When the owner of a trademark applies for an injunction to
restrain the defendant from injuring his property by making false
representations to the public, it is essential that the plaintiff
should not in his trademark or in his advertisements and business,
be himself guilty of any false or misleading representation, and if
he makes any material false statement
Page 187 U. S. 517
in connection with the property which he seeks to protect, he
loses his right to claim the assistance of a court of equity, and
where any symbol or label claimed as a trademark is so constructed
or worded as to make or contain a distinct material assertion which
is false, no property can be claimed on it, or, in other words, the
right to the exclusive use of it cannot be maintained.
On June 1, 1897, the California Fig Syrup Company, created under
the laws of the State of Nevada and having its principal place of
business in San Francisco, California, filed a bill in equity in
the Circuit Court of the United States for the Northern District of
California against Clinton E. Worden & Company, a corporation
of the State of California, and against J. A. Bright, T. F. Bacon,
C.J. Schmelz, and Lucius Little, citizens of the State of
California.
The bill alleged that, in the year 1879, one Richard E. Queen
invented
"a certain medical preparation or remedy for constipation and to
act upon the kidneys, liver, stomach, and bowels, which medical
compound is a combination in solution of plants known to be
beneficial to the human system, forming an agreeable and effective
laxative to cure habitual constipation and many ills, depending
upon a weak and inactive condition of the liver, kidneys, stomach,
and bowels;"
that shortly after the said invention, the said Queen sold and
transferred all his right, title, and interest in and to said
medical compound, and in and to the tradename, trademarks, and
goodwill of said company to the complainant company, which has ever
since been engaged in the manufacture and sale of said medical
preparation or remedy; that said medical preparation has always
been marked, named, and called by the complainant "Syrup of Figs,"
that name being printed or otherwise marked upon every bottle, and
also printed upon the boxes, packages, or wrappers in which the
bottles of the preparation were packed for shipment and sale; that
the complainant and its said predecessor in interest were the first
to pack and dress or mark a liquid laxative preparation in the
manner illustrated by exhibits "A" and "B" attached to the bill --
that is to say, in an oblong, rectangular box or carton, with
statements of the virtues of the preparation printed in different
languages upon the bank and sides of the
Page 187 U. S. 518
carton, and on the border within which, at the top, is a
representation of a branch of a fig tree bearing fruit and leaves,
surrounded by the words "Fig Syrup Company," or "California Fig
Syrup Company," and below which appear, in large letters, the words
"Syrup of Figs," and below these last-named words appears a brief
statement of the virtues of this preparation, together with the
words "Manufactured only by the California Fig Syrup Company;" that
the complainant has spent more than one million dollars in
advertising said preparation, always under the name of "Syrup of
Figs," or "Fig Syrup," throughout the United States and other
countries, and that millions of bottles of said preparation have
been sold; that, by virtue of the premises, the complainant has
acquired the exclusive right to the name, "Syrup of Figs," or "Fig
Syrup," as it is indifferently called by the public, or any
colorable imitation of the same, as applied to a liquid laxative
medical preparation irrespective of the form of bottle or package
in which it may be sold to the public; that, by virtue of the
premises, the complainant has acquired the exclusive right to the
manner and form of packing the same for sale, in connection with
the words "Syrup of Figs" or "Fig Syrup," or any colorable
imitation of the same, as a part of the business name of a concern
making a liquid laxative medical compound.
The bill charges that the defendant, wishing to trade to its own
profit and advantage upon the reputation of the complainant's
preparation and desiring to impose a worthless production upon the
public, has caused to be made, put up, and sold, and offered for
sale, a liquid laxative medical compound, resembling complainant's
preparation, under the name "Syrup of Figs" and "Fig Syrup," and
marking the boxes and packages containing the same with the name
"Fig Syrup" or "Syrup of Figs," and has put the preparation, under
said name, in bottles and packages or cartons, so closely in
imitation of the complainant's bottles and packages as to be likely
to deceive purchasers, and so as to enable unscrupulous retail
dealers to palm off defendant's preparation on the consumers as and
for the complainant's preparation, and that purchasers frequently
have been deceived and induced to buy the compound prepared
Page 187 U. S. 519
by the defendant: that the complainant has been greatly injured
in the business in the manufacture of its liquid laxative
preparation "Syrup of Figs" or "Fig Syrup," and believes that it
has suffered damage and injury by reason of defendant's acts to the
extent of at least $10,000; that this is a continuing wrong, and
one which it is impossible to exactly calculate, and one which, if
permitted to continue, will work irreparable injury to the
complainant.
