mark, and which no other person can adopt or use with equal truth. "
Hargis, J., in Avery v. Meikle, 81 Ky. 73.
"A trade-mark consists of a word, mark, or device adopted by a
manufacturer or vendor to distinguish his production from other pro-
ductions of the same article.
Wallace, J., in Hostetter v. Fries,
17 Fed. Rep. 620-622.
"A trade-mark, as defined by Bouvier, is a sign, writing or ticket
put on manufactured goods, to distinguish them from others. It has,
by a commentator on trade-marks, been more fully explained as a
name, symbol, figure, letter, form, or device, adopted and used by a
manufacturer or merchant to designate the goods he manufactures
or sells, to distinguish them from the goods of another." Allison,
P. J., in Ferguson v. Davol Mills, 2 Brewst. 314.
"A trade-mark is some arbitrary or representative device attached
to or sold with merchandise and serving to designate the origin or
§3] PREFATORY. 5
the case was broug-ht into the common pleas b}' a clothier
that whereas he had j,^ained great reputation for liis mak-
ing of his cloth by reason of which he had g-reat utter-
ance to his great benefit and profit, and that he used to
manufacture of that merchandise." Carpenter, J., in Davis v.
Davis, 27 Fed. Rep. 490-491.
"What is a trade-mark? A 'mark' means to make a visible sign
upon something; to affix a significant mark to; to draw, cut, fasten,
brand; a token upon, indicating or intimating something; to affix an
indication to; to attach one's name or initials to. A trade-mark, there-
fore, consists of the use in trade of such a mark, placed upon goods
manufactured by a particular person and placed in market with
such rnarks, for sale and trade." Welker, J., in Adams v. Heisel,
31 Fed. Rep. 279-280.
"A trade-mark is properly defined by Upton (Upton's Trade-
marks, 9) as 'the name, symbol, figure, letter, form or device adopted
and used by a manufacturer or merchant, in order to designate the
goods that he manufactures or sells, and distinguish them from those
manufactured or sold by another, to the end that they may be known
in the market as his, and thus enable him to secure such profits as
result from a reputation for superior skill, industry or enterprise.'
The trade-mark must be used to indicate not the quality, but the
origin or ownership of the article to which it is attached. It may be
any sign, mark, symbol, word or words, which others have not an
equal riglit to employ for the same purpose." Earl, Commissioner
of Appeals, in Newman v. Alvord, 51 N. Y. 189-193.
"Every one is at liberty to affix to a product of his own manufac-
ture any symbol or device, not previously appropriated, which will
distinguish it from articles of the same general nature manufactured
or sold by others, and thus secure to himself the benefits of increased
sale by reason of any peculiar excellence he maj-^ have given to it.
The symbol or device thus becomes a sign to the public of the origin
of the goods to which it is attached, and an assurance that they are
the genuine article ot the original producer. In this way it often
proves to be of great value to the manufacturer in preventing the
substitution and sale of an inferior and different article for his prod-
ucts. It becomes his trade-mark, and the courts will protect him in
its exclusive use." Mr. Justice Field in Amoskeag Mfg. Co. v.
Trainer, 101 U. S. 51-53.
*' Trade-mark. — An arbitrary symbol affixed by a manufacturer or
merchant to a vendible commodity'. The principal purpose of a trade-
mark is to guarantee the genuineness of a product. It is, in fact,
the commercial substitute for one's autograph. In all ages it has
been used to denote origin, and thus protect the purchaser as well as
the vendor. All countries protect the integrity of trade-marks, and
nearlv all civilized nations have treaties or conventions securing
6 LAW OF UNFAIR TRADE. [§ 4
set his mark to his cloth whereby it should be known to
be his cloth: and another clothier perceiving- it used
the same mark to his ill-made cloth on purpose to de-
ceive him, and it was resolved that the action did well
§4. The evolution of the law of trade-marks. —
This decision, rendered in 1590, was the first legal rec-
ognition of trade-marks. The growth of that recognition
was very gradual, however, for as late as 1742 we find
Lord Hardwicke saying that he "knew no instance of
restraining one trader from making use of the same mark
with another,"-' although the learned chancellor takes,
judicial cog-nizance of the wide-spread use of trade-marks,
observing that "every particular trader had some par-
ticular mark or stamp." And a century later ^ Lord
Langdale said: "It does not seem to me that a man can
acquire property merely in a name or mark."
reciprocity of protection. The tests of a trade-mark are: 1. Uni-
versality; that is, commonly recognized as such. 2. Exclusiveness;
in the possession of the owner. 3. Individuality; must indicate
origin and ownership. 4. Must be for merchandise. 5. Must be
in a lawful business. 6. Must be distinct and invariable. " Knight's
Mechanical Dictionary, title "Trade-mark," p. 2609.
