Syllabus.

cashier as collateral security for its money loaned. If collateral security, then collateral to the personal responsibility of Bayne & Co. on the notes, checks, and bills of exchange cashed for said firm by this defendant; collateral security in bank phraseology means some security additional to the personal obligation of the borrower. But admit that this construction is doubtful, it is not so doubtful as that construction which would limit the banks to the power of loaning money only on personal security, and deny to them the power of taking a pledge of stock as collateral security for notes or bills of exchange cashed by them. As I said before, a court of equity should never grant a preliminary injunction in a doubtful case. However, I have no doubt that the taking this collateral security from Bayne & Co. was a valid transaction, and whether it will ever avail the defendant anything will depend upon the decision of those tribunals before whom is now pending the question of the validity of the charter of the said railroad company and the character of its stock. The preliminary injunction asked for in this case is refused. For authorities to sustain the view I have taken of the law governing this case, I refer to the following cases: Bates & Hines v. The Bank of the State of Alabama, 2 Alabama Rep., 462; Magruder and others v. The State Bank, 8 Arkansas, 9; Bank of Middleburg v. Bingham, 33 Vermont, 636; Farmers' Bank v. Buechard, 33 Vermont, 348; and Rock River Bank v. Sherwood, 10 Wisconsin, 230.

Circuit Court of the United States for the Eastern District of Virginia, May, 1877.

KINNEY v. ALLEN & Co.*

The numerical symbol, printed in large, bold, red characters, in a certain form and style, had been used since 1873 by the complainant as one of his trade-marks on the packages and boxes of certain classes of cigarettes manufactured by him, and was registered in the United States Patent

*This report of this case is derived from The American Law Times Reports, Vol. IV, No. 6, p. 258.

Statement of the case.

Office in June, 1875. This symbol was originally employed to indicate the idea that the cigarettes were composed of two kinds of tobacco in the proportion of half and half; but except so far as it indicates this idea, which it does not really express, it is a merely arbitrary device. On a bill brought to enjoin against another's use of this symbol: Held, that the complainant had not a right to the exclusive use of the numerical character, written in any ordinary manner; but that he had a right to the exclusive use of it in the particular form, size, color, and style in which he had used and registered it.

IN equity.

This was a suit to restrain the infringement of a trade-mark. The trade-mark consisted of a representation of one-half, and had been duly registered in the Patent Office of the United States, pursuant to the Revised Statutes. The following is a fac-simile of it as shown by the proofs:

1/2

Other facts are set forth in the opinion.

Cox & Cox, for complainant.

The defences relied upon are as follows: (1.)

That the symbol is not a trade-mark because it is composed of numerals. (2.) That the symbol is not a trademark because it is descriptive. (3.) That, even if the symbol is a trade-mark, it has not been infringed, because the respondent's labels as wholes are entirely unlike complainant's.

1. A numeral or numerals may be used for a trade-mark. That a word or words may be employed as a trade-mark has long been settled law. It is submitted that it necessarily follows that a numeral or numerals may be. A word is the expression of a concept or idea. The word "ten" and the numeral 10 are essentially the same as vehicles of a concept. They are unlike only as "idem" and "same" are unlike. "1805 Brandy" would not be sustained for the same reason that "Eighteen Hundred and Five Brandy" would not; because both would necessarily express a fact concerning the date of production of the article. But "Five Fifty-five Brandy" would be good in law, and for the same reason "555 Brandy" would, it is submitted, be open to no objection. And, it may be added, if a manufacturer used "555" for one quality, "666" for another, and "777"

Statement of the case.

for a third, they would all be equally valid as arbitrary expressions of an idea. As far as any principle is involved, therefore, there is no difference between numerals and words.

The adjudged cases are to the effect that numerals may be employed as trade-marks. Gillott v. Esterbrook, 47 Barb., 455; Dawes & Fanning Case, Dec. Com. Pat., 1872.

