such manner as to mislead purchasers into buying his goods for those of the complainant, whether they be better or worse in quality.

The registration of such trademarks as "a green line or stripe" arbitrarily applied to one edge of a canvas belt, although the Patent Office persists in granting such registrations, can not be sustained.40

§ 117a. Copying Goods-Functional or Non-functional Features. To maintain the charge of unfair competition by imitation of goods it is necessary for the plaintiff to show: "That the appearance of his wares had in fact come to mean that some particular person-the plaintiff may not be individually knownmakes them, and that the public cares who does make them, and not merely for their appearance and structure.” 4oa

Copying merchandise.-Where a plaintiff produced toy animals, copied by defendant, the court observed "both parties have an equal right to copy nature," but expressed a belief that a different question would have been presented had the defendant copied "grotesque, comical dolls, or singular variants from normal animals."' 41

In

In connection with this branch of our subject, it should be noted that, in the absence of a patent, every one is at liberty to reproduce merchandise or machinery made by another. the language of the Massachusetts court, "in the absence of a patent, the freedom of manufacture can not be cut down under the name of preventing unfair competition." 42 In an

39-Sawyer v. Horn, 1 Fed. Rep.

24-38.

40-Gandy Belting Co. v. VictorBalata Co., 215 Fed. Rep. 795.

40a-Brown, J., in Hudson Motor Specialties Co. v. Apco Mfg. Co., 288 Fed. Rep. 871, 876, following Crescent Tool Co. v. Kilborn & Bishop Co., 247 Fed. Rep. 299, 159 C. C. A. 393. And see Wesson v. Galef, 286 Fed. Rep. 621, 623.

41-Hough, J., in Margarete Steiff v. Bing, 215 Fed. Rep. 204, 208; see also Steiff v. Gimbel Bros.,

131 C. C. A. 21; 214 Fed. Rep. 569; Margarete Steiff v. Bing, 124 C. C. A. 560; 206 Fed. Rep. 900, dealing with the same facts.

42-Holmes, C. J., in Flagg Mfg. Co. v. Holway, 178 Mass. 83; 59 N. E. Rep. 667. To the same effect see Piaget v. Headley, 68 N. Y. Supp. 351; Pennsylvania Brew. Co. v. Anthracite Beer Co., 258 Pa. 45, 101 Atl. Rep. 925; Chas. H. Elliott Co. v. Skillkrafters, Pa 114 Atl. Rep. 488.

9

earlier case, it was said that "apart from these (i.e., patents for inventions or designs) any one may make anything in any form, and may copy with exactness that which another has produced, without inflicting any legal injury, unless he attributes to that which he has made a false origin, by claiming it to be the manufacture of another person." 48 In a later case, Judge Severens has thus stated the rule: "Without doubt, a party may adopt distinguishing marks to denote the origin or production as being his own, or he may adopt some other peculiar method of distinguishing his own goods, and thus retain the benefit of the good reputation which he has acquired for them. But the very idea of distinguishing them implies that it can not be done by such universal characteristics as belong to other goods of the kind and which the general public have the undoubted right to use. But in making an article whose structure may be made by anyone, it is nevertheless unlawful to imitate its ensemble as made by another, with the purpose and effect of misleading the public."

43 Johnson, J., in Fairbanks v. Jacobus, 14 Blatchf. 337, 339; Fed. Case No. 4,608, and to the same effect, see Dover Stamping Co. v. Fellows, 163 Mass. 191; 40 N. E. Rep. 105; 28 L. R. A. 448; 47 Am. St. Rep. 448; Marvel Co. v. Tullar Co., 125 Fed. Rep. 829.

44 Globe-Wernicke Co. v. Fred Macey Co., 56 C. C. A. 304; 119 Fed. Rep. 696, 704; followed in Burrowes v. Carrom-Archarena Co., 190 Fed. Rep. 204.

45-Globe-Wernicke Co. v. Brown & Besly, 57 C. C. A. 344; 121 Fed. Rep. 90; Marvel Co. v. Pearl, 66 C. C. A. 226; 122 Fed. Rep. 160, distinguishes between the cases in which the resemblance between manufactured articles is due to the physical requirements essential to commercial success, and those in

77 44

which the resemblance of form and color are unnecessary and manifestly designed to misrepresent the origin of the articles. This decision, by the Court of Appeals for the Second Circuit, denying injunc tive relief on the peculiar facts of the case, was preceded by Enterprise Mfg. Co. v. Landers, Frary & Clark, 65 C. C. A. 587; 131 Fed. Rep. 240, and followed by Yale & Towne Mfg. Co. v. Alder, 83 C. C. A. 149; 154 Fed. Rep. 37 (reversing s. c., 149 Fed. Rep. 783), in both of which cases injunctive relief was granted. On an application for preliminary injunction, Judge Lacombe has said, "whether the shape of ventilators and location of parts have been selected because of some necessity or because of desire to imitate complainant's

Where the article involved "is merely a mechanical device designed to perform a strictly mechanical function, and is without ornamental or non-functional features," its manufacture or sale is not actionable, and the case falls within the category of "nonactionable imitation of merchandise without deception as to authorship.

