though obviously to a wholly indeterminate, extent. However, I need not accept, because I do not believe, that all the piratical drug was sold to the consumer under the name, "Acetyl Salicylic Acid." This is inherently improbable, and evidence to the contrary was not produced by, and naturally not available to, the plaintiff.

Aside from the fact that there is authority for saying that the inadequacy of the patent wholly to protect the plaintiff is immaterial, Horlick's Food Co. v. Elgin Milkine. Co., 120 Fed. R., 264, this evidence does not appear to me to help the plaintiff at all. It shows nothing more than that there was a class of buyers who knew a drug going by the name, "Acetyl Salicylic Acid," which was useful for some purposes, in fact (thought this they did not necessarily know), the same as those for which "Aspirin" was useful. There is no evidence that these buyers knew that this drug was the same as "Aspirin," or that they ever asked for or bought or bought "Aspirin." Nor is there any evidence, as I have already said (and this is the critical point), that with rare exceptions those who asked for, and knew, "Aspirin," identified it with "Acetyl Salicylic Acid," or supposed that "Aspirin" was that drug, when made by some one in particular. They bought tablets of various manufacture, and if they knew of the different tablet makers, they would, as above stated, have supposed that not only the tablets but the drug itself was made by the chemists from whom it apparently emanated. For these reasons I do not regard the sales of "Acetyl Salicylic Acid" by that name as material to the issue between the parties here.

After the autumn of 1915, the plaintiff totally changed its methods,

and thereafter no tablets reached the consumer without its own name. But it is significant that even then it used the word "Aspirin," as though it were a general term, although it is true that there was ample notice upon the bottles and boxes that "Aspirin" meant its manufacture. The most striking part of the label read, "Bayer-Tablets of Aspirin." While this did not show any abandonment of the name, which there has never been, it did show how the plaintiff itself recognized the meaning which the word had acquired, because the phrase most properly means that these tablets were Bayer's make of the drug known as "Aspirin." It presupposes that the persons reached were using the word to denote a kind of product. Were it not so, why the addition of "Bayer," and especially why the significant word "of"?

Disregarding this, however, it was too late in the autumn of 1915 to reclaim the word which had already passed into the public domain. If the consuming public had once learned to know "Aspirin" as the accepted name for the drug, perhaps it is true that an extended course of education might have added to it some proprietary meaning, but it would be very difficult to prove that it had been done in seventeen months, and in any case the plaintiff does not try to prove it. The issue in this aspect indeed becomes whether during that period the word had obtained a secondary meaning, and I do not understand. that any such thing is claimed. If it is, I own I cannot find any basis for it in the record. Probably what really happened was that the plaintiff awoke to the fact that on the expiration of the patent its trademark would be questioned, and

strove to do what it could to relieve it of any doubts. Yet, had it not been indifferent to the results of selling to the consumer, it could have protected itself just as well at the time when consumers began to buy directly as in 1915. Nothing would have been easier than to insist that the tablet makers should market the drug in small tin boxes bearing the plaintiff's name, or to take over the sale just as it did later. Instead of this they allowed the manufacturing chemists to build up this part of the demand without regard to the trade-mark. Having made that bed, they must be content to lie in it. Hence it appears to me that nothing happening between October, 1915, and March, 1917, will serve to turn the word into a trade-mark.

The plaintiff argues that if it is to be so treated, it is impossible to get a trade-mark for an "ethical" remedy, which apparently means a remedy not directly advertised or sold to the public. But it must not blow hot and cold. If a manufacturer thinks it undesirable to advertise and sell drugs direct, the inevitable consequence of adhering to that standard is that no trade-mark among consumers can be acquired, because they can know nothing of it. Virtue in such cases must be its own reward, or must realize its material profits in the long cast. Moreover, the plaintiff's complaint comes now with doubtful consistency after some sixteen years of sales in one way or another without the intervention of physicians. It can scarcely claim to have been ignorant of the fact that the millions of tablets which were being sold before October, 1915, were in large part sold direct, and that if it was not itself addressing the consumer, it had become unnecessary to do so.

I do not suggest that there was the least impropriety in all this, but it appears to me to leave little ground for asserting that its superior virtue has been the cause of its undoing. Besides, however much can be made of this before October, 1915, thereafter the plaintiff certainly felt no compunctions. Now its drug was no different from itself than in 1899; nor was there I think any less danger from self-medication. They had, indeed, through their admirable methods of introducing it, given it a good reputation, consonant with their own very high standing, but that seems to me rather an instance of the skill with which their business was conducted, than of scruples, which in the light of subsequent events, they would, I should say, have always thought overstrained. But however all that may be, they cannot of course get a trade-mark conditioned in fact upon directly addressing the consumer, and maintain a reputation based upon never doing so.