"Our word 'trade-mark' comprehends both the marque de fahrique
and marque de commerce of France. " Townsend,J.,in La Republique
Francaise v. Schultz, 57 Fed. Rep. 37-41.
^ Southern (or Southerne) v. How, 2 Popham, 144; Cro. Jac. 471;
2 Rolle, 28; Cox, 633; Seb. Dig. 1.
2Blanchard v. Hill, 2 Atk. 484; Cox, 633; Seb. Dig. 2. Mr. Sebastian
observes of this decision: "The decision seems in a great measure to
have been founded upon a dread of setting up a monopoly, the dis-
tinction between a trade-mark and a patent not being clearl}' present
to his lordship's mind." Sebastian, Trade-marks (4th ed.), p. 6.
31842. Perry v. Truefitt, 6 Beav. 66; 1 L. T. O. S. 384; Seb. 73?
Cox, 644-646. It is now clearly established that the right to a trade-
mark is a property right. Hall v. Barrows, 4 DeG. J. & S. 150;
33 L. J. Ch. 204; 10 Jur. N. S. 55; 9 L. T. N. S. 561; Cox, Manual,
Case No. 215. Opinion of Westbury, L. C, in Leather Cloth Co. v.
American Leather Cloth Co., 4 DeG. J. &. S. 141; Lord Cranworth,
in House of Lords, S. C, 11 H. L. C. 533; Lord Kingsdown, in House
of Lords, S. c, 11 H. L. C. 544; Messerole v. Tynberg, 4 Abb. Pr.
N. S. 410; 36 How, Pr. 14; Cox, 479; Gilman v. Hunnewell, 122 Mass.
139; Cox, Manual, Case No. 541; Fish Bros. Wagon Co. v. Fish Bros.
Mfg. Co., 95 Fed. Rep. 457-461.
§§5,6] PREFATOliY. 7
^ 5. Trade-marks distinguished from patents and
copyrights. — While trade-marks to a degree partake of
the nature of both patents and copyrights, and the three
have many g'overning' leg^al principles in common, there
are wide differences separating each from the others.
As stated by Mr. Justice Miller in Trade-mark Cases,^
"the ordinary trade-mark has no necessary relation to
invention or discovery. The trade-mark recog'nized by
the common law is g^enerally the growth of a consider-
able period of use, rather than a sudden invention. It is
often the result of accident rather than design, and when
under the act of congress it is sought to establish it by
registration, neither originality, invention, discovery,
science or art is in any way essential to the right con-
ferred by that act. If we should endeavor to classify it
under the head of writings of authors, the objections are
equally strong. In this, as in regard to inventions, orig-
inality is required. And while the word ivritings may be
liberally construed, as it has been, to include original
designs for engravings, prints, etc., it is only such as
are original, and are founded in the creative powers of
the mind." And in the House of Lords, in 1882, Lord
Blackburn said,'-^ "trade-marks have sometimes been
likened to letters patent and sometimes to copyrights,
from both of which they differ in many respects. And I
think, to borrow a phrase used by Lord EUenborough in
Waring v. Cox,^ with reference to a different branch of
the law, 'much confusion has arisen from similitudinary
reasoning on the subject.'"
S 6. Function.— The function of a trade-mark is to
convey to the purchaser knowledge of the origin, source,
ownership* or manufacture of the article to which it is
applied.^ As will be shown hereinafter, the trade-mark
nOO U. S. 82-94. See also Taylor v. Carpenter, 2 Sandf. Ch.
603; 11 Paig-e, 292; Cox, -45; Cox, Manual, Case No. 84; Levy v. Waitt,
21 U. S. App. 394; Hoyt v. Hoyt, 143 Pa. St. 623; 24 Am. St. Rep.
575; Sarrazin v. W. R. Irby Cig-ar Co., 93 Fed. Rep. 624-626.
