whole are so joined together as to attempt to pass off, and to have the effect of passing off the defendants' soap as the plaintiffs', then, although the plaintiffs have no monopoly either in 'Self-washing' or 'Self-washer' or in the parchment paper or in the spaced printing, yet if those things in which they have no sole right are so combined by the defendants as to pass off the defendants' goods as the plaintiffs', then the defendants have brought themselves within the old common-law doctrine in respect of which equity will give to the aggrieved party an injunction in order to restrain the defendant from passing off his goods as those of the plaintiff.” 43

These cases, with those cited in the foot-note, will sufficiently demonstrate the fact that the rule under consideration is not only important but well established, and that the user of a strictly generic term will be protected in the business he has established under that term, as against a dishonest use of it by a competitor.44

The doctrine of unfair competition, by which the use of descriptive words has sometimes been restrained, has engrafted upon it this important qualification-than in no case will the use of a merely descriptive word be restrained as deceptive, unless in circumstances which show fraud on the part of the user. 45 The English leading cases upon this proposition are the "Camel Hair Belting" case, 46 to which we have already re

43-Lever v. Goodwin, 4 R. P. C. 492-506; 36 Ch. D. 1; 57 L. T. 583; 36 W. R. 177; Cartmell, 209.

44-Lever v. Bedingfield, 80 L. T. N. S. 100; Barlow v. Johnson, 7 R. P. C. 395; Cartmell, 73; Curtis v. Pape, 5 R. P. C. 146; Cartmell, 105; Jay v. Lador, 6 R. P. C. 136; 40 Ch. D 649; 60 L. T. 27; 37 W. R. 505; Cartmell, 184; Powell V. Birmingham Vinegar Brewery Co., L. R. (1894) 3 Ch. D. 449-462; Reddaway v. Banham, L. R. (1896) A. C. 199; Brown Chemical Co. v. Meyer, 31 Fed. Rep. 453; Jennings v. Johnson, 37 Fed. Rep. 364; Meyer v. Bull Medicine Co., 7 C. C. A. 558; 58 Fed. Rep.

884; Morgan Envelope Co. v. Walton, 30 C. C. A. 383, 86 Fed. Rep. 605; VanHorn v. Coogan, 52 N. J. Eq. 380; 28 Atl. Rep. 788; Anheuser-Busch Brewing Ass'n V. Fred Miller Brewing Co., 87 Fed. Rep. 864; Cellular Clothing Co. v. Maxton, L. R. (1899) A. C. 326; Goodman v. Bohls, 3 Tex. Civ. App. 183; 22 S. W. Rep. 11.

45 Cellular Clothing Co. V. Maxton, L. R. (1899) A. C. 326341. The language of the text is quoted and approved by Ray, J., in Rushmore v. Saxon, 158 Fed. Rep. 499, 509.

46-Reddaway v. Banham, L. R. (1896) A. C. 199.

48

ferred, and the "Cellular Clothing" case. In the former case the defendant said expressly that by using the term "Camel Hair Belting" he would be enabled to sell his goods as those of the plaintiff. Each case involved the use of a descriptive word. In the belting case, however, the word had acquired an additional meaning. The mere use of the words "Camel's Hair" had come to be understood in the trade as indicating belting of the plaintiff's manufacture. It was proved in addition to this that the defendant's acts were done in consummation of a fraudulent design to sell his goods as those of the plaintiff. For these reasons the use of the words by the defendant was restrained.1 The Cellular Clothing case differed from this on the facts. As in the belting case, the words "Cellular Clothing" were originally purely descriptive, being applied to a cloth of cellular structure. It was not shown that the term had so acquired a technical and secondary meaning, arising from its natural meaning, that it could be excluded from the use of every one else, 19 and it was not shown that the defendant had intended to defraud the plaintiff, or that any one had bought of the defendant in the belief that he was getting plaintiff's goods.50 The Cellular Clothing case demonstrates very clearly that one who takes upon himself to prove that words which are merely descriptive or expressive of the quality of the goods have acquired a secondary meaning and indicate that the goods are of his manufacture has assumed a burden which, while it is not impossible, is, in the language of Lord Davey, "at the same time extremely difficult to discharge-a much greater burden than that of a man who undertakes to prove the same thing of a word, not significant and not descriptive, but what has been compendiously called a 'fancy' word." 51

§ 62. "Distinctive names," under the Food and Drugs Act (June 30, 1906, Chap. 3915, 34 Stat. at L. 768).-Whether a name used in a trademark capacity on an article of food or drink can be held to be a mis-branding under the Food and Drugs Act is a problem of considerable difficulty in some cases.

The expression "distinctive names" as used in the act itself, sec. 8, has been further illuminated by regulation 20, adopted October, 1906, and providing as follows:

"(a) A 'distinctive name' is a trade, arbitrary, or fancy name which clearly distinguishes a food product, mixture, or compound from any other food product, mixture, or compound.

"(b) A distinctive name shall not be one representing any single constituent of a mixture or compound.

"(e) A distinctive name shall not misrepresent any property or quality of a mixture or compound.

