tiff's indicia that plaintiff's trade dress has not had time to acquire a secondary meaning.78a The general doctrine has been stated with admirable conciseness by Judge Lurton, as follows: "When the word is incapable of becoming a valid trademark, because descriptive or geographical, yet has by use come to stand for a particular maker or vendor, its use by another in this secondary sense will be restrained as unfair and fraudulent competition, and its use in its primary or common sense confined in such a way as will prevent a probable deceit by enabling one maker or vendor to sell his article as the product of another. 99 79 The following elucidation of the doctrine under discussion is both accurate and comprehensive. "Primarily, it would seem that one might appropriate to himself for his goods any word or phrase that he chose; but this is not so, because the broader public right prevails, and one may not appropriate to his own exclusive use a word which already belongs to the public, and so may be used by any one of the public. Hence comes the rule, first formulated in trademark cases, that there can be no exclusive appropriation of geographical words or words of quality. This is because such words are, or may be, aptly descriptive, and one may properly use for his own product any descriptive words, because such words are of public or common right. It soon developed that this latter rule, literally applied in all cases, would encourage commercial fraud, and that such universal application could not be tolerated by courts of equity; hence came the 'secondary meaning' theory. There is nothing abstruse or complicated about this theory, however difficult its application may sometimes be. It contemplates that a word or phrase originally, and in that sense primarily, incapable of exclusive appropriation S. 427, 435; 48 L. Ed. 247, 252; affirming La Republique Francaise v. Saratoga Vichy Springs Co., 46 C. C. A. 418; 107 Fed. Rep. 459. To the same effect see Elgin National Watch Co. v. Loveland, 132 Fed. Rep. 41, 47; American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85; 53 N. E. Rep. 141; John T. Dyer Quarry Co. v. Schuylkill Stone Co., 185 Fed. Rep. 557; Manitou Springs Co. v. Schueler, 239 Fed. Rep. 593, C. C. A. 8 (reviewing the cases). 78a-Upjohn Co. V. Merrell Chemical Co., 269 Fed. Rep. 209, 213, C. C. A. 6; an exhaustive review of the cases. 79-Computing Scale Co. V. Standard Computing Scale Co., 55 C. C. A. 459; 118 Fed. Rep. 965. 967. Citing Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537, 549; 11 Sup. Ct. 396; 34 L. Ed. 997; Chemical Co. v. Meyer, 139 U. S. 540; 11 Sup. Ct. 625; 35 L. Ed. 247; Mill Co. v. Alcorn, 150 U. S. 460; 14 Sup. Ct. 151; 37 L. Ed. 1144; Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169; 16 Sup. Ct. 1002; 41 L. Ed. 118; Bennett v. McKinley, 13 C. C. A. 25; 65 Fed. Rep. 505. with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase had come to mean that the article was his product; in other words, had come to be, to them, his trademark. So it was said that the word had come to have a secondary meaning, although this phrase, 'secondary meaning,' seems not happily chosen, because, in the limited field, this new meaning is primary rather than secondary; that is to say, it is, in that field, the natural meaning."'79a 66 * * A merely descriptive epithet or the name of a person or of a place may become so associated with a particular kind of goods, or with the specific product of a particular manufacturer, that the mere attaching of that word to a similar product without more would have all the effect of a falsehood; and in such a case, while the use of that word can not be absolutely prohibited, it may be restrained unless accompanied by sufficient explanations or precautions to prevent confusion with the goods of the original manufacturer or vendor.'' 79b Secondary meaning doctrine applies to corporate names.-The descriptive terms in a corporate name (such as "Material Men's") are subject to the rule as to secondary meaning,79 but in any event there should be present such similarity of names as would plainly tend to deceive, or actual evidence that persons "have been deceived into the belief that the business of the defendant was that of the plaintiff.” 79d "Non functional" cases all "secondary meaning" cases.— "The cases of so-called 'nonfunctional' unfair competition, starting with the 'coffee mill case,' Enterprise Mfg. Co. v. Landers, Frary & Clark, 131 Fed. 240, 65 C. C. A. 587, are only instances of the doctrine of 'secondary meaning'. All of them presuppose that the appearance of the article, like its descriptive title in true cases of 'secondary meaning', has become associated in the public mind with the first comer as manufacturer or source, 79a-Denison, J., in Merriam v. Saalfield, 198 Fed. Rep. 369, 373, 117 C. C. A. 245, 249, C. C. A. 6, followed in Charles Broadway Rouss, Inc. v. Winchester Co., 290 Fed. Rep. 463. 79b-Sheldon, J., in C. A. Briggs Co. v. National Wafer Co., 215 Mass. 100, 103, 102 N. E. 87, 88 (Ann. Cas. 1914C. 926). 79c-Koehler v. Sanders, 122 N. Y. 65; Employers' Liability Assurance Corporation v. Employers' Liability Ins. Co., 10 N. Y. Supp. 845. 