N. K. FAIRBANK CO. 11. CENTRAL LARD CO.
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De Ville process and the Hall process for electrolyzing alumimull is made as plain as the court can make it in the opinion filed on the merits, and nothing that has been said on the argument of this motion in the slightest degree shakes the court's views on that point. The experiments reported do not make the case different in any respect. The motion for a rehearing is denied.
OFFICE SPECIALTY :MANUF'G CO. v. COOKE & COBB CO. (Circuit Court, S. D. New York. September 28,1894.) This was a suit in equity by the Office Specialty Manufacturing Company against the Cooke & Cobb Company for the infringement of ietters patent No. 217,909, granted to F. W. Smith and J. S. Shannon, July 29, 1879, for a paper holder; letters patent No. 312,086, granted to William H. Ciague, February 10, 1885,for a paper file; and letters patent No. 331,259, granted to J. S. Shannon, November 24, 1885, for an index for paper files. Heard on motion for a preliminary injunction. Frederick R. Church, for complainant. W. C. Donn, for defendant. LACOMBE, Circuit Judge. As to patents Nos. 812,086 and 331,259, there have been no prior adjudications sustaining them. It is true that very many letter files embodying the devices described in them have been sold, but such letter files appear also to have contained other devices as well. In view of the small cost of the articles, and the multitude of other varieties of letter files on the market, the mere fact that there have been extensive sales is very unsatisfactory evidence of a public acquiescence in the validity of the patents. Patent No. 217,909 appears to have been twice sustained by Judge Blodgett (Shannon v. Printing Co., 9 Fed. 205; Schlicht & Field Co. v. Chicago Sewing Mach. Co., 36 Fed. 585); but there was before him neither the "English file" nor the Dixon patent, which are introduced here. Neither of these, it is true, is an anticipation; but, when examined in connection with the other patents which were before Judge Blodgett, they make the question of patentable invention, to say the least, a doubtful one, and a preliminary injunction, therefore, should be denied. N. K. 1. TRA DE- MARK-DESCRIPTIVE
CO. v. CENTRAL LARD CO. October, 1894.)
(CirCUit Court. S. D. New York.
N AME-" COTTOI,ENE. " '.rhe word "Cottolene," designating a substitute for lard composed of cotton-seed 011 and the product of beef fat, is not so descriptive of the substance and quality of its component parts that it cannot be used as a trade-mark.
2.
SAME-INFRINGEMENT.
The use of the word "Cottoleo" on the tierces and tubs containing a compound of cotton-seed 011 and the product of beef fat is an infringement of the trade-mark "Cottolene" previously registered for the sale of the same substance, and used in marking tlerces and tubs.
S.
SAME.
It is no defense to a suit for infringement of the trade-mark "Cottolene" by the use of the word "Cottoleo" that defendant sold under his own name, and made no attempt, other than by use of the word "Cottoleo," to sell his goods as if manufactured by plaintiff.
134 'Centllal"wand, ;·Dd3nt t of"
,,; '.WDERAL .REPOWl'li:R,
vol. 64.,{ ,
,by !theN. l{.H:Jj'a;trbank OOIijcpany agai,nst the for. :an itljuillc::tion 'to restrain" tlle Infdnge, , tSulUyl\:"l1i & Cronrwelland RowlaftdC6x, for comphUnant. Blaekmai', for defendant. ' ,:
TOWNSEND, District Jlidge. "This is a bill in: for an injunction against the infringement of the complainant's trademark "Cottolene" by the use of the word "Cottoleo." The complainant began the manufacture of the article, and devised and word Heotiolene" as; a trade-mark in 1887. It obtained a ap,d ip;qr,easing ,In ;892, its amounted to 1,000,000 pounds a month. Cottolene IS Ii substItute !orla.rd.,:tIt is composed of cotton-Seed oil and the:prodllct of beef ,fat., 01' suet, under heat atid,:pressure, yields two products, and oleorn/M'garine. .TH,e:tormer is a so1id, and is used in maJdngasubstitutefor lard. TlJ.e1atter is more nearly a'liquid, and bl "tlsed in making u'substitute for butter. The word "oloo"is used when colloquially among merchants to indicate either oleomargarine or oleostearine. At the time when in 1892, com menced the manufacture of cotto.leo, which is identi'Cal in compo:'!itton, appearance with coHolene, other articles made of the were on sale in the ,market undervarious names otherthwni such as "Lardine," "Cotton-Oil. Lard," "PanBeef' Drippings," "Beef Frying' Fat," etc. These facts tothedefendant. The compound in question was and had a right to manufacture and sell ("Defen,dantsold under its own and, except in the ,"Cottoleo," stenciled on tierees·and tubs, did not sinrtilate.the . or used by complainant. This fregu,ently soldlhtierces to bakers, and in tubs to grooers"who sell it to customers from such tubs by the pound; so that;the cnstomer does fiot necessarily see the ,package at all. It seems clear that "Cottolene" is a proper and valid trade-mark. Although it may suggest cotton-seed oil, it is not sufficiently descriptive to render it invalid as a trade-mark under the recent decisions. The rule that 'names· isuggestive of'the natlire or1composition of articles may ,be if not too accurately descriptive of their character or quality has been applied in Burnett v. Phalon, 9 BosWr.W2.'rW the the word. "Oocoainej" ill Oo.V.):.ud,eJlUg, 22 Fed. 82$, to ''Maizenaj'' in Leonard v. Lubricator, 38 Fed.; 922" to "Valvolinej" in Battle v. FinlaY,45 Fed. 796. to "Bromidia." A more recent case is Keasbey v. Chemical Works, 37 N. :E. 476, by the court of appeals in New York since the this . The trade;mark in in that case is "Bl'oJino Caffeine," . This was held to be a valid .trade-mark in the supremeconrt, which decision was overruled.·by the general term, and cited by the4efendant in support of its contention that "Cottoleo" wllsa.;J.escl'iptive word. This article, called "Bromo Oaffeine," mlitde by the plaintiff in that case, was found to contain caffeine, bromideiGf pQtassium, and other substances. Theopinion
N. K. FAIRBANK CO. V. CENTRAL
CO.
