Brown Chemical Co v. Meyer

• Decision Date: 06 April 1891
• Citation: 11 S.Ct. 625,35 L.Ed. 247,139 U.S. 540
• Parties: BROWN CHEMICAL CO. v. MEYER et al
• Court: U.S. Supreme Court

139 U.S. 540

11 S.Ct. 625

35 L.Ed. 247

BROWN CHEMICAL CO. v. MEYER et al.

April 6, 1891.

This was a suit in equity instituted by the Brown Chemical Company, a corporation organized under the laws of Maryland, against the firm of Meyer Bros. & Co., of St. Louis, in the state of Missouri, to restrain an unfair competition in trade. The bill averred, in substance, that plaintiff had been engaged in the preparation of a certain medicine, which had acquired a high reputation as a remedy for the prevention and cure of many diseases. That in 1879 it devised and used a certain label, consisting of four sides or panels, the front one of which bore the representation of a lion's head, above which was printed the word 'Brown's.' In the mouth of the lion was suspended road or bar, having depenent therefrom a banner or streamer, bearing the words 'Iron Bitters,' printed in large, conspicuous letters, and separated by a circular design occupying the central field of the banner. The three remaining panels had also printed thereon the words 'Brown's Iron Bitters,' in various places, and arranged as shown in the label. That since plaintiff acquired its right in the premises the defendants fraudulently offered and sold medicine put up in bottles, to which labels were attached, containing the words 'Brown's Iron Tonic,' which were intended to indicate that the medicine contained in said bottles was that prepared by the plaintiff, which said preparation the defendants had fraudulently caused to be offered and sold as and for plaintiff's preparation. And that large quantities of 'Brown's Iron Tonic' had been sold as and for plaintiff's 'Brown's Iron Bitters,' and frequently mistaken therefor.

The answer admitted most of the allegations of the bill so far as they related to the preparation and sale of Brown's iron bitters, denied any fraudulent intent with repect to defendants' own label, and averred that in the summer of 1881 one E. L. Brown, in connection with one C. J. Lincoln, commenced putting up and selling Brown's iron tonic at Little Rock, Ark., as a wholly distinct preparation from Brown's iron bitters, and with no intention or purpose of imitating plaintiff's preparation, which at that time had not been advertised or sold to any great extent; that subsequently Brown sold out his interest in said preparation to Lincoln, who has since that time been putting up said medicine, and offering it to the public in cartons and bottles wholly different in size, color, and appearance from plaintiff's bottles, and with labels attached to the bottles wholly different in size, color, appearance, and details from plaintiff's labels, and inclosed in wrappers very different from the cartons of Brown's iron bitters, so that the public could not be misled or the plaintiff injured.

The case as made by the respective parties did not differ materially from their pleadings.

In explanation of the manner in which defendants' preparation originated, Brown swore that from August, 1869, to May 1, 1881, he was traveling salesman for a Louisville wholesale drug-house, and during that time traveled extensively in the south-west, and became generally known to the trade. In May, 1881, he formed a partnership with C. J. Lincoln, of Little Rock, which was dissolved in December, 1883. The firm name was part of the time C. J. Lincoln, and part of the time Lincoln & Brown. Brown did not personally go to Little Rock until December, 1881, when, following out a preconceived notion, he instructed the chemist of the firm to prepare a for- mula, and they devised a label and began to advertise the preparation through the newspapers and traveling salesmen. They sold some at retail in 1881, of which no record was kept. In the spring of 1882 they began to make sales to the trade. It does not appear the they knew of Brown's iron bitters, or that they had seen it until after they had determined upon their own remedy and its label. The opinion of the circuit court dismissing the bill is reported in 31 Fed. Rep. 453.

Rowland Cox, for appellant.

J. E. McKeighan, for appellees.

Mr. Justice BROWN, after stating the facts as above, delivered the opinion of the court.

The general proposition is well established that words which are merely descriptive of the character, qualtities, or composition of an article, or of the place where it is manufactured or produced, cannot be monopolized as a trade-mark, (Canal Co. v. Clark, 13 Wall. 311; Manufacturing Co. v. Trainer, 101 U. S. 51; Caswell v. Davis, 58 N. Y. 231; Thomson v. Winchester, 19 Pick. 214; Raggett v. Findlater, L. R. 17 Eq. 29;) and we think the words 'Iron Bitters' are so far indicative of the ingredients, characteristics, and purposes of the plaintiff's preparation as to fall within the scope of these decision. I t is hardly necessary to say that an ordinary surname cannot be appropriated as a trade-mark by any one person as against others of the same name, who are using it for a legitimate purpose; although cases are not wanting of injunctions issued to restrain the use even of one's own name where a fraud upon another is manifestly intended, or where he has assigned or parted with his right to use it. McLean v. Fleming, 96 U. S. 245; Goodyear Co. v. Goodyear Rubber Co., 128 U. S. 598, 9 Sup. Ct. Rep. 166; Cement Co. v. Le Page, 147 Mass. 206, 17 N. E. Rep. 304; Hoxie v. Chaney, 143 Mass. 592, 10 N. E. Rep. 713. The distinction between the lawful and the unlawful use of one's own name is illustrated in the case of Croft v. Day, 7 Beav. 84, in which the successor of Day and Martin, originators of the famous blacking, filed a bill to enjoin the defendant Day, a nephew of the elder Day, who had commenced business as a blacking maker, and was using a label of the same color and size, with the letters arranged precisely the same and with the same name, 'Day and Martin,' on the boxes. The defendant was enjoined, the court placing its decision, not upon any peculiar or exclusive right that the plaintiff had to use the name of Day and Martin, but upon the fact of the defendant using the names with certain circumstances, and in a manner calculated to mislead the public. The court observed: 'He [the defendant] has a right to carry on the business of a blacking manufacturer honestly and fairly. He has a right to the use of his own name. I will not do anything to deprive him of that or any other name calculated to benefit himself in an honest way, but I must prevent him from suing it in such a way as to deceive and defraud the public.' In Holloway v. Holloway, 13 Beav. 209, Thomas Holloway had for many years made and sold pills and ointments under the label 'Holloway's Pills and Ointments.' His brother Henry Holloway subsequently manufactured pills and ointment with the same designation. The pillboxes and pots (of ointment) of the latter were similar in form to, and were proven to have been copied from, those of the former. The master of the rolls in granting the injunction said: 'The defendant's name being Holloway, he has a right to constitute himself a vendor of Holloway's pills and ointment, and I do not intend to say anything tending to abridge any such right. But he has no right to do so with such additions to his own name as to deceive the public, and make them believe that he is selling the plaintiff's pills and ointments. The evidence in this case clearly proves that pills and ointments have been sold by the defendant, marked in such a manner that persons have purchased them of the defendant, believing that they were buying goods of the plaintiff.' The principle of this case was approved by this court in the case of McLean v. Fleming, 96 U. S. 245, in which a person was enjoined from using his own name in connection with certain pills, upon the ground that they were put up in such form that purchasers exercising ordinary...