Marshall v. Pinkham

• Citation: 9 N.W. 615,52 Wis. 572
• Parties: MARSHALL AND ANOTHER v. PINKHAM.
• Decision Date: 22 June 1881
• Court: United States State Supreme Court of Wisconsin

52 Wis. 572

9 N.W. 615

MARSHALL AND ANOTHER

v.PINKHAM.

Supreme Court of Wisconsin.

Filed June 22, 1881.

Appeal from circuit court, Fond du Lac county.

It is very difficult, if not impossible, to gather from the printed case, or bill of exceptions, or briefs of counsel, an accurate history of the several labels in question. It would seem, however, that about 1857 Samuel Marshall and his wife, Mary J. Marshall, the parents of the plaintiff Charles H., resided at Fond du Lac with seven children, and in rather straitened circumstances. Three of the children were boys--John W., Samuel A., and Charles H.; and four were daughters, all of whom were subsequently married. One, Sarah G., became Mrs. Warren, then Mrs. Benson; another, Mrs. Harris; another, Mrs. Haidee A. Robinson; and another, Mrs. Julia T. Smith. Mrs. Smith testified that she was the youngest one of the family and 35 years of age, and lived with her father until 1868, when she was married; from which we may infer that she was born in 1844 or '5, and left her father's when she was about 23. Charles H. testified that he was born in 1842, and went into business with his father when he was 21, which was not till 1863; from which we may infer that he was only 15 years old in 1857, and that all his brothers and sisters, except Julia and, perhaps, another, were older than himself. About 1857 the old gentleman, Samuel Marshall, seems to have had a secret recipe for a mixture or compound constituting a certain liniment, which he claimed would cure rheumatism and various other diseases, and which he occasionally made up and gave to such persons as were willing to try it. There is no evidence that he was the inventor or originator of the recipe, and the inference is that he was not. For a time, while in the employ of others, he sold it as he had opportunity, without any label, but only a slip of paper attached with the word “liniment” written upon it. Soon after, he commenced peddling it in a small basket, and on his second trip John W. went out with him, and subsequently alone. Also his son-in-laws, Warren, Harris, and Robinson, and his son Samuel A., made and sold quantities of it, with his knowledge and consent. It appears, from some of the witnesses, that his first label was “Marshall's Liniment; put up by Marshall & Son, 14, 15, and 16 Oak street,” Fond du Lac.

It seems that the plaintiff Charles H., before he became of age, worked with the others in putting up and peddling out this liniment. In 1863, and on Charles H. becoming 21 years of age, he went into the business with or under his father, in what he terms the “partnership” between his father, his brother John W., and himself, and which lasted, according to his statement, until the latter part of 1868, or the forepart of 1869, when it was dissolved or broken up. It is a little difficult to understand just what Charles H. meant by “partnership.” He testifies: “We were interested in the labels, and we bought stuff together; that was as far as the partnership extended. Each one made and labeled and sold what he could, and pocketed the proceeds; but when we ordered a lot of labels, they were paid for together, and lots of other stock we bought together--we bought it together and divided. We all had an equal right to manufacture, sell, and label it--my father and my brother and me.” He further testified that about the time they dissolved, in 1868-9, “we began to have some orders, and he (father) had the letter-box and took the orders and filed them, and that was the end of the partnership; he didn't give any share of the profits to us two. After we dissolved, for a little while, I was speculating around, at nothing in particular; that was only for a short time, from three to six months. Then I went back into the patent-medicine business with my wife; that is, I did'nt go into it myself, but I went to selling it. After the dissolution, I think John W. sold for the old gentleman a little while, and then he moved away--left the country.”

