Maine. — Acts 1891, ch. 125, sees. 1-3.
Massachusetts. — Acts 1893, ch. 440; Supplement to Public Stat-
utes, 1897, p. 909.
Missouri. — Acts 1893, p. 256.
— Penal Code, 1893, sec. 369. Heydecker's Gen. Laws,
1900, ch. XXXIV, sec. 28. See Mullins v. People, 23 How.
Pr. 289; 24 N. Y. 399.
1 Massachusetts Acts of 1895, ch. 462, sec. 5.
2 Wood V. Burg-ess, L. R. 24 Q. B. D. 162; holding proof of fraudu-
lent intent immaterial in a prosecution under Merchandise Marks
Act, 1887 (50 and 51 Vict., c. 28).
ACTIONS AT LAW.
§ 109. The form of action. — An action of trespass on
the case is prescribed by the act of March 3, 1881, as the
proper legal remedy for infringements of trade-marks.^
It is against the policy of the law that the owner of a
valid trade-mark should lose by reason of its infringe-
ment. To prevent such a result, the action of trespass
on the case is well adapted, because it measures the
plaintiff's recovery by the plaintiff's loss. But it is also
against the policy of the law that an infringer should
gain by reason of his infringement. To prevent such a
result, the action of trespass on the case is not well
adapted, because an infringer may often gain much more
than the owner of the trade-mark loses by reason of the
Section 914 of the Revised Statutes of the United
States provides that "The practice, pleadings, and forms
and modes of proceeding in civil causes, other than
equity and admiralty causes, in the circuit and district
courts, shall conform, as near as may be, to the practice,
pleadings, and forms and modes of proceeding existing
at the time in like causes in the courts of record of the
state within which such circuit or district courts are
held, any rule of court to the contrary notwithstanding."
The majority of the states have now abolished all
common-law forms of action. The provision of the act
of 1881 providing trespass on the case as the appropriate
remedy for trade-mark infringement is in apparent con-
flict with the section above recited. What form of action
must the pleader use? The law of trade-marks, in this
regard, is identically the same as the law of patents, for
the action of trespass on the case is provided by Revised
lAct of March 3, 1881, sec. 7.
234 LAW OF UNFAIR TRADE. [§109
Statutes, section 4919, as the remedy at law for patent
infring-ement. And it seems very clear that the rule laid
down by the federal courts in patent cases is the rule
which must govern actions at law in trade-mark cases,
namely, that the pleadings in an action at law for trade-
mark infringement must conform to the common-law
rules, even in a code state. ^
The history of this form of action has been succinctly
described by English jurists. Lord Blackburn said:
"The original foundation of the whole law is this: that
when one knowing that goods are not made by a particu-
lar trader sells them as and for the g-oods of that trader,
he does that which injures that trader. At first it was
put upon the g'round that he did so when he sold inferior
goods as and for the trader's; but it is established (alike
at law 2 and in equity^) that it is an actionable injury
to pass off goods known not to be the plaintiff's as and
for the plaintiff's, even though not inferior,"*
The development of the action on the case, and the
manner in which it became adapted to the exigencies of
trade-mark issues, are thus admirably stated by Mellish,
L. J. : "In my opinion all actions of this nature must be
founded upon false representations. Originally, I appre-
hend, the right to bring an action in respect of the im-
proper use of a trade-mark arose out of the common-law
right to bring an action for a false representation, which,
of course, must be a false representation made fraudu-
lently. It differed from an ordinary action for false
representation in this respect: that an action for false
representation is generally broug'ht by the person to
whom the false representation is made; but in the case
of the improper use of a trade-mark, the common-law
courts noticed that the false representation which is
made by putting another man's trade-mark, or the trade
name of another manufacturer, on the goods which the
^ Myers v. Cunningham, 44 Fed. Rep. 349.
^Blofield V. Payne, 4 B. & Ad. 410.
^Edelstenv. Edelsten, 1 DeG. J. & S. 185.
