1. The ownership of a registered trademark consisting of a name
designating the owner's goods does not carry with it the right to
prohibit a purchaser, who repacks and sells them with or without
added ingredients, from using the name on his own labels to show
the true relation of the trademarked product to the article he
offers, provided the name be not so printed or otherwise used as to
deceive the public. P.
264 U. S.
368.
2. In this regard, no new right under the trademark can be
evoked from the fact that the goods are peculiarly liable to be
spoilt or adulterated. P.
264 U. S.
369.
85 F. 501 reversed.
Certiorari to a decree of the circuit court of appeals reversing
a decree of the district court in a suit to enjoin alleged unlawful
uses of trademarks.
Page 264 U. S. 366
MR. JUSTICE HOLMES delivered the opinion of the Court.
This is a bill in equity brought by the respondent Coty, a
citizen of France, against Prestonettes, a New York corporation
having its principal place of business in the Southern District of
New York. It seeks to restrain alleged unlawful uses of the
Plaintiff's registered trademarks, "Coty" and "L'Origan" upon
toilet powders and perfumes. The defendant purchases the genuine
powder, subjects it to pressure, adds a binder to give it
coherence, and sells the compact in a metal case. It buys
Page 264 U. S. 367
the genuine perfume in bottles and sells it in smaller bottles.
We need not mention what labels it used before this suit, as the
defendant is content to abide by the decree of the district court.
That decree allowed the defendant to put upon the rebottled
perfume
"Prestonettes, Inc., not connected with Coty, states that the
contents are Coty's [giving the name of the article] independently
rebottled in New York,"
every word to be in letters of the same size, color, type, and
general distinctiveness. It allowed the defendant to make compacts
from the genuine loose powder of the plaintiff and to sell them
with this label on the container:
"Prestonettes, Inc., not connected with Coty, states that the
compact of face powder herein was independently compounded by it
from Coty's [giving the name] loose powder and its own binder.
Loose powder -- percent, Binder -- percent.,"
every word to be in letters of the same size, color, type and
general distinctiveness. The circuit court of appeals, considering
the very delicate and volatile nature of the perfume, its easy
deterioration, and the opportunities for adulteration, issued an
absolute preliminary injunction against the use of the above marks
except on the original packages as marked and sold by the
plaintiff, thinking that the defendant could not put upon the
plaintiff the burden of keeping a constant watch. 285 F. 501.
Certiorari granted, 260 U.S. 720.
The bill does not charge the defendant with adulterating or
otherwise deteriorating the plaintiff's product except that it
intimates, rather than alleges, metal containers to be bad, and the
circuit court of appeals stated that there were no controverted
questions of fact, but that the issue was simply one of law. It
seemingly assumed that the defendant handled the plaintiff's
product without in any way injuring its qualities, and made its
decree upon that assumption. The decree seems to us to have gone
too far.
Page 264 U. S. 368
The defendant, of course, by virtue of its ownership, had a
right to compound or change what it bought, to divide either the
original or the modified product, and to sell it so divided. The
plaintiff could not prevent or complain of its stating the nature
of the component parts and the source from which they were derived
if it did not use the trademark in doing so. For instance, the
defendant could state that a certain percentage of its compound was
made at a certain place in Paris, however well known as the
plaintiff's factory that place might be. If the compound was worse
than the constituent, it might be a misfortune to the plaintiff,
but the plaintiff would have no cause of action, as the defendant
was exercising the rights of ownership, and only telling the truth.
The existence of a trademark would have no bearing on the question.
Then what new rights does the trademark confer? It does not confer
a right to prohibit the use of the word or words. It is not a
copyright. The argument drawn from the language of the Trade-Mark
Act does not seem to us to need discussion. A trademark only gives
the right to prohibit the use of it so far as to protect the
owner's goodwill against the sale of another's product as his.
United Drug Co. v. Theodore Rectanus Co., 248 U. S.
90. There is nothing to the contrary in
A. Bourjois
& Co. v. Katzel, 260 U. S. 689.
There, the trademark protected indicated that the goods came from
the plaintiff in the United States, although not made by it, and
therefore could not be put upon other goods of the same make coming
from abroad. When the mark is used in a way that does not deceive
the public, we see no such sanctity in the word as to prevent its
being used to tell the truth. It is not taboo.
Canal Co.
v. Clark, 13 Wall. 311,
80 U. S.
327.
If the name Coty were allowed to be printed in different letters
from the rest of the inscription dictated by the district court, a
casual purchaser might look no
Page 264 U. S. 369
further, and might be deceived. But when it in no way stands out
from the statements of facts that unquestionably the defendant has
a right to communicate in some form, we see no reason why it should
not be used collaterally not to indicate the goods, but to say that
the trademarked product is a constituent in the article now offered
as new and changed. As a general proposition, there can be no doubt
that the word might be so used. If a man bought a barrel of a
certain flour, or a demijohn of Old Crow whisky, he certainly could
sell the flour in smaller packages or, in former days, could have
sold the whisky in bottles, and tell what it was, if he stated that
he did the dividing up or the bottling. And this would not be
because of a license implied from the special facts, but on the
general ground that we have stated. It seems to us that no new
right can be evoked from the fact that the perfume or powder is
delicate, and likely to be spoiled, or from the omnipresent
possibility of fraud. If the defendant's rebottling the plaintiff's
perfume deteriorates it and the public is adequately informed who
does the rebottling, the public, with or without the plaintiff's
assistance, is likely to find it out. And so of the powder in its
new form.
This is not a suit for unfair competition. It stands upon the
plaintiff's rights as owner of a trademark registered under the Act
of Congress. The question, therefore, is not how far the court
would go in aid of a plaintiff who showed ground for suspecting the
defendant of making a dishonest use of his opportunities, but is
whether the plaintiff has the naked right alleged to prohibit the
defendant from making even a collateral reference to the
plaintiff's mark. We are of opinion that the decree of the circuit
court of appeals must be reversed, and that that of the district
court must stand.
Decree reversed.
MR. JUSTICE McREYNOLDS dissents.