Each of the children seems to have known the secret--the recipe or formula for making the liniment--but the labels seem to have been obtained mostly from the old gentleman, who permitted each and all the children to make the liniment and sell the same from house to house. Charles H. testified that the old gentleman barred him out, and would not let anybody use his labels, after he stopped the partnership, because he wouldn't let anybody have any of the orders that came in, and that dissolved the firm. It appears from other testimony that each peddled and sold the liniment on different routes; that they ran into each other's custom, and took customers the one from the other, and then there arose a dispute and controversy between them, and that John W. and Charles H. then undertook to form a partnership with their father and mother, putting all their father's and mother's property into the firm, but that the mother refused to execute the paper and it fell through, and then they finally divided between themselves certain routes, each reserving customers not on their own regular routes, and subsequently traded some of their customers and exchanged a corresponding number of their labels; that the label used had been changed by the old gentleman to “Old Dr. S. Marshall's Celebrated Liniment,” with certain other words descriptive of the liniment and a certain vignette of a horse's head; and that, long prior to the making of his will, hereinafter mentioned, he gave to each of his children, and especially Mrs. Sarah G. Benson and Haidee Ann Robinson, under whom the defendant claims to act, the secret recipe or formula for making the liniment, and the right to manufacture and sell the same, with said label or labels upon it as a trade-mark, and that they had severally, with his knowledge and consent, from time to time made such sales with such labels or trade-marks thereon, and their own address at the bottom; but Charles H. testified that such change in the label was made shortly after such dissolution, and that the horse's head was never used while they were in partnership, and that he never used the horse's-head label himself; that he used the label “Marshall's Rheumatic Liniment” about two or three years before his father's death, but did not use the label “Old Dr. S. Marshall's Celebrated Liniment” before his death. It also appears that Samuel Marshall died July 6, 1870; that his widow, Mary J. Marshall, continued to manufacture said liniment and cause the same, with said label affixed, to be sold upon the routes last occupied by her husband until the spring of 1872, when Charles H. bought out the material and paraphernalia belonging to his mother's business and gave therefor his note for $400.

About 1877 the mother, Mary J. Marshall, died; and subsequently it was ascertained that her husband, Samuel Marshall, had, some time during the last two years of his life, executed a last will and testament, but which had been lost, and which was established as a last will and admitted to probate, February 26, 1880, and in and by which he gave to his wife, in general terms, all his property, but named no executor or executrix, and there is nothing to show that his estate was ever settled, or that any administrator of his estate was ever appointed. It also appears that the plaintiffs manufactured and sold such liniment, with a label affixed, describing it as “Marshall's Rheumatic Liniment,” and other descriptive words, and closing with, “All orders directed to M. W. Marshall, P. O. box 70, Fond du Lac, Wisconsin,” being Exhibit A, from 1869 to the time of suit. This suit is to restrain the defendant, claiming under a right or license from Mrs. Benson and Mrs. Robinson, from manufacturing the same liniment, and selling the same, with a label affixed, describing it as “Old Dr. S. Marshall's Celebrated Liniment,” and other descriptive words, and a certain vignette of a horse's head, and closing with “Sterling Medicine Co., Proprietors, Fond du Lac, Wisconsin,” being exhibit G.

After the trial the court found, in effect, that the plaintiffs had no exclusive right to the use of the label or trade-mark, and that the defendant was entitled to judgment dismissing the complaint, which was accordingly entered, and from which the plaintiffs, Charles H. and wife, bring this appeal.Shepard & Shepard and S. U. Pinney, for appellants.

Geo. E. Sutherland, for respondent.

CASSODAY, J.

A trade-mark performs a distinctive office. As such its use may be protected by the courts. But this does not authorize a monopoly upon fragments of the language, nor the exclusive appropriation of words in common use descriptive of common objects and qualities. It has often been decided that words which are merely descriptive of kind, nature, style, charracter, or quality of the goods or article sold cannot be exclusively appropriated and protected as a trade-mark.

In Caswell v. Davis, 58 N. Y. 223, it was held that “words or phrases in common use, and which indicate the character, kind, quality, and composition of an article of manufacture, cannot be appropriated by the manufacturer exclusively to his own use as a trade-mark.” Accordingly, where the plaintiffs prepared a medicine, the principle ingredients of which were iron, phosphorus, and elixir of calisaya bark, to which they gave the name of “Ferro-Phosphorated Elixir of Calisaya Bark,” and so labelled the bottles containing it, the court “held that this phrase could not be protected as a trade-mark.” For the same reason it was held in Taylor v. Gillies, 59 N. Y. 331, that as the words “gold medal” indicated quality, and that in the same competitive exhibition a gold medal had been awarded to the article for its excellence, the use of them could not be appropriated as a trade-mark. So it was held that “Lackawanna coal” was descriptive, and could not be appropriated as a trade-mark. Canal Co. v. Clark, 13 Wall. 311. See, also, Perry v. Truffit, 6...