It’s late, and you’re still awake. Allow us to help with Sleep Aid, a series devoted to curing insomnia with the dullest, most soporific prose available in the public domain. Tonight’s prescription: “Infringement,” the fourth chapter of Things to Know About Trade-marks: A Manual of Trade-mark Information, a 1911 book by J. Walter Thompson Company.
There is no intrinsic value in a trade-mark. Its worth in dollars is a creation, and it depends upon the successful sale, or popularity, of the commodity to which the trade-mark is applied, the distribution of this commodity, the extent to which it has been advertised, and the profit that there is in it.
Some widely-known trade-marks are worth millions of dollars, and many are valued at a hundred thousand dollars or more.
The ownership of an advertised and favorably known trade-mark is, therefore, a valuable property right. In estimating the assets of a business, its trade-mark is included under the head of Good-Will, and Good-Will is Reputation. The value of a trade-mark is the value of the reputation of the goods it represents and identifies.
A valuable trade-mark—like other valuable things—becomes, sooner or later, an object of envy on the part of those who want money without troubling themselves about the manner of getting it. Sometimes this leads to a more or less ingenious simulation of a trade-mark.
The remedy for the infringement of a registered trade-mark is covered by sections 16 to 19, inclusive, of the Act of 1905. We quote these sections of the law:
“Sec. 16. That the registration of a trade-mark under the provisions of this act shall be prima facie evidence of ownership. Any person who shall, without the consent of the owner thereof, reproduce, counterfeit, copy, or colorably imitate any such trade-mark and affix the same to merchandise of substantially the same descriptive properties as those set forth in the registration, or to labels, signs, prints, packages, wrappers, or receptacles intended to be used upon or in connection with the sale of merchandise of substantially the same descriptive properties as those set forth in such registration, and shall use, or shall have used, such reproduction, counterfeit, copy or colorable imitation in commerce among the several states, or with a foreign nation, or with the Indian tribes, shall be liable to an action for damages therefor at the suit of the owner thereof; and whenever in any such action a verdict is rendered for the plaintiff, the court may enter judgment therein for any sum above the amount found by the verdict as the actual damages, according to the circumstances of the case, not exceeding three times the amount of such verdict, together with the costs.
“Sec. 17. That the Circuit and Territorial Courts of the United States and the Supreme Court of the District of Columbia shall have original jurisdiction, and the Circuit Courts of Appeal of the United States and the Court of Appeals of the District of Columbia shall have appellate jurisdiction of all suits at law or in equity respecting trade-marks registered in accordance with the provisions of this act, arising under the present act, without regard to the amount in controversy.
“Sec. 18. That writs of certiorari may be granted by the Supreme Court of the United States for the review of cases arising under this act in the same manner as provided for patent cases by the act creating the Circuit Court of Appeals.
“Sec. 19. That the several courts vested with jurisdiction of cases arising under the present act shall have power to grant injunctions, according to the course and principles of equity, to prevent the violation of any right of the owner of a trade-mark registered under this act, on such terms as the court may deem reasonable; and upon a decree being rendered in any such case for wrongful use of a trade-mark the complainant shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages the complainant has sustained thereby, and the court shall assess the same or cause the same to be assessed under its direction. The court shall have the same power to increase such damages, in its discretion, as is given by section sixteen of this act for increasing damages found by verdict in actions of law; and in assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost which are claimed.”
The legal remedies set forth in these sections of the Act of 1905 apply only in case of infringements of registered trade-marks. In the case of infringements of common law trade-marks, and in cases where packages, labels and advertisements are imitated or counterfeited, actions to restrain must be brought under the law of unfair trade.
A coined word is the property, in a commercial sense, of the person, or firm, or corporation, that makes it up and uses it.
This is indisputable. It is a principle of justice that is supported consistently by the courts, but it needs no legal mind to acquiesce in its fairness, for it appeals to everybody’s common-sense.
How far the use of a coined word may be allowed, when applied by other persons than its owners to goods of a different and non-competitive class, is a question that has not been definitely settled. In England, the court enjoined the use of the word “Kodak” as a name for bicycles. There is little doubt that the unauthorized use of any widely-known coined word, that has been nationally advertised, would be enjoined by the courts, even if applied to a wholly different line of merchandise.
A poorly-made and inferior article, even if it should belong to a class of goods quite dissimilar to that of another article of the same name, might indirectly bring discredit upon the latter.
The word “Educator” was refused registration as a trade-mark for fish, on the ground that as it had already been registered as a trade-mark for a brand of biscuits, its use by another might lead to confusion, although fish and biscuits are quite dissimilar products.
There have been cases where a label, or a sign, or a trade-name, or trade-mark, has been appropriated bodily by a concern not entitled to use it. Some cases of infringement of this character are given in H. D. Nims’ instructive book on “Unfair Business Competition,” from which the following example is quoted:
“The defendants accumulated in the St. Louis market stoves (not made by plaintiff) with the name ‘Charter Oak’ upon them, which they held for sale as ‘Charter Oak Stoves.’ They were aware of the plaintiff’s proprietorship of the ‘Charter Oak’ trade-mark, and were proceeding to sell in defiance of the plaintiff’s rights. Plaintiff had been the first to use ‘Charter Oak’ as a name of a stove and had used it for a long time when this suit was begun. The mark was not registered. Injunction granted.” Filley v Fassett, (44 Mo. 168—1869).
