But where the act of infringement occurs wholly in a foreign country an entirely different question is presented, and relief has been denied even though the court had jurisdiction over the parties, and the mark involved had been registered in the United States; Judge Kirkpatrick remarking that "to hold that the branding of goods in a foreign country with a trademark registered in the United States constitutes unfair competition in trade would be but another way of extending the trademark rights of a citizen of the United States beyond the borders of the country." 51

§ 145. Trademarks of variable sound and pronunciation.The owner of a valid trademark is, under all the authorities, entitled to equitable protection against one who subsequently adopts a mark calculated to create confusion of the goods of the respective parties.

Thus the use of the mark "Iwanta" was enjoined by Judge Lacombe because it was expressive of the same idea as "Uneeda" previously applied to biscuit,52 and in a later case, where the owner of the trademark "Yusea" sought to enjoin the use of the mark "U-C-A" Judge Hazel said:

"The controlling contention in this action is whether the complainant, having a prior and exclusive right to the designation 'Yusea,' has thereby also obtained an exclusive right to the use of the various pronunciations and the complex words or syllabic formations to which this particular word is susceptible. A moment's reflection reveals the various pronunciations and composite words to which 'Yusea' may be adapted. A trademark which is variously pronounced and distorted to suit the purposes of trade and the fancies of the manufacturer in his endeavor to catch the public eye may yet be protected, within the fair and reasonable scope of a trademark, however artfully it may be conceived. It appears from the affidavits of complainant's manager and advertising agent, the person who conceived the word, that the common pronunciation by the trade in general is as if it were spelt 'You see a,' and that the mantles manufactured by complainant are commonly known as 'You-see-a mantles.' This is accentuated by the ordinary pronunciations that follow a casual observation of this complex word. The unique alterations in 52-National Biscuit Co. v. Baker, 95 Fed. Rep. 135.

51-Vacuum Oil Co. v. Eagle Oil Co., 122 Fed. Rep. 105.

*

the pronunciations of the word must, I think, be regarded as incidental to its use. This perhaps enhances its value as an advertising medium. They do not change the registered designation, and the word 'Yusea' remains the dominating word in the trademark. The trademark, because of its variable sound and pronunciation, became more prominently known to the public, and thereby served the purpose for which it was conceived; i. e., to attract the attention of the public to the original conception." 53

8146. The effect of a plurality of marks for a single article. It would seem obvious that a trader might acquire and own as many trademarks as he desires. It would seem that he might, if he desired, have as many different trademarks for the same article of merchandise as he saw fit." 538 It seems perfectly clear that a trademark which is valuable because it attracts custom in one community may be utterly valueless in another.

The British decisions are replete with instances of special marks used for colonial trade, the same article being sold in Great Britain under a different mark. As a matter of fact many articles of merchandise are dealt in under a plurality of marks in this country, certain marks being used in the Northern trade, and different marks on the same merchandise for the Southern and Pacific Coast trade. It would seem that the courts would be as little concerned with the number of marks owned and used by a manufacturer as they would be with the number of patents or copyrights he might own or the number of any other chattels it might please him to acquire and for which he haply has the means to pay. And yet, these views which on their face appear manifestly obvious, are in conflict with the sole decision so far rendered upon this question and to which we will now briefly advert.

In Candee v. Deere,54 the complainant manufactured "Moline" plows at Moline, Illinois. On different qualities of these plows they used the marks "A. No. 1," "A. X. No. 1," "No. 1," "X. No. 1," "No. 3," and "B. No. 1." The word

53-Welsbach Light Co. v. Adam, 107 Fed. Rep. 463, 465.

53a-"It needs no argument to sustain the contention that a dealer may have more than one trade

mark." Winslow, J., in Smith & Wesson v. Galef, 292 Fed. Rep. 314, 315.

54-Candee v. Deere, 54 Ill. App.

439.

"Moline" being geographical, the complainant's case failed, and the letters and numbers being merely descriptive of different qualities of the plow did not help the complainant's case.

This case, consequently, appears quite irrelevant to the present question; but it has been used as the basis of the decision of Judge Jenkins dealing directly with the effect of ownership of a plurality of marks used on the same article, in which he says:

