BURNETT against PHALON

BURNETT against PHALON. Court of Appeals ; June Term, 1867. Trademark. —Injunction. The rule that a manufacturer, or merchant for whom goods are manufactured, has a right to distinguish the goods that he manufactures or sells, by a peculiar mark or device, in order that they may be known as his in the market, and that he may thus secure the profits that their superior repute, as his, may be the means of gaining; and that this right will be protected by injunction, applies to the use of such a compounded term as “ Cocoaine,” to designate a hair-wash in which cocoa-nut oil is a principal ingredient. And the subsequent adoption, by a rival dealer, of the word “ Cocolne,” to designate a similar compound put up by him, is an infringement against which the courts will interpose by injunction. Appeal from a judgment. This action was brought by Joseph Burnett and William Otis against Edward and Henry A. L. Phalon. The object of the action was to restrain the defendants from manufacturing, using, selling, or in any manner disposing of a compound or preparation with the name “ Cocaine,” or “ Cocoaine” printed or stamped upon the bottles, labels, wrappers, covers, or packages thereof; also from using the word “Cocoaine” or “Cocolne” upon any wrappers, labels, or trademarks, and also from manufacturing, selling, or offering for sale, any preparation or compound under the name of “ Cocoine” or “ Cocoaine ;” and also from imitating, in any manner, the trademark “Cocoaine;” and that defendants may account to the plaintiffs, and pay over to them the profits of all the said material sold under the simulated name and trademark above set forth. Upon the trial by the court, without a jury, the following facts were found. 1. That in or about the month of Nov., 1856, the plaintiffs, druggists and apothecaries, compounded from cocoanut oil, and other ingredients, a mixture used as a hair-wash, for which they devised as their trademark a name, word, device, or title never before used, by which to mark their said compound, to wit, the name or word “Cocoaine,” and that they published the same very extensively, with notice that they had adopted said name or title, as their “trademark,” to secure the public and the proprietors against imposition, and that all unauthorized use of this trademark would be promptly prosecuted; that the plaintiffs then and thereupon introduced their said compound into the market, and expended a sum exceeding ten thousand dollars in advertising, publishing, and introducing the same. 2. That in or about the month of Nov., 1858, the defendants, Edward Phalon and Henry A. L. Phalon, composing the firm of Phalon & Son, of the city of New York, hairdressers and perfumers, commenced the preparation and sale of a similar compound, in bottles not unlike those containing the plaintiffs’ compound, and with labels under the name and title of “Cocoine,”' and that they have since manufactured and sold- large quantities thereof. 3. That the defendants, well knowing that the name, word, or title, of “ Cocoaine” was, and for a considerable time had been the trademark of the plaintiffs, with the wrongful intention of inducing the public to believe that the compound sold by themselves under the name, word, or title of “ Cocoine” was that of the plaintiffs ; and with the wrongful intention of securing to themselves the benefit of the skill, labor, and expense of the plaintiff, had so closely imitated and used the aforesaid trademark of the plaintiffs as to deceive the public and injure and endamage the plaintiffs. That the word, name, title, or device “ Cocoine” is a spurious and unlawful imitation by the defendants, of the word, name, title, or device “ Cocoaine,” the aforesaid trademark of the plaintiffs. 4. There was no evidence to support the defendants’ allegations that the plaintiffs have in any manner committed any fraud, or imposed upon the public. 