Trask Fish Co. v. Wooster

• Decision Date: 03 January 1888
• Citation: 28 Mo.App. 408
• Parties: TRASK FISH COMPANY, Respondent, v. FRANK WOOSTER et al., Appellants.
• Court: Missouri Court of Appeals

28 Mo.App. 408

TRASK FISH COMPANY, Respondent, v. FRANK WOOSTER et al., Appellants.

Court of Appeals of Missouri, St. Louis.

January 3, 1888

APPEAL from the St. Louis Circuit Court, HON. SHEPARD BARCLAY Judge.

Affirmed.

J. P VASTINE, for the appellants: All that is involved is the right of appellants to use the words, " Selected Shore Mackerel." Respondent claims them as a part of its trademark, and appellants deny the claim. Allegations and evidence of use of certain words, figures, and brands not contained in trademark, are irrelevant and immaterial. Rev Stat., sec. 7542. The words, " selected shore," have been applied to mackerel, probably as long as there has been a mackerel. As a matter of law, respondent has no right to the exclusive use of the said words, for they are not subject to appropriation, in that they are common words of the English language. It is essential to a trademark that it should be connected with an article as the same is offered for sale. Piano Manufacturing Co. v. Merkel, 1 Mo.App. 305. A word used to distinguish a known quality of goods cannot be adopted as a trademark and appropriated by a single person as against the general public. Snodgrass v. Welle, 11 Mo.App. 590. The trademark must point out the source and origin of the goods, and not be merely descriptive of the style, quality, or character of the goods themselves. Filley v. Fassett, 44 Mo. 168. To justify an injunction against a defendant from the use of a certain brand, it should at least appear that the resemblance between the two brands was sufficiently close to raise a probability of mistake on the part of the public, or design and purpose to mislead and deceive on the part of the defendant. McCartney v. Garnhart, 45 Mo. 593. The word, " Vienna," is a word used as an adjective to designate a particular kind or quality of bread, and such a word cannot be appropriated to the use of a single individual. Snodgrass v. Welle, 11 Mo.App. 590; Caswell v. Davis, 58 N.Y. 223; Burke v. Cassin, 45 Cal. 457.

BOYLE, ADAMS & MCKEIGHAN, also, for the appellants: One cannot claim protection for the exclusive use of a trademark or trade name which would practically give him a monopoly in the sale of any goods other than those produced by himself. In case a generic name, or a name merely descriptive of an article, of its qualities, ingredients, or characteristics be employed as a trademark, the exclusive use of it is not entitled to protection. Canal Co. v. Clark, 13 Wall. 311; Manufacturing Co. v. Trainer, 101 U.S. 51; Carbolic Co. v. Thompson, 25 F. 625; Lea v. Deakon, 11 Biss. 23; Caswell v. Davis, 58 N. Y.; Ayer v. Rushton, 7 Daly 9; Papham v. Cole, 66 N.Y. 96; Van Beill v. Prescott, 46 N.Y. 542; Choyenske v. Cohen, 35 Cal. 501; Larrabee v. Lewis, 67 Ga. 561; Eggers v. Hink, 63 Cal. 445; Fettridge v. Wells, 4 Abb. Pr. 144; Town v. Stepsom, 5 Abb. Pr. (N. S.) 218; Lea v. Wolff, 13 Abb. Pr. (N. S.) 391; Filley v. Fassett, 44 Mo. 176; Alden v. Gross, 25 Mo.App. 123. The appellants have a right to truthfully describe their mackerel, and though this may have the effect of causing the public to be mistaken as to the origin or ownership of the mackerel, there is no legal or moral wrong done. Purchasers may be mistaken, but they are not deceived, and equity will not enjoin against telling the truth. Mfg. Co. v. Trainer, 101 U.S. 51; Canal Co. v. Clark, 13 Wall. 311. The petition does not state either a trade-mark case, or a case of fraud. The words, " Selected Shore Mackerel," on their face show that they cannot be the subject of a trademark, and no facts are charged in the petition sufficient to constitute a fraud by one trader or merchant against another. The respondent is not entitled to, and cannot establish, a trademark in the words, " Selected Shore Mackerel." Such words on their face indicate, and the evidence on both sides still further emphasizes it, that they are merely descriptive of the quality and character of the mackerel, mere common words open to use by any one engaged in the business to describe their goods. A word or name to be a trademark must be arbitrary. Mfg. Co. v. Spear, 2 Sand. 597; Canal Co. v. Clark, 13 Wall. 322.

