Williams v. Johnson — 15 N.Y. Super. Ct. 1

Majority

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James B. Williams and another v. William Johnson.

Headnote

A manufacturer of goods, who, in order to designate his own manufacture, has adopted names, marks, and labels, which are peculiar, and not theretofore used, is entitled to he protected by a court of equity in the use thereof, as trade marks, against fraudulent or deceptive imitation by others.

This is true, although the article manufactured by him is composed of well-known ingredients, in general use for that purpose, and which any person may combine and sell at his pleasure; trade marks in such case being appropriately employed to denote a manufacture of the article, by the person using them, and to notify those who buy and use the article, that his peculiar skill, in combining the ingredients, have been employed therein.

An injunction will he granted to restrain the use by another of labels, devices, or handbills, in imitation of, or simulating such trade marks.

Whether a mere name of an article, or a designation .of a place of manufacture, can or cannot become the subject of protection, as a trade mark, the Court will restrain the use thereof in such a combination, with peculiar devices and labels, as will tend to deceive the public, and induce the erroneous belief in the minds of dealers and consumers, that the articles are manufactured by the person introducing or adopting the same, to distinguish his goods.

Slight differences calling for scrutiny, or concealed by artifice, so as to escape the attention of the unwary, are not sufficient to protect the imitator of a trade mark from liability.

(Before Duek, Ch. J., Hoffman and Woodruff, J.J,)

Heard, April 16th;

decided, June 27th, 1857.

Appeal from an order made at Special Term, before Mr. Justice Slosson, granting an injunction to restrain the defendant, pendente lite, from selling, disposing of, or advertising, or offering

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for sale, any soap (not. manufactured by the plaintiffs) put up in boxes, wrappers, or labels, in a form and style, alleged in the bill of complaint, to be a fraudulent imitation of the boxes, wrappers, labels, etc., used by the plaintiffs, to designate their own manufacture.

The complaint herein alleged that, in or about the year 1845, the plaintiff, James B. Williams and his brothers, were manufacturers of soap at Manchester, Connecticut; that they manufactured a particular kind of soap, to which, in order to identify it as their manufacture, they gave the name of “ Genuine Yankee Soap,” made in cakes of about two inches square, each cake covered with tinfoil; that upon one side of each cake was attached an octagonal pink label, with the words printed thereon, “ Genuine Yankee Soap, manufactured at Manchester, Conn., by Williams & Brothers, Chemists and Apothecaries. To prevent counterfeits, their signature will be upon each cake.” Upon the other side of each cake was attached another octagonal pink label, with the words printed thereon, “The Genuine Yankee Soap is warranted superior to any foreign compound for shaving and the toilet, affording a copious and heavy lather, which does not dry on the face, leaving the skin soft and smooth.” And at one end of each cake was attached another pink label with the words in writing, or in a resemblance to writing, “ Williams & Bros.”

That the said soap was put up in pasteboard boxes containing one dozen cakes each, and each box covered with a brown paper wrapper, with the words thereon, “ One dozen Genuine Yankee Soap, warranted superior to any foreign compound for shaVing and the toilet, manufactured at Manchester, Conn., by Williams & Brothers, Chemists and Apothecaries. To prevent counterfeits, their signature will be upon each cake.”

Upon these several labels, the arrangement of the lines, the form of the letters and style of the printing was peculiar and in some degree fanciful.

The complaint states that under the above designation, and put up in the manner described, Williams & Brothers, in or about 1845, introduced their said soap into the market for sale, and it was favorably received, became extensively known by purchasers and dealers, and obtained a large sale, and the demand therefor greatly increased. That subsequently, by changes in the busi

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ness of Williams & Brothers, and by transfer to them, the plaintiffs succeeded to the manufacture of this soap and the exclusive right to use the style, designation, and labels, and mode of packing above described, and'still continue to manufacture and sell the same; and that by reason of the superior quality of the said soap, and the favorable reputation which it maintained, the manufacture and sales thereof had, at the time of the defendant’s interference, become and were large, extensive and profitable.