Wherefore the complainant prayed, in its said bill, for an
injunction restraining the defendant and its agents, servants,
etc., from manufacturing, selling, or offering for sale, directly
or indirectly, any liquid laxative medical preparation, marked with
the words "Syrup of Figs" or "Fig Syrup," or marked with any words
which may be a colorable imitation of the name of "Syrup of Figs"
or "Fig Syrup," and from putting up, selling, or dealing in any
liquid laxative medical preparation which shall have a tendency to
deceive the public and induce buyers to purchase defendant's
preparation believing the same to be complainant's preparation, and
that defendant be perpetually enjoined from using the words "Fig
Syrup Company" as a business name, or from using the words "Fig
Syrup" or "Syrup of Figs" as part of its business name, in
connection with the manufacture and sale of a liquid laxative
preparation. The complainant also prayed for an account for damages
to complainant and for gains and profits derived by the defendant
company, and for such other and further relief as may be agreeable
to equity and good conscience.
The defendant company and the other defendants filed a joint and
several answer admitting many of the allegations of the bill, but
denying and putting the complainant on proof of those which alleged
any intentional or actual appropriation by the defendant company of
proprietary or business rights of the complainant. The answer
proceeded to make the following allegations:
"And for a separate and further defense, these defendants aver,
upon their information and belief, that the preparation made and
sold by complainant under the name of 'Syrup of Figs' does not and
never did contain any syrup of figs or any
Page 187 U. S. 520
fig syrup, or any juice of figs or any part or portion or
quantity of figs in any form, and that the name 'Syrup of Figs' and
'Fig Syrup' and the name of the company, 'The California Fig
Company,' and the form and appearance of the labels and the
pictures on the labels, and the statements on the labels adopted
and used by complainant in connection with its liquid laxative
medicine, were all designed, adopted, and used with the deliberate
intent and purpose to deceive the public and the user of the
medicine, and to perpetrate a fraud upon them by inducing them to
believe that the preparation contained figs in some form, and that,
by reason thereof, the said medicine derived its laxative
properties and also a pleasant and agreeable taste; that the
complainant has been successful in perpetrating the said fraud upon
the public, and for years last past has perpetrated said fraud by
wholesale, and have induced the public generally throughout the
world to believe the statements aforesaid concerning the said
medicine and its connection with figs, and thereby complainant has
made and realized large profits, gains, and advantages from the
sale of said medicine, all of which was caused and which accrued
and were made by reason of said false, fraudulent, and deceptive
statements; that, as a matter of fact, the said so-called 'Syrup of
Figs' sold by complainant consists of the ordinary and well known
laxative called senna as a basis, together with certain aromatic
carminatives added for the purpose of giving it a pleasant and
agreeable taste, as a cure to the naturally griping effect of senna
when taken alone; that in order to sell such a compound,
complainant made the false, fraudulent, and fictitious statements
hereinabove charged against it, and was enabled to sell the same
solely by virtue of said false, fraudulent, and fictitious
statements, and said complainant has built up its business and its
trade upon the strength of, and by virtue of, the said false,
fraudulent, and fictitious statements, for which reason complainant
is not entitled to relief in a court of equity."
The cause was put at issue by a replication filed by the
complainant company. Pending the trial, an application for a
preliminary injunction was made, which was allowed upon the ground
that the complainant had made such a showing by the
Page 187 U. S. 521
pleadings and affidavits that it was entitled to an injunction
against the sales of "Fig Syrup" by the defendant. 86 F. 212.
