is: Second. The alleged violation of the specific trade-mark of the complainant by the device found on the defendant's machine and by the use of the word "Singer." This question is necessarily involved in and determined by the foregoing considerations. There can be no doubt, if the right to use the word "Singer" did not exist, that the plate and the device cast in the leg of the defendant's machine would be a plain infringement of the specific trade-mark of the Singer Company. . . . The right to use the word "Singer," which caused the imitative infringement in the device, being lawful, it is plain that the infringement only resulted from the failure to plainly state along with the use of that word the source of manufacture, and therefore this branch of the question is covered by the same legal principle by which we have determined the other.

It follows, therefore, that the judgment below, which recognized the right of the defendant to make or vend sewing machines in the form in which they were made by him—that is, like unto the machines made upon the principles of the Singer system-with the use of the word "Singer," without a plain and unequivocal indication of the origin of manufacture, was erroneous. Therefore the decree below

must be:

Reversed and the cause remanded, with directions to enter a decree in favor of complainant, with costs, perpetually enjoining the defendant, its agents, servants and representatives: First, from using the word "Singer" or any equivalent thereto, in advertisements in relation to sewing machines, without clearly and unmistakably stating in all said advertisements that the machines are made by the defendant, as distinguished from the sewing machines made by the Singer Manufacturing Company: Second, also perpetually enjoining the defendant from" marking upon sewing machines or upon any plate or device connected therewith or attached thereto the word "Singer," or words or letters equivalent thereto, without clearly and unmistakably specifying in connection therewith that such machines are the product of the defendant or other manufacturer, and therefore not the product of the Singer Manufacturing Company. And the decree so to be entered must also contain a direction for an accounting by the defendant as to any profits which may have been realized by it, because of the wrongful acts by it committed.

APPEAL from the United States Circuit Court of Appeals for the Second Circuit to review a decree which affirmed a decree of the Cir

cuit Court for the Eastern District of New York, enjoining the use of the name of a manufacturer of pills under a secret formula upon pills made by a competitor. Affirmed, May 25, 1911.

The facts are stated in the opinion.

Messrs. George Frederick Hurd, Cornelius W. Wickersham (by special leave), Max J. Kohler, Moses Weill, and Isaac Weill, for appellant. Messrs. John L. Wilkie and Charles W. Gould, for appellee.

Mr. Justice HOLMES delivered the opinion of the Court:

This is a bill by the owner of a proprietary or patent medicine, so called, made according to a secret formula, and known as "Beecham's Pills," to restrain the defendant from using the same name on pills made by him, and trying to appropriate the plaintiff's good will. The plaintiff had a decree in the circuit court, enjoining the defendant from using the word "Beecham" in connection with pills prepared or sold by him, which decree was affirmed by the circuit court of appeals. 86 C. C. A. 623, 159 Fed. 129.

The present appeal is based on two or three different grounds. The first of these is that any one who honestly can discover the formula has a right to use it, to tell the public that he is using it, and for that purpose to employ the only words by which the formula can be identified to the public mind. As to the defendant's having discovered the formula, it is said that if he makes a different or inferior article the burden is on the plaintiff to prove the fact. As to the method adopted by the defendant to advertise his wares, which, apart from other imitations, consists in simply marking them "Beecham's Pills," it is said that the proper name cannot constitute a trademark, and has become the generic designation of the thing. The defendant's use of the name is said to be saved from being unfair by the statement underneath that he made the pills.

"Corruptio optimi pessima." Sound general propositions thus are turned to the support of a conclusion that manifestly should not be reached. We will follow and answer the argument in the order in which we have stated it. If, in a technical sense, the burden of proof is on the plaintiff to prove that the defendant's pills are not made by his formula, there is at least a prima facie presumption of difference, just as in the case of slander there is a presumption that slanderous words are false. A different rule would prevent the owner of a secret process from protecting it except by giving up his secret. Again, when the defendant has to justify using the plaintiff's tradename, the burden is on him. Finally, as the case presents what is a fraud on its face, it is more likely that the defendant is a modern advertiser than that he has discovered the hidden formula of the plaintiff's success.