^Johnston v. Orr Ewing, 7 App. Cas. 219-228.
^1 Camp. 369.
■"'The function of a trade-mark is to indicate to the public the ori-
gin, manufacture or ownership of articles to which it is applied, and
8 LAW OF UNFAIR TRADE. [§ 7
need neither indicate the manufacturer or the place of
the article's manufacture, but may indicate either the
natural product of the earth, or the handling- or selection
of the g-oods, or some labor that has been performed in
connection therewith. It serves solely to guide the pub-
lic to the goods it wants to buy, acting as a perpetual
means of identification and advertisement of goods of
§ 7. Nature of the right to a trade-mark. — The right
to a trade-mark is a ri^ht of property,^ which the state
may, in the exercise of its police power, protect by ap-
propriate penal legislation. This right of property is,
in the United States, treated as a common-law right, and
in no wise dependent upon written law for its inception.^
thereby secure to its owner all benefit resulting from his identifica-
tion by the public with the articles bearing- it. No person other than
the owner of a trade-mark has a right, without the consent of such
owner, to use the same on like articles, because by so doing lie would
in substance falsely represent to the public that his goods were of the
manufacture or selection of the owner of the trade-mark, and thereby
would or might deprive the latter of the profit he otherwise might
make by the sale of the goods which the purchaser intended to buy.
Where a trade-mark is infringed the essence of the wrong consists
in the sale of the goods of one manufacturer or vendor as those of
another, and it is on this ground that a court of equity protects trade-
marks. It is not necessary that a trade-mark should on its face
show the origin, manufacture or ownership of the articles to which it
is applied. It is sufficient that by association with such articles in
trade it has acquired with the public an understood reference to such
origin, etc." Bradford, J., in Dennison Mfg. Co. v. Thomas Mfg.
Co., 94 Fed. Rep. 651-656,
"The sign, symbol or mark may be purely fanciful, and convey no
information as to the name of the producer. But the essential thing
is that it shall be designed and used to indicate the origin of the arti-
cle and that all articles having the same mark come from a common
source. " Lurton, J., in Deering Harvester Co. v. Whitman & Barnes
Mfg. Co., 91 Fed. Rep. 376-380.
J Derringer v. Plate, 29 Cal. 292; 87 Amer. Dec. 170; R. Cox, 324;
Seb. 249; Bass, Ratcliflf & Gretton (Ltd.) v. Feigenspan, 96 Fed. Rep.
206-212; Boston Diatite Co. v. Florence Mfg. Co., 114 Mass. 69; Law-
rence Mfg. Co. V. Tennessee Mfg. Co., 138 U. S. 537-548; Liggett &
Myer Tobacco Co. v. Hynes, 20 Fed. Rep. 883; G. G. White Co. v.
Miller, 50 Fed. Rep. 277-279.
2 Trade-mark Cases, 100 U. S. 82; Derringer v. Plate, supra;
Moorman v. Hoge, 2 Sawyer, 78-85; L. H. Harris Drug Co. v, Stucky,
§8] PREFATORY. 9
Much legislation has taken place tendinj,^ to aid the
common-law remedies and allord more effective redress
ag-ainst trademark piracy, but with the solitary excep-
tion of California^ it has nowhere been held in the United
States that compliance with a statute is a prerequisite
to the acquisition of a trade-mark. The contrary rule
obtains in England; registration being necessary to en-
title the owner to sue for infringement "^ A peculiar
element of the trade-mark right is that it must be used
as an entirety.'* The owner of a trade-mark cannot con-
vey to others territorial rights to its use,^ and a part-
ners interest in the trade-marks owned by the partnership
cannot be levied upon by or subjected to the payment of
claims of his personal creditors.''
^S. Requisites of a valid trade-mark. — As seen in
our definition, a trade-mark must
(a) Be used in lawful commerce;
(b) Be in some way affixed to a subject of lawful com-
(c) Be distinctive, identifying the character of the arti-
cle to which it is so affixed.
As comprehensive and concise a statement of the requi-
sites of a valid trade-mark as can be found in the books
is as follows: "The trade-mark must be used to indicate
not the quality, but the origin or ownership of the article
to which it is attached. It may be any sign, mark, sym-
46 Fed. Rep. 624-626; Battle v. Fiiilay, 50 Fed. Rep. 106; Hennessy
V. Brauuschweig-er, 89 Fed. Rep. 664; Sarrazin v. W. R. Irby Cigar
Co., 93 Fed. Rep. 624-627.