A large amount of evidence was taken, and, on June 7, 1899, a
decree was entered by the circuit court perpetually enjoining the
defendant company and the other defendants from making, selling, or
offering to sell any liquid laxative medicine or preparation under
the name of "Syrup of Figs" or "Fig Syrup," or under any name in
colorable imitation of the name "Syrup of Figs," and from making,
selling, or offering to sell any medical liquid laxative
preparation, put up in bottles, boxes, or packages similar in form
or arrangement to the bottles or packages used by the complainant
in the manufacture and sale of its said liquid laxative
preparation, or so closely resembling the same as to be calculated
to deceive the public, and from using the name "Fig Syrup Company,"
and from using a name whereof the words "Fig Syrup" or "Syrup of
Figs Company" form a part as a business name in connection with the
manufacture of a liquid laxative preparation. 95 F. 132.
There was an appeal to the Circuit Court of Appeals for the
Ninth Circuit, where the decree of the circuit court was affirmed,
Ross, C.J., dissenting. 102 F. 334.
The cause was then brought to this Court by a writ of certiorari
allowed on November 20, 1900.
Page 187 U. S. 526
MR. JUSTICE SHIRAS delivered the opinion of the Court.
Page 187 U. S. 527
The courts below concluded, upon the evidence, that the
defendants sold a medical preparation named, marked, and packed, in
imitation of the complainant's medicine, for the purpose and with
the design and intent of deceiving purchasers and inducing them to
buy defendant's preparation instead of the complainant's. We see no
reason to dissent from that conclusion, and if there were no other
questions in the case, we should be ready to affirm the decree,
awarding a perpetual injunction and an account of the profits and
gains derived from such unfair and dishonest practices.
Another ground, however, is urged against the complainant's
right to invoke the aid of a court of equity, in that the
California Fig Syrup Company, the complainant, has so fraudulently
represented to the public the nature of its medical preparation
that it is not entitled to equitable relief.
Some courts have gone so far as to hold that courts of equity
will not interfere by injunction in controversies between rival
manufacturers and dealers in so-called quack medicines.
Fowle
v. Spear, 4 Clark 145;
Heath v. Wright, 3 Wall. Jr.
141;
Fetridge v. Wells, 4 Abb.Pr. 144.
It may be said in support of such a view that most if not all
the states of this union have enactments forbidding and making
penal the practice of medicine by persons who have not gone through
a course of appropriate study, and obtained a license from a board
of examiners, and there is similar legislation in respect to
pharmacists. And it would seem to be inconsistent, and to tend to
defeat such salutary laws, if medical preparations, often and
usually containing powerful and poisonous drugs, are permitted to
be widely advertised and sold to all who are willing to purchase.
Laws might properly be passed limiting and controlling such traffic
by restraining retail dealers from selling such medical
preparations except when prescribed by regular medical
practitioners.
But we think that, in the absence of such legislation, courts
cannot declare dealing in such preparations to be illegal, nor the
articles themselves to be not entitled, as property, to the
protection of the law.
Page 187 U. S. 528
We find, however, more solidity in the contention, on behalf of
the appellants, that when the owner of a trademark applies for an
injunction to restrain the defendant from injuring his property by
making false representations to the public, it is essential that
the plaintiff should not in his trademark or in his advertisements
and business be himself guilty 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 on it, or, in other
words, the right to the exclusive use of it cannot be
maintained.
Among the cases cited to sustain this contention are the
following:
In
Connell v. Reed, 128 Mass. 477, the plaintiff sought
to establish the exclusive right to the words "East Indian," as
applied to his remedy, and the court, through Gray, C.J., said:
"The conclusive answer to this suit is . . . that the plaintiffs
have adopted and used these words to denote, and to indicate to the
public, that the medicines were used in the East Indies, and that
the formula for them was obtained there, neither of which is the
fact. Under these circumstances, to maintain this bill would be to
lend the aid of the court to a scheme to defraud the public."
In
Siegert v. Abbott, 61 Md. 276, where the subject
matter of the trademark was "Angostura Bitters," which purported to
have been prepared by Dr. Siegert at Angostura, Trinidad, and where
it appeared that Dr. Siegert was dead, and had never lived at
Angostura, the bill was dismissed, the court saying:
"It is a general rule of law in cases of this kind that courts
of equity will not interfere by injunction where there is any lack
of truth in the plaintiff's case -- that is, where there is any
misrepresentation in his trademark or labels."