^Singer Mfg. Co. v. Loog (3), L. R. 8 A. C. 15-29.
§ 110] ACTIONS AT LAW. 235
wrong-doer sells, is calculated to do an injury, not only
to the person to whom the false or fraudulent represen-
tation is made, but to the manufacturer whose trade-
mark is imitated; and, therefore, the common-law courts
held that such a manufacturer had a right of action for
the improper use of his trade-mark. Then the common-
law courts extended that doctrine one step further; first,
if I recollect rightly, in the case of Sykes v. Sykes} There
it was held that although the representation was per-
fectly true as between the original vendor and the origi-
nal purchaser, in this sense, that the original purchaser
knew perfectly well who was the real manufacturer of
the goods and therefore was not deceived into believing
that he had bought goods manufactured by another per-
son, yet if the trade-mark was put on the goods for the
purpose of enabling that purchaser, when he came to re-
sell the goods, to deceive any one of the public into
thinking that he was purchasing the goods of the manu-
facturer to whom the trade-mark properly belonged, then
that was equally a deception, a selling of goods with a
false representation, which would give the original user
of the trade-mark a right of action. That was the com-
mon-law right. '"^
§ 110. The declaration. — On account of the provision
of the act of March 3, 1881, establishing the action of
trespass on the case as the proper remedy at law for in-
fringement of registered trade-marks, it becomes impor-
tant to give attention to the pleadings necessary in that
form of action.
The proper parts of a declaration in an action on the
case are, in their order, as follows:
1. The title of the court.
2. The title of the term.
3. The name.
4. The commencement.
5. The statement of the right of action.
6. The conclusion.
'3B. & Cr. 541.
« Singer Mfg. Co. v. Wilson, L. R. 2 Ch. D. 434-453.
236 LAW OF UNFAIR TRADE. [§ 110
The correct title of the United States circuit court
established in the northern district of California is "The
Circuit Court of the United States for the Northern Dis-
trict of California," and the titles of the various other
circuit courts are the same, except as to the name of the
district,^ to which should be added the name of the divi-
sion of the district, where the judicial districts are sub-
The term in which the declaration should be entitled is
the term to which the defendant is summoned.^ It is un-
necessary to entitle a declaration in the name of the case
in which it is filed; the style of the case may be indorsed
upon the back of the declaration as a matter of conven-
The venue should be laid in the district where the dec-
laration is filed, regardless of the district or districts
wherein the infringement was committed.*
The commencement sets forth the names of the parties
and the capacity in which they respectively sue or are
sued, if it is other than a natural capacity.^
A corporation cannot be or become a citizen of a state, ^
and therefore an averment of its citizenship is improper.
When a corporation is a party the corporate name should
be set forth, followed by the averment that the said cor-
poration "is a corporation created under the laws of the
state of , and having its principal place of business
The courts of the United States having a limited ju-
risdiction, the jurisdictional facts must be expressly
pleaded in the declaration. Diverse citizenship, if it ex-
ists, must be shown. If the trade-mark involved is reg-
1 Revised Statutes, sec. 608.
^Chitty, Pleading (15th Am. ed.), p. 263.
s Walker, Patents (3d ed.), sec. 422.
spaul V. Virg-inia, 8 Wall. 168; Ducat v. Chicago, 10 Wall. 410.
^Shiras, Equity Practice (2d ed.), sec. 34. Citing Lafayette Ins.
Co. V. French, 18 How. 404; Railroad Co. v. Harris, 12 Wall. 65; Ex
parte Schollenberger, 96 U. S. 369; Pennsylvania Co. v. Railroad
Co., 118 U. S. 290; Goodlet v. Railroad, 122 U. S. 391.
