California Fig-Syrup Co. v. Frederick Stearns & Co.

• Decision Date: 14 April 1896
• Docket Number: 328.
• Citation: 73 F. 812
• Court: U.S. Court of Appeals — Sixth Circuit
• Parties: CALIFORNIA FIG SYRUP CO. v. FREDERICK STEARNS & C0.

73 F. 812

CALIFORNIA FIG SYRUP CO. v. FREDERICK STEARNS & C0.

No. 328.

United States Court of Appeals, Sixth Circuit.

April 14, 1896

R. E Queen, in 1879 or 1880, was a druggist in Reno, Nev. After experiments, he succeeded in making a liquid laxative preparation, the secret formula of which is now the property of the California Fig Syrup Company. He selected the name 'Syrup of Figs' to designate the preparation because of the popular impression that the fig, when eaten, has the medicinal property of opening the bowels and curing or preventing constipation. The chief medicinal agent in the preparation is senna. Its exact composition is a trade secret, but this much is admitted. There is not now, and never has been, in the mixture, more than one-tenth of 1 per cent. of the juice of the fig; and this, it is conceded, is not enough to have any effect, either medicinally or by way of flavor. The popular impression that figs are laxative by reason of any medicinal element contained in them is erroneous. Their laxative effect when eaten in some quantities is caused by the physical action of the seeds and skin upon the bowels. There is practically no laxative property in the juice of the fig any different from that of the juice of any other fruit. It has no effect whatever unless taken in quantities as great as that of a pint or a quart. The business of the California Fig Syrup Company in the sale of this preparation has increased enormously. More than half million of dollars have been expended in advertising it through the daily press and otherwise in this country and in foreign countries. Much evidence was introduced showing that the complainant's syrup of figs was a very useful medicine, and one prescribed by physicians of high standing.

Complainant's preparation is put up in bottles of two or three sizes. Blown into the bottle are the words 'Syrup of Figs.' Upon the paper label pasted on the bottle are these words 'Nature's Pleasant Laxative,' 'Syrup of Figs,' 'The California Liquid Fruit Remedy,' 'Gentle and Effective.' Then follow the directions for use, in which reference is made to a printed circular wound around the bottle for further details, and at the bottom of the label is printed, 'Manufactured only by the California Fig Syrup Co., of San Francisco, Cal.; Louisville Ky.; New York, N.Y., U.S.A.' The bottle is inclosed in a paper box or carton, on the outside of which is shown the picture of a branch of a fig tree with figs upon it, and around the branch are these words: 'California Fig Syrup San Francisco, Cal.' Beneath this, in large print, is 'Syrup of Figs,' followed in type of a less size by the words 'Presents in the most elegant form the laxative and nutritious juice of the figs of California. ' The sentence is continued, but in fine print, as follows: 'Combined with the medicinal virtues of plants known to be most beneficial to the human system, forming an agreeable and effective laxative to permanently cure habitual constipation and the many ills depending on a weak or inactive condition of the kidneys, liver, stomach, and bowels, and is perfectly safe in all cases, and therefore the best of family remedies. Manufactured only by the California Fig Syrup Co., of San Francisco, Cal., Louisville, Ky., New York, N.Y.' There is also a direction on the outside of the carton to read the inside wrapper for full directions and description. Upon the wrapper, which is printed in four languages, are further statements concerning the preparation and its exceptional medicinal qualities. The first paragraph is as follows: 'The great natural demand for a pleasant, prompt, an effective laxative and gentle diuretic led to the combination of the laxative and nutritious elements of figs with the medicinal virtues of plants known to be most beneficial to the human system, thereby forming Syrup of Figs, and the universal satisfaction which this excellent remedy has given is attested by the immense quantity constantly used in all sections of the United States and in many other countries.'

The evidence tends to show that the defendants are manufacturing druggists, who make a business of imitating proprietary medicines, and of attempting to secure a large sale of the imitation' by selling them to druggists to be substituted by them in their trade for the advertised article. The preparation of the defendants is also a laxative medicine, in which there is considerably more of the juice or syrup of the fig than in that of complainant. The defendant does not attempt to imitate the package or the bottle or any part of the outer dress of the complainant's article in making and preparing its own package. It does designate its article, however, as 'Laxative Fig Syrup.'

The seventh paragraph of the defendant's answer below was as follows: 'And this defendant, further answering, denies that the complainant has any exclusive right whatever, or can have any exclusive right, to designate a syrup of figs by its common appellative. It admits that the name 'Syrup of Figs' undoubtedly distinguishes a syrup of figs from any syrup which is not a syrup of figs, and that if said complainant's syrup of figs is really what its title purports, said title distinguishes it from any the# syrup which is nota syrup of figs; but this defendant submits that if said syrup sold by the said complainant is really a syrup of figs, said name is false and deceptive, and that in either case the said complainant can have no exclusive right of property therein; and prays the same benefit of this defense as if it had formally demurred to said bill on that ground.'

Paul Bakewell (R. A. Bakewell, of counsel), for appellant.

Geo. H. Lothrop, for appellee.

Before TAFT and LURTON, Circuit Judges and HAMMOND, J.

TAFT Circuit Judge (after stating the facts above).

Counsel for the appellee contends that the decree of the court below must be sustained on two grounds: First, that the complainant and appellant cannot appropriate as a trade mark the term 'Syrup of Figs,' because it is a descriptive term, and relates to the composition of the article which it is used to designate; and, second, that the complainant cannot have relief in a court of equity, because, in using the name to designate the preparation which it sells, it is guilty of a distinct misrepresentation to the public, which has a tendency to mislead the public into buying the article with a false impression in respect to its manufacture and its composition.

1. There is nothing about the defendant's article which resembles the complainant's article except the words 'Fig Syrup,' which is substantially the same in meaning and appearance as the words 'Syrup of Figs.' 'Syrup of Figs' is a descriptive term. It may be that no one had ever made a syrup of figs at the time that Queen selected the term to designate the preparation which he put upon the market. That is immaterial. It is entirely possible to describe something by the use of common words which may never have had a commercial use, or which may never have been in fact made. The Century Dictionary describes 'syrup' to be 'a solution of sugar in water, made according to an official formula, whether simple, flavored, or medicated with some special therapeutic or compound. ' It is defined by Webster as 'a thick and viscid liquid, made from the juice of fruits, herbs, etc., boiled with sugar. ' The Standard Dictionary defines 'syrup' generally 'as a thick, sweet liquid,' and specifically as 'a saturated solution of sugar in water, often combined with some medicinal substance, or flavored, as with the juice of fruits for use in confections, cookery, or the preparation of beverages. ' This authority further states that 'syrups are commonly named from their source of flavoring. ' The Century Dictionary gives...