As to the defendant's method of advertising, he does not simply say that he has the Beecham formula, as in Saxlehner v. Wagner, 216 U. S. 375, but he says that he makes Beecham's pills. The only sense in which "Beecham's Pills" can be said to have become a designation of

the article is that Beecham, so far as appears, is the only man who has made it. But there is nothing generic in the designation. It is in the highest degree individual, and means the producer as much as the product. It has not left the originator, to travel with the goods, as in Chadwick v. Covell, 151 Mass. 190, 195, or come to express character rather than source, as it is admitted sometimes may be the case. Holzapfel's Compositions Co. v. Rahtjen's American Composition Co. 183 U. S. 1, Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598; Thomson v. Winchester, 19 Pick. 214, 216. To call pills Beecham's pills is to call them the plaintiff's pills. The statement that the defendant makes them does not save the fraud. That is not what the public would notice or is intended to notice, and, if it did, its natural interpretation would be that the defendant had bought the original business out and was carrying it on. It would be unfair, even if we could assume, as we cannot, that the defendant uses the plaintiff's formula for his pills. McLean v. Fleming, 96 U. S. 245, 252; Millington v. Fox, 3 Myl. & C. 338, 352; Gilman v. Hunnewell, 122 Mass. 139, 148. . . Decree affirmed.1

1 [PROBLEMS:

...

Ignazio Allegretti and his two sons had been for twenty-five years in the candy business, and since 1880 "Allegretti Chocolate Creams" had been on the market. Giacomo Allegretti, a nephew of Ignazio, came to this country from Italy in 1891, and had been in the employ of his uncle's company for a year next prior to Aug. 18, 1896, when he left them. At that time said firm was located at 131 Wabash Avenue, Chicago. Seven days thereafter, on the 25th day of August, 1896, there appeared in the columns of the Chicago Daily News the following advertisement:

Originator and sole possessor of the genuine process for manufacturing Allegretti's chocolate creams. I wish a partner with capital and services, to start and push this business to its utmost capacity. Address D 72, Daily News."

A few days after the publication of the above, appellant, Giacomo Allegretti, appeared at the hardware store of I. A. Rubel, and they entered into their partnership agreement Sept. 12, 1896. Giacomo contributed nothing to the capital of that firm except "his name" and "his experience." The capital was all contributed by the Rubels. The profits were to be divided equally between the three. The firm name agreed upon was Allegretti & Co." I. A. Rubel testified that they did not adopt the firm name of Rubel & Co., or Allegretti & Rubel "because we did not want to; we simply wanted it Allegretti & Company." Sept. 22, appellants opened a store at 161 State Street, and commenced the name of Allegretti chocolate creams. That store is in the same block fronting State Street that the Allegretti store was in fronting Wabash Avenue (No. 131). Appellants used the same kind of lettering on their show windows and displayed the chocolate creams in the same style and shapes as appeared at the store 131 Wabash Avenue. They purchased some of their chocolate of the same kind and at the same place, used similar boxes and labels, shipped in the same kind of packing boxes as those used by Allegretti Bros. They were not only selling Allegretti chocolate creams at retail in Chicago, but they were selling them at wholesale and shipping them to New York and other places, using, in so doing, similar boxes, labels, and packing boxes to those which had been used by Ignazio Allegretti and Allegretti Bros., and were being used by the

Allegretti Chocolate Cream Co., appellee. Should they be restrained? (1898, Allegretti v. Allegretti Chocolate Cream Co., 177 Ill. 129, 52 N. E. 487.)

B. was a stockholder in the plaintiff company, which made and operated machines designed by him. Then he sold his stock and organized another company having his name, and this company made similar machines and sold them by the same name. May it be restrained? (1909, Bates Mfg. Co. v. Bates Numbering Machine Co., 172 Fed. 892.)

The "Bingham School" was conducted till 1873 by W. and R. Bingham. In 1873 W. B. died, and R. B. continued the school till 1891, W. B.'s widow keeping the boarding department. In 1891 R. B. removed the school to another town, but the widow remained at the original town and started another "Bingham School." May she be enjoined? (1898, Bingham School v. Gray, 122 N. C. 699, 30 S. E. 304.)

The great chemist Liebig allowed the Royal Bavarian Pharmacy and also the plaintiff company to use his name to designate an extract prepared on his formula. The defendant prepared and sold an extract on the same formula, and called it "Liebig's Extract." May this be enjoined? (1900, Liebig's Extract Co. v. Libby, 103 Fed. 87.)

The plaintiff society, after some years' existence as a benefit society in Connecticut, was incorporated. The defendant, having a similar name, was organized first in New York, and then established branches in Connecticut, which were mistaken for the plaintiff, and diverted some of its patronage. May it be restrained? (1910, Daughters of Isabella No. 1 v. National Order of Daughters of Isabella, Conn. 78 Atl. 333.)

The plaintiffs were seven companies in Minneapolis, owning twenty-two flour mills. They used in common the term "Minneapolis" or "Minnesota," with "Patent," to designate their flour, and it had a repute by those names. The defendant had a mill at Milwaukee, and sold his flour under the name "Best Minnesota Patent, Minneapolis, Minn." May this be enjoined? (1897, Pillsbury-Washburn Flour Mills Co. v. Eagle, 82 Fed. 816, 86 Fed. 608.)

