92 F. 605 (W.D.Mo. 1899), Centaur Co. v. Marshall

Citation:92 F. 605
Party Name:CENTAUR CO. v. MARSHALL et al.
Case Date:February 06, 1899
Court:United States Courts of Appeals, Court of Appeals for the Eighth Circuit
 
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Page 605

92 F. 605 (W.D.Mo. 1899)

CENTAUR CO.

v.

MARSHALL et al.

United States Circuit Court, W.D. Missouri, Western Division.

February 6, 1899

Henry Wollman and Benj. F. Wollman, for defendants.

PHILIPS, District Judge.

This case has been submitted on application for a temporary injunction. The bill was drawn with a double aspect: First, to restrain the defendants from using the name 'Castoria' in their business of manufacturing and putting on the market the medicine or drug known by such name, on the ground that the complainant has acquired a trade-mark right to said name; and, second, that by reason of their imitation of the wrapper, label, and other indicia of complainant's manner of preparing the bottles containing the medicine for market, the defendants are engaged in unfair competition with the complainant's business.

It has been expressly ruled by the court of appeals of this circuit (opinion by Mr. Justice Brewer), in the case of This Complainant v. Heinsfurter, 28 C.C.A. 581, 84 F. 955, that, the patent under

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which the medicine known by the name of 'Castoria' was manufactured and sold having expired in 1885, the name which was descriptive of the article became public property, and that no trade-mark right exists therein, or could be acquired by subsequent use. It was further held that the right to manufacture Castoria, and to use the name in selling it, are also public property. This proposition was definitely settled by the supreme court in Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 16 Sup.Ct. 1002. Mr. Justice White, who, said:

'It is self-evident that on the expiration of a patent the monopoly created by it ceases to exist, and the right to make the same, formerly covered by the patent, becomes public property. It is upon this condition that the patent is granted. It follows, as a matter of course, that on the termination of the patent there passes to the public the right to make the machine in the form in which it was constructed during the patent. * * * It equally follows, from the cessation of the monopoly and the falling of the patented device into the domain of things public, that along with the public ownership of the device there must also necessarily pass to the public the generic designation of the thing which has arisen during the monopoly, in consequence of the designation having been acquiesced in by the owner, either tacitly, by accepting the benefits of the monopoly, or expressly, by having so connected the name with the machine as to lend countenance to the resulting dedication. To say otherwise would be to hold that, although the public had acquired the device covered by the patent, yet the owner of the patent, or the manufacturer of the patented thing, had retained the designated name, which was essentially necessary to vest the public with the full enjoyment of what which had become theirs by the disappearance of the monopoly. In other words, that the patentee or manufacturer could take the benefit and advantage of the patent, upon the condition that at its termination the monopoly should cease, and yet, when the end was reached, disregard the public dedication, and practically perpetuate indefinitely an exclusive right. The public having the right on the expiration of the patent to make the patented article, and to use its generic name to restrict this use, either by preventing its being placed upon the articles when manufactured, or by using it in advertisements of circulars, would be to admit the right, and at the same time destroy it. It follows, then, that the right to use the name in every form passes to the public with the dedication resulting from the expiration of the patent.'

With the evident purpose to avoid, if possible, the effect of this ruling, the bill of complaint ingeniously asserts that Dr. Pitcher, the patentee, and the complainant holding under him through assignments, did not strictly follow the formula of the prescription in the patent, as to one ingredient, and therefore the complainant has acquired, by long usage, a trade-mark in the word 'Castoria,' and that all other persons ought to be denied its use under any and all circumstances and conditions. This is a remarkable position for this complainant now to assume in a court of equity. During the life of the patent, it and its predecessors in right have enjoyed the protection of the patent, warning off all intruders, up to the adjudication against the complainant in the Heinsfurter Case, decided in January, 1898. In that case the complainant alleged that its right to such exclusive use was covered by the Pitcher patent, 'numbered 77,758, granted to him for a composition to be employed as a cathartic, or substitution for castor oil,' etc. When the patent was obtained the same formula was upon the article as now. And, before the trade-mark act was declared unconstitutional, the predecessor of the complainant, in the right by assignment to said patented article, in 1883, made application to have the Trade-mark of the word 'Castoria' registered; and

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in that statement it was represented that the applicant had used the same in business since 1878, when she purchased the preparation or combination to which the same is applicable, 'by deed of assignment of Demas B. Dewey, then owner of the same by assignment from Samuel Pitcher, who used the same before May 12, 1868, and to whom were issued letters patent No. 77,758, dated May 12, 1868, covering...

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