"The principal question which is suggested by the bill and the evidence is whether the manufacturer of a single article has the right to use, and be protected in the use of, more than one trademark for that article. I find little authority upon the subject, and have given to the question much consideration. Upon principle, I think that he can not. A trademark must denote origin. A trademark is defined by Mr. Upton to be the name, symbol, figure, letter, form, or device adopted and used by a manufacturer or merchant in order to designate the goods he manufactures or sells, and distinguish them from those manufactured or sold by another, to the end that they may be known in the market as his, and thus enable him to secure such profits as result from a reputation for superior skill, industry or enterprise. Upton, Trademarks, p. 9, c. 1. How can that purpose be accomplished, if a manufacturer dealing in a single article used a thousand different trademarks to designate the article and its origin? Such use necessarily produces confusion, and fails of the single purpose of the trademark, to designate with certainty the origin of the product. Certainly no manufacturer would, in regard of self-interest, indulge in such a practice; for he would thereby defeat the very purpose he sought to accomplish. This consideration has led me to the conviction that the complainant, the originator of perforated rolled toilet paper, would not do that which would blind the public mind to the originator and manufacturer of the article, and would tend to dissipate its trade. It is more probable (and the evidence, I think, sustains the conclusion) that its design. was, by the various names, to distinguish between the size, shape, and quality of the paper manufactured, and that the marks were not placed thereon as indicating origin. The only authority which I have been able to find passing directly upon

this question is the case of Candee v. Deere, 54 Ill. 439, 457. In the conclusion reached by the Supreme Court of Illinois upon this particular question, I fully concur. It is remarkable that, with respect to so simple a product as that in question, it should be found that so large a number of claimed trademarks should be used by one manufacturer. A court of equity can not be impressed by an appeal to protect that which produces infinite confusion. It may be that in the struggle for trade the whims of retailers must be consulted, and that rivalry between dealers to present something attractive to the public eye must exist; but the courts of equity do not sit to indulge the whims of purchasers, or to protect one in creating confusion. They sit to protect and to enforce legal and equitable rights. If this bill can be maintained, the extent of the proprietorship of the complainant in the use of arbitrary names applied to the subject of toilet paper would be limited only by the imagination of its officers." 55

§ 147. Confusion of mail matter as test of the right to injunction. The fact that the use of the mails is involved in the majority of commercial transactions has made the question of the confusion of mail matter one of the tests most frequently applied in cases involving firm names, corporate names, and the like, to determine whether or not the plaintiff is entitled to the relief sought.56 Thus we find in a case where the Continental Insurance Company of New York, sought to enjoin the Continental Fire Association of Texas from the use of its corporate name, Judge Meek gave as one of the principal grounds for denying the relief sought that "on account of the marked dissimilarity of the addresses of the two companies, mail matter intended for one of them will hardly be misdirected or miscarried to the other." 57 In a more recent case Judge Kohlsaat, in enjoining the name "Lilliputian Outfitters" at the instance of a complainant doing business as the "Lilliputian Bazaar," based the right or relief upon the prob

55-Albany Perforated Wrapping Paper Co. v. John Hoberg Co., 102 Fed. Rep. 157, 158.

56-N. R. Lynn Shoe Co. V.

Auburn-Lynn Shoe Co., 100 Me. 461; 62 Atl. Rep. 499.

57-Continental Insurance Co. v. Continental Fire Ass'n, 96 Fed. Rep. 846, 849.

able confusion of mail matter, says, "It is evident that complainant is a manufacturer and dealer, and that he does a large mail-order business, as does also the defendant. It hardly needs saying that the proficiency of the mails at this date is such that every nook and corner of the nation as well as of Manitoba is as accessible as were places 50 miles away from New York a few years ago. It can not be otherwise than that the advertising and canvassing of these two rival concerns pass and repass each other innumerable times in their journeys to the centers of trade as well as to the homes of the people -mute contestants for the favor of supplying the wants of each customer.” 58

In a New York case, a plaintiff who was the originator of a proprietary remedy sold to the defendant his business and goodwill, including the sole right to use the names "Dr. David Kennedy, of Rondout, N. Y.." and "Dr. D. Kennedy, of Rondout, N. Y." It was subsequently held that the defendant had the right to receive and open all letters addressed to the plaintiff by either of the forms of addresses named.59

In a subsequent suit, the plaintiff sought to enjoin the defendant from receiving and opening letters addressed to him by name at Kingston, N. Y. In granting the injunction, Betts, J., said: "It ought to be an extremely difficult matter for one person or corporation to obtain the right to open and examine another person's private correspondence without his consent. There is something so repugnant in such a proposition to all our ideas of common fairness that to simply state it is to arouse antagonism thereto. I am of the opinion that this can never become the settled law of this state in any case unless it clearly and unequivocally appears that both parties at the time of making any contract, agreement., or bill of sale relating thereto clearly understood and agreed that that was to be the result of the arrangement entered into." 60

In American Clay Mfg. Co. of Pennsylvania v. American Clay Mfg. Co. of New Jersey, 198 Pa. 189, 47 Atl. Rep. 936, the plaintiff was a Pennsylvania corporation, and the defendant

58-Ball v. Best, 135 Fed. Rep. 434, 437.

59-Kennedy Corp. v. Kennedy, 55 N. Y. Supp. 917.

60-Kennedy v. Dr. David Kennedy Corp., 66 N. Y. Supp. 225

229.