2 American Book Co. v. Gates, 85 Fed. Rep. 729-734.
•'' Davey v. Davey, 50 N. Y. Supp. 161.
^Ohio & Miss. Ry. Co. v. Press Pub. Co., 48 Fed. Rep. 206.
^So where in a criminal prosecution under the Oregon Code the
words applied to the property of the prosecuting witness in such a
manner as to expose him to hatred, contempt or ridicule, they were
held to be a libel upon him.
State v. Mason (Oregon), 38 Pac. Rep.
§ 16] PREFATORY. 35
The truth is always a defense in actions of this charac-
ter. Thus where the plaintiff had boug^ht the goods in
question from the defendant and advertised them for
sale, the publication of an advertisement by the defend-
ant that read as follows: "An opinion of Shawknit
hose should not be formed from the navy blue stockings
advertised as first quality by (plaintiff), since we sold
(plaintiff) some lots which were damag^ed in the dye-
house," was held not libelous, in the absence of a show-
ing of its untruth.^ And a wide latitude is allowed in
criticism of chattels where the facts are not misstated.
So it is not libelous to attack the theories advanced in
a book even with sarcasm and ridicule, if there is no mis-
representation of what is set forth in the book;^ and a
criticism of one of the pictures of an artist stating that
it is not good of its kind is not libelous, where it does
not attack him in his professional character generally.'^
So, it has been held in England that no action will lie
against a defendant trader for stating falsely and mali-
ciously that his goods are superior to those of the plaint-
iff, even though the plaintiff suffers special damage there-
from,* and no false statement directly disparaging the
plaintift"'s goods is actionable in the absence of proof of
Where an alleged libel consisted of a charge that the
plaintiff" had no right to use a certain trade-mark, it was
held to be a slander of title and not a libel upon the
plaintiff; that the burden was upon the plaintiff to prove
malice, falsity and special damage, and that the cause of
action survived the plaintiff's death.^
'Boynton v. Shaw Stocking Co., 146 Mass. 219; 15 N. E. Rep. 507.
2 Bowling- V. Livingstone, 108 Mich. 321; 66 N. W. Rep. 225.
^Battersby v. Collier, 54 N. Y. Supp. 363.
^Hubbuck V. Wilkinson (C. A.), L. R. (1898) 1 Q. B. 86.
*Mellin v. White, L. R. (1895) A. C. 154.
^Hatchard v. Mege, L. R. 18 Q. B. D. 771-775.
THE ACQUISITION OF A TRADE-MARK.
§ 17. Who may acquire. — Generally speaking, any
person 1 capable of holding title to personal property
may acquire the right to a trade-mark. In practice, by
far the greater portion of all trade-marks are held by
manufacturers. There are, however, many persons, not
manufacturers, who use trade-marks as a means of iden-
tifying the subject-matter of their commerce. First
among these, in their natural order, are those who apply
geographical names as trade-marks, to the natural prod-
ucts of the earth. This may be done, of course, only by
the owner of its sole place of production,^ as, if the prod-
uct were accessible to others, there could be no exclusive
right to a trade-mark, except to identify the person who
handled the product on its way to the consumer.
This leads us to the second, and larger, class of those
i"A corporation is entitled to have its trade-mark as well as a
private individual, and may sue for its infringement." Fenner, J.,
in Insurance Oil Tank Co. v. Scott, 33 La. Ann. 946
2 Congress & Empire Spring Co. v. High Rock Congress Spring
Co., 45 N. Y. 291-302; 10 Abb. Pr. N. S. 348; 6 Am. Rep. 82; 57
Barb. 526; Cox, 599; Dunbar v. Glenn, 42 Wis. 118; Seb. 529;
Wheeler v. Johnstoa, 3 L. R. Ir. 284; Apollinaris Co. v. Norrish, 3S
L. T. N. S. 242; Radde v. Norman, L. R. 14 Eq. 348; Braham v.
Beachim, 7 Ch. D. 848; 47 L. J. Ch. 348; 38 L. T. N. S. 640; 26 W. R.
654; Seb. 589; Hill v. Lockwood, 32 Fed. Rep. 389; City of Carlsbad
V. Schultz, 78 Fed. Rep. 469; City of Carlsbad v. Kutnow, 71 Fed.
Rep. 167; affirming 68 Fed. Rep. 794; Northcutt v. Turney, 101 Ky.
