Keasbey v. Brooklyn Chem. Works

• Decision Date: 05 June 1894
• Citation: 142 N.Y. 467,37 N.E. 476
• Parties: KEASBEY et al. v. BROOKLYN CHEMICAL WORKS et al.
• Court: New York Court of Appeals Court of Appeals

142 N.Y. 467

37 N.E. 476

KEASBEY et al.

v.BROOKLYN CHEMICAL WORKS et al.

Court of Appeals of New York.

June 5, 1894.

Appeal from supreme court, general term, first department.

Action by Henry G. Keasbey and another against the Brooklyn Chemical Works and another to enjoin the use of a trade-mark. Judgment for plaintiffs was reversed in the supreme court (21 N. Y. Supp. 696), and plaintiffs appeal. Reversed.

Wm. G. Choate, for appellants.

Herman Aaron, for respondents.

PECKHAM, J.

This action was tried by the court without a jury, and judgment was given in plaintiffs' favor, enjoining the defendants from the use of the words ‘Bromo-Caffeine’ upon bottles containing a substance similar to that sold by the plaintiffs under that name. The injunction was granted on the ground that the defendants, by such use of the above words, infringed upon and violated the legal rights which the plaintiffs had acquired in the exclusive use of those words for the purposes of a trade-mark. The general term of the supreme court reversed the judgment, and granted a new trial, holding that the plaintiffs had established no legal right to the exclusive use of the words. It does not appear in the order of reversal that the general term reversed the judgment upon any question of fact, and it must therefore be presumed that it was not reversed upon any such question. Code Civ. Proc. § 1338. If there be any evidence to sustain the findings of fact by the court, those findings are conclusive upon us, and the only question remaining would be whether those facts sustained the conclusions of law based upon them. The plaintiffs are manufacturers of chemical, and also of medicinal, preparations. In 1873 they began the manufacture of caffeine preparations, and they say that they practically created the demand in medicine for them in this country. They testified that they had been annoyed by having other manufacturers make similar preparations and sell them for those prepared by the plaintiffs, and so they devised their last preparation, and affixed labels to the bottles containing it, on which were printed the words ‘Bromo-Caffeine,’ and the plaintiffs also complied with the law providing for registering labels as trade-marks in the patent office at Washington. This use of the above words was commenced in the year 1881 by plaintiffs, and they have spent between three and four hundred thousand dollars in advertising their trade in the preparation thus sold. Notwithstanding this enormous expense thus incurred by plaintiffs, their claim to the exclusive use of the words as a trade-mark is denied by defendants because, as they allege, the words used for that purpose were in common use at the time of their adoption by plaintiffs, and it is maintained that they indicate the character, quality, and composition of the preparation made by plaintiffs, and that they correctly describe an article of trade so that its qualities, ingredients, and characteristics would be recognized upon seeing or hearing the words. The defendants urge that this case comes within the principles laid down in Caswell v. Davis, 58 N. Y. 223, while the plaintiffs claim that it is like those cases where the trade-mark, while more or less suggestive of the ingredients, characteristics, or composition of the article to which it was applied, yet did not define the facts to such an extent as to thereby forfeit protection for the exclusive use of the words as a trade-mark for the particular article manufactured.

Before proceeding with the question further, it will be well to see exactly what facts have been found by the trial court. It has been found that the manufacture of chemicals and of medicinal preparations are separate and distinct industries. In 1881 the plaintiffs commenced, and have ever since continued, the manufacture of a secret preparation of caffeine, composed of certain ingredients specially set out in the findings. This is a medical preparation, and made for and adapted to the relief of headaches and other nervous disorders. In order to distinguish the preparation from all others, and to establish a trade-mark, the plaintiffs designated and applied to the preparation a new, arbitrary, and fanciful name, which does not describe the article or its ingredients, the name being ‘Bromo-Caffeine,’ which name has never been before used in medical science to designate any other medicine or medicinal preparation, and which name the plaintiffs thereupon applied to, and have since used for, the preparation sold by them, and such preparation, by the name thus adopted and used, has become widely known as the preparation of the plaintiffs, and as designating their manufacture, and the preparation has acquired a large and extensive sale in the United States and other countries, and large sums of money have been expended by plaintiffs in advertising and introducing into the market this preparation. In the year 1890 the defendants made a preparation similar to that of the plaintiffs, and intended for the same purpose, to which they applied the name of ‘Bromide-Caffeine,’ and subsequently they changed it to the name of ‘Bromo-Caffeine,’ and this name the defendants are still using to designate their preparation. It was further found that in the year 1867 a German chemist made a compound, and called the same ‘Bromo-Caffeine,’ and an account of the making of the compound, including the process of making it, was published in a chemical journal at Leipsic in 1868. The formula is also to be found as published in Watts' Dictionary of Chemistry, edition of 1872, and the article is called therein ‘Bromo-Caffeine.’ This chemical compound contains one portion of bromine, which is a virulent poison, and it is mixed in certain proportions with carbon, hydrogen, nitrogen, and oxygen, and the result is that the caffeine entirely disappears. The evidence shows that the chemical compound thus described has no caffeine, but has bromine, in it, and it is not an article of commerce nor is it generally known, and it is useless and valueless and unemployed, and outside the knowledge of expert or practical chemists. It is a mere curiosity of a chemical, and not of a medicinal, nature. While in the chemical compound the caffeine has wholly disappeared, and one atom of bromine has replaced one atom of hydrogen, the medical compound, on the other hand, as prepared by the plaintiffs, contains no bromine at all, and does contain caffeine and bromide of potassium, and several other substances. Thus, there is no identity of substance or of nature between the ‘Bromo-Caffeine’ of chemistry and the ‘Bromo-Caffeine’ prepared as a medicine by the plaintiffs. The former is a worthless medical compound, while the latter is a...