Sterling Remedy Co. v. Spermine Medical Co.

• Decision Date: 18 October 1901
• Docket Number: 825.
• Citation: 112 F. 1000
• Parties: STERLING REMEDY CO. v. SPERMINE MEDICAL CO.
• Court: U.S. Court of Appeals — Seventh Circuit

112 F. 1000

STERLING REMEDY CO. v. SPERMINE MEDICAL CO.

No. 825.

United States Court of Appeals, Seventh Circuit.

October 18, 1901

The appellant, the Sterling Remedy Company, filed its bill in the court below against the Supreme Medical Company to restrain unfair competition in trade. The facts in the case, as disclosed by the evidence, are substantially as follows: The complainant below, the appellant here, is a corporation created by the laws of the state of New Jersey, and is engaged in the preparation and sale of proprietary medicines and is the successor in interest of the Sterling Remedy Company of Illinois, which latter company, in 1895, placed upon the market a remedy for constipation, adopting therefor the arbitrary name of 'Cascarets.' The remedy was put up in octagonal, flat, dark brown tablets, initialed with the letters C.C.C. The tablets were inclosed in tin boxes of peculiar design, and with original letterpress. The form of the article and the style and shape of the boxes were not necessitated by the nature of the product, but were selected arbitrarily to produce a characteristic form and dress, and were new as applied to preparations of this sort. In addition to the word 'Cascaret' the alliterative phrase, 'Candy Cathartics' was adopted as part of the name. The design and dress of the inclosing boxes and the names were new with respect to products of this character. This remedy was largely advertised, and with the result that it is now on sale in 35,000 retail drug stores in the United States, the Dominion of Canada, and in Europe. The sales in the year 1898 exceeded four million boxes. In the advertisements and circulars the names 'Cascaret' and 'Candy Cathartic,' and the design of the boxes and form of tablet, had been prominent features, and to a greater or less extent had become the identifying badges of the complainant's preparation. It is also claimed, and to a certain extent proven by the evidence, that the words 'Candy Cathartic,' through advertisement and trade usages, have acquired a secondary meaning in connection with the remedy. The defendant up to the year 1899 manufactured an article called 'Spermine,' an alleged remedy for a wholly different disease. In that year it began the manufacture and sale of a remedy for constipation, put it in the form of a tablet of the precise shape and almost the exact size of the complainant's tablet, and of nearly like color, and in boxes of the same shape and size of the complainant's and containing a corresponding number of tablets for the same prices charged by the complainant, and styled the same 'Castorets,' and closely imitated the letterpress and label on the complainant's boxes, and the advertising matter, and after it thus began the manufacture of 'Castorets' it solicited orders of several wholesale druggists in Chicago, who declined to handle the preparation, upon the ground that it was an infringement of 'Cascarets.' The bill was filed in the court below on the 26th of June, 1899, and amongst other things prayed for an injunction as follows: '(3) That the said Spermine Medical Company, its officers, clerks, attorneys, agents servants, salesmen, and workmen may be forever enjoined and restrained from making use of, by word of mouth or otherwise in connection with the sale of a remedy or cure for constipation and other diseases, not made by or for your orator, as the name or designation of such remedy or cure for constipation and other diseases, of the word 'Cascarets' or any other word similar thereto in sound or appearance; that it may be in every way enjoined and restrained from making use of the labels, boxes, tablets, and indicia hereunto annexed and made a part hereof and marked defendant's Exhibits 'A' to 'D,' and from doing any act or thing whatsoever to induce the belief that remedy or cure for constipation and other diseases by or for it made is the remedy or cure for constipation and other diseases known as 'Cascarets' of your orator, by or for it made and hereinbefore referred to, and otherwise in every way enjoining and restraining the acts of the defendant complained of. ' A temporary restraining order preliminary to a motion for injunction was issued on the 26th of June, 1899. On July 20, 1899, the defendant below presented to the court an altered label and trade-name, which it proposed to use to designate its tablet medicine theretofore sold under the name of 'Castorets,' stating that it had desisted from the use of the trade-name and label complained of in the bill, and would desist therefrom, using in its stead the label presented, in which the name 'Castor Caramels' was substituted for 'Castorets,' and designating them as 'the only perfect candy cathartic,' the label being of a pink color, but upon the same style of box, and the tablet being of the same shape. On that day the court made an order in which it decreed 'that the proposed new style of label as submitted to the court, 'Castor Caramels,' may be used by the defendant as a designating symbol to be employed on packages of cathartic compound put up in manner and form as heretofore customary with the defendant at the time this action was begun, and that the defendant is hereby authorized to continue the use of such packages without liability to the complainant, provided that the legend 'Castor Caramels' and the label as this day submitted to the court be used to designate the packages of the defendant, and it is further ordered that the defendant be authorized to use the same style of package and the same style of tablet as heretofore used

by it in connection with the new style of label submitted to the court, and that the use of said new label, the use of the former style of package and tablet, are not within the...