In
Alden v. Gross, 25 Mo.App. 123, a trademark was
claimed in the words "fruit vinegar," and the court said:
Page 187 U. S. 529
"The vinegar thus branded was not manufactured out of fruit, in
the plain, ordinary, usual sense of that term, but out of low wines
distilled from cereals, and fruit enters into its composition only
to a very insignificant extent. . . . It would be a novel
application of the rule governing the subject of trademarks if one
who manufactures vinegar out of cereals could appropriate for the
article thus manufactured the word 'fruit,' and thereby exclude
another from using the word as descriptive of an article which is,
in point of fact, manufactured out of fruit. . . . But whether the
word 'fruit' in this connection is purely indicative of the
character or quality of the article or not, the plaintiff's
exclusive claim to it must fail on the further ground that the use
of the word, in that connection, is clearly deceptive."
In
Prince Manufacturing Company v. Prince's Metallic
Paint, 135 N.Y. 24, an injunction to protect a trademark was
refused by reason of a false representation as to the place from
which the ore was obtained, and the court of appeals used the
following language:
"Any material misrepresentation in a label or trademark as to
the person by whom the article is manufactured, or as to the place
where manufactured, or as to the materials composing it, or any
other material false representation deprives a party of the right
to relief in equity. The courts do not in such cases take into
consideration the attitude of the defendant. . . . And, although
the false article is as good as the true one, 'the privilege of
deceiving the public, even for their own benefit, is not a
legitimate subject of commerce.'"
English cases are to the same effect. Thus, in
Pidding v.
How, 8 Sim. 477, where it appeared that the plaintiff had made
a new sort of mixed tea and sold it under the name of "Howqua's
Mixture," but, as he had made false statements to the public as to
the teas of which his mixture was composed and as to the mode in
which they were procured, the court refused to restrain the
defendant from selling tea under the same name, and said:
"As between the plaintiff and the defendant, the course pursued
by the defendant has not been a proper one, but it is a
Page 187 U. S. 530
clear rule, laid down by courts of equity, not to extend their
protection to persons whose case is not founded in truth. And, as
the plaintiff in this case has thought fit to mix up that which may
be true with that which is false, in introducing his tea to the
public, my opinion is that, unless he establish his title at law,
the court cannot interfere on his behalf."
The English case of
Leather Cloth Co. v. American Leather
Cloth Co. is a leading one on this subject, and in which the
nature of false representations that will defeat the right of the
owner of a trademark to protection in equity was much
considered.
A bill, asking for an injunction against defendants, who were
charged with using stamps and trademarks so similar to those of the
complainant as to deceive purchasers, was sustained by Vice
Chancellor Wood, who granted the injunction prayed for. 1 Hem.
& Miller's Reports 271. On appeal, the decree of the Vice
Chancellor was reversed by the Lord Chancellor, and the
complainant's bill was dismissed. 4 De Gex, J. & S. 136.
The conclusions reached by Lord Chancellor Westbury were that
there is a right of property in a trademark, name, or symbol in
connection with a particular manufacture or vendible commodity, but
that, where the owner of such a trademark applies for an injunction
to restrain the defendant from injuring his property by making
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. In considering what constitutes a material false
representation, the chancellor observed that he could not receive
it as a rule either of morality or equity that a plaintiff is not
answerable for a falsehood, because it may be so gross and palpable
as that no one is likely to be deceived by it; that if there be a
willful false statement, he would not stop to inquire whether it be
too gross to mislead.
This decision was affirmed by the House of Lords. 11 H.L.Cas.
523. In that tribunal, in the several opinions of the law lords,
the views of the Lord Chancellor as to the effect of false
representations were approved, but it was thought that,
independently of that question, the plaintiff was not entitled to
an
Page 187 U. S. 531
injunction, because the rival or antagonistic trademark of the
defendants did not sufficiently resemble that of the plaintiff's as
to be calculated to deceive the public.