That the defendant, well knowing these facts, and with intent to deceive and defraud the public who deal in or use the said soap, has manufactured, or caused to be manufactured, and is continually manufacturing, etc., and has in his possession large quantities of soap of an inferior quality, which he puts up in a style and manner precisely similar to that in which the plaintiffs’ is put up. That it is cut up into cakes of the same size as those of the plaintiffs’, each cake encased in tinfoil, and upon each cake three pink labels of the same form used by the plaintiffs, upon one of which are printed the words, “ Genuine Yankee Soap, manufactured at New York, by L. Williams & Co. To prevent counterfeits, their signature will be upon each cake.’’ Upon another are printed the words, “ The Genuine Yankee Soap is warranted superior to any foreign compound for shaving and the toilet, affording a copious and heavy lather, which does not dry on the face, leaving the skin soft and smooth.” And upon the third are the words, in writing or in a resemblance to writing, “ L. Williams & Co.” That each box is covered with a brown paper wrapper, with the words thereon, “One Dozen Genuine Yankee Soap, warranted superior to any foreign compound for shaving and the toilet, manufactured by L. Williams & Co., New York. To prevent counterfeits, their signature will be upon each cake.”

Upon these several labels, the arrangement of the lines, the form of the letters and style of printing was, in almost every particular, an exact copy of the labels used by the plaintiffs, and the complaint states that the name L. Williams & Co. is fictitious, and is used to deceive, etc.

The plaintiffs alleged damage, etc., and prayed an injunction.

The defendant answered the complaint, denying that the plaintiffs had any exclusive right to use the designation “ Genuine Yankee Soap,” or the marks and labels above described; denying

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that the soap made by him was inferior to that made by the plaintiffs ; that the plaintiffs had.sustained any damage by any wrongful act of his; averring that the term, “ Genuine Yankee Soap,” described a particular style and quality of soap, and did not identify the person or persons by whom, or the place where, it was manufactured; that the article known in the market by that name, “has been for years” manufactured by different manufacturers of soap in different parts of the United States, and sold by that name, and that it could not be appropriated by the plaintiffs. The answer denies that the name, L. Williams & Co., is fictitious, or is used as a colorable imitation, assimilating the trade mark of the plaintiffs. ' On the contrary, it states, that so early as 1850, there was a firm in New York, composed of L. Williams and others, carrying on business under the name of L. Williams & Co., for and on account of whom the said article of Genuine Yankee Soap, as now made by the defendant, was made until L. Williams & Co. went out of business in 1856, and that such soap bore their name, and had acquired a favorable name and reputation, and that the rights of L. Williams & Co. to manufacture said soap, and to use the bills, labels, name, and trade marks used by L. Williams & Co. has been transferred to the defendant, being the same now used by him.

The plaintiffs, in support of their motion, produced the affidavits of several dealers in soap, to the effect that the article, known in the market as “ Genuine Yankee Soap,” is known as the manufacture of Williams & Brothers, of Connecticut. That that name does not' denote the name of the article merely to distinguish it from other kinds of soap, but to denote that it is the manufacture of Williams & Brothers. That it was first introduced into the market by Williams & Brothers, by whom the name was adopted to distinguish it as their manufacture, and as their trade mark. That the several deponents dealt therein several years before they were aware that'imitations thereof were sold. That they have never known any soap to be made and sold in the market, as and for “ Genuine Yankee Soap,” by any others than Williams & Brothers, except such as were put up in boxes and accompanied by labels and wrappers which were close imitations of those used by Williams & Brothers, and thus calculated to deceive the public by inducing the belief that

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such imitations were the manufacture of said Williams & Brothers. . '

An injunction was granted at Special Term, restraining the defendant from “selling, or in any way disposing of any soap in boxes or otherwise, with labels or wrappers containing the words, 'Genuine Yankee Soap’ printed or written thereon; and from advertising, selling, or offering to seE any soap whatever, (unless the same has been manufactured by, or procured from, the plaintiffs,) as and for 'Genuine Yankee Soap;’ and also from using in any manner the words or name 'Genuine Yankee Soap’ in connection with soap manufactured or offered for sale by him; and also from assimilating in any way, or making, or using any colorable imitation of said name 'Genuine Yankee Scap,’ or of the words Williams & Brothers, or either of them as adopted and used by the plaintiffs.”

