RECENT AMERICAN DECISIONS.

Circuit Court United States.-District of California.

[OCTOBER, 1871.]

TRADE-MARK-CONSTRUCTION OF THE U. S. ACT—BARREL.
MOORMAN vs. HOGE

The certificate of the registry of a trade-mark, issued by the Commissioner of Patents under the Act of July 8, 1870, is not conclusive evidence that the device so registered is, or can become, a lawful trade-mark.

A barrel of peculiar form cannot be protected as a trade-mark.

SAWYER, J.-This is a Bill in Equity, the object of which, is, to obtain a decree restraining an alleged infringement of complainant's trade-mark.

From some time prior to 1857, till July 2, 1860, one J. H. Cutter and complainant, Moorman, were doing business as partners at Louisville, Kentucky, under the name of "J. H. Cutter & Co." The firm was engaged in the manufacture and sale of whiskey. Their whiskey acquired throughout the country, and particularly in the State of California, a high reputation for excellence, and, was generally known as "Cutter Whiskey." The said "J. H. Cutter & Co.," adopted for their California trade, a barrel of peculiar shape and size, in which their whiskeys for said market, were put up, shipped and sold. The said barrel was adopted as a trade-mark, in part, to enable dealers in whiskeys to more readily distinguish the whiskeys of said firm, from those manufactured and sold by other parties. The said barrel is made of staves, thirty-eight inches in length, and one and one-fourth inches thick. It is twenty inches diameter at the head, has sixteen wooden and four heavy iron hoops, and is of the capacity of fifty gallons; while ordinary whiskey barrels are but thirty-two inches long, with staves of half that thickness, and fewer hoops, and have a capacity of only forty gallons.

These barrels, thus used by the said "J. H. Cutter & Co.," to contain the whiskeys manufactured and sold by them, were branded on the head with the words, "J. H. Cutter, Old Bourbon," and "J. H. Cutter, Pure old Rye." The words "J. H. Cutter," being in an arc

of a circle, the words "Old" and "Pure," respectively being in straight lines within the arc under the words "J. H. Cutter," and the words "Bourbon" and "Old Rye," on a straight line directly under the others, below the arc formed by the name. The initials, "J. H. C.," were also branded on the barrel near the bung hole, as a bung mark.

In the year 1859, they added an English crown, as a part of the trade-mark, which was branded on the head just below the centre, and under the words "J. H. Cutter, Old Bourbon," and, "J. H. Cutter, Pure Old Rye."

Their barrels and marks were used by said J. H. Cutter & Co., in their whiskey trade till on or about July 2, 1860, when said J. H. Cutter, for a valuable consideration, sold and transferred all his right, title and interest in the business, and to the trade-marks and brands, and the sole right to use and sell the same, to the complainants in this cause; and the said complainants under the firm name of "C. P. Moorman & Co," have continued to carry on the said business, of manufacturing and selling whiskeys at Louisville, Ky., and putting them up and selling them in said barrels, branded with said marks, from said date to the present time, claiming the said barrel, and said marks as their trade-marks.

In the month of November, 1870, the complainants filed, and caused to be recorded in the United States Patent Office, at Washington, a verified statement and claim of said trade-mark, having annexed thereto a fac simile of the said barrel, together with the marks aforesaid branded thereon, and under the English crown, the further words in five elliptical lines, "A. P. Hotaling & Co., San Francisco, Sole Agents for Pacific Coast." Andon the other end, in three lines forming an ellipse, the words, "C. P. Moorman & Co., Manufacturers, Louisville, Ky.;" and, thereupon, the United States Commissioner of Patents issued to said complainants the certificate provided for in the Act of Congress relating to the subject. A true copy of the fac simile of said barrel, and of the said marks branded thereon, is annexed to the Bill.

Upon the issue as to whether J. H. Cutter was the originator of said barrel, and whether he and his successors, the said complainants, solely used said barrel, and, whether it was generally known in the whiskey trade as the "Cutter Barrel," the testimony is very voluminous, and is in striking conflict. After a careful consideration of the testimony, my mind is forced to the conclusion, notwithstanding

the large amount of testimony to the contrary, that J. H. Cutter did originate, and, first use, this peculiar barrel in the whiskey trade; that the barrel was of unusual form and dimensions; that when the pattern was furnished, it was necessary to have staves and other stock got out expressly for this barrel; that Cutter adopted it for his whiskeys, and continuously used it for the California trade till he transferred his interest in the business, and barrel and brand, to complainants; and that the complainants have continued to use it from that time till the present, claiming it as their barrel; that the said barrel has not been used by other parties except occasionally, when it has been manufactured clandestinely, and used without the knowledge, or when known, against the protest and claim of the complainants, and their assignor, that especially for upwards of ten years last past, the complainants and their assignor, have shipped every year, large quantities of whiskeys in said barrel to California, and sold them on the Pacific coast under the name of Cutter Whiskey, and, that no other person has, during that time, and prior to the acts of defendants complained of, shipped any considerable quantity of whiskey in similar barrels; that the said barrel had become very generally known in the trade in San Francisco, and on the Pacific coast as the "Cutter Barrel," so much so, that, if a party familiar with the trade, and this barrel, should see such a barrel, even at a distance, as across the street, he would expect to find it contain "Cutter Whiskey."

