CHAPTER VIII. INFRINGEMENT. § 113. Of infringement generally. The word "infringement" is difficult of exact definition. For the purposes of the present discussion, its broadest meaning, that of the infraction or invasion of another's trade rights, by passing off, or attempting to pass off, upon the public one's own goods as his, may suffice. As to technical trademark infringement, it should be more narrowly defined as the infraction or invasion of any portion of the mark, symbol or device in which one has acquired a right of property, either by way of reproduction in fac-simile, or imitation. An English text-writer has thus defined it: "Infringement is the use by the defendant, for trading purposes, in connection with goods of the kind for which the plaintiff's right to exclusive use exists, not being the goods of the plaintiff, of a mark identical with the plaintiff's mark, or either comprising some of its essential features or colourably resembling it, so as to be calculated to cause the goods to be taken by ordinary purchasers for the goods of the plaintiff." Vice-Chancellor Shadwell stated the rule to be that, if a mark contains twenty-five parts and but one is taken (i. e., imitated or copied), liability has been created thereby, and there has been a technical infringement.2 The same rule applies to cases of unfair competition, in which no technical trademark is involved. In such a case, the Supreme Court of Wisconsin has said "whether there is an imitation in fact * must be determined by inspection of the rival symbols or devices. It is not to be expected, 1-Kerly on Trademarks (2d Ed., London, 1901), p. 363. 2-Guinness v. Ullmer, 10 L. T. 127; Seb. 89. "The imitation need not be exact or perfect. It may be limited or partial; nor is it requisite that the whole should be pirated." Filley v. Fassett, 44 Mo. 173; Cox, 530; Seb. 313. And to the same effect, Braham v. Bustard, 9 L. T. N. S. 199; 1 Hem. & M. 447; 11 W. R. 1061; 2 N. R 572; Seb. 226. of course, that there will ever be an exact copy. The imitator will always seek to introduce enough differences to justify a claim that there has been no imitation, while incorporating enough similarities to carry the general effect of the original design to the mind of the unwary purchaser." a In a similar case Judge Lacombe has said: "On the papers and exhibits now before the court, there is apparently an effort still to simulate complainant's distinguishing packages, and at the same time present a number of points of difference to argue upon when charged with infringement. It is appar ently so easy for one who honestly seeks to sell his own goods as his own to dress them up in such a way that they may be recognized as his own, that, when he offers them to the public in a dress sufficiently like his neighbor's to deceive the average consumer, courts naturally suspect his motives to be such as his actions indicate."4 Copying as a test of infringement.-While the evident intent of the defendant to unfairly compete has often been a controlling factor in granting injunctive relief, there may be obvious copying which does not warrant the conclusion that there is any probability of deception created by that copying. The question is, not has defendant copied, but what is the actual or probable result.a § 114. No trademark in form, size, material or color.—It is a well-settled rule that there can be no trademark right in the mere form, size or color of an article used commercially, or the form, size or color of the package containing it. It is 3-Winslow, J., in Manitowac Malting Co. v. Milwaukee Malting Co., 119 Wis. 543; 97 N. W. Rep. 389. 4- Cuervo v. Owl Cigar Co., 68 Fed. Rep. 541, 542. V. 4a-Rathbone-Sard & Co. Champion Steel Range Co., 189 Fed. Rep. 26, 110 C. C. A. 596, 37 L. R. A. (N. S.) 258, C. C. A. 6; Troy Wagon Works Co. v. Ohio Trailer Co., 264 Fed. Rep. 347, 352. 5-Victor Talking Machine Co. v. Armstrong, 132 Fed. Rep. 711. 6-Moorman v. Hoge, 2 Sawyer, 78; Harrington V. Libby, 14 Blatchf. 128; Ball v. Siegel, 116 Ill. 143; Enoch Morgan's Sons Co. v. Troxell, 89 N. Y. 292; Sawyer v. Horn, 4 Hughes, 239; 1 Fed. Rep. 24; Manhattan Medicine Co. V. Wood. 108 U. S. 218; In re Kane & Co., 9 Off. Gaz. 105; Liggett & also an established principle that there can be no trademark right in the directions, notices or usual advertising matter used upon or in description of merchandise. There has never been a deviation from this rule in the adjudication of the courts of this country. Whenever relief has been granted against an imitator or counterfeiter of either the form, size, color, method of packing, advertising, or directions used by a legitimate dealer, it has been granted upon the broad theory of regulating fraud, and not upon the narrower ground of technical trademark infringement. There can be no technical trademark in a well known material substance, such as a tin tag impressed upon plug tobacco; nor in a method of packing merchandise; or a display card, with horizontal lettering, for hooks and eyes; 10 but a fraudulent imitation of another's tin tag has been restrained;11 and injunctions against the fraudulent use of another's style of package and method of packing12 are frequent, in the absence of any claim to a technical trademark right in the complainant. The courts have been averse to recognizing a trademark right in anything calculated to be useful, aside from indicating origin or ownership. So, in holding that there was no trademark right in a series of indentations in plug tobacco, so arranged as to serve as guides in cutting the plug into pieces of one ounce each, Judge Blodgett said: "One of the principles. running through the law of trademarks is that there need be no utility attached to the trademark itself-that is, it shall have no useful purpose in connection with the goods further than to show the origin or manufacture."'13 There may be combinations of form and color with other things, which will entitle the owner to relief against one dupli Fed. Rep. 809-811; Flagg Mfg. Co. v. Holway, 178 Mass. 83; 59 N. E. Rep. 667; E. Regensburg & Sons v. Juan F. Portuondo Cigar Mfg. Co., 136 Fed. Rep. 866, 869; E. Regensburg & Sons v. Juan F. Portuondo Cigar Mfg. Co. 73 C. C. A. 378; 142 Fed. Rep. 160. 