From the order so made the defendant appealed.

J. C, Dimmick, for the appelant.

Waldo Hutchins, for the respondent.

The defendant is engaged in a gross and palpable endeavor, by imitating the marks and labels used by the plaintiffs, to deceive the public and obtain patronage, which would in all probability be attracted to the plaintiffs.

This the defendant is doing, not only by closely imitating the plaintiffs’ marks and labels, but by falsely representing his soap as a Yankee manufacture, and made by persons named Williams, when, in truth, it is made in the City of New York by the defendant, William Johnson.

No words can describe or give a conviction of the fraud the defendant is practising, so clearly as the inspection of the marks and labels, and on that inspection no candid mind will say that the conduct of the defendant is not properly characterized by the language above employed, unless it be thought that, terms of more severe reproach were due to him.

There is no claim by the plaintiffs that soap is not an article composed of well-known ingredients, which any person may combine and see as soap of his manufacture at his pleasure.

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If there are distinguishing peculiarities wherein the plaintiffs’ soap has gained a name or reputation, we do not perceive that such peculiarities lie in any thing but the skill employed in combining the ingredients.

In all the benefits arising from that skill, and the reputation acquired thereby, the plaintiffs should be protected, so far as, consistently with the rights of others, it may be done.

Whatever marks or devices are employed by the plaintiffs, to denote that the soap is made by them, and is combined by the same skill that was employed in the making of soap heretofore made, and sold by them bearing the same marks and devices, are entitled to protection—as, for example, if the plaintiffs had chosen to stamp their soap with some impression having no other mean-' ing than to distinguish their manufacture from that of others, and had given it out as their mark, and, by this discrimination, soap of their manufacture had acquired reputation and sale, they would be plainly entitled to protection.

They have adopted, in reference to their manufacture (of an article which any and every one may manufacture and sell, if he please) a form and size of cake, a particular mode of covering and packing, a combination of three labels on each cake, an exterior handbill upon the box, and have so arranged the whole as to suggest, to any one desiring to purchase their soap, upon an inspection, that the article is theirs, and made by them, like that heretofore made, sold and known as their manufacture.

All this the defendant has copied, with an exactness which is calculated to deceive even the wary, much more to entrap those who are not in the exercise of a rigid scrutiny.

It is true that the defendant has put upon his labels New York as the place of manufacture, and L. Williams & Co., instead of Williams & Brothers, as the manufacturers. But the latter designation imports a falsehood, and tends rather to create than destroy the impression that the soap is made by the plaintiffs; and the use of the word New York, in its obscure printing, if it be read, falls- far short of suggesting to the public that, it is not the soap manufactured by the plaintiffs.

Lott Senator, in Taylor v. Carpenter, (reported 2 Sandf. Chy R. 613,) says, “ Honest competition relies only on the intrinsic merits of the article brought into market, and does not require a resort to

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a false or fraudulent device or token. That certainly cannot deserve the appellation, which studiously gives to the product of pretended superior skill, the name and exact resemblance and imitation of the article with which it professes to compete. A dis guise is not usually assumed for an honest object. It is a mark more characteristic of deception and fraud. It defeats the very end and object contemplated by legitimate competition, the choice to the public to select between the articles sold, and operates as a deception and imposition on the dealer.”