"(d) A distinctive name shall give no false indication of origin, character, or place of manufacture, nor lead the purchaser to suppose that it is any other food or drug product."

We are, of course, interested only in those cases in which the trademark or tradename itself is charged to be misbranding. The charge of misbranding turns necessarily upon the question of the name having true trademark quality. It is difficult to conceive of a true word trademark constituting a misbranding in its use.

But tradenames having no trademark quality, for example "London Dry Gin," 52 "Grenadine Syrup," 53 and the like, may not constitute the basis for a charge of misbranding when interpreted by the evidence to relate to a well-known class or kind of merchandis".

The United States Supreme Court has elaborated the subject under discussion as follows:

"A distinctive name is a name that distinguishes. It may be a name in common use as a generic name, e. g., coffee, flour, etc. Where there is a trade description of this sort by which

52-United States v. Thirty-Six Bottles, 205 Fed. Rep. 111; but compare 210 Fed. Rep. 271.

53-United States V. Thirty Cases, 199 Fed. Rep. 932.

a product of a given kind is distinctively known to the public, it matters not that the name had originally a different significance. Thus, soda water is a familiar trade description ɔf an article which now, as is well-known, rarely contains soda in any form. Such a name is not to be deemed either 'misleading' or 'false,' as it is in fact distinctive. But unless the name is truly distinctive, the immunity can not be enjoyed; it does not extend to a case where an article is offered for sale 'under the distinctive name of another article.' Thus, that which is not coffee, or is an imitation of coffee, can not be sold as coffee; and it would not be protected by being called 'X's Coffee.' Similarly, that which is not a lemon extract could not obtain immunity by being sold under the name of 'Y's Lemon Extract.' The name so used is not 'distinctive,' as it does not appropriately distinguish the product; it is an effort to trade under the name of an article of a different sort. So, with respect to 'mixtures or compounds,' we think that the term 'another article' in the proviso embraces different compounds from the compound in question. The aim of the statute is to prevent deception, and that which appropriately describes a different compound can not secure protection as a 'distinctive name.'

"A 'distinctive name' may also, of course, be purely arbitrary or fanciful, and thus, being the trade description of the particular thing, may satisfy the statute, provided the name has not already been appropriated for something else so that it's use would tend to deceive.

1954

§ 63. Systems of licensing and inspection of goods made from a basic ingredient bearing a trademark.-The manufacturer of a basic ingredient, such as a syrup, which is known by a trademark or tradename, and which is to be treated by the trade by the addition of a diluent, has the right to maintain the integrity of his product by controlling the use of his basic ingredient, to the extent of granting exclusive licenses and maintaining a system of inspection of the final product as sold

54-United States V. Forty Barrels, 241 U. S. 265; 60 L. Ed. -; reversing the judgment in 191 Fed. Rep. 431, which was affirmed, 215 Fed. Rep. 535; 132 C. C. A.

47 (C. C. A. 6). For the same question under the New York statute, see Crescent Mfg. Co. v. Wilson, 233 Fed. Rep. 282.

to the consumer. A system of contracts of this kind was attacked as being in violation of the Sherman Act (July 2, 1890, c. 647, 26 Stat. at L. 209 and amendments), to which defense the court responded: "The trademark laws, like the patent laws, give the owner a monopoly which neither the Sherman Act nor any other Act of Congress forbids. It would be a paradox to say that the exercise of a right, expressly granted by law, is unlawful.” 55 In the same case the defendant, an infringer, urged the contracts in question to be in violation of sec. 3 of the "Clayton Act" (October 15, 1914, c. 323, 38 Stat. at L. 730), reading

"That it shall be unlawful for any person engaged in commerce, in the course of such commerce, to lease or make a sale or contract for sale of goods, wares, merchandise, machinery, supplies or other commodities, whether patented or unpatented, for use, consumption or resale within the United States or any territory thereof or the District of Columbia or any insular possession or other place under the jurisdiction of the United States, or fix a price charged therefor, or discount from, or rebate upon, such price, on the condition, agreement or understanding that the lessee or purchaser thereof shall not use or deal in the goods, wares, merchandise, machinery, supplies or other commodities of a competitor or competitors of the lessor or seller, where the effect of such lease, sale, or contract for sale or such condition, agreement or understanding may be to substantially lessen competition or tend to create a monopoly in any line of commerce.

It was argued that the plaintiff's contracts made it impossible for the defendant to secure the plaintiff's product, and that the plaintiff had actually refused to sell that product to the defendant. This defense was disposed of by the court saying "whether that act is to be construed so as to compel one to sell his wares or manufactures to any one applying therefor can not be determined in this case, as this is not an action to obtain relief of that nature, and is therefore not involved." 56

55-Trieber, J., in Coca-Cola Co. v. Butler, 229 Fed. Rep. 224, 232. 56-Ibid, at p. 233, citing, for the interpretation of the Clayton Act, Union Pacific Coal Co. V. United States, 173 Fed. Rep. 737;

97 C. C. A. 578; Great Atlantic & Pacific Tea Co. v. Cream of Wheat Co., 224 Fed. Rep. 566, affirmed 227 Fed. Rep. 26 (C. C. A. 2).