It was held by the late Mr. Justice Brown when nisi prius judge that one who begins to use a mark while it is in use by another can not acquire title by a subsequent abandonment by the first user, the court observing "if it be once conceded that a person may acquire a good title to a trademark by appropriation, without the consent of the lawful owner, it would enable a manufacturer, by the use of large capital or superior energy, to drive competitors out of business by seizing their trademarks, and using them for that very purpose, provided the lawful owner is unable or unwilling to assert his rights by resort to the courts."' 51 With this apparently sound doctrine the Court of Appeals, D. C., has differed, its reasoning being: "As long as the first appropriator is using the mark, the second acquires no property right therein. If his use interferes with that of the true proprietor, courts of equity afford the latter a swift and adequate remedy. We can not assume that one whose rights are invaded will not avail himself of such aid. If he is unwilling to do so, he must accept the consequences. When the owner abandons his mark, it becomes the subject of reappropriation and the property of the first taker. We fail to see why one already using the mark, where, as in this case, he has acted in good faith and without knowledge of its prior use, should not be as much entitled to appropriate it as one whose date of adoption is subsequent to the abandonment." 52

How a valid trademark may become common to the trade.-A mark may never become abandoned so as to become susceptible of appropriation as a trademark by another, while becoming common to the trade because of conduct by its owner depriving him of his trademark right, in view of outstanding adverse uses.

"I do not see how it is any answer to a man who comes forward to establish a common-law trademark to say that, some time after your character was established and your goods were known, and your money, time, and ingenuity have been expended, perhaps in large advertisements and otherwise, others began to use it and so, because they began to use it after

51-O'Rourke V. Central City Soap Co., 26 Fed. Rep. 576.

52-Mayer Fertilizer & Junk Co. v. Virginia-Carolina Chem. Co., 35

App. D. C. 425; 156 O. G. 539; compare McGraw Tire & Rubber Co. v. Griffith, 198 Fed. Rep. 566.

That

your rights had been ascertained, it is in common use. seems to me to be an argument which contradicts itself in the mere statement. When once appropriation has been made, common use becomes impossible; until the person entitled to the trademark allows others to use it so as to forfeit his right and so the words sink again into common use, from which, of course, after that, they can not be revived.''52a As a matter of practice, inasmuch as the plaintiff must show title in order to make a case, evidence of the fact that he or his predecessor in title was the first to appropriate the mark to the class of goods for which he claims it as a trademark, is usually a part of the prima facie case. In a New York case, it was shown in defense that prior to the date when plaintiff first labeled cigars with the label in controversy, certain label manufacturers had sold the same label to other persons in the trade. Injunction was denied upon the ground that such evidence negatived plaintiff's claim of exclusive title.58

A trademark right can not be negatived by any prior use for mere decorative purposes or on another class of goods.5+ And it has been held that the prior use as English silver hallmarks of the three component parts comprised in the complainant's mark did not deprive him of a trademark right therein.55

1956

It is now well established that priority of adoption alone does not necessarily determine the ownership of the mark. The use of the mark by one claimant may be "so transitory, spasmodic, and inconsiderable," as not to vest title in the user as against one whose use has been "long continued, and universally recognized. As Judge Elmer B. Adams has stated it, "The right to a trademark at common law, independent of the registration statute, is not created by invention or priority of adoption alone. A word, symbol, or device, to be a valid trademark constituting a right of property, must have been used by the owner in connection with the sale of his goods for such length of time, and under such circumstances,

52a-Kekewich, J., in Ripley v. Bandey, 15 R. P. C. 151. See post, $ 50.

53-Wagner v. Daly, 97 Hun, 477; 22 N. Y. Supp. 493.

54-Johnson & Johnson v. Seabury & Johnson, 61 Atl. Rep. 5; 69 N. J. Eq. 696.

55-Gorham Mfg. Co. v. Weintraub, 176 Fed. Rep. 927.

56-Heublein v. Adams, 125 Fed. Rep. 782, 785; Worden v. Cannaliato, 285 Fed. Rep. 988, 990.

as indicates to the trade that the goods in connection with which it appears are his goods, as distinguished from those of other manufacturers or dealers. The mere adoption of such word, symbol, or device, unaccompanied by such a use, is not sufficient to create an exclusive right thereto.' '57

It is noteworthy in this connection that in a very recent decision of the Court of Session in Scotland, before the Lord President (Dunedin) and Lords McLaren, Kinnear and Pearson, the rule we are contending for has been explicitly announced. In the decision of that court as announced by the Lord President, it is said:

"My Lords, I think it is very necessary to keep this firmly in view-that what we are doing in this case is something very different from what one does in examining the evidence in a case say, as to anticipation of a patent. If the right to a trademark was constituted by the fact that it was, so to speak, an invention, then it is quite clear that as soon as it was proved that the trademark had been used by anybody, however little the use was, but still had been used at a period prior to that when it was first possible to register it, that would be sufficient to put out of the way the claim to exclusive right of a person who had not registered for it. Now, property

in a mark does not mean a few isolated sales under that mark, but it means, as I take it, that you had sold so much goods under it that the mark had come, in a certain market, to be associated with your goods." **** "I will just say that taking the matter as a jury would, it seems to me that none of these people have really proved anything more than a very spasmodic use of the labels with a cat and barrel on them, and that by none of them is there really any trade proved that would associate their goods with a cat and barrel. '58

57-Macmahan Pharmacal Co. v. Denver Chemical Mfg. Co., 113 Fed. Rep. 468-476; 51 C. C. A. 302. To the same effect, see Tetlow v. Tappan, 85 Fed. Rep. 774, 775; Levy v. Waitt, 10 C. C. A. 227; 61 Fed. Rep. 1008; 25 L. R. A. 190; Cohen v. Nagle, 190 Mass. 4; 76 N. E. Rep. 276; Metcalf v. Hanover Star Mill Co., 204 Fed. Rep. 211; 122 C. C. A.

