§ 56. Words as trademarks.-As stated by Judge Rapallo, "trademarks *

may consist

7788 Of

simply of a word or words. ''87 It is no objection to the appropriation of a word as a trademark that it is in common use. course the word so adopted must neither be descriptive nor deceptive, or open to either of the other disqualifications which prevent its serving as a proper indication of origin or ownership. Possibly the most valuable word-marks in use are to be found among the newly-coined words, so-called for want of better nomenclature; they are sometimes called "made-up" words. Such "new coinage," as it is termed by Judge Ray, has frequently been considered by the courts.90 A descriptive word may be coupled with an arbitrary term to form a word which is a proper trademark.91 Such made-up words are termed "invented words" in Sec. 9 of the British Trademarks Act, 1905, and are registrable even when they have "a direct reference to the character or quality of the goods."'92

89

But the word "Eanco" being merely the phonetic spelling of "E. & Co." was held not to be an invented word, and hence not registrable.92a

§ 57. Method of arranging goods as trademark. The arrangement of goods in a package can not constitute a trademark. Judge Welker said: "The complainants could not obtain a trademark in the manner in which the gum might be placed in the boxes. "'93 Judge Carpenter made the same ruling with reference to the arrangement of cakes of soap in red and yellow wrappers, the colors alternating."4

The importance of these rulings has vastly decreased of late years, owing to the fact that all of these matters, packages, labels, and methods of packing, are now understood to relate only to proof of fraudulent intent in competition. No technical trademark right exists in either of them; in the abstract, they are each of common right. But like size, shape, form and color, each readily becomes subservient as an instrumentality of fraud where unfair competition is intended.

They enter into the litigation of today, not upon the theory that property is claimed in them, but merely as badges of fraud.

96

98

§ 58. Words taken from the dead languages.-Words from the dead languages have frequently been applied to merchandise and sustained as valid trademarks, as, for example, the Greek "Eureka" as a mark for shirts 95 or for a fertilizing material, and the Latin "Excelsior" for stoves 97 or soap." The Latin phrase "Ne Plus Ultra" was invalid as a trademark solely because the plaintiff did not show exclusive user in himself, and the words and an accompanying device were found to be common to the trade.99 It has been said by the Canadian Supreme Court that there can be property in a word of a dead language even if it be expressive of quality, but this dictum is incorrect, as appears from the authorities reviewed in the next succeeding section. A descriptive word from a dead language can not be other than a generic term when used as a mark for goods. Thus, on an application for registration for the word "Sanitas" for medicines, Kay J., remarked: "The truth is that if this word were applied to medicines, it would mean to any ordinary person that the medicines were health medicines; that is, health-giving medicines; and that is descriptive of the quality or of the effect of the use of these medicines. How is it possible that it is not descriptive?" 2

§ 59. Words and phrases from modern foreign languages.— This topic has been fruitful of conflicting holdings. It is not

95-Ford v. Foster, L. R. 7 Ch. D. 611.

96-Alleghany Fertilizer Co. v. Woodside, 1 Hughes, 115, Fed. Case. No. 206.

97-Sheppard V. Stuart, 13 Phila. 117; Price & Steuart, 193.

98-Braham v. Bustard, 1 H. & M. 447. "Excelsior" applied to gun-cotton goods was not upheld. Steinthal v. Samson, Seb. 546.

99-Beard v. Turner, 13 L. T. N. S. 746; Seb. 251.

1-Partlo v. Todd, 17 Can. S. C. R. 196.

2-In re Sanitas Co., 4 R. P. C. 533; 58 L. T. 166; Cartmell, 305.

Similar reasoning forbade the registration of "Somatose" as a trademark for a nourishing meat product; the Greek "Soma," genitive "Somatos," being the equivalent of the English "body;" "somat" being the root of many English words and "ose" a common English suffix. In re Farben-fabriken T. M. K., L. R. (1894) 1 Ch. D. 645.

settled what character of words so taken will be sustained as valid trademarks.

The English courts have consistently adhered to the rule announced by Chitty, J., in Davis v. Stribolt: "I am of the opinion that in reference to an article produced in a foreign country and imported into England, where it was previously unknown and without a name, the word used in that foreign country as the common term to describe or denote the article is not a fancy name within the meaning of the act." For these reasons the Norwegian words "Bokel" and "Bokol" (meaning "beer") were held not valid as trademarks for beer.3

A curious case is that of Re Rotherham. The house of Rotherham of Coventry had long made and exported watches to Tod & Co. of Alexandria, by whom they were sold, such watches bearing upon their dials the word "Tod" in Arabic. characters; "Tod" as an Arabic substantive meaning "A high mountain." The Arabic word was registered as a trademark, Vice-Chancellor Bacon holding an order of the commissioners prohibiting registration of words in foreign languages invalid.*

8

The phrase "Flor Fina Prarie Superior Tabac" was held to be a valid trademark for cigars, as have been the words "Tamar Indien" for lozenges," "Intimidad" for cigars," "El Destino," also for cigars, "El Cabio" for tobacco," and "La Favorita" for flour.10 "Mazawattee," "Mazawattee," a compound of the Hindustani words "Maza," meaning taste or relish, and the Singalese "Wattee," meaning garden or estate, is a valid trademark because it conveys no meaning to any class of persons, English, Hindoo or Singalese, and has no reference to the quality of the goods.11 The Spanish words "El Gallo,' meaning "the rooster" have been refused registration upon the mark "Our Rooster. "'11a The word "auxiliator,” because of its descriptive meaning in Latin, Italian, Spanish and Portuguese is of doubtful character as a trademark.11b

With reference to "Pepto-Mangan." used as a mark for a medicinal preparation, Judge Holt has said, "It seems, if

3-Davis v. Stribolt, 59 L. T. 854; Cartmell, 105.