79d-Page, J., in Material Men's Mercantile Assn. v. Material Men's Credit Agency, 191 App. Div. 73. and, if a second comer imitates the article exactly, that the public will believe his goods have come from the first, and will buy, in part, at least, because of that deception. Therefore it is apparent that it is an absolute condition to any relief whatever that the plaintiff in such cases show that the appearance of his wares has in fact come to mean that some particular person-the plaintiff may not be individually known-makes them, and that the public cares who does make them, and not merely for their appearance and structure. It will not be enough only to show how pleasing they are, because all the features of beauty or utility which commend them to the public are by hypothesis already in the public domain. The defendant has as much right to copy the 'nonfunctional' features of the article as any others, so long as they have not become associated with the plaintiff as manufacturer or source. The critical question of fact at the outset always is whether the public is moved in any degree to buy the article because of its source and what are the features by which it distinguishes that source. Unless the plaintiff can answer this question he can take no step forward; no degree of imitation of details is actionable in its absence." 79e Further illustrative cases are collected in the note.80 79e-Learned Hand, J., in Crescent Tool Co. v. Kilborn & Bishop Co., 247 Fed. Rep. 299. For application of this rule see Steele v. Ward Co.. 257 Fed. Rep. 747; Fair & Carnival Co. v. Shapiro, 257 Fed. Rep. 558, 559. 80-"Easy Emptying" grass catchers for lawn-mowers, Zittlosen Mfg. Co. v. Boss, 135 C. C. A. 551; 219 Fed. Rep. 887; and Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537; 11 Sup. Ct. 396; 34 L. Ed. 997; Coats v. Merrick ThreadCo., 149 U. S. 562; 13 Sup. Ct. 966; 37 L. Ed. 847; Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169; 16 Sup. Ct. 1002; 41 L. Ed. 118; Elgin Nat. Watch Co. v. Illinois Watch Co., 179 U. S. 665; 21 Sup. Ct. 270; 45 L. Ed. 365; French Republic v. Saratoga Vichy Co., 191 U. S. 427; 24 Sup. Ct. 145; 48 L. Ed. 247; Herring, etc., Safe Co. v. Hall's Safe Co., 208 U. S. 554, 559; 28 Sup. Ct. 350; 52 L. Ed. 616; Standard Paint Co. v. Trinidad Asphalt Co., 220 U. S. 446; 31 Sup. Ct. 456; 55 L. Ed. 536; Davids Co. v. Davids, 233 § 83. Words of double meaning. In connection with the subject of "secondary" meanings, we may consider, briefly, the decisions concerning the appropriation to trade uses of the class of words having double meanings, being in one sense arbitrary and in another descriptive. A careful search of the decisions involving words of this character fails to disclose a clearer statement of the correct rule than is embodied in the following language of Judge Wallace: "No principle of the law of trademark is more familiar than that which denies protection to any word or name which is descriptive of the qualities, ingredients, or characteristics of the article to which it is applied. An exclusive right to the use of such a word, as a trademark, when applied to a particular article or class of articles, can not be acquired by the prior appropriation of it, because all persons who are entitled to produce and vend similar articles are entitled to describe them, and to employ any appropriate terms for that purpose. Whether a word claimed as a trademark is available because it is a fanciful or arbitrary name, or whether it is obnoxious to the objection of being descriptive, must depend upon the circumstances of each case. which would be fanciful or arbitrary when applied to one article may be descriptive when applied to another. If it is so apt, and legitimately significant of some quality of the article to which it is sought to be applied, that its exclusive concession to one person would tend to restrict others from properly describing their own similar articles, it can not be the subject of a monopoly. On the other hand, if it is merely suggestive, or is figurative only, it may be a good trademark, notwithstanding it is also indirectly or remotely descriptive. The word 9781 In the opinion quoted from, the word "instantaneous" was held to be aptly descriptive of one of the qualities of the goods to which it was applied. In a later case it has been held that the words "Queen," or "Queen Quality," as applied to Harness Trimming Co. v. RubberBound Brush Co., 81 N. J. Eq. 419; 88 Atl. Rep. 210; Ann. Cas. 1915B, 365; affirmed 81 N. J. Eq. 519; 88 Atl. Rep. 210; Ann. Cas. 1915B, 365; Thompson v. Montgomery, 41 Ch. D. 35; Wotherspoon v. Currie, L. R. 5 H. L. 508; Reddaway v. Banham (1896), A. C. 199; 25 Eng. Rul. Cas. 193; Furniture Hospital v. Dorfman, 179 Mo. App. 302, 166 S. W. Rep. 861; Silver Laundry & Towel Co. v. Silver, 195 S. W. Rep. 529 (not officially reported); Henry Perkins Co. v. Perkins, Mass. 140 N. E. Rep. 461. 81-Bennett v. McKinley, 13 C. C. A. 25; 65 Fed. Rep. 505, 508. shoes, are not so descriptive as to preclude their exclusive appropriation as a “tradename,” Judge Severens apparently using the word "tradename" as synonymous with "trademark.''82 "It has been repeatedly ruled that a word which suggests even the composition, quality, or characteristics of an article to which it is applied may yet be a good trademark." 83 § 84. The mark's validity to be judged as of the date of its adoption. In our consideration of what may and what may not be appropriated as a technical trademark, it must be borne in mind that the question must be judged as of the time when its claimant first applied it to merchandise, and "before he had taught the trade its meaning. That," says Judge Sanborn, "is the true test. ''84 82-Thomas G. Plant Co. v. May Co., 44 C. C. A. 534; 105 Fed. Rep. 375, 379. 83-Showalter, J., in Beadleston & Woerz v. Cooke Brewing Co., 20 C. C. A. 405; 74 Fed. Rep. 229, 234; citing Keasbey v. Chemical Works, 142 N. Y. 467; 37 N. E. Rep. 476. 84-Dissent in Wolf Bros. & Co. v. Hamilton-Brown Shoe Co., 165 Fed. Rep. 413, 418; 91 C. C. A. 363; citing Wellcome v, Thompson & Capper, 1 L. R. Ch. Div. 1904, 736, 742, 749, 750, 754; Keasbey v. Brooklyn Chem. Works, 142 N. Y. 467, 471, 474, 475, 476; 37 N. E. Rep. 476; 40 Am. St. Rep. 623. Judge Sanborn's dissent has been approved by the Supreme Court in IIamilton-Brown Shoe Co. V. Wolf Bros. & Co., 240 U. S. 641; 60 L. Ed. 629. |