acteristics in a patented article after the expiration of the patent.19c

$115. The early adjudications.-The endeavor of the dishonest merchant to prey upon and profit by the reputation of his honest competitor is always hampered by fear of detection. If a trademark is counterfeited the counterfeit product is placed upon the market stealthily; where the offender lacks the courage to counterfeit he resorts to colorable imitations, not of his competitor's trademark, but of his methods of packing and preparing goods for sale, thus simulating a resemblance, in the words of Judge Lacombe, "sufficiently strong to mislead the consumer, although containing variations sufficient to argue about, should the designer be brought into court." 20

The earliest leading case involving this form of fraudulent competition arose between rival soap manufacturers. The plaintiffs made and sold an article styled "Genuine Yankee Soap." The defendant put up a soap under the same style, imitating the size and shape of the cake, the color and material of the wrapper, and a hand-bill as used by the plaintiffs. There was disinclination on the part of the court to decide whether the words "Genuine Yankee" were a valid trademark, and its decision was put solely upon the ground of unfair trade, the court saying: "The defendant is engaged in a gross and palpable endeavor, by imitating the marks and labels used by plaintiffs, to deceive the public and obtain patronage which would in all probability be attracted to the plaintiffs.

*

They have adopted, in reference to their manufacture (of an article which any and every one may manufacture and sell, if he please), a form and size of cake, a particular mode of covering and packing, a combination of three labels on each. cake, an exterior hand-bill upon the box, and have so arranged the whole as to suggest to any one desiring to purchase their soap, upon an inspection, that the article is theirs, and made by them, like that heretofore made, sold and known as their

19c-Daniel v. Electric Hose & Rubber Co., 231 Fed. Rep. 827, C. C. A. 3 (corrugated rubber hose).

20-Collinsplatt v. Finlayson, 88 Fed. Rep. 693.

*

manufacture. All this the defendant has copied, with an exactness which is calculated to deceive even the wary, much more to entrap those who are not in the exercise of a rigid scrutiny. Without deciding whether the defendant may or may not use either of the words 'Genuine' or 'Yankee,' in any possible combination, we think it sufficient to say that he may not use the labels, or devices, or hand-bills which he is using, nor any other like labels, hand-bills, or devices, in imitation of, or simulating the labels, devices, or hand-bills used by the plaintiffs, as set forth in the bill of complaint, or any other similar labels, devices, or hand-bills calculated to deceive the public, or create the belief that the soap he sells is the soap made or sold by the plaintiffs under the name of Genuine Yankee Soap."21

Mr. Rowland Cox has said,22 however, that the rule "that where the appearance of a peculiar and original package has acquired through use an understood reference to the goods of a manufacturer, and a competing manufacturer knowingly imitates the peculiar characteristics of the package, with intent to deceive the public, such imitations will be held to be an infringement of the rights of the person first using the package," can hardly be said to have found distinct expression prior to 1878, where it occurs in the opinion of Judge Wheeler in Frese v. Bachof.23 And, indeed, that decision, if not the earliest, is still one of the clearest in its enunciation of the rule.

§ 116. Infringement of color.-The cases in which an unfair. competition is effected by means of infringement of color alone are naturally very few in number. Where the color involved. is common to the trade, it will be disregarded in determining the issue of infringement.24 Indeed, the case nearest approximating such an infringement is one in which the complainant and defendant manufactured stoves of similar external appear

21-Williams v. Johnson (1857).

2 Bos. 1; Cox, 214.

22-Cox, Manual, p. 86; note to Williams v. Johnson, supra.

23-Seb, 603; 13 Off. Gaz. 635; Fed. Case No. 5,110.