4-In re Rotherham, 29 W. R. 503; Seb. 647.

5-Cope v. Evans, L. R. 18 Eq. 138; 30 L. T. N. S. 292; 22 W. R. 453; Seb. 433.

6-Grillon v. Guenin, W. N. 1877. p. 14; Seb. 532.

7-Caruncho v. Stephenson, 25 Sol. J. 929.

8-Pinto v. Badman, 8 R. P. C. 181; Cartmell, 270.

9-Solis Cigar Co. v. Pozo, 16 Colo. 388; 26 Pac. Rep. 556.

10-Menendez v. Holt, 128 U. S. 514; 32 L. Ed. 526.

11-In re Densham, L. R. (1895) 2 Ch. D. 176.

11a-In re Maclin-Zimmer-McGill Tobacco Co., 262 Fed. Rep. 635. 11b-Esta Co. v. Purke, 257 Fed. Rep. 743.

analyzed by a person familiar with the Greek and German languages, somewhat descriptive, but I think it would seem to the general public to be an artificial and manufactured word." 12

The rules thus far discussed in this section do not seem to apply to aboriginal words or sounds. The word (or sound) "Oomoo," taken from the language of the Australian aborigines, was admitted to English registration by Chitty, J., after a careful consideration;13 on the other hand, the word "Kokoko," meaning "owl" in the language of the Chippeway Indians, was refused registration as a trademark for cotton goods.14

It was held in a dictum of the Supreme Court of Canada, in the very thoroughly considered case of Partlo v. Todd, that a descriptive foreign word, or a word in a dead language not known to people in general, because it is not understood, may become the trademark of the person who first uses it upon a particular article sold by him.15 This theory has been affirmed by a New York state court and denied by Judge Showalter in the federal circuit court for the Northern District of Illinois, in two suits of the same complainant, involving the right to the word "Matzoon" as a trademark for a food product made of fermented milk. "Matzoon" or "Maadzoon" appears to be the sound of the name which Armenians give to a similar article made of fermented milk in Turkey. The New York court says: "I do not think that such a term can properly be regarded as descriptive in this country. It would be absolutely meaningless to all but a little group of Armenians in the millions of inhabitants of the United States. It would be equally meaningless in most of Europe. A Choctaw word would signify just as much. To the medical profession, among whom the plaintiff sought approval for his product, and to the drug trade, the name 'Matzoon' was practically an arbitrary or fanciful designation. It was not incorporated into the English language. It was derived from a language

12-M. J. Brietenbach Co. V. Spangenberg, 131 Fed. Rep. 160. 13-In re Burgoyne, 6 R. P. C. 227; 61 L. T. 39; Cartmell, 85.

14-In re Jackson Company's Trademark, 6 R. P. C. 80; Cartmel'.

177.

15-Partlo v. Todd, 17 Can. S. C. R. 196-213.

hardly known here, and to the vest majority of our people it meant nothing. Hence the rule upon which the defendant relies has no application here." It was accordingly held to be a valid trademark.16 That this rule is dangerous to the law of trademarks is apparent. If it is left to the courts to say when a descriptive word taken from a modern foreign language may or may not be used as a trademark, practically endless litigation is opened to future generations. The court forgot the rule that a trademark must be capable of universal use, and knows no territorial restriction. 17 As Chitty, J., remarked in Davis v. Stribolt: "If the argument were well founded, the importer into this country of any foreign article not previously known in this country could restrain any one else from using the name by which it was called in the country in which it was produced." 18 Upon the application to Judge Showalter for a preliminary injunction to restrain the use of the same word "Matzoon," that learned court said: “The strong contention is that Dr. Dadirrian introduced into this country a product which was unknown here, and by a name which was equally unknown, and that, since the name has become identified here with the article as made by him his property in the name should be recognized. But, as already said, the product was in fact old, as was also the name. The ignorance of people in this country touching it, its uses and its name, can not be treated as property, and be, in a manner, capitalized as an element in the goodwill of this complainant. This would be the case if no other dealer was permitted to tell what Matzoon is, and what a considerable portion of the human race has found it useful for, after an experience with it under that name which, according to the record, dates back some eight centuries." The application was accordingly denied, and the ruling of the trial court was followed in the first circuit and subsequently upheld by the United States Circuit Court of Appeals for that circuit.19

16-Dadirrian v. Yacubian, 37 N. Y. Supp. 611.

17-Subject to the exceptions noted ante, § 14.

18-Davis v. Stribolt, 59 L. T N. S. 854, cited supra.

19-Dadirrian v. Yacubian, 72 Fed. Rep. 1010-1014; 75 Off. Gaz. 1856; followed in Dadirrian v. Yacubian (2), 90 Fed. Rep. 812. Latter case affirmed on appeal, Dadirrian v. Yacubian (3), 98 Fed. Rep.