314; 41 S. W. Rep. 21.
It has been held that wher« a locality has taken its name from the
use of a word used as a trade-mark for coal mined by the owner of
part of the locality, he will still be entitled to the exclusive use
of the word as a trade-mark, as against others mining in the locality
which has so derived its name. Atwater v. Castner, 88 Fed. Rep.
642. But the contrary has been held in Coffman v. Castner, 87 Fed.
§17] THE ACQUISITION OF A TRADE-MARK. 37
who can acquire trademark rights, though they are not
manufacturers. Many mercantile houses who merely se-
lect merchandise, use trade-marks upon the goods they
so select, and the.se are valid, because, in the language
of Mr. Chief Justice Fuller, the marks so used are equiva-
lent to a certificate that the goods so marked are the
genuine article which has been determined by the select-
ors to possess a certain degree of excellence, evidencing
that the skill, knowledge and judgment of the selectors
have been exercised in ascertaining that the particular
goods so marked are possessed of a merit rendered defi-
nite by their examination and of a uniformity rendered
certain by their selection. ^ Slightly analogous to this
class of cases are those where the members of a trades
union adopt a label to be used by the workmen who com-
pose the union, upon the goods manufactured by them.
In a number of cases their right to the protection of this
label, as a trade-mark, has been denied,- while in others
the right is affirmed.^
iMenendez v. Holt. 128 U. S. 514-520; Levy v. Waitt (1), 56 Fed.
Rep. 1016; Levy v. Waitt (2), 61 Fed. Rep. 1008; Hirsch v. Jonas, L. R.
3 Ch. D. 584-586; Re Australian "Wine Importers (Ltd.), 41 Ch. D.
278-281; Thompson & Co. v. Robertson, Ct. Sess. Cas. (4th ser.)XV,
880; 25 Scot. L. Rep. 649; Yale Cigar Mfg. Co. v. Yale, 30 Off. Gaz.
1183; Wood v. Lambert. L. R. 32 Ch. D. 247.
-Ex parte Cigar Makers' Ass'n, 16 Off. Gaz. 958; Schneider v.
Williams, 44 N. J. Eq. 391; Cigar Makers' Union v. Conhaim, 40
Minn. 726 (the last case by a divided court, three denying the right
of trade-mark and two affirming it); McVey v. Brendel, 144 Pa. St.
235; Cox, Manual, Case No. 730; Weener v. Brayton, 152 Mass. 101;
Cox, Manual, Case No. 712.
"Allen v. McCarthy, 37 Minn. 349, affirming the decision of the
lower court by an equally divided bench; Bloete v. Simon, 19
Abb. N. C. 88; People v. Fisher, 57 N. Y. Sup. Ct. 552; Cigar Mak-
ers' Protective Union v. Lindner, 3 Ohio St. Dec. 244; Strasser v.
Moonelis, 108 N. Y. 611; Tracy v. Banker, 170 Mass. 266. In Car-
son V. Ury, Judge Thayer remarks: "It is no doubt true that the
union label does not answer to the definition ordinarily given of a
technical trade-mark, because it does not indicate with any degree
of certainty by what particular person or firm the cigars to which it
may be affixed were manufactured, or serve to distinguish the goods
of one cigar manufacturer from the goods of another manufacturer,
38 LAW OF UNFAIR TRADE. [§18
Importers^ or exporters'- may have trade-marks to
identify the goods passinj]^ through their hands, and it
has been held that a bleacher who finishes goods manu-
factured by another has a right to a trade-mark aj)plied
to goods so treated by him.^
§ 18. User. — There can be no right in a trade-mark
until it has been used. Under the English act^ an appli-
cation for registration of a trade-mark is deemed to be
equivalent to public use of the trade-mark. But even
this is merely to supply a constructive instead of the
actual user required at common law,^ and the general
rule is not affected by that statute.*' The exclusive right
to the use of a trade-mark is acquired only by priority of
appropriation. The claimant of a trade-mark must have
been the first to use or employ the same on like articles
of production.^ A single instance of user, with accom-
panying circumstances evidencing an intent to continue
that use, is sufficient to establish the right to a trade-
and because the complainant appears to have no vendible interest in
the label, but merely a right to use it on cigars of his own make,
so long and only so long as he remains a member of the union. In
each of these respects the label lacks the characteristics of a valid
trade-mark." In the case at bar, the complainant being a manufac-
turer of cigars, he was granted equitable relief on the ground of un-
fair competition. Carson v. Ury, 39 Fed. Rep. 777; Cox, Manual,
Case No. 709. As to criminal prosecution for infringement of union
label see State v. Bishop, 128 Mo. 373.