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in the appellate court says that bromide "might refer to bromide of potassium, or bromide of sodium, or to any other bromide, or to bromine," and thus stated its conclusions: "We think this case comes within the doctrine of those cases which have protected the words of the trade-mark, although they suggested more or less the composition, quality, or characteristics of the article."
It also seems clear that the word "Cottoleo" is suffIciently similar to "Cottolene" to infringe it. When the printed word, as well as the sound, is considered, the resemblance is as great as that of "Cellonite" to "Celluloid" (Celluloid Manuf'g Co. v. Cellonite Manuf'g Co., 32 Fed. 94); "Wamyesta" to "Wamsutta" (Wamsutta }Iills v. Allen, Cox, Man. Trade-Mark Cas. 660) ; "Maizharina" to "l\1aizena" (Manufacturing Co. v. Ludeling, 22 Fed. 823); "Saponiti" to "Sapolio"(Enoch Morgan's Sons Co. v. Wendover, Cox, Man. 'rradeMark Cas. 713). See, also, Estes v. Leslie, 29 Fed. 91, in which "Chat· terbook" was held to infringe "Chatterbox." Defendant's counsel does not seem to seriously controvert these propositions. His defense is novel and ingenious. He says that complainant can have no better case here than he would have if his trade-mark had been "Cottoleo," and the defendant had used the same word: and he maintains that "Cottoleo" is so far a descriptive word that it cannot be used as a trade-mark. He says: "If such an alleged trade-mark would not have prevented the defendant from using the same word, certainly a trade-mark claimed in anJ" othcr word cannot prevent the defendant from using it."
He says that, as this was a new compound when complainant began to manufacture it, they could not, by their choice of a name adopted as a trade-mark, restrict an.y parties thereafter manufacturing in their of descriptive words. He says that defendant was justified in using a word which was euphonious, and whicb indicated the ingredients of which the product was composed, and that no traoe-mark claimed or owned by the complainant can abridge that right. The questions, as stated by defendant, then are: First. Is "Cottoleo" so far a descriptive word that it could not be used as a trademark? Second. Where a manufacturer originating a new compound has given it a name suggestive of some of the ingredients, but a valid trade-mark, maya later manufacturer adopt a name similar in appearance and sound, provided the same is so far descriptive of the article that it would not be valid as a trade-mark? Defendant's counsel, in support of his contention that "Cottoleo" is a descriptive word, quotes the following, among others, as having been heM descriptive, and therefo're invalid as trade-marks: "Cherry Pectoral" (AyeI' v. Rushton, 7 Daly, 9); "Taffe Tulu" (Col· gan v. Danheiser, 35 Fed. 150); "Rye & Rock" (Van Beil v. Prescott, 46 N. Y. Supet'. (,1. 542); "Straight Cut" (Ginter v. Tobacco Co., 12 Fed. 782); "Mascassar" (Rowland Y. Breidenbach, 1 Cox, )fan. Trade-Mark Cas. 386); "Cresylic Ointment" (Soap Co. v. Thompson, 25 Fed. 625); "Iron Bitters" (Chemical Co. y. 139 U. S. 540, 11 Sup. Ct. 625); fignres on cigarettes composed of two
136i
. ,FEDERAL REPORTER,
vol. 64.
