§ 49. Generic terms judicially defined. It is confusing to the student to be told that words indicating quality can not be valid trademarks, and yet to be confronted by the physical fact and judicial dictum that the highest function of the trademark is its indication of quality. In a leading case Mr. Justice Field said that a trademark is "a sign of the quality of the article;"'++ and in the leading case of Amoskeag Manufacturing Co. v. Spear, the learned court says that the trademark of a manufacturer "is an assurance to the public of the quality of his goods." 45

ever, the judge (Duer) observes that the manufacturer "has no right to appropriate a sign or symbol which, from the nature of the fact which it is used to signify, others may employ with equal truth, and therefore have an equal right to employ for the same purpose. Were such an appropriation to be sanctioned by an injunction, the action of a court of equity would be as injurious to the public as it is now beneficial; it would have the effect in many instances of creating a monopoly in the sale of particular goods as exclusive as if secured by a patent, and freed from any limitation of time."

In another early case the chancellor observed: "In respect to words, marks or devices which do not denote the goods. or property or particular place of business of a person, but only the nature, kind or quality of the articles in which he deals, no property in such words, marks or devices can be acquired. There is obviously no good reason why one person should have any better right to use them than another. They may be used by many different persons at the same time, in their brands, marks or labels on their respective goods, with perfect truth and fairness. They signify nothing, when fairly interpreted, by which any dealer in a similar article could be defrauded. And in more recent cases the rule has been explained in somewhat similar terms: "It is true that no one can appropriate as a trademark the commercial

46

any particular excellence it may possess from the manner or materials of its manufacture. His trademark is both a sign of the quality of the article and an assurance to the public that it is a genuine product of his manufacture.'

"In Menendez v. Holt, 128 U. S. 514, 520; 9 Sup. Ct. 144, the court, speaking of the words 'La Favorita' as applied to flour, said:

"It was equivalent to the signature of Holt & Co. to a certificate that the flour was the genuine article which had been determined

*

And

by them to possess a certain de-
gree of excellence.
the fact that flour so marked ac-
quired an extensive sale, because
the public discovered that it might
be relied on as of a uniformly
meritorious quality, demonstrates
that the brand deserves protec-
tion rather than it should be de-
barred therefrom, on the ground,
as argued, of being indicative of
quality only.' Dennison Mfg. Co.
v. Thomas Mfg. Co., 94 Fed. Rep.
651-657.

46-Stokes v. Landgraff, 17 Barb. 608; Cox, 137; Seb. 121.

name of an article which every man has the right to make and sell. ''47

"No manufacturer can acquire a special property in an ordinary term or expression, the use of which as an entirety is essential to the correct and truthful designation of a particular article or compound. The courts have gone a long way, and with plain justice, in protecting the honest and enterprising manufacturer of any good and useful article from the unscrupulous pirating of his special reputation; but they have been equally careful to prevent any attempted monopoly of that which is common to all.''48

"Nor can a generic name, or a name merely descriptive of an article of trade; of its qualities, ingredients or characteristics, be employed as a trademark, and the exclusive use of it be entitled to legal protection., No one can claim protection for the exclusive use of a trademark or trade name which would practically give him a monopoly in the sale of any goods other than those produced or made by himself. If he could, the public would be injured rather than protected, for competition would be destroyed. ''49

The fact that the article to which the trademark is applied has obtained such a wide sale that the mark has become indicative of quality, as well as of origin and ownership, is not of itself sufficient to render the mark publici juris and so deprive its owner of the right to relief against infringers.50

Generic terms protected.-The protection of equity is extended under proper circumstances to generic words as readily as to technical trademarks. "Equity has never imposed any limitation on the kind of word entitled to this protection, but in every case it has to be proved that the mark has by user become in fact distinctive of the plaintiff's goods." 50a

§ 50. Marks common to the trade.-The expression "Common to the trade" is used in the Trademark Act of England in the following connection (T. M. A., 1905, s. 15):

"(3) Any device, mark, brand, heading, label, ticket, letter, word, figure, or combination of letters, words or figures, which was, or were, before the thirteenth day of August, one thousand eight hundred and seventy-five, publicly used by more than L. Ed. 581; 5 Am. L. T. 135; 1 Off. Gaz. 279; Seb. 327.

47-Dreydoppel V. Young, 14 Phila. 226; Price & Steuart, 423, 424.

48-Town v. Stetson, 5 Abb. Pr. N. S. 218; Cox, 514, 515.

49-Delaware & Hudson Canal Co. v. Clark, 13 Wall. 311-323; 20

50-Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537, 547; 34 L. Ed. 997; Burton v. Stratton, 12 Fed. Rep. 696.

50a-Lord Parker, in Registrar v. Du Cros, 83 L. J. Ch. 1.

three persons on the same or a similar description of goods shall, for the purposes of this section, be deemed common to the trade in such goods."

