32 F. 94 (D.N.J. 1887), Celluloid Mfg. Co. v. Cellonite Mfg. Co.

Citation:32 F. 94
Case Date:July 12, 1887
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit

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32 F. 94 (D.N.J. 1887)




United States Circuit Court, D. New Jersey.

July 12, 1887

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who formed the defendant company had previously been engaged in the manufacture of pyroxyline compounds under the name of 'pasbosene,' 'lignoid,' 'chrolithion,' etc., but selected the new name, 'cellonite,' in order to trade upon the complainant's reputation, and to sell its product as the complainant's, and intends to stamp its goods with the word 'cellonite,' in imitation of the stamp on complainant's goods, in order to sell them as complainant's manufacture. The bill prays an injunction to prevent the defendant from using the word 'cellonite,' or any imitation of the word 'celluloid.' The allegations of the bill are verified by affidavits and exhibits.

The defendant has filed an answer, in which it denies that the complainant has any right to the exclusive use of the word 'celluloid;' alleges that many companies use it in their names, as 'Celluloid Brush Company,' 'Celluloid Collar & Cuff Company,' etc., which have been allowed by complainant without objection. It admits the selection and use of the word by the complainant, but denies any exclusive right to the use of it, because it has become a part of the English language to designate the substance celluloid, and the impression of the word on the articles manufactured by complainant merely indicates the substance of which they are composed. It denies that the word 'cellonite' was adopted for the purpose of imitating the name of complainant, or the name stamped on the complainant's goods. It avers that the word was adopted as far back as 1883, and has been continuously used ever since, not to imitate the word 'celluloid,' but selected as better describing the exact nature of the pyroxyline compound used by the defendant; the same being a compound of the well-known substances cellulose and nitre, 'cellonite' being merely a compound derivative of those two words; that the defendant abandoned the use of the words 'pasbosene,' 'lignoid,' etc., because those words gave no information as to the chemical constituents of the compounds designated by them. It alleges that it has for four years been engaged in manufacturing and selling goods marked 'Cellonite,' and until now no attempt has been made to interfere with it. To show that the word 'celluloid' is a word of common use, the answer cites various patents and books, (but all subsequent to 1873,) also the rules of the patent-office as to the classes of inventions, in which one of the sub-classes is 'Celluloid.'

The only verification of the answer is the oath of J. R. France, an officer of the company, who swears that the contents are true, so far as they are within his knowledge; and, so far as stated on information and belief, he believes them to be true.

The answer virtually admits that the corporators of the defendant had been engaged, before the formation of the defendant company, in the same manufacture, and had called their produce, 'pasbosene,' 'lignoid,' etc.; and that they adopted the word 'cellonite,' instead of those designated, for the reason, as the answer says, that it is more expressive of the constituents, cellulose and nitre. This is a somewhat singular explanation. The termination 'ite,' in chemistry, has a technical application nothing to do with the word 'nitre;' and, notwithstanding

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the denial of the answer, (which, however, cannot be regarded as verified by oath,) the inference strongly presses itself that the name was adopted on account of its similarity to 'celluloid,' as the complainant charges.

In alleging that the word 'cellonite' has been used by the defendant since 1883, the defendant, which was not incorporated until May, 1886, identifies itself with the previous association, shown by the affidavits to have been called the 'Merchants' Manufacturing Company,' composed of the same corporators, who abandoned the old name, and assumed the new one, for some purpose or other. The explanation given for so doing is not entirely satisfactory. Here are two facts standing side by side: First, the fact that the Celluloid Manufacturing Company,-- an old, well-established concern,-- is doing a large and prosperous business, with a good-will resulting from many years of successful effort, and calls the product of its manufacture 'celluloid,' which has become such a popular designation that, as the defendant says, it has become incorporated in the English language; secondly, the fact that the Merchants' Manufacturing Company, which produces substantially the same article, and calls it by different names, 'pasbosene,' 'lignoid,' etc., (with what success we are not told,) suddenly changes its name to that of Cellonite Manufacturing Company, and calls its produce 'cellonite.' It will take a great deal of explanation to convince any man of ordinary business experience that this change of name was not adopted for the purpose of imitating that of the old, successful company.

It is the...

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