There are words, such as "Lactobacilline," 29 Rep. Pat. Cas. 497, "Vaseline," 19 Rep. Pat. Cas. 342, "Argyrol," 164 Fed. R. 213, "Valvoline," 38 Fed. R. 922, or "Celluloid," 32 Fed. R. 94, which may at once mean both the kind of goods and their maker. These will be entitled to a qualified protection. The most striking illustration is perhaps Singer v. June, supra, itself, where the putative mark was a proper name. The validity of a trademark does not, indeed, rigidly depend upon its meaning only the differential between a genus, defined by the kind of goods, and a species, defined by that kind when emanating from the owner, Gustavino v. Comerma, 180 Fed. R. 920. When it means the owner as well as the kind, it will be entitled to a quali

fied protection; when, as here among the trade, there is another current word, it may be entitled to an absolute protection, patent or not. For a patent gives the public no greater rights than it has without patent. We speak of a dedication of the disclosure, but that is rather for convenience. In fact, the public may always practice the invention, except as the monopoly interferes, and it gets that right independently of the patent. But when, as here among consumers, a mark does not give even an intimation of the owner, there is no room at all for any protection, Centaur Co. v. Hainsfurter, 84 Fed. R. 955, Linoleum Mfg. Co. v. Nairn, L. R. 7 Ch. Div. 834. After all presumptions and other procedural advantages have been weighed, the owner must show that his mark means him, else he cannot prevent others from using it. There is no invention in the word, qua word, which he can protect.

The case, therefore, presents a situation in which, ignoring sporadic exceptions, the trade is divided into two classes, separated by vital differences. One, the manufacturing chemists, retail druggists and physicians, has been educated to understand that "Aspirin" means the plaintiff's manufacture, and has recourse to another and an intelligible name for it, actually in use among them. The other, the consumers, the plaintiff has, consciously I must assume, allowed to acquaint themselves with the drug only by the name, "Aspirin," and has not succeeded in advising that the word means the plaintiff at all. If the defendant is allowed to continue the use of the word of the first class, certainly without any condition, there is a chance that it may get customers away from the plaintiff by

deception. On the other hand, if the plaintiff is allowed a monopoly of the word as against consumers, it will deprive the defendant, and the trade in general, of the right effectually to dispose of the drug by the only description which will be understood. It appears to me that the relief granted cannot in justice to either party disregard this division; each party has won, and each has lost.

The plaintiff argues that this is an innovation in the law. I think not. In two very recent cases the Supreme Court has taken the very point, though the division chanced to be territorial instead of arising from the facts of the market. In Hanover Milling Co. v. Metcalf, 240 U. S., 403, and United Drug Co. v. Rectanus, 248 U. S., 90, a trade-mark and a trade-name were refused protection, though valid elsewhere, in parts of the country where the buyers did not know that they signified the owner, and because they did not. Mr. Justice Pitney especially adverted to the basis upon which the whole law rests. Cessit ratio, cessit lex. If the rule applies to vertical divisions of the demand, it must apply to horizontal. Of course, we must not attempt too fine an application of such divisions, one reason perhaps for Mr. Justice Holmes' concurring opinion in Hanover Mills v. Metcalf, supra. For example, in the case at bar it is impossible to provide for such rare retailers as may not, and such rare customers as may, know that "Aspirin" is a trade-mark. We can cut only so fine as our shears permit, and there will be ragged edges on either side.

As to the first class the question arises whether the injunction should be absolute or conditional. A strong

case may be made for the defendant's present labels. They all bear the letters, "U. D. Co." in juxtaposition with "Aspirin" and of equal size. These letters are universally known by the trade to signify the plaintiff, because the custom is general for manufacturing chemists in this way to mark their goods. I think that the plaintiff would be adequately protected, but for the ten years' history of the tablet trade. However, the fact is that during that time such legends were used to indicate that the manufacturing chemist who signed, as it were, the label, was making the tablets from the plaintiff's powder. Probably, at present that belief has largely disappeared, but since we are dealing with customers who are presumably aware of that history, and who have been repeatedly told that "Aspirin" signifies the plaintiff, I can see no reason for subjecting it to the chance. The phrase, "Acetyl Salicylic Acid" to them is intelligible; it means the same drug as "Aspirin," and its use ought not unduly to hamper the trade in its business. Besides, the case in this aspect, is one of trade-mark proper. Therefore, I will grant an injunction against direct sales of the drug under the name "Aspirin" to manufacturing chemists, physicians and retail druggists. This will of course include invoices and correspond

ence.