The plaintiff company had made watch-movements at Elgin since 1865. The defendant made only watch-cases, but placed on its watch-cases "Elgin Giant,” "Elgin Tiger," the movements being of a different make. May they be restrained? (1898, Elgin Nat'l Watch Co. v. Illinois Watch-Case Co., 89 Fed. 487.)

The plaintiff and others were together in a dramatic association giving plays for money. The association was not incorporated, but had a repute for its name. The defendant organized a corporation, taking as the corporate name the name of the plaintiff's association and diverting the plaintiff's profits. May this be enjoined? (1899, Aiello v. Montecalfo, 21 R. I. 496, 44 Atl. 931.)

An Irishman named Dunch had his name changed by law to Pinet, in 1892. He then began to manufacture shoes in competition with the plaintiff Pinet. May he be restrained from using the name Pinet at all? (1898, F. Pinet & Compagnie v. Maison Louis Pinet, 1 Ch. 179.)

The plaintiff company has a patent of 1901 for a vacuum cleaner, and uses the registered name "British Vacuum Cleaner Co." The defendant has a patent of 1904 and wishes to use the name "New Vacuum Cleaner Co." In view of the registration of the plaintiff's name, may the defendant be restrained from using the term "Vacuum Cleaner" in its name? (British V. C. Co. v. New V. C. Co., 1907, 1 Ch. 312.)

The Fish Brothers had made wagons, which became well known as the "Fish Wagons." Their firm name was "Fish Brothers Wagon Co." They sold the good will of the business to the defendant, and then proceeded to make wagons again, calling their wagons "Fish Wagon.” May they be restrained? (1898, Fish Bros. Wagon Co. v. Fish Bros. Mfg. Co., 87 Fed. 203.)

The plaintiff sold shoes, called the "Washington Shoe." The defendants

manufactured the shoes for him. Then he went into the defendant's employment, and granted them the use of his trademark. Then he left their employment and sold shoes again as the "Washington Shoe." The defendants kept on using the same mark for shoes made and sold by them. May they be restrained? (1909, Nelson v. Winchell, 203 Mass. 75, 89 N. E. 180.)

The plaintiff manufactured drill chucks under patents. The patents expired. The defendant then proceeded to manufacture chucks exactly similar, and to place on them the various size numerals which had been used by the plaintiff, and also the same names, "Little Giant Improved," etc. The plaintiff seeks to restrain this. May he? (Westcott Chuck Co. v. Oneida N. Chuck Co. 1910, N. Y.-, 92 N. E. 639.)

[ESSAYS:

H. C. McCollom, "Protection of Corporate Names against Unfair Competition." (C. L. R., VI, 244.)

W. L. Putnam, "Unfair Competition by the Deceptive Use of One's Own Name." (H. L. R., XII, 243.)

Edward S. Rogers, "Comments on the Modern Law of Unfair Trade." (I. L. R., III, 551.)

Wallace R. Lane, "The Transfer of Trademarks and Trade Names." (I. L. R., VI, 46.)

NOTES:

"When the imitation of one man's goods by another transgresses the rule against unfair trade competition." (A. L. R., LVII, 246.)

"Effects of the sale of good will." (A. L. R., LIX, 397.) "Trade-names: limitations on the right to protection." (C. L. R., IV, 365, 377.) "Trade-mark and names: composite geographical and personal names.' (C. L. R. VI, 276.)

"Geographical name: identification with building and business." (C. L. R., VII, 72.)

"Individual trade name: use by corporation." (C. L. R., VII, 629.) "Right to solicit customers of the old firm as affected by a sale of the good will." (C. L. R., X, 649.)

"Geographical names." (H. L. R., XII, 349; XIII, 152.)

"Marks and names subject to ownership: rights of a person to trade in his own name. (H. L. R., XVIII, 56.)

"Marks and names subject to ownership: geographical names." (H. L. R., XVIII, 234.)

"Marks and names subject to ownership: personal names." (H. L. R., XVIII, 318.)

"Trade-names: protection in equity: extent of." (H. L. R., XIX, 537.) "Marks and names subject of ownership: personal names: right of a person to trade in his own name." (H. L. R., XIX, 141.) "Trade-marks and trade-names Situs of property right."

XXIV, 162.)

"Voluntary associations - right to exclusive use of name." XXIV, 412.)

(H. L. R.,

(H. L. R.,

See also PROBLEMS, ESSAYS, and NOTES cited in the footnote to No. 172, ante, Vol. I.]