§ 110] ACTIONS AT LAW. 237
istered under the act of March 3, 1881, that fact must be
pleaded, because, first, it establishes a prima facie right
to the use of the mark, and second, confers jurisdiction
upon the federal court regardless of the amount in con-
If the action is between citizens of the same state,
even though involving a registered trade-mark, the dec-
laration must aver that the plaintiff uses the trade-mark
and the defendant the infringing mark upon goods in-
tended for commerce with foreign nations or with the
Indian tribes.''^ If the action is based upon a common-
law trade-mark, the declaration must set forth the
amount in controversy, which is not the amount sought
to be recovered, but the value of the trade-mark, and
that value must be not less than two thousand dollars.^
The commencement of the declaration should close with
a recital that the form of action is that of trespass on the
Fraud is essential to recovery at law. Lord Westbury
said, ' ' Proof of fraud on the part of the defendant is of
the essence of the action."^ Furthermore, at law it is
necessary to show, and plead, that an injury has actually
been done by the defendant's act of infringement,^
The averment of infringement should set forth, then,
in what the infringement consisted, and that it was done
wilfully and with fraudulent intent on the part of the
^Act of March 3, 1881, sec. 7. Symonds v. Greene, 28 Fed. Rep,
834; Glotin v, Oswald, 65 Fed, Rep. 151; Hennessy v, Herrmann, 89
Fed. Rep, 669; Re Keasbey & Mattison Co., 160 U. S. 221-227.
^Luytiesv. Hollender (1), 22 Blatchf. 413; Schumacher v. Schwenke
(1), 26 Fed. Rep. 818; Ryder v. Holt, 128 U. S. 525; Gravely v.
Gravely, 42 Fed, Rep, 265; Prince's Metallic Paint Co. v. Prince
Mfg. Co., 53 Fed. Rep. 493.
^Symonds v, Greene, 28 Fed, Rep. 834.
< Walker, Patents (3d ed.), sec. 422.
*Edelsten v. Edelsten, 1 DeG. J. & S. 185; Hargraves v. Smith,
Seb. 338; Lawson v. Bank of London, 18 C. B. 84; 25 L. J. C. P. 188;
2 Jur. N. S. 716; 27 L. T. 134; 4 W. R. 481; Seb. 140; Rodgers v,
Nowill, 6 Hare, 325; 5 C. B. 109; 17 L. J. C. P. 52; 11 Jur. 1039; 10
L. T. 88; Seb. 82; Crawshay v. Thompson, 4 Man. & G. 357; 5 Scott,
N. R, 562; 11 L, J. C, P. 301; Seb. 72.
« Singer Mfg. Co. v. Loog (3), L. R. 8 App. Cas. 15-30,
238 LAW OF UNFAIR TRADE. [§110
defendant. The statement of the right of action should
describe the trade-mark in exact and appropriate terms,
and where possible the real and simulated marks should
be reproduced in fac-simile.
The conclusion of the declaration should pray for the
actual damage sustained by the plaintiff and for puni-
tive damages if the facts justify. Some adjudications in
the past have held that there can be no recovery of puni-
tive damages,^ but such a conclusion is at variance with
the fundamental principles of the law of torts. The
more wholesome and better reasoned doctrine is to the
The conclusion ends with the formal allegation of bring-
It is necessary at common law in drafting the declara-
tion to directly allege that the injury has been committed
by continuation from one given time to another or that
it was committed on divers days and times. Thus, one
pleader alleged in his declaration as follows: "Since the
1st day of November, 1888, knowingly, wilfully, and
fraudulently offered for sale, and is now selling, glue in
packages." Upon the trial, in the federal circuit court
for the district of Massachusetts, the complainant was
permitted to introduce proof of sales by the defendant
of infringing goods between November 1, 1888, and
November 30, 1889, amounting to $56,318.24. The circuit
court of appeals of the fourth circuit set aside a judg-
ment of $8,000, entered upon the verdict of a jury, saying,
by Putnam, J., "There is no continuando with reference
to the matter of selling; so that, according to the common
law, the plaintiff could properly prove only one actual
sale as an independent basis of damages. The defendant
insisted at all necessary points on the enforcement of
the rule, and exceptions were carefully taken and
allowed; so that this court, however much it may regret
it, is compelled to meet this issue. There is no doubt
1 Taylor V. Carpenter (2), 2 Wood. & M. l;Cox,32;9L. T. 514;Seb. 83.
2 Warner v. Roehr, Fed. Case No. 17189A; Day v. Wood worth. 13
How. 363; Browne, Trade-marks (2d ed.), sees. 519, 520.