24-Postum Cereal Co. v. American Health Food Co., 56 C. C. A. 360; 119 Fed. Rep. 848, 852; Continental Tobacco Co. v. Larus & Bro. Co., 66 C. C. A. 557; 133 Fed. Rep. 727.

ance, enameling the inside faces of their stoves with white enamel. On demurrer to the bill Judge Baker said: "If the question for decision were simply whether the plaintiff could acquire the sole right to use white enamel for the lining of the doors of its stoves and ranges, it would present a question whose solution would prove embarrassing. But the case made upon the bill and admitted by the demurrer is that the defendants are manufacturing stoves and ranges having white enamel doors in the similitude of those manufactured by complainant, and with the fraudulent purpose of palming them off upon the trade and the public as the stoves and ranges manufactured by the complainant. It is not necessary to determine whether the white enamel lining, which has been long and exclusively used by the complainant for the inner lining of the doors of its stoves and ranges, constitutes a trademark, or whether it does not. It is sufficient to justify the interposition of a court of equity if the stoves and ranges manufactured by the defendants are purposely constructed in the similitude of those manufactured by the complainant, with the intention and result of deceiving the trade and public, and inducing them to purchase the stoves and ranges of the defendants in the belief that they are purchasing the stoves and ranges of the complainant's manufacture. The imitative. devices used upon the stoves and ranges manufactured by the defendants are alleged to be employed by them for the purpose and with the result of deceiving the public, and thereby diverting the trade of the complainant to the defendants. This they have neither the moral nor the legal right to do." 25

The courts have been uniformly averse to recognizing anything remotely resembling a monopoly of color. "There are not more than seven primary colors, and if one of these may be appropriated as a distinguishing characteristic of a label, it would not take long to appropriate the rest. To allow colors

25-Buck's Stove & Range Co. v. Kiechle, 76 Fed. Rep. 758.

to be appropriated as distinguishing characteristics would foster monopoly by foreclosing the use by others of any tasty dress."' 25a

Where several of the colors are copied--as Wrigley's pink wrapper plus red lettering plus green decorations-the "appropriation" is that of a color scheme and of course is fraudulent.25b Where a pipe having a white spot on its mouth-piece, was advertised as "The White Spot" and sold under "the White Spot guarantee," injunction against the use of a red spot was refused, Russel, J., observing of the spots of the respective parties that they differed "in the only respect in which two spots could differ from each other, namely, size and color." 25c

The question of its collocation must always be considered in connection with the question of infringement by the use of color. Announcing the opinion of the Federal Circuit Court of Appeals of the Second Circuit, Judge Lacombe has said: "Color, undoubtedly, is a most important element in all package combinations; but there are other elements as well, which go to make up the entire combination. Because a total change of color would so change the general appearance as to destroy resemblance to another package, it by no means follows that color alone would be sufficient to produce a general appearance, resembling another package. It would not be giving the complainant a monopoly of yellow to restrain the sale of a particular yellow package, where, in addition to the color, a number of other elements, each differing more or less from its analogue in complainant's package, had been so collated together as to produce a general appearance calculated to delude the unwary purchaser." 26

25a-Finlayson, P. J., in Southern California Fish Co. v. White Star Canning Co., 45 Cal. App. 426, 187 Pac. Rep. 981, 983.

25b-Wm. Wrigley, Jr., v. Colker, 245 Fed. Rep. 907, 909.

25c-The Dunhill Pipe case; Dunhill v. Bartlett & Bickley, 39 R. P. C. 436, 437.

26-N. K. Fairbank Co. v. R. W. Bell Mfg. Co., 77 Fed. Rep. 869; 23 C. C. A. 554; reversing s. c. 71 Fed. Rep. 295. To the same effect see Allen B. Wrisley Co. v. Geo. E. Rouse Soap Co. 87 Fed. Rep. 589.

So that we find many cases in which the imitation of color has been a material element in determining the question of infringement. In a proper case the court will enjoin the defendant from using the color used by the plaintiff, upon the theory that the defendant must be allowed no advantage out of the trade thus obtained wrongfully, but must establish the reputation of his goods upon merit, and without benefit of the imitation.28

It may be said that in issues of technical trademark infringement the color of the respective marks is frequently of con