Infringements are generally more subtle and clever than a mere bodily adoption of a trade-mark. For instance, a piratical trade-mark may be devised so nearly like a well-known mark that it will readily deceive an unwary or careless or ignorant purchaser, and yet be so different that a show of defending it may be made.
Or, an entirely different trade-mark may be used, while the size, shape and color of the package may be imitated. The National Biscuit Company uses distinctive packages for its products, and its trade-marks are, in most cases, original, arbitrary, coined words, yet it has so far prosecuted approximately five hundred suits for infringement of its marks and packages.
“Uneeda Biscuit” has been infringed by “Iwanta Biscuit”, “Uwanta Biscuit” and “Ulika Biscuit”, all of which were enjoined. In the “Iwanta” case, the opinion of the court was, in part, as follows:
“Defendants present the usual voluminous bundle of affidavits by persons in the trade to the effect that in their opinion no one is likely to mistake defendant’s biscuit for complainant’s. As has been pointed out before, it makes no difference that dealers in the article are not deceived. No one expects that they will be. It is the probable experience of the consumer that the court considers. Here, too, we have the manufacturer of the articles complained of, who explains, as usual, that in adopting a trade-name by which to identify his own product he has been most careful not to trespass upon any rights of complainant, and that, after considerable thought, he selected a name which should make the difference between his goods and complainant’s distinct and plain, so that there could be no possibility of mistake. It is a curious fact that so many manufacturers of proprietary articles, when confronted with some well-advertised trade-name or mark of a rival manufacturer, seem to find their inventive faculties so singularly unresponsive to their efforts to differentiate. Thus, in one case, with the word ‘Cottolene’ before him, defendant’s best effort at differentiation resulted in ‘Cottoleo’; and ‘Mongolia’ seemed to another defendant entirely unlike ‘Magnolia.’ The manufacturer of the articles which defendants in the case at bar are selling seems to have had no better luck, for, with the word ‘Uneeda’ before him, his device to avoid confusion was the adoption of the word ‘Iwanta.’ The incessant use of the personal pronouns in daily speech has associated in every one’s mind the sounds represented by the letter ‘I’ and ‘U,’ the two words are of precisely the same length; both end with the letter ‘A,’ and both express the same idea, namely, that the prospective purchaser’s personal comfort would be promoted by the acquisition of a biscuit … Both name and dress are clearly calculated to mislead, and the statements that both were adopted with an eye single to differentiation strain the credulity of the court beyond the breaking point.”
In the case of Lever Bros. v Smith (112 Fed. R. 998), the complainant had built up a large and profitable sale for “Welcome” soap. The defendant, Welcome A. Smith, put on the market a soap similar in size and shape to “Welcome” soap, and labeled it with his own name “Welcome A. Smith,” making the word “Welcome” on his labels large and prominent, with “A” and “Smith” below it, and in much smaller type. On the ends of the package the word “Welcome” alone appeared. It was held that while Smith had a right to use his own name, he could not use it in such a way that it would suggest an identity between these two products.
In the case of Swift v Brenner (125 Fed. R. 826) it was held that Swift & Company’s “Old Mill Soap” which had a picture of an old mill on the label, was infringed by “Old Stone Mill Soap”, the label of which also had a picture of an old mill.
In the interesting case of the Welsbach Light Company v Adam (107 Fed. R. 463) it was shown that the infringing trade-mark had been devised before the complainant’s mark, but had not been used until after the complainant’s mark had been registered. On Feb. 20, 1900, the complainant (The Welsbach Light Company) registered the coined word “Yusea,” as a trade-mark applied to gas mantles. Some months before this, the defendant had conceived the name “U—C—A” with the idea of using it in connection with gas mantles of his own manufacture. Its actual use as a trade-mark was not begun, however, until after the complainant’s mark had been registered. On Oct. 23, 1900, the defendant registered “U—C—A” as a trade-mark.
The complainant based his action for an injunction against the use by the defendant of the mark, “U—C—A” on the ground that its resemblance in sound to “Yusea” was sufficient to confuse buyers and divert trade from the complainant.
It was shown that “Yusea” is commonly pronounced “You see a”; that purchasers, in asking dealers for these mantles, called them “You See A” Mantles; and that the pronunciation of the name of defendant’s mantles was the same as the name of complainant’s products.
The defendant contended that there was no similarity in appearance in the two names; that the similarity in sound was only incidental; that there was no infringement, because the name “U—C—A” had been devised prior to the conception of “Yusea”; and that the registration of “U—C—A”, allowed by the Patent Office, was proof of dissimilarity.
The Court sustained the contention of the Welsbach Light Company, and the use of “U—C—A” as a trade-mark for gas mantles was enjoined on the ground that it was an infringement of “Yusea.”
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