' Whittier v. Dietz, 66 Cal. 78. The evil effect of this decision has
since been obviated by the enactment of the present section 3199 of
the Political Code of California, which provides that "any person
who has first adopted and used a trade-mark or name, whether
within or beyond the limits of this state, is its orig-inal owner."
-The Merchandise Marks Acts, 1887-1894 (50 and 51 Vict., c. 28).
•^Manhattan Med. Co. v. Wood, Fed. Case No. 9026; 4 Cliff. 461.
■^Snodgrass v. Wells, 11 Mo. App. 590. Per vontra, as to the title
of a periodical publication (not a technical trade-mark), see Estes v.
Williams, 21 Fed. Rep. 189.
" Taylor V. Bemis, 4 Biss. 406; Cox, Manual, 132; Fed. Case No.
10 LAW OF UNFAIR TRADE. [§§9,10
boL Avord or words, which others have not an equal right
to employ for the same purpose."^
These are fundamental conditions which are never
varied, and to which there can be no exception. There
are further conditions which we will examine in detail in
a subsequent chapter.
^ 9. Perpetual existence. — The life of a trade-mark
is as long- as its continuous use by the owner or his
assignees. It is only terminated by abandonment, which
we will deal with later. The act of 1881 provides (§ 5)
that a certificate of registry shall in the case of articles
manufactured in this country remain in force for thirty
years from its date, subject to renew^al for a like period
at any time during the six months prior to the expiration
of the term of thirty years; so that all protection and
benefit of that act will be lost by failure to renew within
the period stated. But congress was careful to provide
further (§ 11) that nothing in the act shall be construed
as unfavorably affecting a claim to a trade-mark after
the term of registration shall have expired.
§ 10. Territorial limitation. — Unlike a patent, a trade-
mark knows no territorial limitation. The courts of the
United States, and those of the several states, are open
to the owners of trade-marks of whatever citizenship or
nationality who may seek to protect their trade-marks
against piracy.'^ The act of congress of 1881 provided
for the registration of trade-marks owned by aliens
^Earl, Commissioner of Appeals, in Newman v. Alvord, 51 N. Y.
2 State V. Gibbs, 56 Mo. 133; Taylor v. Carpenter (1), 3 Story, 458
Cox, 14 Seb. 78; Coats v. Holbrook, 2 Sandf. 586; Cox, 20; Seb. 79
Taylor V. Carpenter (2), 2 Wood. & M. 1; Cox, 32; 9 L. T. 514; Seb. 83
Taylor V. Carpenter (3), 2 Sandf. 603; 11 Paige, 292; Cox, 45; Seb. 84
Lemoine V. Ganton, 2 E. D. Smith, 343; Cox, 142; Seb. 125; Derringer
V. Plate, 29 Cal. 292; Cox, 324; Seb. 249; Collins Co. v. Brown, 3 K.
6 J. 423; 2 Jur. N. S. 929; 30 L. T. 62; Seb. 151; Collins Co. v.;
Cohen, 3 K. & J. 428; 3 Jur. N. S. 929; 29 L. T. 245; 30 L. T. 62
5 W. R. 676; Seb. 152; Collins Co. v. Reeves, 28 L.J. Ch.56; 4 Jur
N. S. 865; 33 L. T. 101; 6 W. R. 717; Seb. 164; Collins Co. v. Walker,.
7 W. R. 22; Seb. 171.
§11] PREFATORY. U
"located in any forei^m country or tribe, which, by
treaty, convention, or law, affords similar privilej^^es to
citizens of the United States. " ^ The acquisition of a valid
trade-mark in any place carries with it the right to use
the mark everywhere.-' This is subject to the exception
that a foreiji^ner doing business in his own country under
a trade-mark has no common-law right to that trade-
mark in the United States, as against a domestic firm
which had established business under a similar trade-
mark, adopted in good faith, before the alien had sold
any goods in this country.^
§ 11. The necessity of user. — There can, finally, be
no right in or to a trade-mark apart from its use. "The
mere sale of a trade-mark apart from the business in
which it has been used confers no right of ownership,
because no one can claim the right to sell his goods as
goods manufactured by another. To permit this to be
done would be a fraud upon the public."^ To quote from
a New York court, "There is no such thing as a trade-
mark ' in gross,' to use that term by analogy. It must be
'appendant' of some particular business in which it is
actually used upon, or in regard to, specific articles."^
It follows, therefore, that the owner of a trade-mark can-
lAct of 1881, sec. 1.