§111] ACTIONS AT LAW. 239
that at common law the position of the defendant would
be correct on this point, and the Massachusetts statutes
relating- to pleading- have not chang-ed this rule."^
§111. Defenses. — The defenses to actions for trade-
mark infringement may be divided into two classes.
The first class embraces defenses which attack the plain-
tiff's rig-ht to sue. It may be that the owner of a trade-
mark who sues for infringement has conveyed the right
to use the mark to an exclusive licensee for a term of
years. In such a case no injunction can issue unless the
licensee joins in the action.- It may be advisable to set
up laches or acquiescence, or that there are facts to
justify a plea that whatever rights the complainant once
had he has lost by abandonment; which matters have
been discussed in a preceding chapter. In an exceptional
case the complainant's recovery may be precluded by an
estoppel,^ which should, of course, be pleaded. The
complainant's mark may have become invalid because its
assignment to him from its former owner has not been
sufficiently advertised, and tends to mislead the public
into a belief that the former owner is still the producer
of the goods. ^ The complainant's label may contain mis-
representations of fact,^ or his alleged trade-mark may
be a word that, once distinctive, has become puhlici jurist
It is a good defense to the action at law to show either
of these matters. The fact that the complainant's trade-
mark is registered does not deprive the public of the
right to use a similar mark which was common to the
trade before the registration. Thus, where "La Nor-
mandi " was registered as a mark for cigars, but ' ' La Nor-
manda" was alread}'- in common use for a like purpose,
^Le Page Co. v. Russia Cement Co., 51 Fed. Rep. 941-949.
2 Wallach v. Wigroore, 87 Fed. Rep. 469.
^Lavergne v. Hooper, Ind. L. R. 8 Mad. 149.
* Alaska Packers' Ass'n v. Alaska Imp. Co., 60 Fed. Rep. 103;
Siegert v. Abbott (1), 61 Md. 286.
*PisoCo. V. Voight, 4 Ohio N. P. 347; Krauss v. Jos. R. Peebles'
Sons Co., 58 Fed. Rep. 585.
« Siegert v. Abbott (4^^15 N. Y. Supp. 590; 72 Hun, 243.
240 LAW OF UNFAIR TRADE. [§111
injunction to restrain the use of the latter was denied.^
In fact the registration of a trade-mark does not prevent
its being' attacked as a word publici juris, or as being it-
self a colorable imitation of another trade-mark.^ The
English decisions upon this point are in harmony with
those of the courts of the United States.^
The defendant may plead a license from the owner of
the mark. This, of course, presumes that the license
was lawful, and that the licensee has not so used the
mark as to perjDetrate a fraud upon the public* Where
two or more persons have an equal right in the use of
the mark the defendant may plead a license from either
The second class of defenses that may be interposed
are pleas that deny the infringement — either denying
that any infringement has been perpetrated by the de-
fendant, or, if the infringing mark has been handled or
dealt with by the defendant, denying that guilty knowl-
edge which the complainant must prove to sustain his
suit at law.
In the foregoing portion of this section we have noted
the defenses which, if sustained by the proof, will relieve
the defendant from liability at law. The action at law
is much easier of defense than that in equity, and in an-
other section, after we have considered the action in
equity, will be found enumerated a number of defenses
^Stachelberg v. Ponce, 23 Fed. Rep. 430; Price & Steuart, 967; 128
U. S. 686.
2 Moorman v. Hoge, 2 Sawyer, 78; Decker v. Decker, 52 How. Pr.
218; Glen Cove Mfg. Co. v. Ludeling, 22 Fed. Rep. 823; Cox, Manual,
695; 23 Blatchf. 46; Schumacher v. Schwenke (2), 36 Off. Gaz. 457.