7-Candee v. Deere, 54 Ill. 462; Ball v. Siegel, 116 Ill. 143; International Heating Co. v. Oliver Gas Burner Co., 288 Fed. Rep. 708, C. C. A. 8. 8-Lorillard v. Pride, 28 Fed. Rep. 434. 9-Davis v. Davis, 27 Fed. Rep. 490. 10-De Long Hook & Eye Co. v. Francis Hook & Eye Co., 118 Fed. Rep. 938. 11-Lorillard v. Wright, 15 Fed. Rep. 383. 12-Washington Medallion Pen Co. v. Easterbrook, Fed. Case No. 17, 246a. 13-Dausman & Drummond-Tobacco Co. v. Ruffner, Fed. Case No. 3,585; 15 Off. Gaz. 559. cating his article. Thus in a case where the defendant duplicated the plaintiff's talking machine records, injunction issued against the "manufacture and sale of disk records, black or nearly black in color, with a red seal center inscribed with decoration and letters in gilt, when such records contain the shop numbers or catalogue numbers of complainant's disk records, or when the sound recording grooves thereon are copies of the grooves on complainant's disk records." 14 Judge J. B. McPherson has well said "the superficial details of construction certainly need not be identical in nearly every particular"; and hence enjoined the defendant from imitating the plaintiff's miner's lamp.15 Finally, it is obvious, that where the resemblance resides in particulars of packages which have become common to the trade, no relief can be granted.18 A mark, consisting of a brown-colored paper cigar-band of peculiar shape, has been held to be invalid, Judge McPherson saying: "Certainly the color alone could not be appropriated by the complainant as a trademark, nor the shape alone, nor the material alone; and even the combination of these three elements could not make a valid trademark, because neither singly nor in combination do they point to the complainant as the source from which the goods are derived." 17 In a later case, the doctrine of color as trademark was thus aptly expressed by Judge (later Mr. Justice) Lurton: "Color except in connection with some definite, arbitrary design, such as when impressed upon a circle, star, cross, or other figure, or employed in definite association with some characteristics which serve to distinguish the article as made or sold by a 14-Victor Talking Machine Co. v. Armstrong, 132 Fed. Rep. 711. 15-Grier Bros. Co. v. Baldwin, 135 C. C. A. 433; 219 Fed. Rep. 735, 740. 16-Schenker v. Awerbach, 85 N. Y. Supp. 129. 17-E. Regensburg & Sons V. Juan F. Portuondo Cigar Mfg. Co., 136 Fed. Rep. 866, 869; affirmed, 73 C. C. A. 378; 142 Fed. Rep. 160. particular person, is not the subject of monopoly as a trademark. 18 So a metal tag applied to the shell of an oyster as an identification of plaintiff's oysters in the trade, gave the plaintiff no monopoly in the use of such tags.19 Though "shredded wheat" biscuits have been protected against unfair competition under the "secondary meaning" rule.19a Functional features.-Finally, this whole subject has been summed up by Judge Campbell, to the effect that plaintiff can have no monopoly either in colors or functional characteristics, 19b and this doctrine applies with peculiar emphasis to such char 18-Newcomer & Lewis v. J. A. Scriven Co., 168 Fed. Rep. 621; 94 C. C. A. 77; citing Diamond Match Co. v. Saginaw Match Co., 142 Fed. Rep. 727; 74 C. C. A. 59; A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U. S. 166; 50 L. Ed. 710. In the Schlitz case the manufacturer of beer claimed the exclusive right to use brown bottles with brown labels. It was held there that the adoption by a competitor may contribute to a wrongful deception, if combined with an imitative inscripton, but that, where the label was dissimilar to the plaintiff's in shape, script, meaning, and mode of attachment, it could not be said to add appreciably to the deception which might arise from the brown label or bottle. "But it is true that the unlawful imitation must be what achieves the deception, even though it could do so only on the special background lawfully used." Schlitz Brewing Co. v. Houston Tre Co., 250 U. S. 28, 63 L. Ed. S22. "Using a green color in soap, or on a wrapper or box of soap can not be enjoined. Omega Oil v. Weschler, 35 Misc. Rep. 441, 71 N. Y. Supp. 983. One can not have a trademark monopoly in the color of paper alone. Lalance & Grosjean Mfg. Co. V. Nat. Enameling & Stamping Co. (C. C.), 109 Fed. Rep. 317. The appellee's aspirin has been called the "red band" aspirin. It therefore claims the exclusive right to use the package with the red band upon it and call it "red band" aspirin. But to use this name is merely descriptive of the appellee's mark, which the appellant does not infringe." Manton, J., in Smith-Kline & French Co. v. American Drug Syndicate, 273 Fed. Rep. 84, 87 C. C. A. 2. 19-Armstrong Seatag Co. V. Smith's Island Oyster Co., 139 C. C. A. 656; 224 Fed. Rep. 100. 19a-Shredded Wheat Co. V. Humphrey Cornell Co., 250 Fed. Rep. 960, 964, 967, C. C. A. 2. 19b-Abbott Coin Counter Co. v. Standard-Johnson Co., 299 Fed. Rep. 418, 426. |