defendant's machines for the plaintiff's, even if the defendant desired to do so, is very remote. 9a Where the competition was concerned only with repair parts for locomotive headlights, and the railroads were the only purchasers, Judge Pollock tersely said: "as these companies employ purchasing agents highly skilled and equipped with technical knowledge of what is desired and used by their company, and, as well, the value of the same, deception, even if attempted by defendant, would be both impractical and futile." 9b The retail purchaser of automobile tires is expected to pay closer attention than the purchaser of a pocket-knife or chewing gum." § 129. Infringement must be by use on same class of goods. -The English Patents, Designs, and Trademark Act, 1883 to 1888, provide that the application for registration must state the particular goods or classes of goods in connection with which the applicant desires the trademark to be registered.10 A similar provision exists in the Act of Congress of 1905.11 Aside from these provisions as to registration, it is self-evident that there can be no infringement unless the two marks are used on the same class of goods; 12 though in this country, owing to the absence of the exact classifications used in the English registration practice, it is probably more exact to 9a-Cornish, J., in Lapointe Mach. Tool Co. v. J. N. Lapointe Co. (Me.), 99 Atl. Rep. 348, 354. 9b-Pyle National Co. v. Oliver Elec. Mfg. Co., 281 Fed. Rep. 632, C. C. A. 8. 9c-Pennsylvania Rubber Co. v. Dreadnaught Tire & Rubber Co., 229 Fed. Rep. 560, 562, C. C. A. 3. 10 Patents, Designs and Trademarks Act, 1883, Part IV, § 62, subBec. 3. 11-Act of 1905, § 1. 12-In re Rabone, Seb. 642; In re Jelly, Son & Jones, 51 L. J. Ch. 639; In re Whiteley, 43, L. T. N. S. 627; Ainsworth v. Walmsley, L. R. 1 Eq. 518; Hall v. Barrows, 4 DeG. J. & S. 150; Hart v. Colley, 7 R. P. C. 93; L. R. 44 Ch. D. 193; 59 L. J. Ch. 355; Cartmell, 154; Jay v. Ladler, 6 R. P. C. 136; L. R. 40 Ch. D. 649; 60 L. T. 27; 37 W. R. 505; Cartmell, 184; Colman v. Crump, 70 N. Y. 573; Hecht v. Porter, 9 Pac. C. L. J. 569; Societe Anonyme v. Baxter, 14 Blatchf. 261, Fed. Case No. 8.099; Amoskeag Mfg. Co. v. Garner, 55 Barb. 151; George v. Smith 52 Fed. Rep. 830; AirBrush Mfg. Co. v. Thayer, 84 Fed. Rep. 640; II. Wolf & Sons v. Lord & Taylor, 202 O. G. 632, 41 App. D. C. 514, where it was sought to use the word "Onyx" for underwear after having been registered for hosiery; the case of Anglo-American, etc., Light Co. v. General Electric Co., 215 O. G. 325, 43 App. D. C. 385, with reference to use of the word "Mazda"; the Fishbeck Soap Co. v. Kleeno Mfg. Co., 216 O. G. 663, 44 App. D. C. 6, where "Kleeno" was sought to be filed for washing materials after having already been filed for polishing material; in Wilcox & White Co. v. Leiser, 276 Fed. Rep. 445, decided in the Southern District of New York, it was held that the word "Angelus" could not be used on a phonograph after having been filed to cover a player piano; Van Zile et al v. Norub Mfg. Co. (D. C.), 228 Fed. Rep. 829, where a germicide and cleanser was held to be in the same general class with a washing powder. say that the marks must be used upon goods of so similar description that goods bearing the defendant's mark may be taken for the manufacture of the plaintiff; as where the plaintiff adopted the words "Lone Jack" to designate smoking tobacco manufactured by him, and the defendant applied the same words to cigarettes. The court gave as its reason for enjoining the defendant that he was holding out his cigarettes as containing the plaintiff's tobacco.13 And where the defendants were selling shirts under the name of "Wamyesta' and advertising them as made of "Wamyesta," they were enjoined from using that designation at the instance of the Wamsutta Mills, whose product was known as "Wamsutta" muslin, and was not used by defendants in the manufacture of their shirts." 