Richmond Remedies Co. v. Dr. Miles Medical Co.

• Decision Date: 22 November 1926
• Docket Number: No. 7415.,7415.
• Citation: 16 F.2d 598
• Parties: RICHMOND REMEDIES CO. v. DR. MILES MEDICAL CO.
• Court: U.S. Court of Appeals — Eighth Circuit

16 F.2d 598 (1926)

RICHMOND REMEDIES CO. v. DR. MILES MEDICAL CO.

No. 7415.

Circuit Court of Appeals, Eighth Circuit.

November 22, 1926.

William K. Amick, of St. Joseph, Mo. (Ashley G. Knight, of Trenton, Mo., on the brief), for appellant.

Edward S. Rogers, of Chicago, Ill. (W. C. Michaels, of Kansas City, Mo., on the brief), for appellee.

Before BOOTH, Circuit Judge, and PHILLIPS and SANBORN, District Judges.

BOOTH, Circuit Judge.

Appellant, plaintiff below, brought suit for an injunction and damages on account of an alleged infringement of its trade-mark; also on account of alleged unfair competition in connection with the use of its trade-name. The suit was originally commenced in the state court of Jackson county, Mo., but was removed to the federal court on the ground of diversity of citizenship and the requisite amount involved.

Motion was made to dismiss the bill, on the ground that it failed to state facts sufficient to constitute a valid cause of action in equity against defendant. The motion was heard on the bill and the exhibits referred to therein. The motion was sustained, and, plaintiff refusing to further plead, decree was entered dismissing the bill.

The bill is somewhat inartistically drawn, but the substance of its allegations is as follows: That in 1873 S. A. Richmond, living in St. Joseph, Mo., began the manufacture and sale of a medicine for diseases of the nerves and nervous system, called "Samaritan Nervine." The manufacture and sale has been continued to the present time by Richmond or his successors, including plaintiff. That on March 26, 1878, Richmond registered in the Patent Office at Washington, D. C., the words "Samaritan Nervine" as trade-mark, in connection with the figure of a man falling backward in a fit; that since 1873 said Richmond and his successors have used the words "Samaritan Nervine" as a trade-mark in connection with the medicine, and have carried on a successful business; that Richmond and his successors, including plaintiff, have advertised said medicine by having the words "Samaritan Nervine" printed in large capital letters on two sides of the carton containing the bottle in which the medicine is put up, and by having a label containing the same words pasted on the bottle, and by having the word "Samaritan" blown in the glass bottle on one side and the word "Nervine" blown in on the opposite side; that plaintiff's medicine has been and is known by the public, not only by the name "Samaritan Nervine," but also by the name "Nervine" alone; that by long use the word "Nervine" acquired in the minds of the public a secondary meaning, viz. the particular medicine made and sold by plaintiff; that about the year 1919 the defendant began to infringe plaintiff's trade-mark, and was guilty of unfair competition in invading plaintiff's rights under its trade-name; that defendant made and sold a medicine which it called "Nervine," for diseases of the nerves and nervous system; that defendant used the word "Nervine" in large capital letters on the cartons containing the bottles in which the medicine was put up; that defendant also pasted on the bottles a label containing the same word, and had the same word blown into the bottles; that defendant on April 26, 1921, registered in the United States Patent Office the word "Nervine" as a trade-mark, but that later, upon the complaint of plaintiff, this was canceled; that these acts of defendant constitute an invasion and violation of the rights of plaintiff in its trade-mark and trade-name; that by these acts of defendant consumers are misled and induced to buy defendant's product, "Nervine," thinking they are buying plaintiff's "Samaritan Nervine"; that defendant's product is inferior to plaintiff's product; and that plaintiff has sustained loss and damage by reason of the acts of defendant.

The cartons of plaintiff and defendant respectively, referred to in the bill, are here reproduced:

Liberally construed, the bill attempts to set up a cause of action for infringement of a trade-mark; also a cause of action for unfair competition in connection with a trade-name. The main question to be determined is whether the allegations of the bill are sufficient for either purpose.

As to the Trade-Mark.