5. That the plaintiffs are entitled to the relief demanded in the complaint, that the defendants be perpetually enjoined and restrained from the further imitation and use of the aforesaid trademark of the plaintiffs, and that the damages which the plaintiffs had sustained they were entitled to recover. Such damages having been ascertained, judgment was rendered accordingly for the plaintiffs ; and on an appeal to the general term, the same was affirmed. The decision of the superior court of New York, which was now affirmed by the court of appeals, is reported in 9 Bosw., 192. E. W. Dodge, for the defendants, appellants. — I.The injunction rests upon the ground that the plaintiffs had contrived a new word. They allege that they invented and composed the word. Now, in truth, Cocoine is.a properly compounded word, and the legitimate name for a preparation of cocoa-nut oil. The plaintiffs invented nothing. He compounded his word Cocoaine from two words already in use. The fact that the plaintiffs gave public notice that they had adopted Cocoaine as their. trademark is of no consequence, for they did not possess such right of appropriation (Upton on Trademarles, 179). II. The word, applied to an article of perfumery, indicates the nature of the compound, so that it cannot be urged that it is a mere fancy term. The law recognizes no right of property in a word used to indicate the name of an article (The Amoskeag Manufacturing Company v. Spear, 2 Sandf., 599 ; Fetridge v. Wells, 4 Abb. Pr., 144 ; S. C., 13 How. Pr., 385 ; Stokes v. Landgraff, 17 Barb., 608 ; Williams v. Johnson, 2 Bosw., 1 ; Wolfe v. Goulard, 18 How. Pr., 64 ; Corwin v. Daly, 7 Bosw., 222 ; Upton’s Trademarks, 187). If the name indicates the owner of. the establishment, it may be protected by injunction (See Howard v. Henriques, 3 Sandf., 725 ; Knott v. Morgan, 2 Keen, 213 ; Stone v. Carlan, 3 Code Rep., 67 ; Marsh v. Billings, 7 Cushing, 322 ; Genin v. Chadsey, 12 Abb. Pr., 69). The word Cocoaine does not in any possible manner indicate either the origin or ownership. It has no meaning, except to indi-, cate the name of the cosmetic within the bottle (See review of Justice Piebrepoiít’s opinion in this case in Upton's Trademarks, 171 et seq.). III. If the court shall be of the opinion that the mere contrivance or invention of a word gives to the inventor an. exclusive right to its use as the name of an article of his manufacture, then it is submitted that the defendants should have a new trial upon their newly-discovered evidence. John Sherwood, for the plaintiffs, respondents. —I. The questions of fact are settled by the court below and will not be reviewed by this court (North v. Bloss, 30 N. Y., 374 ; Thompson v. Kessel, 30 Id., 383 ; Frost v. Koon, Id., 428 ; Beebe v. Mead, 33 Id., 589). Leaving out the letter “ a” in the word, only made more apparent the intention to defraud the plaintiffs and the public. This was a mere colorable evasion (Taylor v. Carpenter, 2 Sandf., 213, and cases). The notice given by the plaintiffs that they had adopted Cocoaine as their trademark, is most important in determining the question of the intent of the defendants in wrongfully imitating' the trademark. If the plaintiffs have given out the word as their mark, and by this description the article has acquired a reputation and sale, they are entitled to full protection (Williams v. Johnson, 2 Bosw., 1). II. Although the word indicates the origin of the article, it does not follow that no right of property- can be had in it. None of the cases cited apply to the case of a word, by which they indicate the origin of the article so invented and composed, as a new symbol or device for a trademark (Gout v. Aleploghu, 6 Beav., 69 ; Stokes Landgraff, 17 Barb., 608 ; Wolfe v. Goulard, 18 How, Pr., 64). III. A new word may be adopted as a trademark ; and it is no objection that the letters which the plaintiffs adopt as a symbol of his article form a symbolic word which is new and at the same time conveys an idea of the ingredients. IY. As to the prior existence of the word “ Cocoine (l.) It never existed in our language. (9.) It never existed as a substantive, capable of designating a preparation or any other - substance. (3.) It never existed as denoting any preparation of cocoa-nut oil, or any hair-wash. (4.) When used by Phalon to denote a preparation of cocoa-nut oil for the hair, it derived that meaning solely and entirely from the fact that Burnett had previously used “ Cocoaine,” to designate a similar