iGodillot V. Hazard, 44 N. Y. Super. Ct. 427.
2Robinson v. Finlay, L. R. 9 Ch. D. 487.
8Re Sykes, 43 L. T. N. S. 626.
*Sec. 75, Patents, Designs and Trade-mark Act, 1883, amended
1888, 51 and 52 Vict., c. 50; Re Hudson's Trade-mark, 3 R. P. C.
155; 32 Ch. D. 311; 55 L. J. Ch. 531; 55 L. T. 228; 32 W. R. 616;
Cartmell, 168; Edwards v. Dennis, 30 Ch. D. 454.
* Under the act of 1870 it was held that registration was equivalent
to public use of a trade-mark. Re Dutcher Temple Co., Comr. Dec.
1871, p. 248. See sections 7 and 11 of the Act of 1881; Wm. Rogers
Mfg. Co. V. Rogers & S. Mfg. Co., 11 Fed. Rep. 495.
''Singer Manufacturing Co. v. Wilson, 2 Ch. D. 434-440; Lowell
Mfg. Co. V. Larned, Cox, Manual, No. 428.
^Columbia Mill Co. v. Alcorn, 150 U. S. 460; Tetlow v. Tappan,.
85 Fed. Rep. 774; Hyman v. Solis Cigar Co., 4 Colo. App. 475.
§19] THE ACQUISITION OF A TRADE-MARK. 39
mark; there is no requirement that the use shall continue
for any prescribed or definite length of time.^
§ 19. Affixing the mark. — As stated in our definition,
the mark must be afl&xed to the subject it serves to
identify. "It may be either affixed to, or impressed
upon, the g'oods themselves by means of a stamp or an
adhesive label, or it may be made to accompany the
goods by being impressed or made to adhere to an envel-
ope or case containing the goods. "■^ It has been held in
England that a trade-mark may be water-marked,'* and a
measuring stick with an octagonal head, used as a core
for rolls of carpet, has been held to be of itself a valid
trade-mark.^ The question of the mode of affixing is
purely practical, and one package, parcel or bottle of
merchandise may bear a number of trade-marks. A very
large percentage of the liquors imported into the United
States from Europe bear not only the trade-mark of the
producer, but also that of the bottler; and in many cases
another trade-mark, that of the capsule manufacturer, is
to be found impressed in the metallic capsule. In like
manner a complicated machine may bear many trade-
marks, indicating the manufacturers of the wheels, axles,
oil-cups, bearings, etc., and the machine as a whole bear
the comprehensive trade-mark of the maker who has se-
lected these several parts and assembled them.
iShaver v. Shaver, 54 Iowa, 208; 37 Am. Rep. 194; Hall v. Barrows,
32 L. J. Ch. 548; Seb. 215.
The length of time required to establish the right of trade-mark: — "The
interference of a court of equity cannot depend on the length of time
the manufacturer has used the trade-mark." Romilly, M. R., in
Hall V. Barrows, 32 L. J. Ch. 548.
The right exists "the moment the article goes into the market so
stamped." Westbury, L. C, in McAndrew v. Bassett, 4 DeG. J.
& S. 380-386.
The right dates from the time when the actual occupation of the
market with goods bearing the mark began. Levy v. Waitt (C. C. A.),
61 Fed. Rep. 1008-1011.
2 Sir G. Jessel, M. R., in Singer Mfg. Co. v. Wilson, supra.
3 Alexander Pirie & Sons v. Goodall, L. R. (1891) 1 Ch. D. 35-41;
holding a water-mark to be a "brand" within the meaning of sec. 64,
subsec. 2 (c) of the Patents. Designs and Trade-marks Act, 1883.