2. The symbol as used by the complainant is not descriptive. The evidence shows that it has been used upon cigarettes made of two and three kinds of tobacco. Its office is the same as that of any other brand or trade-mark. The complainant manufactures a "St. James," which is made of one kind or mixture of tobacco; a "Caporal," which is made of another kind or mixture; an "Alexis," which is made of another kind or mixture, and so on. One of the incidental qualities of each of these different designations is that it signifies a particular kind of tobacco or mixture. "St. James" has been applied to a cigarette of perique; "Caporal" to a cigarette of perique and Virginia ; and "Alexis" to a cigarette of other tobaccos. Because these terms have been so applied, and have, when used on cigarettes of Kinney's manufacture, a distinct and indisputable reference to the ingredients of which the cigarettes are composed, they are none the less valid trade-marks. Because "St. James " has been invariably and continuously used on perique cigarettes by Kinney, and, as used by him, is synonymous with perique, it by no means follows that others may use "St. James " upon perique cigarettes. In brief, "St. James" does not mean simply perique cigarettes, but perique cigarettes made by Kinney, and any use of the word "St. James " in connection with cigarettes is a representation that they are (1) made of perique, and (2) made by Kinney.

If, then, it be conceded that the symbol of one-half, as used by the complainant, has been invariably applied to cigarettes made of mixed tobacco, it is not a sequitur that the respondents have a right to use it. In contemplation of law, upon such an assumption, the particular symbol means (1) cigarettes made of mixed tobacco, and (2) cigarettes made by Kinney.

It is confidently submitted, therefore, that any defence based

Statement of the case.

on the circumstances that the mark may have been used only upon cigarettes made of mixed tobacco, is without force.

The material inquiry then becomes, Is the red symbol, arranged as shown, descriptive?

The adjudged cases establish that a word is not a trade-mark, on account of its being descriptive, only when it is such by reason of its etymological relation to the article in connection with which it is employed. To be descriptive it must point directly to some quality or property of the goods. It must be an intelligible statement of a fact. It must communicate from its etymological nature, not by association or inferentially, some truth concerning the goods. Either this, or it must have come to be descriptive by public use as a term of art or trade. Thus "Navy" as applied to tobacco, and "Pig" as applied to iron, are descriptive terms by reason of common use. Both were once valid trade-marks, and yet both were originally used just as the symbolis alleged to have been used by the complainant. The originator of pig iron made an article of particular properties. The term was arbitrarily applied, but fell into general use, and so became descriptive. Perhaps a century hence a red one-half will be equally descriptive; but to-day it is just where the term "Pig" was when it was first used by its originator, and pointed to his production of iron.

The symbol, as used by the complainant, has in itself no meaning whatever.

What does it mean to the court when it is observed on a package of cigarettes? It is absolutely meaningless. The sole conception is that it is a symbol denoting one-half. Nothing beyond this is communicated to the mind. Everything else is conjecture. It may relate to price, or to ingredients, or to size, or to quality. It may mean that half the cigarettes are of one kind, and half of another, or that half-rate tobacco is used. It may mean any or all of these, and meaning any or all, it is not descriptive.

It signifies a fact only at most, when there is one-half of something, but what that something may be it does not and cannot denote. As a consequence, it is not in any right sense descriptive.

It is not a synonym of "mixed," and can only become such.

Statement of the case.

by common use. It may mean mixed on Kinney's goods, just as "St. James" means perique, but it does not, apart from Kinney's use of it, mean anything. It is, in brief, an arbitrary sign or mark used to denote a particular class of goods made by a particular person. It is a trade-mark.

3. But it is urged that even if the symbol is a trade-mark, it has not been infringed, because the respondents' labels as wholes are entirely unlike complainant's. There is no contention on the part of the complainant, that the labels as wholes are so nearly similar as to be likely to be mistaken. The case is purely a trade-mark case, the infringement consisting in the application of that which complainant insists is used to distinguish his goods, as a specific mark or symbol.

In respect of infringement, it is said by the Supreme Court of the United States, in the case The Canal Company v. Clark, 13 Wallace, 311: "The first appropriator of a name or device, pointing to his ownership, or which by being associated with articles of trade, has acquired an understood reference to the originator or manufacturer of the articles, is injured when another adopts the same mark or device for similar articles, because such adoption is in effect representing falsely that the productions of the latter are those of the former."

The language of the statute is: "Any person who shall reproduce, counterfeit, copy, or imitate any recorded trade-mark, and AFFIX THE SAME to goods of substantially the same descriptive properties, shall be liable to an action," etc.

There can be no doubt, therefore, that the question of whether the labels are generally similar is immaterial.

The distinctions of the present case are unquestionably nice, but it is thought that a critical examination must necessarily lead to the conclusion that the law is with the complainant.

John O. Steger, for respondents.

The complainant testifies that he has used the figures "1" on two brands of his cigarettes, the "St. James" and the "Caporal," as early as June, 1871, and the fact is not denied. He further testifies that he so used them as a trade-mark. This is denied, and is clearly disproved by the evidence.