45a

The rule under consideration has been admirably summed up as follows: "where the particular form is adopted to carry out economic, structural, or functional requirements, such act is no evidence of fraud or unfair competition. Necessary elements of mechanical construction, essential to the practical operation of a device, and which can not be changed without either lessening the efficiency or materially increasing expense, afford no presumption of an intent to compete unfairly. As I understand the rule of the vacuum cleaner case, a manufacturer may copy the functional features of an existing device, so long as he does not reproduce mere details animo furandi. If he seizes upon immaterial features, such as color, with intent to appropriate trade which belongs to another, he is liable for unfair competition, if the case involves misrepresentation as to origin."45b

structure is a matter which it would be very difficult to decide upon affidavits." Rushmore V. Saxon, 154 Fed. Rep. 213. Thus, it was held that check-marks produced on the head of a horseshoe nail as an incident in the course of manufacture, do not constitute a trademark, and their use by another will not, in the absence of proof of fraudulent intent or actual deception, be enjoined as unfair competition. Capewell Horse Nail Co. v. Putnam Nail Co., 140 Fed. Rep. 670. But the contrary was held in further litigation on the same mark.

45a-Eisenstadt Mfg. Co. v. J. M. Fisher Co., 232 Fed. Rep. 957, 959, 962; Hudson Motor Specialties Co. v. Apco Mfg. Co., 288 Fed Rep.

871, 876; Harvey Hubbell, Inc. v. General Electric Co., 262 Fed. Rep. 155.

45b-Sanborn, J., in Luminous Unit Co. v. R. Williamson & Co., 241 Fed. Rep. 265, 269; citing Pope Automatic Co. v. McCrum-Howell Co., 191 Fed. Rep. 979, 112 C. C. A. 391, 40 L. R. A. (N. S.) 463; Marvel v. Pearl, 133 Fed. Rep. 160, 66 C. C. A. 226; Yale & Towne Mfg. Co. v. Alder, 154 Fed. Rep. 37, 83 C. C. A. 149: Enterprise Mfg. Co. v. Landers (C. C.), 124 Fed. Rep. 923; Consolidated Ice Co. v. Hygen Distilled Water Co., 151 Fed. Rep. 10, 80 C. C. A. 506; O'Connell v. National Water Co., 161 Fed. Rep. 545, 88 C. C. A. 487; Yale & Towne Mfg. Co. v. Worcester Mfg. Co. (D. C.), 205 Fed. Rep. 952.

§ 118. Intent and scienter.-It was at first held that equity could only administer relief ancillary to that offered by the courts of law. It is, indeed, difficult to apprehend on what ground this reluctance to interfere in trademark cases arose. The only explanation vouchsafed is, that when chancery undertook to act it was "exercising a jurisdiction over legal rights. 46 But whether at law or in equity, the doctrine of the common law prevailed, that the defendant must be shown to have guilty knowledge or fraudulent intent.47

In 1838 the rule was distinctly announced that courts of equity "will act on the principle of protecting property alone, and it is not necessary for the injunction to prove fraud in the defendant.”48 This rule is now universally recognized in technical trademark cases.49 It is unnecessary to show

Capewell Horse Nail Co. v. Mooney, 167 Fed. 575; affirmed, Capewell Horse Nail Co. v. Mooney, 172 Fed. 826; 97 C. C. A. 248.

Similarity of manufactures in details not essential to the performance of the mechanical function will always be enjoined where it is so extensive as to satisfy the mind of the court that defendant was wil fully simulating the nonessential s of the complainant's wares, and that the result is confusion in the minds of the purchasing public. H. Mueller Mfg. Co. v. A. Y. McDonally & Morrison Mfg. Co., 164 Fed. Rep. 1001, 1005; Rushmore v. Manhattan Screw & Stamping Works, 163 Fed. Rep. 939; 90 C. C. A. 299. Important issues are, is the similarity necessary, or is it inherent in the nature of the article. Baldwin v. Grier Bros. Co., 215 Fed. Rep. 735, 737. For interesting cases of distinctive dress, sec Pacific Coast Condensed Milk Co. v. Frye & Co., 85 Wash. 133; 147 Pac. Rep. 865; Safe-Cabinet Co. v. Globe-Wernicke Co., 3 Ohio App. 24; 34 Ohio C. C. 528.

46-Motley v. Downman, 3 Mylne & Cr. 1-14.