^Lowell Mfg.Co.v. Larned, Cox, Manual, No. 428; Fed. Case No. 8570.
40 LAW OF UNFAIR TRADE. [§20
§ 20. Registration not a means of acquiring.— With
the solitary exception of the California case of Whittierv.
Dietz,^ it has nowhere been held in the United States that
the right to a trade-mark is created by registration. ^
Section 1 of the act of 1881 provides that owners of
trade-marks used in commerce may obtain registration
of such trade-marks by complying with the requirements
stipulated in the act. The applicant must show that he,
and no one else, has a right to use the mark; that he is
actually using it in commerce with foreign nations or
with Indian tribes; and that it is not too similar to the
registered or known mark of another.^ So that registra-
tion under the act of congress is in no sense a means of
acquiring the right to a trade-mark;* and indeed the ac-
tual application of the trade-mark in commerce is so
essential a prerequisite to registration under the act,
that as between two applicants for registration of the
same mark, one of whom had in fact used his mark in
trade, while the other had the assignment of the mark,
acquired by transfer from its inventor, but had never
166 Cal. 78. This decision led to the enactment of the present sec-
tion 3199 of the Political Code of California (March 12, 1885), provid-
ing Jhat "Any person who has first adopted and used a trade-mark
or name, whether within or beyond the limits of this state, is its
2 The recording of a name as a trade-mark cannot give it the quality
of a trade-mark, if it was not theretofore a valid trade-mark. Oakes
V. St. Louis Candy Co., 146 Mo. 391; 48 S. W. Rep. 467.
3 Ex parte Leon Dupuy & Co., 28 Off. Gaz. 191.
^"Property in trade-marks does not derive its existence from an
act of congress." La Croix v. May, 15 Fed. Rep. 236.
"Registration under the act of 1881 is of but little, if any, value,
except for the purpose of creating a permanent record of the date of
adoption and use of the trade-mark, or in cases where it is necessary
to give jurisdiction to the United States courts." Hawley, J., in
Hennessy v. Braunschweiger & Co., 89 Fed. Rep. 665-668; quoted and
followed in Sleepy Eye Milling Co. v. C. F. Blanke Tea and Coffee
Co., 85 Off. Gaz. 1905. It does not create a trade-mark. United
States v. Braun, 39 Fed. Rep. 775; Sarrazin v. W. R. Irby Cigar Co.,
93 Fed. Rep. 624-627; Brower v. Boulton, 53 Fed. Rep. 389, 390;
Brower v. Boulton (2), 58 Fed. Rep. 888-890; Einstein v. Sawhill, 65
Off. Gaz. 1918; Sherwood v. Horton, Cato &. Co., 84 Off. Gaz. 2018;
La Croix v. May, IS Fed. Rep. 236.
§§21,22] THE ACQUISITION OF A TRADE-MARK. 41
actually applied it, the commissioner of patents held
that the actual prior use determined the rig-ht to the
mark.i But registration under the laws of the United
States and under the laws of several of the states, while
creating- no new rig-hts, confers remedies and special
protection to the owner of a trade-mark which we will
examine in another chapter.
§21. Acquisition by assignment.— The assignment
of trade-marks is a subject of some difficulty and is dis-
cussed elsewhere in this book. It is sufficient in this
connection to say that trademark rights are generally
assignable, that quality being indispensable to the strik-
ing characteristic of perpetual existence possessed by
trade-marks, and that a proper assignment conveys to
the assignee all the property rights in and to the trade-
mark possessed by his assignor.'-^ By section 12 of the
act of 1881 the commissioner of patents was authorized
to make rules and regulations and prescribe forms for
the transfer of the right to use trade-marks and for re-
cording such transfers in his office. We need note at
this time only the general restriction on the assignability
of trade-marks — that they cannot be assigned save in
connection with the good- will of the business with which
they are identified.^
^22. Acquisition by an alien.— In 1844 Chancellor
Walworth announced that in the interposition of equity
for the protection of trade-mark rights "there is no dif-
ference between citizens and aliens."* This is also the
'Schrauder v. Beresford & Co., Browne, Trade-marks, 661.