The defendants are agents at San Francisco, California, for the sale of whiskeys on the Pacific coast for Jesse Moore & Co., a firm engaged in the manufacture and sale of whiskey at Louisville, Kentucky. Within the two years next preceding the filing of the bill, said Jesse Moore & Co., shipped to defendants at San Francisco, several hundred barrels of whiskey for sale, and the said defendants have sold and they are now engaged in selling said whiskeys in California, and elsewhere on the Pacific coast. Said whiskeys are put up in barrels, which are in all respects, as to size, shape and general appearance so far as the barrel itself is concerned, a close imitation of the barrel which complainants use for their "Cutter Whiskey."

The appearance of the two barrels is, manifestly, alike, and any party looking at the two barrels without regarding the marks on them, would at once pronounce them the same barrel. The defendants, doubtless, intended the barrels to be alike; for they directed their principals to send their whiskey in such barrels; and that they VOL. I.-9

might do so, sent them the measures of the barrels used by the complainants, called the "Cutter Barrel." But the marks on the barrels are wholly different. The Bourbon Whiskey barrel of defendants has branded on one head in the center within a circle burnt into the head, and in a circular form, the words "G. H. Moore, Bourbon," and within the circle formed by these words the word "Old," in a straight line with a star above and below it. Over this center brand are the words "E. Chievolich & Co.," forming the arc of a circle, and under these words, in three straight lines, are the words "San Francisco, Cal., Sole Agents for the Pacific Coast;" and at the bung as a bung-mark, the initials, "G. H. M.”

The Rye Whiskey barrel has the words in a similar form and situation, "E. Chievolich & Co., San Francisco, Cal., Sole Agents for the Pacific Coast. J. Moore & Co., Old Rye Whiskey;" and as a bung-mark, the initials, "J. M."

There is no similarity in the marks and devices branded on the barrels of the respective parties, or in the form in which the words are arranged. There is nothing in these marks or devices aside from the barrels, that would lead a purchaser to mistake one for the other. The only similarity between the packages is, the barrel itself, independent of the marks upon it, but in this particular the defendants' package is a clear imitation of complainants'.

As there is no claim that there is any simulation of the marks or brands on the barrels, it will be unnecessary to more particularly describe them.

The defendants sell their whiskeys as Jesse Moore & Co's whiskeys, and make no representation that their whiskey is "Cutter Whiskey," other than so far as the fact that they use a similar barrel to that in which the "Cutter Whiskey" has been so long sold, as to become known as the package which ordinarily contains "Cutter Whiskey," can be regarded as such a representation.

Complainants do not claim that there is any infringement upon that part of what they claim to be their trade-mark, which consists of the words and devices stamped upon the barrel. The claim is that there is an infringement by the use of the barrel only.

Is the plaintiff entitled to the exclusive use of a barrel of this peculiar form, construction and capacity, without regard to any mark or device impressed upon, or connected with it? Can a barrel of this description be appropriated as a trade-mark, or substantive part of a

trade-mark, so as to exclude the rest of the world from using it in the same branch of business? If so, the complainant in my judgment, is entitled to the relief sought, otherwise, not.

Complainants invoke the Act of Congress, of July 8, 1870, entitled "An Act to revise, consolidate and amend the statutes relating to patents and copyrights." (16 Stat. at L., 198.) The seventy-seventh section provides: "That any person or firm domiciled in the United States * * * and who are entitled to the exclusive use of any lawful trade-mark, or who intend to adopt, and use any trade-mark for exclusive use within the United States, may obtain protection for such lawful trade-mark by complying with the following requirements, to-wit:" stating the conditions.

The seventy-eighth section provides that the party or firm, performing the statutory conditions, shall be entitled to use the trademark for thirty years, and that "no other person shall lawfully use the same trade-mark, or substantially the same, or so nearly resembling it, as to be calculated to deceive upon substantially the same description of goods." The seventy-ninth section provides a remedy for violation of the right, by imitation, etc., by action for damages, and, for injunction. It also provides that the Commissioner of Patents shall not receive and record any proposed trade-mark which is not, and can not become, a lawful trade-mark." The eightieth section makes the certificate of the Commissioner under seal of the Patent Office, "evidence in any suit in which such trade-mark shall be brought into controversy."

It is not denied that the complainants have performed all the acts required by the Act of Congress to secure the protection contemplated, and that the certificate of the Commissioner of Patents is in form regularly issued. This being so, complainants insist that the Court can only look to the certificate, and the Act of Congress, to determine the question at issue; that the Act of Congress confers upon the Commissioner jurisdiction to examine and deterne wheth-er the proposed trade-mark is, or can become a lawful trade-mark; whether it was first used and appropriated by the claimant, or is not identical with a trade-mark appropriated + the same class of goods,. and belonging to a different party, or already registered, or received for registration; and whether it does not so nearly resemble any trade-mark registered or filed for registry, as to be likely to deceive. the public; and that having jurisdiction to determine these matters, his determination is conclusive, and the questions are not open to.