CHAPTER II

TRADE-NAMES

§ 22. Distinction between Trade-Marks and TradeNames. The distinction between a trade-mark and a tradename, is this: in the one case there is a vendible commodity; in the other there is not. In the one case the mark is attached to the vendible commodity; in the other it is unattached to anything. A trade-name is perhaps accurately to be defined as part of the good will of a business, and that is protected in equity upon the same fundamental principle that protects the use of a trade-mark. A few examples will perhaps clearly illustrate the text.

The principle has been invoked most generally in the cases of hotels, omnibuses, mineral springs, places of amusement, newspapers, etc., but it is applicable to the good will of every business where one has acquired a right to the use of a name. Thus, one Howard, was the proprietor of a noted hotel in the city of New York called the "Irving House", which became known indifferently as the "Irving House' and "Irving Hotel" and was in its time one of the most noted hotels in that city. Another man opened a hotel in the same place which he called the "Irving Hotel" and the court enjoined him from the use of the name "Irving" as applied to a hotel in that city. This was a pioneer case and has been generally followed.

So also with respect to omnibuses. Anybody had been at liberty to run a line of omnibuses and inscribe them "London Conveyance Company." There was, in fact, no such corporation. But when a rival adopted the inscription, he was enjoined because it tended to make passengers believe 1 Howard v. Henriques, 3 Sandf. (S. C.) 725.

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they were in the coaches of one proprietor when they were, in fact, in those of another.2

The proprietor of a hotel may authorize by contract the use of the hotel name on the coaches of a party, on the badges of his drivers, etc.; and although any coachman has the right to compete in carrying passengers, he must abstain from inscriptions used by such party.3

So the purchase of a bakery together with its good will, was protected against the former proprietor in the use of the name, though it was the latter's personal name, and he had a bakery. The name in this case was a token of the good will which had been bought, and the sole significance of the seller so resuming it was that thereby as a borrower he was disguising himself, even though by using his own

name.

So with respect to places of amusement. Christy's Minstrels was the first company of Negro minstrels in this country. A rival company calling itself Christy's Minstrels was enjoined from the use of that name, the court holding that the public may not even be amused under false pretenses.5

In the case of the Bethesda Spring, the court said that it made no difference, if it were a fact, that the Glenn Bethesda Water exactly corresponded in all its constituents to the Bethesda water. If the public wanted a particular water, whether it was better or worse, they had a right to their choice, and the owner of that spring had a right to be protected in the particular mark or name which he had adopted.

This principle has been universally applied with respect to mineral springs. In the case of Congress & Empire Spring Co. v. High Rock Congress Spring Co., 45 N. Y. 291, the defendant was enjoined against using the word "Congress", which had been applied since 1792 to the water of a particular spring. The court did not distinguish the water

2 Mott v. Morgan, 2 Keen 213.

3 Marsh v. Billings, 7 Cush. 322.

Howe v. Searing, 19 How. Pr. Rep. 14.

5 12 How. Pr. Rep. 77.

6 Dunbar v. Glenn, 24 Wis. 118.

as to its properties, and the pretense that a natural product was not within the principle of an artificial one as to trademark was impressively disallowed, saying:

"It is not to trust to our common apprehension of things to believe that one who wishes for the medicinal water which he used before, or which he has heard of as coming from the Congress spring, does not mean the specific water when he inquires for it by its specific name. And it is this which is the short phrase between the buyer and seller that indicates the wish to buy and the power to sell water from that origin, that place, of that ownership."

name

of

Of like tenor are the following cases:

Carlsbad Salts, Carlsbad v. Thackeray, 57 Fed. 18. Apollinaris Water, Apollinaris Co. v. Norrish, L. T. (N. S.) 242.

Clysmic Spring, Hill v. Lockwood, 32 Fed. 389.

Upon the same principle the titles of newspapers, titles

songs, etc., have been protected; and all upon the ground that the good will which has been established will not be permitted to be injured by one who is seeking to clothe himself in another's dress and to palm off upon the public his goods, or his entertainment, or his business, as that of another.

CHAPTER III

UNFAIR TRADE

§ 23. Doctrine of Unfair Trade. It has been noted that one may not appropriate to one's exclusive use as a trademark a geographical name, a generic name, a proper name, a particular color, or a special form of package. Yet, in the growth of the law the principle has become established that equity will protect the public from imposition in respect to the use of such things as may not be exclusively appropriated as trade-marks.

The principle underlying the doctrine held by courts of equity is well settled in Croft v. Day, 7 Beav. 84.

"No one has a right to dress himself in colors, or adopt, or bear symbols, to which he has no particular or exclusive right and thereby personate another person for the purpose of inducing the public to suppose either that he is that person, or that he is connected with and selling the manufacture of such person while in reality he is selling his own."

Disguise is the principle. Disguise defeats the very end and object of legitimate competition, which is the free choice of the public. One may not legally use means, whether marks or other indicia, or even his own name with the purpose and to the end of selling his goods as the goods of another. If such means tend to attract to himself the trade that would have flowed to the person previously accustomed to use them, their use will be restrained. The relief is afforded upon the ground of fraud, which, in turn, rests upon the hypothesis that the party proceeded against had deliberately sought to deceive the public and to defraud another by palming off his own goods as the goods of that

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other. This may be sought to be accomplished by the use of a proper name, or by a geographical name, or by a particular color, or a particular form. If it can be established that such use is resorted to for the purpose of defrauding the public and of injuring another, equity will interpose its arm to prevent the fraud and to compel the exercise of honesty in trade.

This doctrine is distinguished from the law of trademarks in this, that it does not involve necessarily the question of the exclusive right of another to the use of the name, symbol, or device. A word may be purely generic or descriptive, and so not capable of becoming an arbitrary trade-mark, and yet there may be an unfair use of such word or symbol which will constitute unfair competition. Thus, a proper or geographical name is not the subject of a trademark, but may be so used by another unfairly, producing confusion of goods, and so come under the condemnation of the law of unfair trade and its use will be enjoined. The right to the use of an arbitrary name or device as indicia of origin is protected on the ground of a legal right to its use by the person appropriating it. The doctrine of unfair competition is lodged upon the theory of the protection of the public whose rights are infringed or jeopardized by the confusion of goods produced by unfair methods of trade as well as upon the right of a complainant to enjoy the good will of a trade built up by his efforts and sought to be taken from him by unfair methods. Whether such confusion of goods has been, or, is likely to be, produced by the acts charged, is a question of fact to be resolved either by evidence of actual sales of the one product for the other, of actual mistake of one for the other, of fraudulent palming off of one for the other, or, on the other hand, failing such evidence, by comparison of the two brands to determine whether the one can be readily mistaken for the other, even by the inattentive and unobserving purchaser of the article at retail.

The principle is at this day thoroughly established, and a few illustrations of the application of the doctrine will