article. This is really the test of its having formerly existed in such a sense as to debar the plaintiffs from the privilege of coining and appropriating this new word. Y. The criticism on this case in Uptons Trademarks is unsupported by authority ; and the word had by its appropriation a connection with the name of plaintiff, and acquired a distinct and recognized meaning. When an article is called by a new name which is connected with the name of the manufacturer, so as to indicate ownership and origin, it is and ought to be protected. YI. But the law does not favor those who, by imitations, appropriate to themselves the fruits of the ingenuity, labor and enterprise of others ; and the great majority of cases are decided upon the broad ground that there was a palpable attempt to imitate what others had invented and "brought to the notice of the public. The actions of the inventor of the trademark are not the subject of investigation so much as those of the imitator (Croft v. Day, 7 Beav., 84 ; Howard v. Henriques, 3 Sandf., 725 ; Sykes v. Sykes, 3 B. & C., 541 ; Rogers v. Nowhill, 5 Man., Gr. & Scott, 109 ; Morrison v. Salmon, 2 Man. & Gr., 385 ; Day v. Binnings, 1 Coop. Ch., 489 ; Ransome v. Bentall, 3 Law J. R. N. S., 161; see also cases in Upton on Trademarks, 122; Farina v. Silverlock, 39 Eng. Law Eq., 517; Judge Duer, in Amoskeag Mfg. Co. v. Spear, 2 Sandf., 599; see also Clark v. Clark, 25 Barb., 76; Brooklyn White Lead Co. v. Masury, 25 Barb., 416; Williams v. Johnson, 2 Bosw., 1; Coffeen v. Brunton, 4 McLean, 576 ; Hine v. Lart, 10 Lond. Jur. R., 106 ; McAndrew v. Burnett, 10 Jur. N. S., 492 ; where the use of the word "Anatolia” was protected; Barrows v. Knight, 6 Rhode Island, 434. YII. It is undeniable that defendants intended to obtain the benefit of the name to the prejudice of plaintiffs’ rights. The objections taken by them are of a technical character, and do not present equitable grounds for disturbing the injunction. Compare Town v. Stetson, post, p. 218. [MAJORITY — Davies, Ch. J.] Davies, Ch. J. —Upon the facts found by fhe court, the right of the plaintiffs to the relief granted is clear and indisputable. The plaintiffs have adopted, appropriated and used a certain trademark. This has become their property, and, for its protection from invasion or use by others, the plaintiffs are entitled to invoke the aid of courts of justice. We have the ascertained facts before us, that the defendants are using a spurious and unlawful imitation of the plaintiff’s trademark. This they cannot be permitted to do. The cases in the courts of this State have firmly established this doctrine (Coats v. Holbrook, 2 Sandf. Ch., 586, and cases there cited ; Taylor v. Carpenter, Id., 603 ; same case in court of errors, Id., 611 ; Partridge v. Menck, Id., 622 ; Williams v. Johnson, 2 Bosw., 1; Stokes v. Landgraff, 17 Barb., 608 ; Wolfe v. Goulard, 18 How. Pr., 64 ; Clark v. Clark, 25 Barb., 76 ; Brooklyn White Lead Co. v. Masury, Id., 416). The rule is nowhere laid down with more clearness and accuracy than by Mr. Justice Dueb in his elaborate and able opinion in the case of the Amoskeag Manufacturing Company v. Spear, 2 Sandf., 599). He thus says: “ Every manufacturer, and every merchant for whom goods are manufactured, has an unquestionable right to distinguish the goods that he manufactures or sells, by a peculiar mark or device, in order that they may be known as his, in the market for which he intends them, and that he may thus secure the profits that their superior repute as his may be the means of gaining. His trademark is an assurance to the public of the quality of his goods, and a pledge of his own integrity in their manufacture and sale. To protect him, therefore, in the exclusive use of the mark that he appropriates, is not only the évident duty of a court, as an act of justice, but the interests of the public, as well as of individuals, require that the necessary protection shall be given.” Upon the facts proved by the court on the trial of this action—and such finding is conclusive upon this tribunal—the judgment of the superior court of Hew York was correct, and should be affirmed with costs. All the judges concurred. Judgment affirmed.