California Fig-Syrup Co. v. Putnam

• Decision Date: 06 March 1895
• Docket Number: 204.
• Parties: CALIFORNIA FIG-SYRUP CO. v. PUTNAM et al.
• Court: U.S. District Court — District of Massachusetts

66 F. 750

CALIFORNIA FIG-SYRUP CO. v. PUTNAM et al.

No. 204.

United States Circuit Court, D. Massachusetts.

March 6, 1895

R. A Bakewell, Paul Bakewell, and Louis D. Brandeis, for complainant.

Fish Richardson & Storrow, for defendants.

COLT Circuit Judge.

The plaintiff is the proprietor and manufacturer of a liquid laxative compound called 'Syrup of Figs'. The defendants manufacture and sell a laxative medicine which they term 'Fig Syrup'. The plaintiff claims a trade-mark in the words 'Syrup of Figs' or 'Fig Syrup', and seeks to enjoin their use by the defendants. There is no evidence that the defendants have imitated the plaintiff's labels or packages except in this particular. If this preparation is in fact a syrup of figs, the words are clearly descriptive, and not the proper subject of a trade-mark. Upon this point the contention of the plaintiff is that its preparation is not a syrup of figs, since it contains only a very small percentage of the juice of the fig; that the laxative ingredient in it is senna; that while the fig in the form of fruit may have laxative properties arising from the seeds and skin, the fig in the form of a syrup is no more laxative than any other fruit syrup; that it follows from these facts that these words, as applied to this compound, are not descriptive, but purely fanciful, and therefore constitute a valid trade-mark. The evidence shows that the compound is not a syrup of figs. It might more properly be termed a 'syrup of senna', if the words were intended to be descriptive of the article. But, assuming this is not a syrup of figs, we are met with the inquiry whether these words, as applied to this preparation are not deceptive. The label on every bottle reads as follows:

'SYRUP OF FIGS.

The California Liquid Fruit Remedy.

Gentle and Effective.'

On the sides of each bottle are blown the words, 'Syrup of Figs', and on the back the words, 'California Fig Syrup Co., San Francisco Cal.' On the face of every package is a picture of a branch of a fig tree with the hanging fruit, surrounded with the words, 'California Fig Syrup, San Francisco, Cal. '; and beneath this the words:

'SYRUP OF FIGS

Presents in the Most Elegant Form the

Laxative and Nutritious Juice of the Figs of California.'

The advertisements are headed with this picture:

(Image Omitted)

Thus we see that the leading representation on the labels, packages, and in the advertisements of this preparation is that it is a laxative fruit syrup made from the juice of the California fig. Mr. Winslow, a witness for the plaintiff, fairly expresses the public idea of this compound in reply to the following question:

'What did you suppose 'Syrup of Figs' was composed of when you purchased your first bottle? A. I supposed it was made from the natural fruit. It called for the fruit.'

The popularity of this medicine arises from the belief in the mind of the ordinary purchaser that he is buying a laxative compound, the essential ingredient of which is the California fig, whereas, in fact, he is buying a medicine the active property of which is senna. The ethical principle on which the law of trade-marks is based will not permit of any such deception. It may be true, as a scientific fact known to physicians and pharmacists, that the syrup of figs has little or no laxative property; but this is not the belief of the general public. They purchase this preparation on the faith that it is a laxative compound made from the fruit of the fig, which is false. This is not an immaterial representation the effect of which is harmless, but it is a representation which goes to the very essence of the plaintiff's right to a trade-mark in these words. The cases are numerous where the courts have refused to grant relief under these circumstances. In the leading case of Leather Cloth Co. v. American Leather Cloth Co., 4 De Gex, J. & S. 137, 142, 144 (affirmed 11 H.L.Cas. 523), which was a suit where the statements on the face of the trade-mark were untrue. Lord Chancellor Westbury says: 'When the owner of a trade-mark applies for an injunction to restrain the defendant from injuring his property by making false representations to the public, it is essential that the plaintiff should not in his trade-mark, or in the business connected with it, be himself guilty of any false or misleading representation; for, if the plaintiff makes any material false statement in connection with the property he seeks to protect, he loses, and very justly, his right to claim the assistance of a court of equity. * * * Where any symbol or label claimed as a trade-mark is so constructed or worded as to make or contain a distinct assertion which is false, I think no property can be claimed on it, or, in other words, the right to the exclusive use of it cannot be maintained.'

That case was cited and approved by the supreme court in Medicine Co. v. Wood, 108 U.S. 218, 2 Sup.Ct. 436, where a trade-mark was claimed in 'Atwood's Vegetable Physical Jaundice Bitters'. The labels attached to the bottles stated that the medicine was manufactured by Moses Atwood, of Georgetown, Mass., whereas in fact it was manufactured by another person in New York. Mr. Justice Field, speaking for the court, says on page 223, 108 U.S., and page 436, 2 Sup. Ct.:

'To put forth a statement, therefore, in the form of a circular or label attached to an article, that it is manufactured in a particular place, by a person whose manufacture there had acquired a great reputation, when, in fact, it is manufactured by a different person at a different place, is a fraud upon the public which no court of equity will countenance.'

In Clotworthy v. Schepp, 42 F. 62, 63, the right to a trade-mark was claimed in the word 'Puddine' in connection with the words 'Rose' and 'Vanilla'. In his opinion Judge Lacombe says:

'The complainant himself is engaged in deceiving the very public whom he claims to protect from the deception of others. He calls his preparation 'fruit' puddine. In nine different places on his package this word 'fruit' is repeated, as descriptive of the article, and a dish of fruit (pears, grapes, etc.) is most prominently depicted on one face of each packet. His packages plainly suggest that fruit of some kind enters in some shape into his compound. A chemical analysis produced by defendant, the substantial accuracy of which is not disputed, discloses the fact that his 'Puddine' is composed exclusively of corn starch, a small amount of saccharine matter, and a flavoring extract, with a little carmine added to give it color. It contains no fruit in any form. Under these circumstances, complainant's rights are not sufficiently clear to warrant the granting of a preliminary injunction.'

In Alden v. Gross, 25 Mo.App, 123, 128, 130, a trade-mark was claimed in the words 'Fruit Vinegar'. In that case the court says:

'The vinegar thus branded was not manufactured out of fruit, in the plain, ordinary, usual sense of that term, but out of low wines distilled from cereals, and fruit enters into its composition only to a very insignificant extent. * * * It would be a novel application of the rule governing the subject of trade-marks if one who manufactures vinegar out of cereals could appropriate for the article thus manufactured the word 'Fruit,' and thereby exclude another from using the word as descriptive of an article which is, in point of fact, manufactured out of fruit. * * * But whether the word 'Fruit,' in this connection, is purely indicative of the character or quality of the article or not, the plaintiffs' exclusive claim to it must fail on the further ground that the use of the word, in that connection, is clearly deceptive.'

In Connell v. Reed, 128 Mass. 477, the plaintiff sought to establish the...