There is no intrinsic value in a trade-mark. Its worth in dollars is a creation, and it depends upon the successful sale, or popularity, of the commodity to which the trade-mark is applied, the distribution of this commodity, the extent to which it has been advertised, and the profit that there is in it.

Some widely-known trade-marks are worth millions of dollars, and many are valued at a hundred thousand dollars or more.

The ownership of an advertised and favorably known trade-mark is, therefore, a valuable property right. In estimating the assets of a business, its trade-mark is included under the head of Good-Will, and Good-Will is Reputation. The value of a trade-mark is the value of the reputation of the goods it represents and identifies.

A valuable trade-mark—like other valuable things—becomes, sooner or later, an object of envy on the part of those who want money without troubling themselves about the manner of getting it. Sometimes this leads to a more or less ingenious simulation of a trade-mark.

The remedy for the infringement of a registered trade-mark is covered by sections 16 to 19, inclusive, of the Act of 1905. We quote these sections of the law:

"Sec. 16. That the registration of a trade-mark under the provisions of this act shall be prima facie evidence of ownership. Any person who shall, without the consent of the owner thereof, reproduce, counterfeit, copy, or colorably imitate any such trade-mark and affix the same to merchandise of substantially the same descriptive properties as those set forth in the registration, or to labels, signs, prints, packages, wrappers, or receptacles intended to be used upon or in connection with the sale of merchandise of substantially the same descriptive properties as those set forth in such registration, and shall use, or shall have used, such reproduction, counterfeit, copy or colorable imitation in commerce among the several states, or with a foreign nation, or with the Indian tribes, shall be liable to an action for damages therefor at the suit of the owner thereof; and whenever in any such action a verdict is rendered for the plaintiff, the court may enter judgment therein for any sum above the amount found by the verdict as the actual damages, according to the circumstances of the case, not exceeding three times the amount of such verdict, together with the costs.

"Sec. 17. That the Circuit and Territorial Courts of the United States and the Supreme Court of the District of Columbia shall have original jurisdiction, and the Circuit Courts of Appeal of the United States and the Court of Appeals of the District of Columbia shall have appellate jurisdiction of all suits at law or in equity respecting trade-marks registered in accordance with the provisions of this act, arising under the present act, without regard to the amount in controversy.

"Sec. 18. That writs of certiorari may be granted by the Supreme Court of the United States for the review of cases arising under this act in the same manner as provided for patent cases by the act creating the Circuit Court of Appeals.

"Sec. 19. That the several courts vested with jurisdiction of cases arising under the present act shall have power to grant injunctions, according to the course and principles of equity, to prevent the violation of any right of the owner of a trade-mark registered under this act, on such terms as the court may deem reasonable; and upon a decree being rendered in any such case for wrongful use of a trade-mark the complainant shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages the complainant has sustained thereby, and the court shall assess the same or cause the same to be assessed under its direction. The court shall have the same power to increase such damages, in its discretion, as is given by section sixteen of this act for increasing damages found by verdict in actions of law; and in assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost which are claimed."

The legal remedies set forth in these sections of the Act of 1905 apply only in case of infringements of registered trade-marks. In the case of infringements of common law trade-marks, and in cases where packages, labels and advertisements are imitated or counterfeited, actions to restrain must be brought under the law of unfair trade.

A coined word is the property, in a commercial sense, of the person, or firm, or corporation, that makes it up and uses it.

This is indisputable. It is a principle of justice that is supported consistently by the courts, but it needs no legal mind to acquiesce in its fairness, for it appeals to everybody's common-sense.

How far the use of a coined word may be allowed, when applied by other persons than its owners to goods of a different and non-competitive class, is a question that has not been definitely settled. In England, the court enjoined the use of the word "Kodak" as a name for bicycles. There is little doubt that the unauthorized use of any widely-known coined word, that has been nationally advertised, would be enjoined by the courts, even if applied to a wholly different line of merchandise.

A poorly-made and inferior article, even if it should belong to a class of goods quite dissimilar to that of another article of the same name, might indirectly bring discredit upon the latter.

The word "Educator" was refused registration as a trade-mark for fish, on the ground that as it had already been registered as a trade-mark for a brand of biscuits, its use by another might lead to confusion, although fish and biscuits are quite dissimilar products.

There have been cases where a label, or a sign, or a trade-name, or trade-mark, has been appropriated bodily by a concern not entitled to use it. Some cases of infringement of this character are given in H. D. Nims' instructive book on "Unfair Business Competition," from which the following example is quoted:

"The defendants accumulated in the St. Louis market stoves (not made by plaintiff) with the name 'Charter Oak' upon them, which they held for sale as 'Charter Oak Stoves.' They were aware of the plaintiff's proprietorship of the 'Charter Oak' trade-mark, and were proceeding to sell in defiance of the plaintiff's rights. Plaintiff had been the first to use 'Charter Oak' as a name of a stove and had used it for a long time when this suit was begun. The mark was not registered. Injunction granted." Filley v Fassett, (44 Mo. 168—1869).

Infringements are generally more subtle and clever than a mere bodily adoption of a trade-mark. For instance, a piratical trade-mark may be devised so nearly like a well-known mark that it will readily deceive an unwary or careless or ignorant purchaser, and yet be so different that a show of defending it may be made.

Or, an entirely different trade-mark may be used, while the size, shape and color of the package may be imitated. The National Biscuit Company uses distinctive packages for its products, and its trade-marks are, in most cases, original, arbitrary, coined words, yet it has so far prosecuted approximately five hundred suits for infringement of its marks and packages.

