of any false or misleading representation; that if the plaintiff makes any material false statement in connection with the property which he seeks to protect, he loses his right to claim the assistance of a court of equity; that where any symbol or label claimed as a trademark is so constructed or worded as to make or contain a distinct assertion which is false, no property can be claimed in it, or, in other words, the right to the exclusive use of it can not be maintained." 18

For the reasons we have been considering in this chapter, the Patent Office has refused to admit to registration as a trademark for powdered soap "the picture of a bag having the open end thereof closed by a tie," the commissioner holding that such a mark was necessarily deceptive or descriptive, and in either event was not a valid trademark.19

Conversely, it is manifest that it is no defense to a violation of a pure food law that the defendant sold an inferior milk product under the tradename "Evaporated Cream." 20 It is no answer to plaintiff's misrepresentation that defenȧant's conduct is without justification.21

§ 40. Manhattan Medicine Co. v. Wood. This decision, the language of whose opinion has been more often cited in support of the proposition under consideration than any other, was based on this statement of facts: The complainant derived all its trade rights in and to a proprietary medicine styled "Atwood's Genuine Physical Jaundice Bitters" from its original manufacturer, Moses Atwood, who lived at Georgetown, Massachusetts, and manufactured it there. The court says: "It is not honest to state that a medicine is manufactured by Moses Atwood, of Georgetown, Massachusetts, when it is manufactured by the Manhattan Medicine Company, in the city of

18 Clinton E. Worden & Co. v. California Fig Syrup Co., 187 U. S. 516, 528; 47 L. Ed. 282 288. To the same effect see Uri v. Hirsch, 123 Fed. Rep. 568; Millbræ Co. v. Taylor (Cal.), 37 Pac. Rep. 235; 25 L. R. A. 193.

19-Ex parte Martin, 89 Off. Gaz.

2259.

"A word to be used as a trademark must obviously be

meaningless as applied to the goods, so as to be neither descriptive nor deceptive." Duell, Commissioner, in Ex parte Pearson Tobacco Co., 85 Off. Gaz. 287.

20-State v. Tetu, 98 Minn. 351, 107 N. W. Rep. 953.

21-Epperson & Co. v. Bluthenthal, 149 Ala. 125, 42 So. Rep. 863.

New York." 22 On these facts the protection of their mark was refused complainants.

§ 41. The similar cases-Assignment must be made public in conjunction with the trademark, when. Following Manhattan Medicine Co. v. Wood, the Court of Appeals of Maryland held 23 where the label used by the manufacturers of Angostura Bitters did not disclose the death of Dr. J. G. B. Siegert, their originator, that the label was not truthful and its infringement would not be enjoined. And the same rule has been applied as against one continuing to use the name of a predecessor in business, whose label does not announce the change.24 The rule in this regard is held by McKenna, J., to be that where a trademark is a mark of special qualities, due to superior material, processes, skill and care exercised by the originator thereof, an assignee of the business who continues to use labels which contain the false statement that the goods are being prepared by the originator is not entitled to equitable relief against an infringer.25

9966

§ 42. Unauthorized use of words "patent," "patented," or "registered."-The use of the words "patent, "patented," or "registered," in connection with or as part of a trademark, where the article identified by the mark is in fact not covered by letters patent, has given rise to many interesting decisions. All of these matters of untruthful representation are to be tested by the question of whether or not they are direct, or

22-Manhattan Medicine Co. v. Wood, 108 U. S. 218; 27 L. Ed. 706.

23-Seigert v. Abbott (1), 61 Md. 276. The same doctrine is followed in Sherwood v. Andrews, 5 Am. L. Reg. N. S. 588; Seb. 263; Stachelberg v. Ponce, 23 Fed. Rep. 430; Price & Steuart, 967.

24-Helmbold v. H. T. Helmbold Mfg. Co., 53 How. Pr. 453.

25-Alaska Packers' Association v. Alaska Imp. Co., 60 Fed. Rep. 103. The Supreme Court of Pennsylvania has held the contrary,

saying that an assignee is entitled to relief, even though he has not designated himself as assignee in making use of the mark. Fulton v. Sellers, 4 Brewst. 42. The tendency of the later rulings is to uphold the use of the mark by the assignee, except where his failure to disclose the fact of the assignment is equivalent to misrepresentation and falsehood. See Pillsbury v. Flour-mills Co., 64 Fed. Rep. 841-850, 12 C. C. A. 432.

"purely collateral" misrepresentations.26 Where the letters patent of the United States covering an alleged improvement in jars had been declared invalid by judicial decision, but the manufacturer continued to designate the jars "Mason's Patent" jars, it was held that the fact deprived the manufacturer of equitable relief against an infringement.27 In England a plaintiff used on his label the words "Royal letters patent," and supported the use of the words by showing that for many years he had paid the stamp duty on "patent medicines," and was only using the labels remaining on hand at the time he discovered his medicines did not belong to that class. He was denied an injunction against an infringer of his label.28

The reason for the particular disfavor with which equity regards this class of cases is that, by using words indicating that an article is patented where it is not, the owner of the mark is seeking to obtain the benefits of a monopoly, where he has none. As stated by Vice-Chancellor Wood, in Morgan v. McAdam: 29 "All those who are induced to buy these crucibles thus described as 'Patent Plumbago Crucibles' are to a certain extent deceived, because they are led to believe that the article is protected by a patent, and thus may be induced to purchase it from the plaintiff under the belief that there is a patent, and that the plaintiffs, or at least some limited number of persons, are the only persons authorized to sell it; and

26-Ford v. Foster, L. R. 7 Ch. D. 611; 27 L. T. N. S. 220; 20 W. R. 311; Cox, Manual, 384. In this case the false use of the word "patentee," used by the complainant in advertisements, was held to be a collateral misrepresentation which did not disentitle him to a remedy in equity against an infrin

ger.