In
Fetridge v. Wells, 13 How.Pr. 385, the plaintiff
sold a soap under the name of "Balm of a Thousand Flowers," and in
denying the plaintiff's right to the exclusive use of these words
as a trademark, Judge Duer said:
"I am full convinced that the name 'Balm of a Thousand Flowers'
was invented, and is now used, to convey to the minds of purchasers
the assurance that the highly scented liquid to which the name is
given is, in truth, an extract or distillation from flowers, and
therefore not merely an innocent, but a pleasant and salutary,
preparation. Not only is this the meaning that the words used
naturally suggest, but in my opinion it is that which they actually
and plainly express and were designed to convey. . . . Let it not
be said that it is of little consequence whether this
representation be true or false. No representation can be more
material than that of the ingredients of a compound which is
recommended and sold as a medicine. There is none that is so likely
to induce confidence in the application and use of the compound,
and none that, when false, will more probably be attended with
injurious, and perhaps fatal, consequences. . . . 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 be free themselves 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."
In
Manhattan Medicine Co. v. Wood, 108 U.
S. 218, the case of
Fetridge v. Wells was cited
with approval, and likewise the English cases of
Pidding v.
How, 8 Simons 477, and
Leather Cloth Company v. American
Leather Company, 4 De Gex, J. & S. 137. In
Manhattan
Medicine Co. v. Wood,
Page 187 U. S. 532
the complainant claimed to be the owner of a patent medicine and
of a trademark to distinguish it. The medicine was manufactured by
the complainant in New York; the trademark declared that it was
manufactured by another person in Massachusetts. The Circuit Court
of the United States for the District of Maine, per Mr. Justice
Clifford, held that the complainant, owing to false statements in
his trademark, was entitled to no relief against a person using the
same trademark in Maine, and dismissed the bill. On appeal, this
decree was affirmed, this Court saying:
"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."
In
Clotworthy v. Schepp, 42 F. 62, the right to a
trademark was claimed in the word "Puddine," in connection with the
words "Rose" and "Vanilla," but Circuit Judge Lacombe refused an
injunction, and in his opinion said:
"The complainant himself is engaged in deceiving the very public
whom he claims to protect from the deception of others. He calls
his preparation 'fruit' puddine. In nine different places on his
package, this word 'fruit' is repeated as descriptive of the
article, and a dish of fruit (pears, grapes, etc.) is most
prominently depicted on one face of each packet. His packages
plainly suggest that fruit of some kind enters in some shape into
his compound. A chemical analysis produced by defendant, the
substantial accuracy of which is not disputed, discloses the fact
that his 'puddine' is composed exclusively of corn starch, a small
amount of saccharine matter, and a flavoring extract, with a little
carmine added to give it color. It contains no fruit in any
form."
Krauss v. Peebles' Sons Co., 58 F. 585, was a case in
which it was shown that the liquor sold as "Pepper Whisky" was in
fact a mixture of Pepper whisky and other whiskies, and an
injunction to prevent infringement was refused by Circuit Judge
Taft, who, in his opinion, said:
"To bottle such a mixture and sell it under the trade label and
caution notices above
Page 187 U. S. 533
referred to, is a false representation, and a fraud upon the
purchasing public. A court of equity cannot protect property in a
trademark thus fraudulently used."
And this doctrine of the English and American cases above
referred to has been applied in the federal circuit courts and
circuit courts of appeals in cases in which the California Syrup
Company, the complainant in the present case, was a party.
