Kohler Mfg. Co. v. Beeshore

• Decision Date: 04 December 1893
• Docket Number: 3.
• Citation: 59 F. 572
• Court: U.S. Court of Appeals — Third Circuit
• Parties: KOHLER MANUF'G CO. v. BEESHORE.

59 F. 572

KOHLER MANUF'G CO. v. BEESHORE.

No. 3.

United States Court of Appeals, Third Circuit.

December 4, 1893

Statement by SHIRAS, Circuit Justice:

During the year 1888 the firm of the Kohler Medicine Company composed of Louis Yakel and Charles W. Greble, carried on the proprietary medicine business in Baltimore, Md. Among other preparations, the firm made and sold a cough remedy called 'Rocky Mountain Cough Syrup.' The formula for this medicine the firm had received from the estate of Dr. P. W Kohler, together with formulas for other medicines, and also the right to use the name 'Kohler' in connection with said remedies, and the business in which they were manufactured. The firm also purchased from the Kohler estate a quantity of the syrup which had been prepared by Dr Kohler, and all the labels which he had on hand at the time of his death. The cough syrup thus purchased was bottled and labeled, and sold by the Kohler Medicine Company during the spring and summer of 1889, and when the stock was exhausted more syrup was made, and sold under the same label that had been used by Dr. Kohler. During the early part of 1889, the Kohler Company began to make, and extensively sell, an article which they called 'One Night Corn Cure.' During November, 1889, the labels for the 'Rocky Mountain Cough Syrup' gave out, and the firm concluded to change the name of the remedy, and adopted the name 'One Night Cough Cure.' They did not use printed labels, but wrote the name upon paper which was pasted on the bottles containing the syrup. Several dozen bottles with this written label appear to have been sold from time to time during November and December, 1889, and perhaps later. The label bore the words 'One Night Cough Cure' alone, but the agents who sold it stated that the syrup was made and sold by the Kohler Medicine Company. In February, 1890, a corporation of the state of Maryland was formed, styled 'The Kohler Manufacturing Company,' and the assets, trade-marks, and business of the firm were transferred to it, and the previous business was continued under the same management. In December, 1890, the corporation filed an application for the registration of the words 'One Night Cure' as a trade-mark for a corn remedy and a cough syrup, and on January 20, 1891, a certificate numbered 18,867 was issued to the Kohler Manufacturing Company for said trade-mark. On January 28, 1891, Ellsworth S. Beeshore filed an application for registration of the words 'One Night Cough Cure' as a trade-mark for a cough remedy, and for which a certificate was issued to him, dated March 3, 1891, and numbered 19,112.

On February 17, 1892, the Kohler Manufacturing Company, as a corporation organized under the laws of the state of Maryland, filed its bill of complaint in the circuit court of the United States for the eastern district of Pennsylvania against Ellsworth S. Beeshore, as a citizen of the state of Pennsylvania. In this bill the complainant alleged that, ever since the summer of 1889, it and its predecessor, the Kohler Medicine Company, had been engaged in the manufacture and sale of a medicinal preparation for the cure of coughs and colds, bearing the arbitrary symbol or name of 'One Night Cough Cure,' which name it had duly adopted as a trade-mark for said article, and had caused the same to be fixed to the bottles containing said syrup by means of labels, and that said article was sold to the public generally, was known to the public as an article made and sold by the complainant company, and that the name 'One Night Cough Cure' was recognized as an indication of the ownership and origin of the same. The bill charges that the defendant Beeshore, in the month of November, 1890, and ever since, had manufacured and sold a medicinal preparation of substantially the same descriptive properties as those of the complainant, and bearing printed labels and wrappers, with the name 'One Night Cough Cure,' in such a manner as was likely to mislead and deceive careless or ignorant purchasers into buying the medicine of defendant in mistake for that of the complainant. The bill prayed for an injunction, account, etc.

On March 15, 1892, the defendant answered, denying that complainant had, since November, 1889, manufactured and sold an article with the name 'One Night Cough Cure' as a trade-mark, and denying that complainant was the owner of the said words as a trade-mark. The answer admitted that defendant had, since November, 1890, sold an article of merchandise with label bearing the words 'One Night Cough Cure' as a trade-mark, but not with intent to mislead or deceive, and claimed that he was the lawful owner of the trade-mark described, viz. 'One Night Cough Cure,' by virtue of his having registered the same, and procured a certificate therefor from the United States patent office on March 3, 1891. The defendant further alleged in his answer that the complainant never had affixed the said words to its medicine until defendant had duly adopted it as his trade-mark, and that complainant had interpolated the word 'Cough' into the words 'One Night Cure,' which it had previously used as a trade-mark for a corn remedy, with the purpose of getting the public to mistake complainant's cough cure for that of the defendant.

Issue was joined, evidence taken, and the cause was argued on November 10, 1892, and on November 22, 1892, the opinion and decree of the circuit court were filed, dismissing the bill of complaint, with costs, from which decree the present appeal was taken.

Arthur Stewart, (Price & Stewart, of counsel,) for appellant.

Wm. Henry Browne, for appellee.

Before SHIRAS, Circuit Justice, and ACHESON, Circuit Judge.

SHIRAS Circuit Justice, after stating the facts, .

It has been more than once held in this circuit that courts of equity will not intervene by injunction in disputes between the owners of quack medicines, meaning thereby remedies or specifics whose composition is kept secret, and which are sold to be used by the purchasers without the advice of regular or licensed physicians. Fowle v. Spear, (Nov. Term, 1847,) 7 Pa. Law J. 176; Heath v. Wright, 3 Wall. Jr. 141. A similar view has prevailed in several state courts. Wolfe v. Burke, 56 N.Y. 115; Smith v. Woodruff, 48 Barb. 438; Laird v. Wilder, 9 Bush, 132. In the present case, the so-called 'trade-mark,' 'One Night Cough Cure,' asserts a manifest falsehood or physiological impossibility. A cough or cold so far seated as to require medical treatment cannot be cured in a single night, and a pretense to the contrary is obviously an imposition on the ignorant. If it be said that the court cannot take notice of such a state of facts, and that there is no...