27-Consolidated Fruit Jar Co. v. Dorflinger, Fed. Case No. 3129; 6 Fed. Cas. 339; 2 Am. Law. T. Rep. N. S. 511; Cox, Manual, 444. The same rule is announced in England in Leather Cloth Co. v. Lorsont, L. R. 9 Eq. 345; 39 L. J. Ch. 86; 21 L. T. N. S. 661; 18 W.

R. 572; Cox, Manual, Case No. 324; Nixey v. Roffey, W. N. 1870, p. 227; Cox, Manual, Case No. 343; Oliphant v. Salem Flouring Mills, 5 Sawyer 128, Fed. Case 10,486; Beecham v. Jacobs, 159 Fed. Rep. 129; 86 C. C. A. 623; affirmed, Jacobs v. Beecham, 221 U. S. 263, 55 L. Ed. 729.

28-Lamplough v. Balmer, W. N. 1867, p. 293.

29-36 L. J. Ch. 228; Cox, Manual, Case No. 267. Other arguments are used by the same judge in Flavel v. Harrison, 10 Hare, 467; 22 L. J. Ch. 866; 17 Jur. 368; 1 W. R. 213; Cox, Manual, Case No. 116.

further, they are led to believe that if they should be minded to set up any manufactory of the same kind for themselves, they would be unable to do so in consequence of the plaintiffs being the possessors, either by way of license or ownership, of a patent preventing the world at large from imitating the article which is sold by them under this particular designation."

And although in another English case30 a plaintiff was held entitled to recover in an action at law in a case of this kind, I where his father had held a patent held to be invalid (as in Consolidated Fruit Jar Co. v. Dorflinger, supra, where the contrary rule is announced), the rule is generally that, where no valid patent has ever existed, the use of the words indicating the contrary will debar the plaintiff from relief in equity.31 Mr. Justice Fuller has accurately defined the rule under consideration in the following language: "No right to a trademark which includes the word 'patent,' and which describes the article as 'patented,' can arise when there is and has been no patent; nor is the claim a valid one for the other words used, when it is based upon their use in connection with that word." 32

But where there has been a valid patent upon the subjectmatter of the trademark, different issues arise.

In England it has been held that the fact that a plaintiff put a mark upon his goods with the addition of the words "trademark," when his mark was not registered, did not amount, to such a misrepresentation as to deprive him of the right to an injunction, because the use of the words "trademark" did not necessarily carry with it the implication that the mark had been registered.33

The plaintiff having been refused registration for the word "Notaseme" on account of its descriptive character, and having thereafter applied the imprint "Reg. U. S. Pat. Off." to a design including that word, was held guilty of a material

30-Sykes v. Sykes, 3 B. & Cr.

541.

31-Leather Cloth Co. v. American Leather Cloth Co., 11 Jur. N. S. 513; Cox, 688; 11 H. L. C. 543; Cox, Manual, Case No. 223. See, per contra, Stewart v. Smithson, 1 Hilt. 119: Cox, 175. This case can not be regarded as of authority. 32-Holzapfel's Composition Co.

v. Rahtjen's American Composition Co., 183 U. S. 1, 8; 46 L. Ed. 49; reversing Rahtjen's Composition Co. v. Holzapfel's Composition Co., 41 C. C. A. 329; 101 Fed. Rep. 257, the latter reversing Rahtjen's Composition Co. v. Holzapel's Composi tion Co., 97 Fed. Rep. 949.

33-Sen Sen Co. v. Britten, L. R. (1899) 1 Ch. D. 692.

misrepresentation which invalidated the trademark and was a bar to relief in equity.33

§ 43. Use of such word as a trademark where there has been a patent. The last clause of sec. 4901, Revised Statutes of the United States, declares that "every person who in any manner marks upon or affixes to any unpatented article the word 'patent,' or any word importing that the same is patented, for the purpose of deceiving the public, shall be liable for every such offence to a penalty of not less than $100, with costs; onehalf of said penalty to the person who shall sue for the same, and the other to the use of the United States, to be recovered by suit in any district court of the United States within whose jurisdiction such offense may have been committed." It is not an offense under this law to affix to an article the word "patented" and the date of an expired patent, for the reason that the offense is not complete, unless the mark affixed indicates that there is a present subsisting patent upon the article.34

In Cheavin v. Walker,35 Jessel, M. R., observes with regard to the effect of the use of the word "patent" by the plaintiff : "The question was fully discussed in the case in the House of Lords, Leather Cloth Co. v. American Leather Cloth Co., 11 H. L. C. 543,36 and I have nothing to add to what was there said. No doubt a man may use the word 'patent' so as to deceive no one. It may be used so as to mean that which was a patent, but is not so now. In other words, you may state in so many words, or by implication, that the article is manufactured in accordance with a patent which has expired. But if you suggest that it is protected by an existing patent, you can not obtain the protection of that representation as a trademark. Protection only extends to the time allowed by the statute for the patent, and if the court were afterwards to protect the use of the word as a trademark, it would be in fact. extending the time for protection given by the statute. It is therefore impossible to allow a man who has once had the protection of a patent to obtain a further protection by using the name of his patent as a trademark."

33a-Notaseme Hosiery Co. v. Straus, 231 Fed. Rep. 243, 246. 34-Wilson v. Singer Mfg. Co., 12 Fed. Rep. 57.

35-L. R. 5 Ch. D. 850; 46 L. J.

Ch. 686; 36 L. T. 938; Cartmell, 92: Seb. 528. See also Nixey v. Roffey, W. N. 1870, p. 227; Seb.

343.

36-Ante, $42.