In the Circuit Court of the United States for the District of
Massachusetts, March 6, 1895, the California Fig Syrup Company, the
complainant in the present case, filed a bill against Kate Gardner
Putnam and others to restrain the infringement of the plaintiff's
trademark. The facts of the case were thus stated by Circuit Judge
Colt in his opinion, reported in 66 F. 750:
"The plaintiff is the proprietor and manufacturer of a liquid
laxative compound called 'Syrup of Figs.' The defendants
manufacture and sell a laxative medicine which they term 'Fig
Syrup.' . . . There is no evidence that the defendants have
imitated the plaintiff's labels or packages except in this
particular. If this preparation is in fact a syrup of figs, the
words are clearly descriptive, and not the proper subject of a
trademark. Upon this point, the contention of the plaintiff is that
its preparation is not a syrup of figs, since it contains only a
very small percentage of the juice of the fig; that the laxative
ingredient in it is senna; that, while the fig in the form of fruit
may have laxative properties arising from the seeds and skin, the
fig in the form of syrup is no more laxative than any other fruit
syrup; that it follows from these facts that these words, as
applied to this compound, are not descriptive, but purely fanciful,
and therefore constitute a valid trademark. The evidence shows that
the compound is not a syrup of figs. It might more properly be
termed a 'Syrup of Senna' if the words were intended to be
descriptive of the article. But, assuming this is not a syrup of
figs, we are met with the inquiry whether these words, as applied
to this preparation, are not deceptive. The label on every bottle
reads as follows: 'Syrup of Figs. The California Liquid Fruit
Remedy, Gentle and Effective.' On the sides of each bottle are
blown the words 'Syrup of Figs,'
Page 187 U. S. 534
and on the back the words 'California Fig Syrup Co., San
Francisco, Cal.' On the face of every package is a picture of a
branch of a fig tree with the hanging fruit, surrounded with the
words 'California Fig Syrup, San Francisco, Cal.;' and beneath this
the words 'Syrup of Figs presents in the most elegant form the
laxative and nutritious juice of the figs of California.' . . .
Thus, we see that the leading representation on the labels,
packages, and in the advertisements of this preparation is that it
is a laxative fruit syrup made from the juice of the California
fig. . . . The popularity of this medicine arises from the belief
in the mind of the ordinary purchaser that he is buying a laxative
compound, the essential ingredient of which is the California fig,
whereas, in fact he is buying a medicine the active property of
which is senna. The ethical principle on which the law of
trademarks is based will not permit of such deception. It may be
true, as a scientific fact known to physicians and pharmacists,
that the syrup of figs has little or no laxative property; but this
is not the belief of the general public. They purchase this
preparation on the faith that it is a laxative compound made from
the fruit of the fig, which is false. This is not an immaterial
representation the effect of which is harmless, but it is a
representation which goes to the very essence of the plaintiff's
right to a trademark in these words. The cases are numerous where
the courts have refused to grant relief under these
circumstances."
Accordingly, the circuit court dismissed the bill with costs. On
appeal to the Circuit Court of Appeals for the First Circuit, the
decree of the circuit court was affirmed.
In the Circuit Court of the United States for the Eastern
District of Michigan, April 1, 1895, the California Fig Syrup
Company filed a bill seeking to restrain Frederick Stearns &
Company from infringing complainant's trademark. The court declined
to grant an injunction, and dismissed the bill with costs, holding
that the words "syrup of figs" or "fig syrup," if descriptive of a
syrup, one of the characteristic ingredients of which is the juice
of the fig, cannot be sustained as a valid trademark or tradename,
and that, under the facts of the case, the use of the name "Syrup
of Figs," in connection with a description
Page 187 U. S. 535
of the preparation as a fruit remedy, "nature's pleasant
laxative," applied to a compound whose active ingredient is senna
and containing but a small proportion of fig juice which has no
considerable laxative properties, is deceptive, and deprives one so
using it of any claim to equitable relief.
On appeal to the Circuit Court of Appeals of the Sixth Circuit,
the decree of the circuit court was affirmed. 73 F. 812. In his
opinion, Circuit Judge Taft, after stating that the term "syrup of
figs," if intended to describe the character of the article
considered, could not be used as a trademark, proceeded to say:
"But the second ground presented, and that upon which the court
below rested its decision, prevents the complainant from having any
relief at all. That ground is that the complainant has built up its
business and made it valuable by an intentional deceit of the
public. It has intended the public to understand that the
preparation which it sells has as an important medicinal agent in
its composition the juice of California figs. This has undoubtedly
led the public into the purchase of the preparation. The statement
is wholly untrue. Just a suspicion of fig juice has been put into
the preparation, not for the purpose of changing its medicinal
character, or even its flavor, but merely to give a weak support to
the statement that the article sold is syrup of figs. This is a
fraud upon the public. It is true it may be a harmless humbug to
palm off upon the public as syrup of figs what is syrup of senna,
but it is nevertheless of such a character that a court of equity
will not encourage it by extending any relief to the person who
seeks to protect a business which has grown out of and is dependent
upon such deceit."
