A court of equity will extend no aid to sustain a claim to a
trademark of an article which is put forth with a misrepresentation
to the public as to the manufacturer of the article, and as to the
place where it is manufactured, both being originally circumstances
to guide the purchaser of the medicine.
When it is the object of a trademark to indicate the origin of
manufactured goods, and a person affixes to goods of his own
manufacture a trademark which declares that they are goods of the
manufacture of some other person, it is a fraud upon the public
which no court of equity will countenance.
The plaintiff claimed to be the owner of a patent medicine and
of a trademark to distinguish it. The medicine was manufactured by
the plaintiff in New York; the trademark declared that it was
manufactured by another party in Massachusetts.
Held that
he was entitled to no relief against a person using the same
trademark in Maine.
Bill in equity to restrain the defendants from using an alleged
trademark of the complainant, upon certain medicines prepared by
them, and to compel an accounting for the profits made from its use
in their sale of the medicines; also, the payment of damages for
their infringement of the complainant's rights.
The complainant, a corporation formed under the laws of New
York, manufactured in that state medicines designated as "Atwood's
Vegetable Physical Jaundice Bitters," and claimed as its trademark
this designation, with the accompanying labels. Whatever right it
possessed it derived by various mesne assignments from one Moses
Atwood, of Georgetown, Massachusetts. The bill alleged that the
complainant was, and for a long time previous to the grievances
complained of had been the manufacturer and vender of the medicine
mentioned; that it was put up and sold in glass bottles with twelve
panel-shaped sides, on five of which in raised words and
letters
Page 108 U. S. 219
"Atwood's Genuine Physical Jaundice Bitters, Georgetown, Mass.,"
were blown in the glass, each bottle containing about a pint, with
a light yellow printed label pasted on the outside, designating the
many virtues of the medicine, and the manner in which it is to be
taken, and stating that it is manufactured by Moses Atwood,
Georgetown, Massachusetts, and sold by his agents throughout the
United States.
The bill also alleges that the bottles thus filled and labeled
are put up in half-dozen packages with the same label on each
package; that the medicine was first invented and put up for sale
about twenty-five years ago by one Dr. Moses Atwood, formerly of
Georgetown, Massachusetts, by whom, and his assigns and successors,
it has been ever since sold "by the name, and in the manner, and
with the trademarks, label, and description substantially the same
as aforesaid;" that the complainant is the exclusive owner of the
formula and recipe for making the medicine, and of the right of
using the said name or designation, together with the trademarks,
labels, and goodwill of the business of making and selling the
same; that large sales of the medicine under that name and
designation are made, amounting annually to 12,000 bottles; that
the defendants are manufacturing and selling at Portland, Maine,
and at other places within the United States unknown to the
complainant, an imitation of the medicine, with the same
designation and labels, and put up in similar bottles, with the
same, or nearly the same, words raised on their sides, in fraud of
the rights of the complainant and to its serious injury; that this
imitation article is calculated and was intended to deceive
purchasers and to mislead them to use it instead of the genuine
article manufactured by the complainant, and has had, and does
have, that effect. The bill therefore prays for an injunction to
restrain the defendants from affixing or applying the words
"Atwood's Vegetable Physical Jaundice Bitters," or either of them,
or any imitation thereof, to any medicine sold by them, or to place
them on any bottles in which it is put up, and also from using any
labels in imitation of those of the complainant. It also prays for
an accounting of profits and for damages.
Page 108 U. S. 220
Among the defenses interposed are these: that Moses Atwood never
claimed any trademark of the words used in connection with the
medicine manufactured and sold by him, and assuming that he had
claimed the words used as a trademark, and that the right to use
them had been transferred to the assignors of the complainant, it
was forfeited by the misrepresentation as to the manufacture of the
medicine on the labels accompanying it -- a misrepresentation
continued by the complainant.
Page 108 U. S. 222
MR. JUSTICE FIELD delivered the opinion of the Court. After
reciting the facts as stated above, he said:
In the view we take of the case it will not be necessary to
consider the first defense mentioned, nor the second, so far as to
determine whether the right to use the words mentioned as a
trademark was forfeited absolutely by the assignor's
misrepresentations as to the manufacture of the article. It is
sufficient for the disposition of the case that the
misrepresentation has been continued by the complainant. A court of
equity will extend no aid to sustain a claim to a trademark of an
article which is put forth with a misrepresentation to the public
as to the manufacturer of the article and as to the place where it
is manufactured, both of which particulars were originally
circumstances to guide the purchaser of the medicine.