14 Where the complainants used the words "Collins & Co." upon metal articles of their manufacture, but did not manufacture shovels, the defendants were enjoined from placing those words on shovels, they having exported shovels so marked to Australia, where the complainants marketed a portion of their output.15 In a recent case Judge Bradford said: "Pale ale and half-and-half must, as against an infringer of a trademark for the former, be treated as malt liquors substantially similar to each other and belonging to the same class. Courts should not be astute to recognize in favor of an infringer fine distinctions between different articles of merchandise of the same general nature, and should resolve against the wrong-doer any fair doubt whether the public may or may not be deceived through the application of the spurious symbol." 16 Where the plaintiff was the manufacturer of "Omega Oil," a liniment extensively advertised as a remedy for skin and scalp diseases, a defendant who began to manufacture and sell a soap named "Omega Oil Medicated Soap," advertised by defendant as a remedy for diseases of the skin and scalp, an injunction was granted the plaintiff on the authority of the "Lone Jack" case, Judge Blanchard saying that "The adoption of the words 'Omega Oil' by defendant was calculated to deceive the public into the belief that plaintiff's article was being put up for sale in another form, at least into the belief that the soap was placed on the market by plaintiff or by its consent.""" 13-Carroll V. Ertheiler, Cox, Manual, 669; 1 Fed. Rep. 688. To the same effect, see American Tobacco Co. v. Polacsek, 170 Fed. Rep. 117. 14-Wamsutta Mills v. Allen, 12 Phila. 535. 15-Collins Co. v. Oliver Ames & Sons, 18 Fed. Rep. 561. See also 17-Omega Oil Co. v. Weschler, 71 N. Y. Supp. 983, 984; An It is the necessary converse of the rule under consideration that it is no defense to an action for trademark infringement that the defendant used the mark in application to another class of merchandise before the plaintiff began his use of the mark. Thus where a defendant had applied the word, "Epicure" to canned peaches and canned tomatoes, that fact did not avail as a defense, where the plaintiff was the first to apply the word to canned salmon, and the defendant afterwards began to apply it to canned salmon. In his opinion, Judge Coxe observes: "The reasoning of some of the authorities would indicate that the defendants had a right to use the brand in connection with other fruit and vegetables, analogous to tomatoes and peaches, but to assert that they have the right to use it on all canned goods is carrying the doctrine far beyond any reported case. Beer and nails do not belong to the same class of merchandise because both are sold in kegs."' 18 In a recent case in which the complainant's mark was applied to baking soda and saleratus, and the defendant's to baking powder, Judge Baker held the parties' goods to be in the same class because they were handled generally by the same class of dealers and purchased by the same class of customers; either is indifferently used to accomplish the same object; so that they come in direct competition with each other in sale and use. In that case the rule is announced that "goods are in the same class whenever the use of a given trademark or symbol on both would enable an unserupulous dealer readily to palm off on the unsuspecting purchaser the goods of the infringer as the goods made by the owner of the trademark, or with his authority and consent." 19 In the application of the rule, it has been held that the use of a red triangle on lager beer did not infringe the same device used as a trademark for ale.20 Budweiser heuser-Busch, Inc., V. 18-George v. Smith, 52 Fed. Rep. 830-832. The unfair competi tion of the defendant must involve the same class of goods as those of the plaintiff. Basket Stores v. Allen (Neb.), 155 N. W. Rep. 893. 19-Church & Dwight Co. V. Russ, 99 Fed. Rep. 276-280. 20-Bass v. Henry Zeltner Brew. Co., 37 C. C. A. 355; 95 Fed. Rep. 1006; affirming Bass v. Henry Zeltner Brew. Co., 87 Fed. Rep. 468. It has been held in the patent office that suspenders and hose-supporters are not goods of the same descriptive properties. 20a Effect of patent office classification.-Of course the "validity of a trademark can not depend upon classification or indexing by the Patent Office." 20b The "same descriptive properties," requirement of the act of 1905, or in plain English the market relationship of the goods of the respective parties, or the probability that purchasers may be misled, can not be over-ridden or superseded by the arbitrary classification of the Patent Office.20c On the other hand, where the goods of the respective parties are so different in character that no confusion or mistake of origin on the part of the purchasing public is possible, the mere similarity of the defendant's mark creates no cause of action.20d Effect of plaintiff's intention to extend his business to include the goods on which defendant is using the mark.