Thus, the word "Linoleum" as applied to a kind of floor covering,55 "Singer" applied to sewing machines,56 and "Lanoline" applied to a wool-fat preparation,57 were held to be publici juris upon the expiration of the letters patent covering the articles to which they were applied. Analogous to this class of cases is that where new combinations of old elements are found, and it is sought to distinguish such a new compound or combination by joining the descriptive names of its constituent elements. This is best illustrated by a case where the words claimed as trademark were "Ferro-phosphorated Elixir of Calisaya Bark," which claim was distinctly negatived by the New York Court of Appeals, Folger, J., saying: "They may not be appropriated by one to mark an article of his manufacture, when they may be used truthfully by another to inform the public of the ingredients which make up an article made by him." 58 For this reason the name "Acid Phosphate" applied to a medicinal preparation,59 and "Indurated Fibre" applied to wares made of wood-pulp,60 are not valid trademarks; and the word "Bromo-Quinine" was refused registration as a trademark for medicines,61 as was also the word "Ferro-Manganese" as a mark for mineral waters,62 and the word "Bromo-Celery" for a medicinal preparation.63 There are cases, however, where such words or combinations of words have been held not to be descriptive. Thus the word "Cocoaine" as applied to a hair wash compounded from cocoanut oil and other ingredients,64 and "Magnetic Balm' as 55-Linoleum Mfg. Co. v. Nairn, L. R. 7 Ch. D. 834; 47 L. J. Ch. 430; 38 L. T. N. S. 448; 26 W. R. 463; Seb. 536. 56-Singer Mfg. Co. v. Bent, 163 U. S. 205; 41 L. Ed. 131; Singer Mfg. Co. v. June, 163 U. S. 169; 41 L. Ed. 118. 57-Jaffe v. Evans & Sons, Ltd., 75 N. Y. Supp. 257. 58-Caswell v. Davis, 58 N. Y. 223-233. 59-Rumford Chemical Works v. Muth, 35 Fed. Rep. 524. 60-Indurated Fibre Co., V. Amoskeag Fibre Co., 37 Fed. Rep. 695. 61-In re Grove, Newton, Dig. 192; s. c., Ibid. 191; 67 Off. Gaz. 1447. 62-In re Excelsior Spring Co., Newton, Dig. 153. 63—In re Bromo-Celery Co., Newton, Dig. 190. 64-Burnett v. Phalon, 3 Keyes, 594. 66 applied to a medicinal compound,65 have been upheld as valid trademarks. The word "Electro-Silicon" applied to a polishing compound has also been upheld, and it appears very clear that the words "Magnetic" or "Electric" as used in the two cases last referred to are purely arbitrary and fanciful. We have noted that the patent office has refused registration to an applicant offering the word "Bromo-Quinine" as the name of a medicinal preparation. This decision is in The hopeless conflict with some of the adjudicated cases. word "Bromidia," as a trademark for a chemical combination of chloral hydrate, bromide of potassium and other substances, was admitted to registration and subsequently upheld as valid, the court upon final hearing saying that the word "has no meaning whatever except as connected with complainants' business, and as associated with and indicative of a soothing or soporific mixture prepared and sold by them."67 The word "Bromo-Caffeine" was admitted to registration, and upheld judicially, the Court of Appeals of New York saying, per Peckham, J.: "We think there is a distinction between the facts in this case and that of Caswell v. Davis.68 In this case the term perhaps suggests that some one among the hundreds of substances that bromine may combine with has been used in such combination together with caffeine. There are, however, some seven different ingredients in the plaintiff's preparation, and there is no free bromine among them, and there is no evidence as to what the substance is which the bromine (if any) had combined with before being used in the preparation, and so it is plain that the words 'Bromo-Caffeine' do not in fact describe the ingredients or even give any clear general idea as to what they are." 69 It is the general rule that "when an article is made that was theretofore unknown, it must be christened with a name by which it can be recognized and dealt in; and the name thus given to it becomes 65-Smith v. Sixbury, 25 Hun, 232. 66-Electro-Silicon Co. v. Trask, 59 How. Pr. 189; Electro-Silicon Co. v. Hazard, 29 Hun, 369. 67-Battle & Co. v. Finlay (preliminary hearing), 45 Fed. Rep. 796, (final hearing) 50 Fed. Rep. 106. 68-58 N. Y. 223, cited, supra. 69--Keasbey v. Brooklyn Chemical Works, 142 N. Y. 467-476. public property, and all who deal in the article have the right to designate it by the name by which alone it is recognizable." 9 70 Under peculiar circumstances a mark, otherwise a valid trademark, will become the common property of two or more merchants, each of whom may have a right to its use, provided he so uses it as not to pass off his goods as those of one of the others entitled to use the mark. Thus a plaintiff was refused an injunction restraining the use of the mark "Aramingo Check" to designate printed cloth made at the Aramingo Mills, where the defendant showed that the cloth sold by him under the mark was the product of the same mills, and the labels used by the respective parties differed in size and color so that confusion could not result from their use.71 § 53. The trademarked article not a trademark. It is obvious that if a commercial article itself could constitute a trademark, there would be little use for patent laws. As Judge Carpenter said, "in the very nature of the case, the trademark must be something other than, and separate from, the merchandise." 