It is admitted that whatever value the medicine possesses was
given to it by its original manufacturer, Moses Atwood. He lived in
Georgetown, Massachusetts. He manufactured the medicine there. He
sold it with the designation that it was his preparation, "Atwood's
Vegetable Physical Jaundice Bitters," and was manufactured there by
him. As the medicine was tried and proved to be useful, it was
sought for under that designation, and that purchasers might not be
misled, it was always accompanied with a label showing by whom and
at what place it was prepared. These statements were deemed
important in promoting the use of the article and its sale, or they
would not have been continued by the assignees of the original
inventor. And yet they could not be used with any honest purpose
when both statements had ceased to be true. 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 New York.
Anyone has as unquestionable right to affix to articles
manufactured by him a mark or device not previously appropriated to
distinguish them from articles of the same general character
manufactured or sold by others. He may thus notify the public of
the origin of the article and secure to himself the benefits of any
particular excellence it may possess from the manner or materials
of its manufacture. His trademark is both a sign of the quality of
the article and an assurance
Page 108 U. S. 223
to the public that it is the genuine product of his manufacture.
It thus often becomes of great value to him, and in its exclusive
use the court will protect him against attempts of others to pass
off their products upon the public as his. This protection is
afforded not only as a matter of justice to him, but to prevent
imposition upon the public.
Manufacturing Company v.
Trainer, 101 U. S. 51.
The object of the trademark being to indicate, by its meaning or
association, the origin or ownership of the article, it would seem
that when a right to its use is transferred to others, either by
act of the original manufacturer or by operation of law, the fact
of transfer should be stated in connection with its use; otherwise
a deception would be practiced upon the public and the very fraud
accomplished, to prevent which courts of equity interfere to
protect the exclusive right of the original manufacturer. If one
affix to goods of his own manufacture signs or marks which indicate
that they are the manufacture of others, he is deceiving the public
and attempting to pass upon them goods as possessing a quality and
merit which another's skill has given to similar articles, and
which his own manufacture does not possess in the estimation of
purchasers. To put forth a statement, therefore, in the form of a
circular or label attached to an article that it is manufactured in
a particular place by a person whose manufacture there had acquired
a great reputation when in fact it is manufactured by a different
person at a different place is a fraud upon the public which no
court of equity will countenance.
This doctrine is illustrated and asserted in the case of
Leather Cloth Co. (Limited) v. American Leather Cloth Co.
(Limited), which was elaborately considered by Lord Chancellor
Westbury, and afterwards in the House of Lords on appeal from his
decree. 4 DeG., J. & S. 137, and 11 House of Lords' Cases
523.
In that case, an injunction was asked to restrain the defendant
from using a trademark to designate leather cloth manufactured by
it, which trademark the complainant claimed to own. The article
known as leather cloth was an American invention, and was
originally manufactured by J. R. & C. P.
Page 108 U. S. 224
Crockett at Newark, New Jersey. Agents of theirs sold the
article in England as "Crockett's Leather Cloth." Afterwards a
company was formed entitled "The Crockett International Leather
Cloth Company," and the business previously carried on by the
Crocketts was transferred to this company, which carried on
business at Newark, in America, as a chartered company, and at West
Ham, in England, as a partnership. In 1856, one Dodge took out a
patent in England for tanning leather cloth and transferred it to
this company. In 1857, the complainant company was incorporated,
and the international company sold and assigned to it the business
carried on at West Ham, together with the letters patent and full
authority to use the trademark which had been previously used by it
in England. A small part of the leather cloth manufactured by the
complainant company was tanned or patented. It, however, used a
label which represented that the articles stamped with it were the
goods of the Crockett International Leather Cloth Company; that
they were manufactured by J. R. & C. P. Crockett; that they
were tanned leather cloth; that they were patented by a patent
obtained in 1856, and were made either in the United States or at
West Ham, in England. Each of these statements or representations
was untrue so far as they applied to the goods made and sold by the
complainant.
The defendant having used on goods manufactured by it a mark
having some resemblance to that used by the complainant, the latter
brought suit to enjoin the use. Vice-Chancellor Wood granted the
injunction, but on appeal to the Lord Chancellor the decree was
reversed and the bill dismissed. In giving his decision, the Lord
Chancellor said that the exclusive right to use a trademark with
respect to a vendible commodity is rightly called property; that
the jurisdiction of the court in the protection of trademarks rests
upon property, and that the court interferes by injunction because
that is the only mode by which property of that description can be
effectually protected. But he added:
"When the owner of the trademark applies for an injunction to
restrain the defendant from injuring his property by making
Page 108 U. S. 225
false representations to the public, it is essential that the
plaintiff should not in his trademark, or in the business connected
with it, be himself guilty of any false or misleading
representation, for if the plaintiff makes any material false
statement in connection with the property he seeks to protect, he
loses, and very justly, his right to claim the assistance of a
court of equity."
And again:
"Where a symbol or label, claimed as a trademark, is so
constructed or worded as to make or contain a distinct assertion
which is false, I think no property can be claimed in it, or, in
other words, the right to the exclusive use of it cannot be
maintained."