The word "Nervine" is a descriptive word, meaning a nerve tonic, or a remedy for disorders of the nerves. The court will take judicial notice that it has been in use for more than a century and a half. It is a part of the public heritage. Being a descriptive word, it cannot be appropriated as a trade-mark at common law, either alone or in combination with the word "Samaritan." Standard Paint Co. v. Trinidad Asphalt Co., 220 U. S. 446, 31 S. Ct. 456, 55 L. Ed. 536; Warner & Co. v. Lilly & Co., 265 U. S. 526, 44 S. Ct. 615, 68 L. Ed. 1161; Brennan v. Emery-Bird-Thayer, etc., Co., 108 F. 624 (C. C. A. 8); Computing Scale Co. v. Standard Co. (C. C. A.) 118 F. 965. Nor can it be registered under the federal statute relating to trademarks, unless it meets the requirement of the fourth proviso of section 5 (b) of the Act of February 20, 1905 (33 Stat. 724 Comp. St. § 9490). Thaddeus Davids Co. v. Davids, 233 U. S. 461, 470, 34 S. Ct. 648, 58 L. Ed. 1046, Ann. Cas. 1915B, 322; Planten v. Gedney (C. C. A.) 224 F. 382, 385; Henderson v. Peter Henderson & Co. (C. C. A.) 9 F. (2d) 787; Pulitzer Pub. Co. v. Houston Printing Co. (C. C. A.) 11 F.(2d) 834. No registration under that act is alleged by the bill in the case at bar.

The registration of the trade-mark set forth in the bill gave plaintiff no rights in the words "Nervine" or "Samaritan Nervine" as a trade-mark, for two reasons: First, because the trade-mark, registered did not contain either of the words. The trade-mark registered consisted solely of a picture of a man falling in an epileptic fit; his hat and cane dropping to the ground. This is apparent, both from the exhibit attached to the complaint and also from the opinion of the court in Richmond Nervine Co. v. Richmond, 159 U. S. 293, 16 S. Ct. 30, 40 L. Ed. 155. Second, the act of Congress under which the registration was made (Act July 8, 1870 16 Stat. 198) was unconstitutional. Trade-Mark Cases, 100 U. S. 82, 25 L. Ed. 550. The allegations of the bill were therefore legally insufficient to show that plaintiff had a trade-mark in the word "Nervine," or in the words "Samaritan Nervine." It follows from the foregoing that no cause of action was stated for the infringement of a trade-mark.

As to the Trade-Name.

Though a descriptive word cannot (unless within the proviso of the statute as above noted) become the subject of a trade-mark, nevertheless, when a person has adopted and for a long time used a word or words, descriptive or otherwise, as a trade-name until it has acquired a new or secondary meaning, viz. a designation of a particular product or business as belonging to that person, the courts will protect him in his rights in relation to the trade-name. This is known as the doctrine of secondary meaning. Elgin, etc., Co. v. Ill., etc., Co., 179 U. S. 665, 673, 674, 21 S. Ct. 270, 45 L. Ed. 365; Standard Paint Co. v. Trinidad Asphalt Co., supra; Pillsbury-Washburn Co. v. Eagle (C. C. A.) 86 F. 608, 41 L. R. A. 162; Computing Scale Co. v. Standard Co., supra; Vacuum Oil Co. v. Climax Refining Co. (C. C. A.) 120 F. 254; G. W. Cole Co. v. American Cement, etc., Co. (C. C. A.) 130 F. 703; G. & C. Merriam Co. v. Saalfield (C. C. A.) 190 F. 927; Rubber, etc., Co. v. F. W. Devoe, etc., Co. (D. C.) 233 F. 150; Industrial, etc., Corp. v. Community Fin. Co. (C. C. A.) 294 F. 870; Chas. Broadway Rouss, Inc., v. Winchester Co. (C. C. A.) 300 F. 706; Newport Sand Bank Co. v. Monarch Sand Mining Co., 144 Ky. 7, 137 S. W. 784, 34 L. R. A. (N. S.) 1040; Reddaway v. Banham & Co., 65 L. J. Rep. (N. S.) Q. B. Div. 381.

Hopkins in his work on Trade-Marks, Trade-Names, and Unfair Competition (4th Ed.) p. 13, suggests the following definition of a trade-name:

"A trade-name is a word or phrase by which a business enterprise or business location or specific articles of merchandise from a specific source are known to the public, and which when applied to merchandise is generic or descriptive and hence not susceptible of appropriation as a technical trade-mark."

In Vacuum Oil Co. v. Climax Refining Co., supra, the court said:

"That a descriptive word or sign or symbol, descriptive from popular use in a descriptive sense, may acquire a secondary significance denoting origin or ownership, is true. But this secondary significance is not protected as a trade-mark, for a descriptive word is not the subject of a valid trade-mark; the only office of a trade-mark being to indicate origin or ownership. When a descriptive or geographical word or symbol comes by adoption to have a secondary meaning denoting origin, its use in this secondary sense may be restrained, if it amounts to unfair competition. In such case, if the use of it by another be for the purpose of palming off the goods of one as and for the goods of another, a court of equity will interfere for the purpose of preventing such a fraud."

An unfair use of the trade-name may exist, though the exact name is not used, or though only part of the trade-name is used. If enough of the trade-name is used by the "later comer," so that there is a likelihood that the public will be deceived, and no sufficient steps taken to prevent the deception, the "earlier comer" is entitled to protection. The rules and...