2 Walton V. Crowley, 3 Blatch. 440; Cox, 166.
3 Field, J., in Kidd v. Johnson, 100 U. S, 617-620.
< Taylor v. Carpenter (3), 11 Paige Ch., 292-296; 3 Story, 458; 2
Wood. & M. 1 ; Cox, 45. This is the general rule in the United States.
Lacroix v. May, 15 Fed. Rep. 236; Lemoine v. Ganton, 2 E. D.
Smith, 343; Cox, 142; Coats v. Holbrook, 2 Sandf. Ch, 586; Cox, 20;
Coffeen v Brunton, 4 McLean, 516; Cox, 82; and under a criminal
act against counterfeiting trade-marks, a conviction was sustained
by the Missouri supreme court where the defendant counterfeited the
mark of an English manufacturer. State v. Gibbs, 56 Mo. 133.
42 LAW OF UNFAIR TRADE. [§23
rule in Eng-land.^ Scotland,- Canada,^ and India." But it
has been held that a foreig-ner has no common-law right
to a trade-mark in the United States as against a citizen
who has adopted a similar mark, in good faith, before the
alien has sold any goods in this country.^
g 23. Priority of appropriation. — In order to acquire
a trade-mark, its claimant must be its first appropriator,
as we have seen; for, as said by Finletter, J., "in no
other way can a mark or device indicate ' true origin or
ownership.""' Indeed, Bouvier has defined the right of
trade-mark in these terms: "The right of trade-mark is
said to be best termed an exclusive right arising from
first use;"^ and it has been said by the United States
supreme court that "The exclusive right to the use of a
mark or device claimed as a trade-mark is founded on
priority of appropriation; that is to say, the claimant of
a trade-mark must have been the first to use or employ
the same on like articles of production."^ There must
necessarily be such a use as qualifies the mark as an in-
dication of the origin and ownership of the goods to
which it is applied. If the same mark had been in prior
use by another at the same place or another locality near
enough to start a similar right, the second user could
have no trade-mark right to it.^ "In order that the
claimant of the trade-mark may primarily acquire the
1 Collins Co. V. Cowen, 3 K. & J. 428; Collins Co. v. Brown, 3 K. «&
J. 423; Collins Co. v. Walker, 7 W. R. 222; Collins Co. v. Reeves,
28 L. J. Ch. 56; Howe v. McKernan, 30 Beav. 547.
2 Singer Mfg. Co. v. Kimball & Morton, Ct. Sess. Cas. (3d ser) XI,
3 Davis V. Kennedy, 13 Grant, Up. Can. Ch. 523.
^Orr-Ewingv. ChooneeloU Mullick, Cor. 150; Orr-Ewing v. Grant,
Smith & Co., 2 Hyde, 185.
^Richter v. Anchor Remedy Co., 52 Fed. Rep. 455.
esheppard v. Stuart, 13 Phil. 117; Price & Steuart, 193-200.
^Bouvier, Diet., title "Trade-marks."
^Columbia Mill Co. v. Alcorn, 150 U. S. 460, See also Manitowoc
Mfg. Co. V. Dickerman, 57 Off. Gaz. 1721.
'•Tetlow V. Tappan, 85 Fed. Rep. 774; Hyman v. Solis Cigar Co.,,
4 Colo. App. 475.
§23] THE ACQUISITION OF A TRADE-MARK. 43
right of property in it, it must have been originally
adopted and used by him — that is, the assumed name
or designation must not be one that was then in actual
use by others; and such adoption and use confer upon
him the right of property in the trade-mark." ^ A trade-
mark having no necessary relation to invention or dis-
covery, '-' it is the party who first actually uses a mark,
and not the one who first thought of or designed it, that
is entitled to protection in its use as a trade-mark.'* A
mere declaration of intention to use a certain mark in
the future does not create a right to its use as a trade-
mark, for such right can only originate with the actual
use of the mark in commerce. ■• And it has been held in
England, by Lord Justice Cairns, that there can be no
right of trade-mark until the goods bearing the mark are
actually upon the market, and that it cannot be pro-
tected before that time, even though the goods to
which it is to be applied are in the course of manufac-
ture, and the claimants of the mark have made expendi-
tures in advertising it.^ The right to the mark must
relate back to its first use. One cannot unlawfully appro-
priate a trade-mark belonging to another, and subse-
quently acquire a good title thereto by the abandonment
thereof by the first proprietor.^
1 Derringer v. Plate, 29 Cal. 292; Cox, 324.
2 Trade-mark Cases, 100 U. S. 82.
3Georg-e v. Smith, 52 Fed. Rep. 830; Trisdorfer & Co. v. Estate of
Bassett, 60 MSS. D. Sept. 1896.