2 Except that an alien who abandons his trade-mark in this country
is not re-vested with the rig-ht to use it, by the force of subsequent
legislation in his own country. Saxlehner v. Eisner & Mendelson
Co. , 91 Fed. Rep. 536-539. And one who takes out a foreign patent on
the product known by the mark, will lose his trade-mark rights in
such foreign country on the expiration of such patent, without impair-
ing his right to the use of the mark in the United States. Rahtjen
Co. V. Holzappel Co. , 101 Fed. Rep. 257 ; reversing s. c. , 97 Fed. Rep 949.
SRichter v. Anchor Remedy Co., 52 Fed. Rep. 455; affirmed in
Richter v. Reynolds, 59 Fed. Rep. 577.
< Witthaus V. Braun, 44 Md. 303; 22 Amer. Rep. 44.
« Weston V. Ketch am (2), 51 How. Pr. 455; Seb. 487; Pinto v. Badman,
8 R. P. C. 181; Cartmell, 270; Dixon Crucible Co. v. Guggenheim, 7
Phila. 408; 2 Brewst. 321; 3 Am. L.T. 288; Cox, 559; Seb, 331; Cotton
V. Gillard, 44 L. J. C'h. 90; Seb. 447; McAndrew v. Bassett, 4 DeG.
J. & S. 380; 33 L. J. Ch. 566; 10 Jur. N. S. 550; 10 L.T. X. S. 442; 12
W. R, 777; 4 N. R. 123; Seb. 234; Kidd v. Johnston, 100 U. S. 617;
Weston V. Ketcham (1), 39 N. Y. 54; Leather Cloth Co. v. American
Leather Cloth Co., 4 DeG. J. & S. 137; 11 H. L. C. 523. The Fair v.
Jose Morales & Co., 82111. App. 499.
12 LAW OF UNFAIR TRADE. [§12
not sell territorial rights in a trade-mark to different
persons, so as to enable them to make and sell goods as
being made by liim.^ "It goes without saying that a
trade mark or trade-name can only be acquired by adop-
tion accompanied with actual use."^ The inventor of a
S37^stem of manufacturing garments, who has never en-
gaged in their actual manufacture and sale, has no trade-
mark right in a mark to be applied to such garments.^
A mere casual use, interrupted, or for a brief period,
will not suffice to establish a trade-mark right in the
mark;* there must be such a user, as to its length and
publicity, as will show an intention to adopt the mark
as a trade-mark for a specific article.^
§ 13. Trade-marks as subjects of sale, assigmnent
or bequest. — In the early adjudications the assignability
of trade-marks was not clearly established.*'
iSnodgrass v. Wells, 11 Mo. App. 590. But in another case the
assig-nment by the English publisher of "Chatterbox" of the right
to publish a "Chatterbox" in the United States was sustained.
Estes V. Williams, 21 Fed, Rep. 189. The name, being that of a
periodical publication, was not a technical trade-mark.
2Kathreiner's Malz Kaffee Fab. v. Pastor Kneipp Med. Co., 82 Fed.
Rep. 321-325, per Jenkins, J.
3 Jaeger's Sanitary W. S. Co. v. Le Boutillier, 47 Hun, 521. Thus
under the English statutes a registrant is not entitled to register a
mark for goods in which he does not deal and in which he does not
actually intend to deal. John Batt & Co. v. Dunnett, L. R. (1899)
A. C 428.
^Menendez v. Holt, 128 U. S. 514; Levy v. Waitt (1), 56 Fed. Rep.
1016; Levy v. Waitt (2), 61 Fed. Rep. 1008.
*Kohler Mfg. Co. v. Beeshore, 59 Fed. Rep. 572-576; Richter v.
Reynolds, 59 Fed. Rep. 577-579.