The late Vice-Chancellor Sandford, in Coats v. Holbrook, (2 Sandford, Chy R. 594,) states the general rule to be well settled, as follows: “ A man is not to sell the goods or manufactures of B. under the show or pretence that they are the goods or manufactures of A., who, by superior skill or industry, has established the reputation of his articles in the market. The law will permit no person to practice a deception of that kind, or to use the means which contribute to effect it. He has no right, and he will not be allowed, to use the names, letters, marks or other symbols by which he may palm off upon buyers, as the manufacture of another, the article he is selling, and thereby attract to himself the patronage that, without such deceptive use of such names, etc., would have enured to the benefit of that other person, who first got up or was alone accustomed to use such names, marks, letters or symbols.”

It will be seen that in the cases referred to, as in the present, the imitation enjoined against embraced, not merely names, but a simulated mode of putting up the goods, even including the peculiar spools and wrappers or envelopes employed by the plaintiffs.

The same general principles are stated and illustrated with great force and clearness in the case of The Amoskeag Manufacturing Co. v. Spear, in this Court, (2 Sandf. S. C. Rep. 599,) by Mr. J. (now Ch. J.) Duer, and in reference to the variations in the labels used by the defendant, by the use of the words, New York, as the place, and L. Williams & Co. as the name of the manufacturer, his observations are singularly appropriate: “In order to convey a false mpression to the mind of the public as to the true origin or manufacture of goods, it is not necessary that the imitation of

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an original trade mark shall be exact or perfect. It may be limited and partial. It may embrace variations that a comparison with the original would instantly disclose; yet a resemblance may still exist that was designed to mislead the public, and the effect intended may have been produced. Kor can it be doubted that, whenever this design is apparent, and this effect has followed, an injunction may rightfully be issued, and ought to be issued.” And in that case it is held that a style, as well as a name, of a manufacture is entitled to protection, and its unauthorized use is conclusive evidence of a fraudulent intent.

It is so palpable as to admit of no reasonable doubt that the devices employed by the defendant were calculated and intended by him to secure the benefit of the reputation which the plaintiffs had acquired. 'He is in this respect entitled to no favor. The Court in considering the propriety of enjoining him, pending the litigation, will not feel called upon to be zealous to aid him by refined distinctions so that he may evade the letter and violate the scope and spirit of the adjudged cases.

We have no hesitation in saying, that his acts are a clear infringement of the plaintiffs’ rights. He has copied the form, appearance, color, style, and substantial characteristics in all respects, which distinguish the plaintiffs’ goods.

The form of the present injunction is, perhaps, not that which is best adapted to secure the plaintiffs what they are clearly entitled to, and in this respect the terms of the injunction may be made to conform more clearly to the views which governed this Court in the ease of the Amoskeag Co. v. Spear, above referred to. Whether, upon the taking of the proofs in the cause, it will appear that the particular words, “ Genuine Yankee Soap,” are to be deemed descriptive of the kind of soap, which any one may make and sell by its proper name, or are terms properly designating the plaintiffs’ manufacture, and so to be descriptive of their peculiar skill in making an article already in known and common use by its proper and only generic name, soap, is perhaps not free from doubt. It is quite clear, that so far as it indicates the place of manufacture, it is a fraud on the part of the defendant to use it. Still the case referred to decides, that though it be in this particular a fraud on the part of the defendant, the plaintiffs cannot

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have an injunction unless it shall appear that it designates their own manufacture, and that its use by the defendant operates to the prejudice of a right acquired by them.

Without deciding whether the defendant may or may not use either of the words, “ Genuine" or “Yankee,” in any possible combination, we think it sufficient to say, that he may not use the labels, or devices, or handbills which he is using, nor any other like labels, handbills, or devices, in imitation of, or simulating the labels, devices, or handbills used by the plaintiffs as set forth in the bill of complaint, or any other similar labels, devices, or handbills calculated to deceive the public, or create the belief that the soap he sells is the soap made or sold by the plaintiffs under the name of Genuine Yankee Soap.

If the defendant desires that the injunction order be made to conform to this latter view of the subject, his counsel may prepare and serve an order to that effect, in which case the plaintiffs’ counsel may submit amendments, and the same will be settled on two days’ notice.

The costs of the appeal, $10, will abide the event of the suit.

Ordered accordingly.