"It is well settled that if a person wishes his trademark
property to be protected by a court of equity, he must come into
court with clean hands, and if it appears that the trademark for
which he seeks protection is itself a misrepresentation to the
public, and has acquired a value with the public by fraudulent
misrepresentations in advertisements, all relief will be denied to
him. This is the doctrine of the highest court of England, and no
court has laid it down with any greater stringency than the Supreme
Court of the United States.
Manhattan Medicine Co.
v.
Page 187 U. S. 536
Wood, 108 U. S. 218;
Leather Cloth
Co. v. American Leather Cloth Co., 4 De Gex, J. & S. 137.
. . ."
"The argument for complainant is that, because fig juice or
syrup has no laxative property everybody ought to understand that,
when the term is used to designate a laxative medicine, it must
have only a fanciful meaning. But the fact is admitted that the
public believe that fig juice or syrup has laxative medicinal
properties. It is to them that the complainant seeks to sell its
preparation, and it is with respect to their knowledge and
impressions that the character, whether descriptive or fanciful, of
the term used, is to be determined."
The counsel of the appellee in the present case do not contend
that the courts of the Second and Sixth Circuits were wrong in
denying the complainant any relief upon the cases as presented in
those courts. They do contend that those cases were argued upon a
wrong theory by the counsel of the complainant. The language of the
brief in this regard is as follows:
"Here was where complainant made a mistake. Acting under advice
of able counsel, it claimed the name 'Syrup of Figs' to be a
technical trademark, when all that was necessary to claim was that
it constituted a tradename. Able counsel in the second and Sixth
Circuits pressed injunction suits against infringers on the theory
that complainant had a trademark in the name, and that the
statement on the cartons and bottles was immaterial. He did not
address himself to showing that the name 'Syrup of Figs' came to be
honestly and properly applied to the product as largely descriptive
of the ingredients of the medicine. He was so afraid of ruining his
case as a case of trademarks, by showing that it was descriptive,
that he did not prove what was proved in the case now at bar,
viz., that figs were at the time the name was given an
important part of the composition."
We are not much impressed with the force of this attempted
distinction. Even if it were true that at the time the medicine in
question was first made and put upon the market, the juice of figs
was so largely used as one of the ingredients, as to have warranted
the adoption of the name "Syrup of Figs" as descriptive of the
nature of the medicine, that would be no justification
Page 187 U. S. 537
for continuing the use of the term after the manufacturers and
vendors of the medicine ceased to use fig juice as a material
ingredient. Even if the term was honestly applied in the first
instance, as descriptive, it would nonetheless be deceptive and
misleading when, as is shown in the present case, it ceased to be a
truthful statement of the nature of the compound. Nor are we
disposed to concede that, under the evidence in the present case,
the term "Syrup of Figs" or "Fig Syrup" was properly used as
descriptive of the nature of the medicine when it was first made.
Then, as now, the operative laxative element was senna, and the
addition of fig juice was at the best, experimental, and apparently
was intended to attract the patronage of the public by holding out
the name of the medicine as "Syrup of Figs."
However that may be, it is now admitted that the use of figs was
found to be deleterious, and their use, as a substantial or
material ingredient, was abandoned. The following extracts are
taken from the testimony of the inventor of the medicine now made
and sold by the California Fig Syrup Company:
"During the year 1878, I made many experiments with the idea of
producing a pleasant, effective, liquid laxative, having observed
that many people dislike to take pills, oils, and other
disagreeable medicines, and, after many experiments and study of
laxatives in general, came to the conclusion that senna was the
best general laxative known, but that the preparations then on the
market were either weak in effect or griping in their nature, and I
thought that if I could make a liquid preparation of senna which
would be really pleasant to the taste and free from griping
qualities, that it would answer the purpose. And at that time I
also thought that certain other medicinal agents should be combined
with the senna, and some of those medicinal agents were not very
pleasant to the taste. And I thought of figs as a fruit that would
afford me a considerable quantity of sugar and mucilaginous
substance to counteract the unpleasant taste of the medicinal
agents. And I used figs freely in my experiments for that purpose.