6 See Corwin v. Daly, 7 Bos. 222; Cox, 265, where the court says,
referring to a name used as a trade-mark: "The employer of it can
neither give any special right to another, nor abandon it to the com-
munity so as forever to take away the right of employing it to desig-
nate his wares." In another case it has been held that one can "so
sell his name as to deprive himself of the right to use it for his own
manufacture, and give the right to another." Probasco v. Bouyon,
1 Mo. App. 241. In a later case before the same court, however, the
court said: "We think the answer to this question depends upon
the effect which the use of the name, in each particular instance, is
shown to have upon the minds of the public," and concluded that if
the public would be led to believe the assignor was still manufactur-
ing the goods, when they were the manufacture of another, the trans-
action would be a fraud upon the public and the use of the assigned
§12] PREFATORY. 13
It can now be said, however, that trade-marks are
generally assignable during the life-time of the owner of
the mark, and capable of transmission at his death.
Indeed, this rule is the necessary and indispensable cor-
relative of the rule that trade-marks have perpetual
existence. But there is the necessary qualification that
with the trade-mark must go the good-will of the busi-
ness, the right to select or manufacture the article to
which the former owner has been in the habit of affixing
the trade-mark in use.^ Any other course would tend to
mislead the public. It is ])rovided by section 70 of the
English Patents, Designs and Trade- marks Act of 1883
that "A trade-mark, when registered, shall be assigned
and transmitted only in connection with the good-will of
the business concerned in the particular goods or classes
of goods for which it has been registered, and shall be
determinable with the good-will." No corresponding
provision exists in the act of congress of 1881.
Inasmuch as there can be no title in a trade-mark apart
from the good- will of the business in which it is used, it
follows that, in an assignment of the business and good-
will of the owner of the mark, the title to the trade-
mark, without being specially mentioned, passes to the
name would not be protected. Skinner v. Oakes, 10 Mo. App. 45;
Cox, Manual, 680. This dictum was quoted with approval in Oakes
V. Tonsmierre, 4 Woods, 547; Price & Steuart, 817.
1 Atlantic Milling- Co. v. Robinson, 20 Fed. Rep. 217; Massam v.
Cattle Food Co., L. R. 14 Ch. D. 748; Ex parte Lawrence, 44 L. T.
N. S. 98; Seb. 630; Re Wellcome, L. R. 32 Ch. D. 213; Leather
Cloth Co. V. American Leather Cloth Co., 4 DeG. J. & S. 137; 33
L.J. Ch. 199; Seb. 223; Goodman v. Merideu Brittania Co., 50 Conn.
139; Witthaus v. Braun, 44 Md. 303; 22 Am. Rep. 44; Seb. 492;
Skinner v. Oakes, 10 Mo. App. 45; Taylor v. Bemis, 4 Biss. 406;
McVeagh v. Valencia Cig-ar Factory, 32 OflF. Gaz. 1124; Price &
Steuart, 970; Oakes v. Tonsmierre, 4 Woods, 547; Price & Steuart,
817; Baldwin v. Von Micheroux, 25 N. Y. Supp. 857; Morgan v.
Rogers, 19 Fed. Rep. 5%; 12 Oflf. Gaz. 1113; Smith v. Imus, 32 Alb.
L. J. 455; Cotton v. Gillard, 44 L. J. Ch. 90; Smith v. Fair, 14 Ont.
Rep. 729; Burton v. Stratton, 12 Fed. Rep. 696; Price & Steuart, 668;
Pepper v. Labrot, 8 Fed. Rep. 29; Chadwick v. Covell, 151 Mass. 190;
Cox, Manual, 716; Cooper v. Hood, 26Beav. 293; Churton v. Douglas,
Johns. 174; Shipwright v. Clements, 19 W. R. 599; Sohier v. John-
son, 111 Mass. 238.
14 LAW OF UNFAIR TRADE. [§12
assig"nee.' It is not so clear, however, that the purchaser
acquires the rig-ht to use the name of the vendor, this
right being affirmed in some cases- and negatived in
others. '^ It would seem to be the law that a territorial
right to use a trade-mark cannot be assigned,* though in
the case of the name of a periodical publication the con-
trary rule has been announced.^
The fact of a trade-mark containing the name or
initials of a former owner of a business will not disen-
title an assignee of the business from its use, because the
proper name is treated as indicative of the business