-Where the plaintiff manufactured the "Angelus" piano-player, and had been experimenting for several years to perfect a phonograph to be sold under the name "Angelus" a defendant who entered the market with a phonograph marked "Angelus" and advertised it as the "Famous Angelus" was enjoined, 20e notwithstanding the earlier decision by the Circuit Court of Appeals of the same circuit that an unfilled intention of the Borden's Condensed Milk Co. to extend its business to ice cream did not entitle it to an injunction against one who applied "Borden's" to ice cream.201 But where the Prest-O-Lite Company had not extended its business to include storage batteries until other concerns had registered marks for electric lamps which closely resembled its trademark, its inaction was held to place it in a position where it could not prevent the registration of "Ray-O-Lite" for electric lamps.20g Fed. Rep. 510, 121 C. C. A. 200, C. C. A. 2. Of which case Judge Manton points out that the intimate relation between the numerous milk products of the Milk Co. and ice cream was ignored by the appellate court. See Wilcox & White Co. v. Leiser, 276 Fed. Rep. 445, 446. 20g-French Battery & Carbon Co. v. Prest-O-Lite Co., 265 Fed. Rep. 1013, C. A. D. C. See also Alaska Packers' Assn. v. Admiralty Trading Co., 43 App. D. C. 198. The right of the trademark owner not only to the exclusive use of the mark on goods which he has manufactured, but also on goods of the same class which he may afterwards produce has frequently been considered and the existence of that right affirmed, in cases originating in the Patent Office.20b It has been said that "no person may legally interfere with the use of the mark by him in the natural expansion of his business."' 201 The right of the trademark owner to enjoin the use of his mark upon goods of a species in which plaintiff is not dealing is tested by asking the question whether the defendant's use would create confusion between the parties and cause the public to believe that the plaintiff was connected with the defendant's business, 201 Thus the maker of "Kodak" cameras enjoined the making of "Kodak" bicycles; 20k the maker of "Dunlop" bicycle tires and other bicycle accessories, though not dealing in oil or lubricant, enjoined the use of "Dunlop" on oils and lubricants for bicycles, 201 § 130. The value of proof of fraudulent intent.-So much is said of fraudulent intent in the decisions that it is proper to discuss it in this place, in its relation to infringement. As we have seen, equity will restrain the use of the infringing mark without regard to the intent of the defendant. It is, however, a matter of practical importance to establish the deliberate fraud of the defendant where it exists. It was distinctly held by Lord Westbury that an account would only be given with the injunction in respect of any user by a defendant after he had become aware of the prior ownershop; 21 and in another case, where defendant claimed to have bought counterfeit champagne believing it to be genuine, an accounting was denied because of the absence of proof 20h-Walter Baker Co. v. Harrison, 32 App. D. C. 272; Simplex Heating Co. v. Gold Car H. & L. Co., 43 App. D. C. 272; Gutta-Percha & Rubber Mfg. Co. v. Ajax Mfg. Co. 48 App. D. C. 233. 201-Wm. Waltke & Co. v. Geo. H. Schafer & Co., 263 Fed. Rep. 650, Smyth, C. J. As to the right of a so-called "Golden Rule" department store to enlarge its scope of merchandise and so extend its tradename "Golden Rule" as a trademark, see Citizens' Wholesale Supply Co. v. Golden Rule, 147 Minn. 248, 180 N. W. Rep. 95 20j-Citizens' Wholesale Supply Co. v. Golden Rule, 147 Minn. 248, 180 N. W. Rep. 95. Compare Peninsular Chem. Co. v. Levinson, 247 Fed. Rep. 658, 660, 661, C. C. A. 6. 20k-Eastman Co. v. Kodak Cycle Co., 15 R. P. C. 105. 201-Dunlop Pneumatic Tire Co. v. Dunlop Lubricant Co., 16 R. P. C. 12. 21-Edelsten v. Edelsten, 1 DeG. J. & S. 185. For the American rule, see DeVoe Snuff Co. v. Wolff, 124 C. C. A. 302; 206 Fed. Rep. 420, 424. |