As I progressed with my experiments, I found or determined as a
result of my experiments and studies that a uniformity and
stability of product were of great importance,
Page 187 U. S. 538
and that the fig substance was not conducive to those qualities,
and that it had a strong tendency to ferment, and therefore it
would be better to use a small quantity. I also found that those
medicinal agents which were unpleasant to the taste were better
adapted to special cases than to general use, and concluded to omit
them, and therefore did not need as large a quantity of fig
substance as formerly. As finally prepared, I had a new and
original compound, of which the fig syrup formed a very small but
pleasant part, although not an essential part of the combination --
that is, I might have used an equal quantity of honey, or some
other substance, instead of the fig substance, without changing the
character and effect of the combination. . . . I desired to give a
name which would be new and original to distinguish my product from
all the laxative medicines, and which would be pleasantly
suggestive, and, after thinking over a number of names, I decided
to use the name 'Syrup of Figs.' I knew that I was not using the
name generically, because figs did not give character and effect to
the combination."
On cross-examination, this witness further stated that
"we still use figs when we might use some other pleasant
substance, because we first started to use figs, and the fig
substance, while it is used, is not an essential part of the
compound or what I would call an essential part of the compound.
That is, not a part of the compound which gives to it its
distinctive aromatic and medicinal qualities."
That the complainant company, years after it had established a
popular demand for its product, issued statements in medical
journals and newspapers and circulars that the medical properties
of their compound were derived from senna does not relieve it from
the charge of deceit and misrepresentation to the public. Such
publications went only to giving information to wholesale dealers.
The company, by the use of the terms of its so-called trademark on
its bottles, wrappers, and cartons continued to appeal to the
consumers, out of whose credulity came the profits of their
business. And indeed it was the imitation by the defendants of such
false and misleading representations that led to the present
suit.
Page 187 U. S. 539
The bill in the present case contains the following
allegations:
"Your orator further states that this laxative medical compound,
or preparation made and put up as aforesaid by your orator has
always been marked, named, and called by your orator 'Syrup of
Figs,' being advertised by your orator under that name, the name
'Syrup of Figs' printed or otherwise marked upon every bottle of
this preparation made and sold by your orator -- this name being
also printed upon the boxes, packages or wrappers in which the
bottles of this preparation are packed for shipment and sale; that
it has been the practice of your orator to put the bottles
containing this preparation in oblong pasteboard boxes or cartons,
so that they will reach the consumer in that form; that in all
instances, not only the bottle which contains this preparation, but
the box or carton which contain the bottles of this preparation, is
marked with the words 'Syrup of Figs' and also contains printed
matter stating that this preparation is a medical laxative
preparation, and also giving a general idea of its uses and
purposes. . . . Your orator further states that it and its said
predecessor in interest were the first to pack and dress or mark a
liquid laxative preparation or medicine in the manner illustrated
by exhibits 'A' and 'B' -- that is to say, in an oblong,
rectangular box or carton, with statements of the virtues of this
preparation printed in different languages upon the back and sides
of the carton, and having on the front of the carton and on the
border within which, at the top, is a representation of a branch of
a fig tree, bearing fruit and leaves, surrounded by the words 'Fig
Syrup Company,' or 'California Fig Syrup Company,' and below which
appear, in large letters, the words 'Syrup of Figs.'"
Upon such allegations and the admissions of the complainant's
principal witness, some of which are hereinbefore quoted, and upon
the entire evidence in the case, and in the light of the
authorities cited by the counsel of the respective parties, our
conclusions are that the name "Syrup of Figs" does not, in fact,
properly designate or describe the preparation made and sold by the
California Fig Syrup Company, so as to be
Page 187 U. S. 540
susceptible of appropriation as a trademark, and that the marks
and names used upon the bottles containing complainant's
preparation and upon the cartons and wrappers containing the
bottles are so plainly deceptive as to deprive the complainant
company of a right to a remedy by way of an injunction by a court
of equity.
Accordingly, the decree of the circuit court of appeals is
reversed; the decree of the Circuit Court is also reversed, and the
cause is remanded to that court with directions to dismiss the bill
of complaint.
MR. JUSTICE McKENNA dissented.
