflTeet of former adjudication 48S

ClIAPTEH XW

COSTS.

213. Oenerally 490

214. Aviiiding c«)HtH by HubnuKsion 490

21.'). SulmiiMsion to avoid costH must lie complete 492

216. C<mtH refuwd HUcceHMfnl defendant 492

217 MiKci-lliiiiciMiM iniiltcrs 493



CONTENTS. Xvii

APPENDIX.

PAOK.

A. Tradomnrk Art of July R, 1870. Annotated .OOl

B. Laltcl Hf^iHtration Act of .luno IS, 1K74. Annotated. Patent

Ollifc Kulcs, and Form nlutivc thcrt'to 513

C. Trademark Act of Au^Mist 14, 1H7(1. Annotated fiZH

I). 'l'ra<lcniark Act of March 3, 1S81. Annotated r/.i'l

K. Tradtniark Act of Ki-ltruary 20, HK).'). Annotated. Patent Ollice

KiileH, and Korma relative thereto 549

F. Trademark Htatutes of tlie etatcH and territories. Annotated.

Witli forms for rcfjistration applications 620

(J. Canadian Trademark and Desifni Act. with rules and forms 8.31

H. Pills of complaint and answers. Judicially approved 8.'52

I. Forms of injunction — Interlocutory and final decrees 901

J. Classification of re<ristered trademarks 907

K. International Convention of March 20, 1883 90')

L. Trademark provision of an act incorporatinj,' the American Na-
tional Red Cross 922

M. Federal Trade Commission Act ; rules of the commission 923

N. False Stamping; Act of June 13, 190G, Ch. 3289, 34 tStat. L. 260.. 944



TABLE OF CASES



A. Bailor & Co. v. Distillt'rie de la

Liqueur Bcni'dictine {^^6 C. C.

A. 480), IKi.
V. Order of Carthusian Monks

( Mi C. C. A. 484 ) , :i2r).
Abbott V. Bakers & Confectioners

Tea Assn. (\V. N., 1S71, p.

207), 301.
Abernethy v. Hutchinson ( 3 L. J.

Ch. 214), 2G0.
Acker, Merrall & Condit Co. v. Mc-

Caw (144 Fed. Rep. 864), 233.
Acme Harvester Co. v. Craver (110

HI. App. 413), 223.
Actienpesellschaft Vereini*»te Ultra-

marin-Fabriken v. Amberg (48

C. C. A. 2()4 ) , 443.
Adams v. Heisel (31 Fed. Rep.

279), 7, 142, 27fl, 334, 38(5,

fiOB, 536, 538.
V. Tannage Pat. Co. (81 Fed. Rep.

17!»), 440.
Addington v. Cullinane (28 Mo.

App. 238-241), 419.
Addley Bourne v. Swan & Edgar,

Ltd. (20 R. P. C. 105, 120),

348.
Adoe V. Peck Bros. & Co. (39 Fed.

Rep. 209, 210), 8, 88. 149.
Adriance, Piatt & Co v. National

Harrow Co. (58 C. C. A. 163),

375.
Aetna ^Mill & Elec. Co. v. Kramer

Milling Co. (82 Kan. 679), 174.
A. F. Pike Mfg. Co. V. Cleveland

Stone Co. (35 Fed. Rep. 896),

167, 896.



References are to pagra.

A. O. Spalding & Bros. v. A. W.

Carnage, Ltd. (32 R. P. C.

284), 23.
V. A. W. CJaniage. Ltd. (31 R. P

C. 125, 139), 317.
V. A. W. Carnage, Ltd. (32 R. P.



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