483; affirmed, 240 U. S. 403; 60 L. Ed. 713.

"It is settled law in this court that a trademark is not acquired by the invention or discovery of a word or symbol, or by advertisement. It only becomes a trademark by attaching or affixing it to certain articles of merchandise." Consumers' Co. v. Hydrox Chemical Co., 40 App. D. C. 284.

"Unless so well-known and so thoroughly recognized by the public as to be a distinctive name for a sufficient length of time, such words could not be the subject of a valid trademark. 59

The use of a handwritten label is sufficient to evidence adoption of the trademark; it need not be printed.59a Nor does the trademark registration statute require it to be printed.59b

Upon dissolution of a corporation, the appropriation of its trademark by one who was its principal stockholder and creditor, who takes over all the assets and agrees to pay all of its obligations is a valid adoption."9

§ 35. Acquisition of the right to use the name of another. As the subject of the use of proper names in trade is fully discussed elsewhere in this book we will in this section consider only the methods by which one trader may lawfully obtain the right to use the name of another person for trade purposes. The fundamental rule is, the right to use such a name must have been acquired in good faith and without any purpose to work a fraud on another; to merely "hire" such a right for the purpose of using it in competition with another having the same or a similar name, has been styled by Mr. Justice Bradley a "shallow pretext."61 The same rule applies to the adoption of a corporate name embodying a proper 62 and of course to partnership names.

63

name, The conveyance of such a right must be clear and unequivocal; "the right of a man to use his own name in connection with his own business is so fundamental that an intention to entirely divest himself of such right and transfer it to another will not readily be presumed, but must be clearly shown. Where it is so shown, the transaction will be upheld, but it will not be sustained upon doubtful or uncertain proof.

58-Boord & Son v. Thom & Cameron, Ld., 24 R. P. C. 697, at pp. 720, 721.

59-Chatfield, J., in Taylor Provision Co. v. Gobel, 180 Fed. Rep. 938; to same effect, Thomas G. Carroll & Son Co. v. McIlvaine & Baldwin, 171 Fed. Rep. 125, 129; Dietz v. Horton Mfg. Co., 170 Fed. Rep. 865, 869.

59a-Regis v. Jaynes & Co., 185 Mass. 458; 70 N. E. Rep. 480.

59b-Worden v. Cannaliato, 285 Fed. Rep. 988; C. C. A. D. C. 59c-Francis H. Leggett & Co. v.

1964

Ritzler, 285 Fed. Rep. 1008; C. A.
D. C.

60-See §§ 72, 76, 77; Act 1905,

§ 5.

61-Sawyer v. Kellogg, 7 Fed. Rep. 720, 722.

62-Garrett v. T. H. Garrett & Co., 24 C. C. A. 173; 78 Fed. Rep. 472, 475.

63-Gordon Hollow Blast Grate Co. v. Gordon, 142 Mich. 488; 105 N. W. Rep. 1118.

64-Harrison, J., in F. T. Blanchard Co. v. Simon, 51 S. E. Rep. 222; 104 Va. 209.

CHAPTER III.

WHAT CONSTITUTES A VALID TRADEMARK.

§ 36. The general rule.—Having seen in the preceding chapters something of the general requisites of a valid trademark, we now approach the subject of the more exact tests to be applied in determining its validity. It is the general rule that a mark must be truthful and unobjectionable on the ground of being a generic term.1

$37. It must be truthful.-This rule is apparently simple, yet it has given rise to much discussion and some apparent conflicts in the decisions. Honest competition is the requirement of the chancellor, and he is just as ready to dismiss the bill of a complainant whose trademark is calculated to deceive the public into a belief that his goods are something other than they actually are, as he is to enjoin the defendant where he has infringed an honest trademark. The modern law of unfair trade is a perfect superstructure of ethical principles, founded upon the basis of all ethics-honesty. In no class of cases is the rule that he who comes into a court of equity must do so with clean hands more rigidly applied.2 It is not material whether the words or symbols used as trademark contain the deceptive or untruthful statement. Indeed the dishonest matter is usually foreign to the mark itself, and contained in other matter used in advertising or describing the goods sold under the mark.

In order to appreciate the trademark cases involving the question of untruthful representation, the reasoning of the courts in other avenues of jurisprudence, in which the consideration of the effect of such conduct is involved, is worthy of study. It is impossible to collate even the leading cases illuminative of this subject, within the limitations imposed upon

1-Prince Mfg. Co. v. Prince's 2-Dadirrian v. Yacubian, 98 Metallic Paint Co. (2), 135 N. Y. Fed. Rep. 872-876.

24, 31 N. E. Rep. 990.