72 Nor can the article, by being colored, constitute a trademark. This is illustrated by the case in which it was sought to protect a bronzed horse-shoe nail as a trademark.73 It is again illustrated by the attempts to hold as a trademark a "distinctively colored streak in a wire rope," "74 a "rose-colored 918. affirming s. c., 67 C. C. A. 418; 134 73 metallic capsule" for a champagne bottle, or a red head with a blue tip for matches, or illustrated post cards." 76 In the case of an alleged trademark consisting of the words "Merrie Christmas," applied to ribbons by weaving, Judge Holt very correctly said, "a trademark ordinarily does not add anything to the value of the goods in the estimation of the buyer. It is simply a mark to identify the manufacturer of them. Of course, a trademark is sometimes impressed upon the article sold, but I do not think that it ever properly constitutes an element of value in the thing itself."" ** * § 54. Packages as trademarks. It is equally obvious that a commercial package or wrapping can not be a trademark.78 In one of the early cases upon this rule, Judge Johnson said: "It appears that the ornamental tin pail which the plaintiff employs is a common article in commerce, and that pails made of tin, ornamented or unornamented, are and have long been in use for all such purposes as any one chose to apply them to. The question whether any one can seize upon such an article and make title to its exclusive use for a special purpose, by calling it a trademark, must be far from clear in favor of the claimant. The forms and materials of packages to contain articles of merchandise, if such claims should be allowed, would be rapidly taken up and appropriated by dealers, until some one, bolder than the others, might go to the very root of things, and claim for his goods the primitive brown paper and tow string, as a peculiar property. It will be observed, that it is not a mark at all which is claimed, but the whole enveloping package, the whole surface of which is covered by the ornamental pattern."'79 Nor can a package be made a trademark by being colored.80 Judge Coxe concisely embodied the rule in these words: "The trend of the law is strongly towards the proposition that, 75-Mumm v. Kirk, 40 Fed. Rep. 589. 76-Diamond Match Co. v. Saginaw Match Co., 74 C. C. A. 59; 142 Fed. Rep. 727. 77-Bamforth v. Douglass Post Card & Mach. Co., 158 Fed. Rep. 355. 78-Smith v. Krause, 160 Fed. Rep. 270, 271. 78a-Societe Anonyme Benedictine v. Puziello, 250 Fed. Rep. 928; Fleischmann v. Starkey (C. C.), 25 Fed. Rep. 127; Adams v. Heisel (C. C.), 31 Fed. Rep. 279; Enoch Mor gan's Sons Co. v. Troxell, 89 N. Y. 80-Philadelphia Novelty Mfg. Co. v. Blakesley Novelty Co., 40 Fed. Rep. 588. in ordinary circumstances, the adoption of packages of peculiar form and color alone, unaccompanied by any distinguishing symbol, letter, sign, or seal, is not sufficient to constitute a trademark.''81 Ornamentation of packages.-To enjoin the copying of ornamention it must be shown that the ornamentation of plaintiff's article has become associated in the minds of the public with the thing itself;81a and the ornamentation should be non-func tional.81b § 55. Pictures as trademarks.-Pictures are peculiarly susceptible of use as trademarks, because, with but few exceptions, they are neither descriptive nor deceptive, and hence are not open to the objections which inhere in words having those characteristics. It has been judicially stated that "trademarks are of two kinds. They may consist of pictures or symbols, or a peculiar form and fashion of label, or simply of a word or words. Where the trademark consists of a picture or symbol, or in any peculiarity in the appearance of the label, the imitation (to be enjoined) must be such as to amount to a false representation, liable to deceive the public, and enable the imitator to pass off his goods as those of the person whose trademark is imitated.'' 82 Of course a picture may, just as a word-mark, become common to the trade; in which event it is nobody's trademark, and no user can complain of its infringement.83 While the picture of a public building (as, the Town Hall of Glasgow) may be used as a valid trademark, it is not infringed by another view of the same building, presenting a substantially different effect to the eye.84 Although a distinctive form of container for merchandise does not entitle the user of that container to have it protected as a trademark,85 the picture of a dome-shaped cake of black-lead has been upheld as a valid trademark by the Court of Appeal of England, where it appeared that the picture was used as a trademark on black-lead formed in other shapes.86 81-Philadelphia Novelty Mfg. Co. v. Rouss, 40 Fed. Rep. 585, 587. 81a-Crescent Co. v. Kilborn, 247 Fed. Rep. 299; 159 C. C. A. 393 (C. C. A. 2). 81b-Wightman & Hough Co. v. Nivois, 264 Fed. Rep. 98 (C. C. A. 2). 82-Raral'o, J., in Hier v. Abrahams, 82 N. Y. 519, 523. 83-In re Societe Anonyme Dubonnet, 31 R. P. C. 453, 468. 84-Cowie Bros. & Co. v. Herbert, 14 R. P. C. 436. 85-Moorman v. Hoge, Fed. Case No. 9,783; Harrington v. Libby, Fed. Case No. 6,107. 86-James v. Parry, 3 R. P. C. 340. |