SMITH & HARRISON, for the respondent: It is a rule that, while a particular name or words used may not of themselves, unconnected with forms, devices, or designs, constitute a technical trademark, yet courts of equity will check and restrain fraud whenever it is resorted to by one to obtain an unfair advantage of another, either by obtaining the good-will of his business, or by the fraudulent imitation of his packages, labels, brands, devices, designs, etc. Shon v. Giesendorf, 1 Wilson [Ind.] 60; Sawyer v. Horn, 1 F. 24-33; Craft v. Day, 7 Beav. 84; Perry v. Treufit, 6 Beav. 66, 73; Williams v. Johnson, 2 Bosworth [N. Y.] 1; Holloway v. Holloway, 13 Beav. 207; Leather Cloth Co. v. American Leather Co., 11 Jur. [N. S.] 513; Dixon Crucible Co. v. Guggenheim, 2 Brewster [Pa.] 321; Stonebreaker v. Stonebreaker, 33 Md. 252; McLean v. Fleming, 96 U.S. 245; Leclance Battery Co. v. Western Electric Co., 28 F. 276; Carbolic Co. v. Thompson, 25 F. 625; Royal Baking Powder Co. v. Davis, 26 F. 293. It is the general doctrine of courts of equity that the right a person may have to the protection of the courts does not depend on an exclusive right to a particular name or form of words. The right is to be protected from fraud, and this may be practiced by means of a name or words, which defendant may have a perfect right to use, when its use is not accompanied with circumstances such as effect fraud on others. Croft v. Day, 7 Beav. 84; Rogers v. Newell, 6 Hare 325; Holloway v. Holloway, 13 Beav. 209; Howe v. Sewing Machine Co., 50 Barb. 236; Stonebreaker v. Stonebreaker, 33 Md. 252. In any case in which arises any element of actual, intentional fraud, this will be taken into consideration, and the court will, in the exercise of its general jurisdiction for the repression of fraud, award an injunction in which, but for the fraud, no remedy would have been given. Sebastian on Law of Trademarks, 49. " The governing principle is, that one manufacturer shall not be allowed to impose his goods upon the public as the goods of another manufacturer, and so derive a profit from the reputation of that other." One mark need not be an exact imitation of the other. The imitation need not be so close as to deceive cautious persons. It is sufficient that it is so close as to deceive the incautious and unwary. McCann v. Anthony, 21 Mo.App. 83. In cases of fraud, wherein a party fails to appear and testify to his own innocence, this will raise a presumption in favor of the charge. Baldwin v. Whitcomb, 17 Mo. 651, 658; Moby v. McClurg, 24 Mo. 575, 591, 592; Cass County v. Green, 66 Mo. 498, 512; Hudson v. Hudson, 55 Mo. 524, 557.

OPINION

LEWIS P. J.

The petition states, substantially, that the plaintiff, a corporation, and the defendants, a partnership firm, are both engaged in the business, in St. Louis, of packing and dealing in fish, as wholesalers, and that they both deal and sell in the same markets; that the plaintiff has for many years done a very large business, and, for some years past, has packed and vended a certain brand of mackerel, put up with care, to which the plaintiff appropriated the name of " Trask's Selected Shore Mackerel" ; and plaintiff, thereupon, and thereafter, has continuously packed and sold the said brand under that name; that the words constituting said name do not indicate the quality of the goods, but are a true and proper trademark indicating the source and origin of said goods; that the plaintiff has duly registered, and caused to be recorded in the proper offices, its said trademark, both in the city of St. Louis, and in the patent-office at Washington City, D. C.; that the plaintiff's said brand of mackerel, designated by the trademark aforesaid, has become extensively known to the trade as being of uniform and superior quality, and the plaintiff, at great expense of advertising, etc., has built up a large and lucrative trade in the said product; that the plaintiff has for a long time past continuously used its said trademark in the manner following: " By the branding of the words, ‘ Trask's Selected Shore Mackerel,’ on the top of each pail, and on the barrels and half-barrels containing its mackerel of that brand, in black capital letters, with the number of mackerel contained therein, the year when packed, and the word, ‘ guaranteed." The petition then describes an artistic and ornamental label which the plaintiff has continuously affixed to its packages, containing also the trademark words above described, and alleges that the plaintiff has for a long time past enjoyed the exclusive use of said name, brands, marks, labels, and designs, and would now be in the exclusive use and enjoyment thereof, but for the wrongful acts of the defendants, as thereinafter set forth.

It is further alleged that the defendants, " well knowing the premises, but contriving how to injure the plaintiff, without the consent or allowance of the plaintiff, but in violation of its rights, have caused to be prepared, packed, and vended, and does still prepare, pack, and vend, a certain mackerel of quality inferior to that of plaintiff, under the name of ‘ Selected Shore Mackerel,’ and have placed the same upon the market with branding on their pails barrels, and half-barrels, containing their mackerel, of such close similitude to those employed by the plaintiff, that the same are not distinguishable by the public, and defendants have packed and are now packing the said mackerel in pails, barrels, and half-barrels, which are marked with said branding, prepared in close imitation of the branding of plaintiff, as heretofore described,...