47-Singleton v. Bolton, 3 Doug. 293; Morrison v. Salmon, 2 Man. & G. 385; Crawshay v. Thompson, 4 Man. & G. 357; Taylor v. Ashton, 11 M. & W. 402; Rodgers v. Nowill, 5 C. B. 109; Myers v. Baker, 3 H. & N. 802; Sykes v. Sykes, 3 B. & C. 541; 5 D. & R. 292.

48-Millington v. Fox, 3 Mylne & Cr. 338.

49 Glenny v. Smith, 2 Drew. & Sm. 476; 11 Jur. N. S. 964; 13 L. T. N. S. 11; 13 W. R. 1032; 6 N. R. 363; Seb. 247; Filley v. Fassett, 44 Mo. 173: Cox, 530; Seb. 313; Amoskeag Mfg. Co. v. Garner (1), 55 Barb. 151; 6 Abb. Pr. N. S. 265; Cox, 541; Seb. 314; Holmes, Booth & Haydens v. Holmes, Booth & Atwood Mfg. Co., 37 Conn. 278; 9 Am. Rep. 324; Seb. 340: Singer Mfg. Co. v. Wilson, 3 App. Cas. 376-391; Colman v. Crump, 70 N. Y. 573; 16 Alb. L. J. 352: Seb. 579; Shaw v. Pilling, 175 Pa. St. 78-87; Wotherspoon v. Currie, L. R. 5 H. L. 508517; McLean v. Fleming, 96 U. S. 245-253; 24 L. Ed. 828; Liggett

that the defendant knew that his trademark resembled any other trademark,50 and it follows that it need not be shown that he knew whose mark his resembled ;51 and, the intent of the defendant being immaterial, the fact that he intended to infringe plaintiff's rights will not entitle the plaintiff to relief if the defendant's acts do not amount to trademark infringement or unfair competition.52

There is a line of demarcation, to be noted in this regard, between the class of unfair trade cases which involves a technical trademark and that which does not. Where a plaintiff establishes by competent proof his title to the specific trademark, infringement is shown by comparison with the defendant's mark. The resemblance of the defendant's mark creates a presumption of fraud.53 But where the plaintiff has no trademark there is no basis of comparison such as existed in the former case, because there is no technical property right in the plaintiff. Mere resemblance between the goods of the parties may or may not be sufficient to establish the right to

& Myer Tob. Co. v. Hynes, 20 Fed. Rep. 883: C. F. Simmons Med. Co. v. Mansfield Drug Co., 93 Tenn. 84; Elgin Nat. Watch Co. v. Illinois Watch Case Co. (2), 179 U. S. 665-674; 45 L. Ed. 365; Cravenette Co. v. Benjamin, 105 Fed. Rep. 621; American Grocer Pub. Co. v. Grocer Pub. Co., 25 Hun, 398.

50-Kinahan v. Kinahan, 15 Ir. Ch. 75; Orr-Ewing & Co. v. Grant, 2 Hyde, 185; Singer Mfg. Co. v. Loog, 18 Ch. D. 412; Harrison v. Taylor, 11 Jur. N. S. 408; Edelsten v. Edelsten, 1 DeG. J. & S. 185; Burgess v. Hills, 26 Beavan, 244; Regis v. J. A. Jaynes & Co., 185 Mass. 458; 70 N. E. Rep. 480.

51-Cartier v. Carlile, 31 Beavan,

292.

52-Kann v. Diamond Steel Co., 89 Fed. Rep. 706-712. "An intention to injure, if no injury be done, constitutes no ground for relief." Jenkins, J., in G. W. Cole Co. v.

American Cement & Oil Co., 65 C. C. A. 105; 130 Fed. Rep. 703, 711; citing $76 of the first edition of this book, and Centaur Co. v. Marshall, 38 C. C. A. 413; 97 Fed. Rep. 785; Postum Cereal Co. v. American Health Food Co., 56 C. C. A. 360; 119 Fed. Rep. 848, 852.

53-"A trademark, clearly such, is in itself evidence, when used by a third party, of an illegal act. It is of itself evidence that the party intended to defraud and to palm off his goods as another's." Mr. Justice Bradley, in Putnam Nail Co. v. Bennett, 43 Fed. Rep. 800. And to the same effect, Boston Diatite Co. v. Florence Mfg. Co., 114 Mass. 69; McLean v. Fleming, 96 U. S. 245; 24 L. Ed. 828; Menen dez v. Holt, 128 U. S. 514; 32 L. Ed. 526; Lawrence Mfg. Co. V. Tennessee Mfg. Co., 138 U. S. 537; 34 L. Ed. 997; Galena Signal Oil Co. v. W. P. Fuller & Co., 142 Fed. Rep. 1002, 1007.