3Re Palmer, L. R. 21 Ch. D. 47; Bodega Co. (Ltd.) v. Owens, 23 L.
R. Ir. 371; Wolfe v. Lang, 13 Vict. L. R. 752; Wolfe v. Alsop (2), 12
Vict. L. R. (E.), 421; Lewis v. Klapproth, 11 Vict. L. R. (E.), 214.
*The goods to which a licensee applies the mark must be equal in
quality to the goods to which the licensor applied them. Lawrence
Mfg. Co. V. Tennessee Mfg. Co., 31 Fed. Rep. 776; 138 U. S. 537;
Oldham v. James, 13 Ir. Ch. 393; 14 Ibid. 81; Bloss v. Bloomer, 23
Barb. 604; Cox, 200; Samuel v. Berger, 24 Barb. 163; Cox, 178; Rod-
gers V. Philp, 1 Off. Gaz. 29; Re Tolle, 2 Off. Gaz. 415.
'^Marshall v. Pinkham, 52 Wis. 572; Price & Steuart, 497.
§112] ACTIONS AT LAW. 241
which have proved ineffective in equity, many of which
would doubtless be adequate at law.
§ 112. Damages. — The courts of the United States
have sij^nally failed to a.gree upon any fixed rule as to
the measure of damag-es in actions at law for the in-
fring-ement of trade-marks. To the student of the de-
cisions the only apparent cause for this fact lies in two
practical reasons. The first, that the remedy offered by
equity is more complete. The second is that the bulk of
the trade-mark piracy, of this country at least, is con-
ducted by insolvents, who offer no inducement to the
vigilant prosecution which should be visited ui)on them.
In 1846, in the United States circuit court for the dis-
trict of Massachusetts, Woodbury, J., said: "In a case
like this (an action of trespass on the case for trade-
mark infringement), if in any, no reason exists for giving
greater damages than have actually been sustained, or
what have been called compensatory. There is nothing
peculiarly atrocious in the conduct of the defendant, to
be punished by damages, and in no other way, as a pub-
lic example, considering the blamable usages which ex-
ist on this subject."^ In a Missouri case, the St. Louis
court of appeals, by Lewis, P. J., held that it was error
in the trial court to instruct the jury that they might find
exemplary damages if from the evidence they believed
that the acts of the defendant were wilful or malicious.
The reasoning of the court is that "If the plaintiffs had
demanded an accounting of the profits made by the de-
fendants, on the equitable ground that those profits were
made by the use of the plaintiffs' property, the instruc-
tions might have been substantially applicable."'^
An eminent text-writer thus states the rule: "The
jury are to give actual damages which the plaintiff has
sustained — not vindictive or speculative damag^es, but
1 Taylor v. Carpenter (2), 2 Wood. & M. 1; Cox, 32; Fed. Case No.
13785. The passage quoted is a mere dictum, uttered in the course
of an opinion upon a motion for a new trial where a jury had been
directed that they might find punitive damages. The verdict was
^Addington v. Cullinane, 28 Mo. xVpp. 238-241.
242 LAW OF UNFAIR TRADE. [§ 112
such as his proof has shown to their satisfaction he has
actually sustained by the infringement."^
To the author's mind the better rule is announced in
the case of Warner v. Boehr, in which the instructions of
Judge Blodgett to a jury said in part: "In cases of this
character, where you are satisfied from the proof and
from the admissions in the case that the fraud — the in-
tention to defraud — is at the bottom of the matter, . . .