In applying the statute the English courts have interpreted the words "common to the trade" in their ordinary significance, which fact makes the English decisions concerning marks of this class valuable as precedents in this country. Speaking of this term, Mr. Justice Chitty said:

"The applicant's contention is that 'common to the trade' means that which is open to the trade to use, substituting another phrase, in order to bring out exactly the meaning which the applicant contended ought to be placed upon the words; and in support of his contention he puts this case: Supposing that there is some word which has been used by the trade largely, some ten years or so, or by twenty or thirty persons before the application for registration under this Act of 1883; but for certain reasons all those persons, except two or three, have dropped the user; they may have recourse to the user again at any time. If, says the applicant, the term 'common to the trade' is confined to user, it must mean user at the time of the application. That was also the contention on the part of the respondent, that 'common to the trade,' meant common user at the date when the application was made; and I think that is a very good illustration to show that the legislature could not have intended to employ this term in that sense. But the true resolution of the question is very simple; the phrase 'common to the trade' is not to be interpreted otherwise than according to the ordinary rules of grammar, and I think 'common to the trade' means exactly what it says. I can not really make use of a better term; but I can make use of a term which I think exactly corresponds with the meaning-I do not say it is better-that it is 'open to the trade.' '51

In examining the cases in which marks have been found to be common to a trade some curious instances will be found.52

51-Burland v. Broxburn Oil Co., 6 R. P. C. 482, 489.

52-Illustrations of marks common to the trade. The device of a cat, to the gin trade, Boord v. Huddart, 21 R. P. C. 149; In re Bagots, Hutton & Co., Ltd., 32 R. P. C. 333, 347; the word "Tower," to the tea trade, Great Tower Street Tea Co. v. Smith, 6 R. P. C. 172; bottles carried in stock by bottle dealers, though resembling plaintiff's, Hoyt

v. Hoyt, 143 Pa. St. 623; the word "Union" in the tobacco trade, United States Tobacco Co. v. McGreenery, 141 Fed. Rep. 531; containers used in hosiery trade, Holeproof Hosiery Co. v. Wallach Bros., 192 Fed. Rep. 534; a wheatsheaf mark in the flour trade, 33 R. P. C. 97, 101; concentric circles in the thread trade, Coats V. Merrick, 149 U. S. 562; 37 L. Ed. 847.

§ 51. The name given an unpatented invention by the inventor.-Such names clearly should, if otherwise unobjectionable, be treated as valid trademarks in the hands of the inventor or his assigns. Under the rule discussed in the next section, if the inventor patents his invention, he can not lengthen his monopoly's duration by applying a trademark to the patented article; his right to the trademark expires with the life of the letter's patent. Where he elects to dedicate his invention to the public, his right to adopt a trademark for such specimens as he himself may manufacture, is obvious. But the name by which he distinguishes his invention, being the necessary name of the article, can not be used by another, holding no assignment from the inventor.53

§ 52. Necessary name of a product.-The necessary name of a product, natural or manufactured, can not be a trademark, for the reasons we have discussed. This is true of goods manufactured under a patent. The descriptive name by which they are known during the life of the letters patent becomes their popular name in the trade-the name by which they are necessarily known and distinguished. When, therefore, the protection of the patent has expired the name is publici juris, and the manufacturer under the letters patent can claim no trademark in it.54

the device of a milkmaid, to the butter trade, In re Anglo-Swiss Condensed Milk Co., 20 R. P. C. 509; the words "Bank of England," to the sealing-wax trade, In re Hyde & Co., 7 Ch. D. 724; the words "Parchment" and "Bank," to the paper trade, In re Goodall, 42 Ch. D. 566; the words "Old Innishowen," to the whisky trade, Watt v. O'Hanlon, 4 R. P. C. 1; the words "Extra" and "Coker," to the canvas trade, In re Hayward & Sons, 54 L. J. Ch. 1003; the words "Braided Fixed Star," to the match trade, In re Palmer, 24 Ch. D. 504; the word "Selected," to the steel pen trade, In re Kuhn & Co., 53 L. J. Ch. 328; the words "White Swan" and the

picture of a swan floating upon water, to the flour trade, Bulte v. Igleheart Bros., 137 Fed. Rep. 492, 501; 70 C. C. A. 76; the word "Velvet," to the ice-cream trade, Chapin-Sacks Mfg. Co. v. Hendler Creamery Co., 231 Fed. Rep. 550; the "saw-buck" or "cross-bar" mark, to the tea trade, Castle v. Siegfried, 103 Cal. 71; 37 Pac. Rep. 210.

53-H. B. Chaffee Mfg. Co. v. Selchow, 131 Fed. Rep. 543.

54-Centaur Co. v. Robinson, 91 Fed. Rep. 889; Same v. Neathery, 91 Fed. Rep. 891; Same v. Hughes Bros. Mfg. Co., 91 Fed. Rep. 901. The cases are collected, ante, § 45.