<Schneiderv. Williams, 44 N. J. Eq. 391; 14 Atl. Rep. 812; 44 Off.
^Maxwell v. Hogg, L. R. 2 Ch. 307; 36 L. J. Ch. 433; 16 L.T.N.S.
130; Seb. 264.
60'Rourke v. Central City Soap Co., 26 Fed. Rep. 576-578.
WHAT CONSTITUTES A VALID TRADE-MARK.
§ 24. The general rule. — Having' seen in the preced-
ing" chapters something of the general requisites of a
valid trade-mark, we now approach the subject of the
more exact tests to be applied in determining its valid-
ity. It is the general rule that a mark must be truthful
and unobjectionable on the ground of being a generic
§25. It must be truthful. — This rule is apparently-
simple, yet it has given rise to much discussion and some
apparent conflicts in the decisions. Honest competition
is the requirement of the chancellor, and he is just as
ready to dismiss the bill of a complainant whose trade-
mark is calculated to deceive the public into a belief
that his goods are something other than they actually are,
as he is to enjoin the defendant where he has infringed an
honest trade-mark. The modern law of unfair trade is a
perfect superstructure of ethical principles, founded upon
the basis of all ethics — honesty. In no class of cases is
the rule that he who comes into a court of equity must
do so with clean hands more rigidly applied.^ It is not
material whether the words or symbols used as trade-
mark contain the deceptive or untruthful statement.
Indeed the dishonest matter is usually foreign to the
mark itself, and contained in other matter used in adver-
tising or describing' the g"oods sold under the mark.
§26. A dishonest label -will invalidate. — We find
that where a distiller mixed nearly thirty-six per cent, of
other whiskies with his own brand, and sold the blend
under a label formerly used upon whisky of his own dis-
tillation, with cautions to avoid imitations and asserting
that the mixture was "bottled at the distillery ware-
iDadirrian V. Yacubian, 98 Fed. Rep. 872-876.
§ 26] WHAT CONSTITUTES A VALID TRADE-MARK. 45
house and is warranted perfectly pure and unadulter-
ated," an injunction was refused because of this misrep-
resentation. This decision, whose tendency is more far-
reaching than that of Manhattan Medicine Co. v. Wood,^
seems on the readinjj: of the facts to impose a hardship
on the owners of the mark, Jas. E. Pepper & Co. The
interest of the complainant was derived under a con-
tract with that firm giving him the entire control of their
trade in bottled whisky. The proof showed that up to
and including the year 1891 the Pepper Company bottled
nothing under the gold trade label partially described
above used by them but "Old Pepper" whisky distilled
by them, but that after November, 1891, the demand
for the distillery bottling became so great that they
could not supply it wnth the output of their own distil-
lery and therefore bought other whiskies shown to be
more expensive, older and made by the same formula as
their own, and blended these whiskies with their own,
and bottled the resulting blend under the same label and
trade-mark. Here, if ever, one would think equity would
relax its rule, and, as the public had not suffered by the
complainant's acts, would continue to protect the trade-
mark. But the learned court thus tersely applies the
principles: "Pepper offers as an excuse for bottling a
mixture that the demand for his goods had so increased
that he could not supply it with Pepper whisky. What
was this demand for ? Plainly for pure and unadulter-
ated Pepper whisky, bottled at the distillery. If this
could not be honestly supplied, then it could not be sup-
plied at all in such a way as to keep the business within
the protection of a court of equity. Relief is refused to
Pepper and his privies because of his misrepresentations
to the public."- Thus is emphasized the statement of
Mr. Justice Field that the protection of equity is ex-
tended to the owner of a trade-mark "not only as a mat-
1108 U. S. 218.
2Krauss v. Jos, R. Peebles' Sons Co., 58 Fed. Rep. 584-596. An Eng-
lish case resembling- this as to the facts is Starey v. Chilworth Gun-