In sales to consumers there need, however, be no suffix or qualification whatever. In so far as customers came to identify the plaintiff with "Aspirin" between October, 1915, and March, 1917, this may do it some injustice, but it is impracticable to give any protection based on that possibility. Among consumers generally the name has gone into the public domain. The

defendant, as I understand it, makes no direct sales, and all its transactions will therefore probably fall within the injunction, but the sale of its stockholding retailers will be free, and it may so instruct them. Moreover, I see no reason why the defendant should be compelled to sell in such large bottles or boxes that the retailers must bottle or box tablets for themselves. This is a trade advantage which conceivably may be of capital consequence in competition. True, it must sell to these retailers clearly under the name, acetyl salicylic acid, but the retailers may themselves use the word, "Aspirin." So it seems to me that the defendant should be allowed to pack its tablets in bottles or boxes of fifty or less, bearing the name "Aspirin" without more. These must, however, be sold to the retailers as acetyl salicylic acid and when shipped must be enclosed in a container marked only, acetyl salicylic acid, with the defendant's name on it. I have limited the quantity to fifty because it seems to me that in greater quantities the permission might be a means by which the retailers could sell the drug to physicians as "Aspirin. True, some physicians may buy as little as fifty at a time, just as some consumers in fact buy more. But some compromise must be made. If there are physicians who buy in such small quantities, the plaintiff must rely upon preventing the retailers from using those bottles; if there are consumers who wish more the defendant must submit to the disadvantage that the retailers must sell two at a time, or must relabel a bottle of one hundred.

The unfair trade aspect of the case requires little consideration. I can see nothing in the advertisements of the retail shops which is

open to criticism, except the use of the adjective "genuine," before "Aspirin." Of course, to those who know the drug only by that name this is not misleading, yet it is hard to escape the suspicion that the purpose was broader, perhaps to catch those consumers who have become conscious of the secondary meaning of the word, i. e., those whom the plaintiff's advertising since October, 1915, has reached. "Pure," or "unadulterated," would serve equally well for the purpose and would be free from any possible objection; perhaps there are other inoffensive adjectives. The injunction may include the use of "genuine." Criticism of the adverisement of "100," etc., appears to me a little overstrained.

I have not considered the question of the plaintiff's title, as I assume in view of the limited relief granted, the defendant will not care to press it. If not, I will do so upon request made within ten days after this opinion is filed.

There will be no costs. I append a form for the mandatory part of the decree as to the trademark which will serve unless the parties wish to have it modified:

"Against using the word 'Aspirin' in correspondence, invoices, bills of lading, and the like, or upon cartons, labels, or other marking, in any sales of 'Acetyl Salicylic Acid' to manufacturing

The

chemists, wholesale or retail druggists, or physicians. The defendant will be free to sell 'Acetyl Salicylic Acid' direct to consumers under the name 'Aspirin' without suffix or qualification. defendant in sales to retail druggists will also be free to pack tablets in bottles and boxes of fifty or less, labelled, 'Aspirin,' provided these bottles or boxes be wrapped or

boxed in containers marked 'Acetyl Salicylic Acid manufactured by U. D. Co.' without the word, 'Aspirin,' and that in making such sales, the correspondence, invoices, bills of lading and the like, refer to the drug so sold only as 'Acetyl Salicylic Acid.'

April 14, 1921.

United States

Complaint of Federal Trade Commission against Atholeather Company

Under Docket No. 807 the Federal Trade Commission has brought complaint against the Athol Manufacturing Company of Massachusetts, charging unfair methods of competition in interstate commerce in violation of the provisions of Section 5 of an Act of Congress approved September 26, 1914, entitled, "An Act to create a Federal Trade Commission, to define its powers and duties, and for other purposes," and particularly that in the course of its business, respondent has advertised its said product throughout the United States, under the name of Atholeather, and has sold and transported and now sells and transports it from the place where the same is manufactured to purchasers thereof in the various other States and Territories of the United States and the District of Columbia in direct competition with persons, co-partnerships and corporations engaged in the manufacture and sale in interstate commerce of leather and leather products;

That respondent manufactures Atholeather from cotton and finishes the same so as to resemble genuine leather though it contains. no leather, and has been selling,