the jury are not confined to the exact monetary damages,
but may give what are known as vindictive or exemplary
damages, for the purpose of deterring others from em-
barking in the same schemes of fraud and deception. "^
It is not to be doubted that this doctrine is more reason-
able and just, and better adapted to protect society from
the ravages of trade-mark infringers, than the rule stated
in Taylor v. Carpenter^ and Addington v. Gullinane.^ It is
difficult to see how the result stated in those cases has
been attained. They are wholly without precedent
and opposed to the rule of damages which obtained at
common law. What that rule was, and is, so far as our
federal courts are concerned, is nowhere more clearly
stated than by Mr. Justice Grier in an opinion in which
he speaks for the federal supreme court. He says:
"It is a well-established principle of the common law'
that in actions of trespass and all actions on the case for
torts a jury may inflict what are called exemplary, puni-
tive or vindictive damages upon a defendant, having in.
view the enormity of his olf ense rather than the measure
of compensation to the plaintiff. We are aware that the
propriety of this doctrine has been questioned by some
writers; but if repeated judicial decisions for more than a
century are to be received as the best exposition of what
the law is, the question will not admit of argument. By
the common as well as by statute law men are often pun-
1 Sutherland, Damages (2d ed.), vol. Ill, sec. 1202. Citing Ransom
V. Mayor, 1 Fisher, 252; Parker v. Hulme, 1 Fisher, 44; Addington
V. Cullinane, 28 Mo. App. 238.
2 Warner v. Roehr, Fed. Case No. 17189A.
§112] ACTIONS AT LAW. 243
ished for ajjgravated misconduct or lawless acts by means
of a civil action, and the damag-es, inflicted by way of pen-
alty or punishment, j^iven to the party injured. In many
civil actions, such as libel, slander, seduction, etc., the
wrong- done to the plaintiff is incapable of being meas-
ured by a money standard; and the damages assessed
depend on the circumstances, showing the degree of moral
turpitude or atrocity of the defendant's conduct, and may
properly be termed exemplary or vindictive rather than
"In actions of trespass where the injury has been
wanton and malicious, or gross and outrageous, courts
permit juries to add to the measured compensation of the
plaintiff which he would have been entitled to recover,
had the injury been inflicted without design or intention,
something further by way of punishment or example,
which has sometimes been called 'smart money.' This
has always been left to the discretion of the jury, as the
degree of punishment to be thus inflicted must depend
on the peculiar circumstances of each case."^
Judge Thayer has said: "Punitive damages maybe
awarded when a wrongful act is done wilfully, in a wan-
ton or oppressive manner, or even when it is done reck-
lessly,— that is to say, in open disregard of one's civil
obligations and of the rights of others."'^
We find the rule sanctioned and reaffirmed repeatedly by
the supreme court of the United States.'' It has been the
doctrine adhered to by that court ever since Mr. Justice
Story in a case of marine tort spoke of exemplary dam-
ages as "the proper punishment which belongs to such
lawless misconduct."* It is manifest that in a case of
1 Day V. Wood worth, 54 U. S. (13 Howard) , 363-371. See Press Pub.
Co. V. Monroe, 73 Fed. Rep. 196-201.
'Fotheringham v. Express Co., 36 Fed. Rep. 252-253.
^Philadelphia R. R. Co. v. Quigley, 62 U. S. (21 Howard), 213;
Milwaukee R. R. Co. v. Arms, 91 U. S. 487-492; Missouri Pacific
Railway v. Humes, 115 U. S. 512-521; Barry v. Edmunds, 116 U. S.
550-562; Denver Railway v. Harris, 122 U. S. 597-609. Exemplary
damages may be allowed even where no actual damage is proven.
Press Publishing Co. v. Monroe, 73 Fed. Rep. 196-201.
<The Amiable Nancy, 16 U. S. (3 Wheat.) 546-558.
244 LAW OF UNFAIR TRADE. [§112
deliberate counterfeiting of a trade-mark there should be
a recovery of punitive damages, or at least an opportu-
nity given the jury to assess punitive damages.
As to the award of actual damages at law, it has been
held that nominal damages will be awarded where a fraud-
ulent intent is shown, even though no specific injury i&
pleaded or proven.^ The St. Louis court of appeals has
said, by Bakewell, J., in an action of deceit based upon
trade-mark infringement: "As to the damages, the facts