kinds Qt to;b/lcCO (H:iIlney v. ,1 Hllghes, 106, Cas., No. 7,826). rU.lJ,Jt in these cases and the others cited by defendant the words claimed as trade-marks originally pElscriptive, or had,bec9we inco,rPQrated the Eli-gUsh language so as to be recognized, ·as i descriptive' of the article, and therefore incapable of exclusive apprbpriation. . TheE!videnceshows that. the wQrd "Cottoleo" is not formed in accordance with a.ny established rules for the form,ation, ofa new word. "Cott" is merely suggestive <d' cotton oil. It does not describe it, and "oleo" may ,describe or reffjl' ito oleomargarine as well as to oleostearine, or to other ((Oleo" iI!!, ordinarily used as a prefix, andllQt a suffix; and it is shownW be the l'ulein,coining compound words that the important RJ1ticle is placed la$t. There were various ,other, words in common llse describing the product when the-defendant coined the word. It does not, therefore, come withinth,eprinciple of those cases wher:e there is only.- a single name to desigpate the new article, or Where the new name is used merely aa descriptive of the article. Defendant's theory that, where a suggestive trade-mark has ,been adopted, another desiring to obtain1 the benefit of the trade-mark may coin a word not already in the l;anguage, and not made according to the l'egularrules for coining new words,yet sufficiently indicative of the quality and character of the article to be invalid as a trade-mark, and sufficiently like the trade-mark in use to obtain the benefit of an infringement, seems to open the door for ingenious fraud. Under the circumstances of this case, the conduct of the defendant in rejeCting all existing names, and in coining a new name, which conveys to the eye and ear so close an imitation of complainant's trade-mark seems to indicate a design to impose his article upon the 'Pllblic as that of the complainant, or, at least, to obtain the substantial benefit of complainant's trade-mark. It is well settled that the inventor of an arbitrary or fanciful name may apply it to an article manufactlll'ed by him to distinguish his manufacture from that of others, and that the subsequent use of such word by the public to denote the article does not deprive the originator of such word. of his exclusive right to its use. Selchow v. Eaker, 93 N. Y. 59; Ausable Horse-Nail Co. v. Essex Horse-Nail Co., 32 Fed. 94; Manufacturing Co. v. Read, 47 Fed. 712. Neither does the fact that the defendant sold under its own name, and made no attempt, other than by the use of the word "Cottoleo." to palm off his goods as those of the complainanti constitute a defense. Roberts v. Sheldon, 18 O. G. 1277, Fed. Cas. No. 11,916, and cases there quoted; Sawyer v. Horn, 1 Fed. 24; Hier v. Abrahams, 82 N. Y. 519; Battle v. Finlay, 45 Fed. 796. It seems to be the law that, when manufacturershave educated the public to ask for a certain article by its trade-mark name, they have acquired the right to insist that products manufactured by others shall not be given to the public under that name. It is just that it should be so, for the benefit derived from such name can only be obtained by faithful service in furnishing articles of recogpized value. Moreover, if the trade-mark name might be adopted by others, inferior articles might then be
THE HARRY BROWN.
137
produced and sold under it; and thereby the value to manufacturers of the reputation of the name used by them as a trade-mark would be destroyed. There will be the usual decree for an injunction and an account· ing. THE HARRY BROWN. THE BEAVER. THE HARRY BROWN et at v. MOREN et al. (Circuit Court of Appeals, Third Circuit. No. 13. ADMIRALTY-()OLLISION BETWEEN
October 15, 1894.)
Tows IN MISSISSIPPI RIVER. The steamers R and H., each having in tow several coal barges, were proceeding down the Mississippi river. The B., which was ahead, tied up at S. landing. but lower down than, as claimed by the B.. she should have done in pursuance of an ag-reement alleged to have been made between them. When the R passed the point where the B. claimed she should have tied up, the H. was a mile or more further up the river, saw the R's movements, and had ample room to avoid her, but instead, followed the B.'s course so closely that, after the latter was tied up, the tows collided, and two barges of the B.'s tow and one of the B.'s were sunk. Held that, assuming the agreement as to the place for the B.'s tying up to be proved, the B.'s violation of it did not contribute to the collision, and that the B. alone was in fault.
Appeal from the Distriot Court of the United States for the Western District of Pennsylvania. This was a libel by John Moren and Michael Munhall, owners of two coal boats, against the steamer Harry Brown, for damages sustained in a collision. A petition was filed by Harry Brown and Samuel S. Brown, copartners trading as W. H. Brown Sons, claimants of the steamer Harry Brown, against the steamer Beaver, charging the latter with responsibility for damage to the coal boats and also to the steamer Harry Brown. The district court rendered a decree for libelants, apportioning the damages between the two steamers. The claimants of the steamer Harry Brown, and William J. Wood, Thomas J. Wood, Harry McDonald, and the Lysle Coal Company, claimants of the steamer Beaver, appe.al. George C. Burgwin, for the Harry Brown. W. B. Rodgers, for the Beaver. George C. Wilson, for appellees. Before AOHESON and DALLAS. Circuit Judges, and BUTLER, District Judge. BUTLER,District Judge. The suit is for damages resulting from a collision between tows of coal barges, in the Mississippi river, one of which was in charge of the Brown and the other of the Beaver. The district court having found the respondents jointly liable and decreed accordingly, each appealed, and assigned as error the failure to find and hold the other alone responsible.