When the case reached the House of Lords, the correctness of
this doctrine was recognized by Lord Cranworth, who said that of
the justice of the principle no one could doubt; that it is founded
in honesty and good sense, and rests on authority as well as on
principle, although the decision of the house was placed on another
ground.
The soundness of the doctrine declared by the Lord Chancellor
has been recognized in numerous cases. Indeed, it is but an
application of the common maxim that he who seeks equity must
present himself in court with clean hands. If his case discloses
fraud or deception or misrepresentation on his part, relief there
will be denied.
Long before the case cited was before the courts, this doctrine
was applied when protection was sought in the use of trademarks. In
Pidding v. How, 8 Simony 477, which was before
Vice-Chancellor Shadwell in 1837, it appeared that the complainant
was engaged in selling a mixed tea, composed of different kinds of
black tea, under the name of "Howqua's Mixture," in packages having
on three of their sides a printed label with those words. The
defendant having sold tea under the same name, and in packages with
similar labels, the complainant applied for an injunction to
restrain him from so doing. An
ex parte injunction,
granted in the first instance, was dissolved, it appearing that the
complainant had made false statements
Page 108 U. S. 226
to the public as to the teas of which his mixture was composed,
and as to the mode in which they were procured. "It is a clear
rule," said the vice-chancellor, "laid down by courts of equity,
not to extend their protection to persons whose case is not founded
in truth."
In
Perry v. Truefitt, 6 Beav. 66, which was before Lord
Langdale, Master of the Rolls, in 1842, a similar ruling was had.
There it appeared that one Leathart had invented a mixture for the
hair, the secret and recipe for mixing which he had conveyed to the
plaintiff, a hairdresser and perfumer, who gave the composition the
name of "Medicated Mexican Balm," and sold it as "Perry's Medicated
Mexican Balm." The defendant, one Truefitt, a rival hairdresser and
perfumer, commenced selling a composition similar to that of
plaintiff, in bottles with labels closely resembling those used by
him. He designated his composition and sold it as "Truefitt's
Medicated Mexican Balm." The plaintiff thereupon filed his bill,
alleging that the name or designation of "Medicated Mexican Balm"
had become of great value to him as his trademark, and seeking to
restrain the defendant from its use. It appeared, however, that the
plaintiff, in his advertisements to the public, had falsely set
forth that the composition was "a highly concentrated extract from
vegetable balsamic productions" of Mexico, and was prepared from
"an original recipe of the learned J. F. Von Blumenbach, and was
recently presented to the proprietor by a very near relation of
that illustrious physiologist," and the court therefore refused the
injunction, the Master of the Rolls holding that, in the face of
such a misrepresentation, the court would not interpose in the
first instance, citing with approval the decision in the case of
Pidding v. Howe.
In a case in the Superior Court in the City of New York --
Fetridge v. Wells, 4 Abbott 144 -- this subject was very
elaborately and ably treated by Chief Justice Duer. The plaintiff
there had purchased a recipe for making a certain cosmetic, which
he sold under the name of "The Balm of a Thousand Flowers." The
defendants commenced the manufacture and sale of a similar article,
which they called "The Balm of Ten Thousand Flowers." The
complainant, claiming the name
Page 108 U. S. 227
used by him as a trademark, brought suit to enjoin the
defendants in the alleged infringement upon his rights. A temporary
injunction was granted, but afterwards, upon the coming in of the
proofs, it was dissolved. It appeared that the main ingredients of
the compound were oil, ashes, and alcohol, and not an extract or
distillation from flowers. Instead of being a balm, the compound
was a soap. The court said it was evidence that the name was given
to it and used to deceive the public, to attract and impose upon
purchasers; that no representation could be more material than that
of the ingredients of a compound recommended and sold as a
medicine; that there was none so likely to induce confidence in its
use, and none, when false, that would more probably be attended
with injurious consequences. And it is also said:
"Those who come into a court of equity seeking equity must come
with pure hands and a pure conscience. If they claim relief against
the frauds of others, they must themselves be free from the
imputation. If the sales made by the plaintiff and his firm are
effected, or sought to be, by misrepresentation and falsehood, they
cannot be listened to when they complain that, by the fraudulent
rivalry of others, their own fraudulent profits are diminished. An
exclusive privilege for deceiving the public is assuredly not one
that a court of equity can be required to aid or sanction. To do so
would be to forfeit its name and character."
See also Seabury v. Grosvenor, 14 Blatchford 262;
Hobbs v. Francais, 19 How. (N.Y.) 567;
Connell v.
Reed, 128 Mass. 477;
Palmer v. Harris, 60 Penn.St.
156.
The doctrine enunciated in all these cases is founded in honesty
and good sense; it rebukes fraud and encourages fair dealing with
the public. In conformity with it, this case has no standing before
a court of equity.
The decree of the court below dismissing the bill must
therefore be affirmed, and it is so ordered.