"Uneeda Biscuit" has been infringed by "Iwanta Biscuit", "Uwanta Biscuit" and "Ulika Biscuit", all of which were enjoined. In the "Iwanta" case, the opinion of the court was, in part, as follows:

"Defendants present the usual voluminous bundle of affidavits by persons in the trade to the effect that in their opinion no one is likely to mistake defendant's biscuit for complainant's. As has been pointed out before, it makes no difference that dealers in the article are not deceived. No one expects that they will be. It is the probable experience of the consumer that the court considers. Here, too, we have the manufacturer of the articles complained of, who explains, as usual, that in adopting a trade-name by which to identify his own product he has been most careful not to trespass upon any rights of complainant, and that, after considerable thought, he selected a name which should make the difference between his goods and complainant's distinct and plain, so that there could be no possibility of mistake. It is a curious fact that so many manufacturers of proprietary articles, when confronted with some well-advertised trade-name or mark of a rival manufacturer, seem to find their inventive faculties so singularly unresponsive to their efforts to differentiate. Thus, in one case, with the word 'Cottolene' before him, defendant's best effort at differentiation resulted in 'Cottoleo'; and 'Mongolia' seemed to another defendant entirely unlike 'Magnolia'. The manufacturer of the articles which defendants in the case at bar are selling seems to have had no better luck, for, with the word 'Uneeda' before him, his device to avoid confusion was the adoption of the word 'Iwanta'. The incessant use of the personal pronouns in daily speech has associated in every one's mind the sounds represented by the letter 'I' and 'U', the two words are of precisely the same length; both end with the letter 'A', and both express the same idea, namely, that the prospective purchaser's personal comfort would be promoted by the acquisition of a biscuit.... Both name and dress are clearly calculated to mislead, and the statements that both were adopted with an eye single to differentiation strain the credulity of the court beyond the breaking point."

In the case of Lever Bros. v Smith (112 Fed. R. 998), the complainant had built up a large and profitable sale for "Welcome" soap. The defendant, Welcome A. Smith, put on the market a soap similar in size and shape to "Welcome" soap, and labeled it with his own name "Welcome A. Smith", making the word "Welcome" on his labels large and prominent, with "A" and "Smith" below it, and in much smaller type. On the ends of the package the word "Welcome" alone appeared. It was held that while Smith had a right to use his own name, he could not use it in such a way that it would suggest an identity between these two products.

In the case of Swift v Brenner (125 Fed. R. 826) it was held that Swift & Company's "Old Mill Soap" which had a picture of an old mill on the label, was infringed by "Old Stone Mill Soap", the label of which also had a picture of an old mill.

In the interesting case of the Welsbach Light Company v Adam (107 Fed. R. 463) it was shown that the infringing trade-mark had been devised before the complainant's mark, but had not been used until after the complainant's mark had been registered. On Feb. 20, 1900, the complainant (The Welsbach Light Company) registered the coined word "Yusea," as a trade-mark applied to gas mantles. Some months before this, the defendant had conceived the name "U—C—A" with the idea of using it in connection with gas mantles of his own manufacture. Its actual use as a trade-mark was not begun, however, until after the complainant's mark had been registered. On Oct. 23, 1900, the defendant registered "U—C—A" as a trade-mark.

The complainant based his action for an injunction against the use by the defendant of the mark, "U—C—A" on the ground that its resemblance in sound to "Yusea" was sufficient to confuse buyers and divert trade from the complainant.

It was shown that "Yusea" is commonly pronounced "You see a"; that purchasers, in asking dealers for these mantles, called them "You See A" Mantles; and that the pronunciation of the name of defendant's mantles was the same as the name of complainant's products.

The defendant contended that there was no similarity in appearance in the two names; that the similarity in sound was only incidental; that there was no infringement, because the name "U—C—A" had been devised prior to the conception of "Yusea"; and that the registration of "U—C—A", allowed by the Patent Office, was proof of dissimilarity.

The Court sustained the contention of the Welsbach Light Company, and the use of "U—C—A" as a trade-mark for gas mantles was enjoined on the ground that it was an infringement of "Yusea."

Where there is a casual resemblance, not sufficiently marked to deceive a person of ordinary judgment, there is held to be no infringement.

A case in point was shown in the contention between the manufacturers of the well-known "3 in 1" Oil and the owners of a similar product called "Big Four". The "3 in 1" label bears a large figure "1" in red, enclosing the figure "3" and the word "in". The defendant's label was of different size, was printed partly in red and partly in black, and was headed "Big Four". The figure "4" in black was displayed prominently on a red background. No infringement.

A trade-mark may be held to infringe another trade-mark already established, even if it has no similarity in sound or to the eye, but if there is a close similarity in ideas.

This is exemplified by a case recently, before the Federal court for the Southern district of New York. The words "Beats-All" have been used for a number of years as a trade-mark for pencils. The owners of the "Beats-All" trade-mark applied for an injunction against the use of "Knox-All" as a trade-mark for pencils sold by a rival concern. The defendant contended that "Beats-All" was a descriptive term, indicating superiority, and, as such, it could not be protected as a trade-mark. The complainant proved that he had used the mark "Beats-All" for many years, and that, while it was originally descriptive, long usage had given it a secondary meaning. He also showed that he had registered this trade-mark under the ten years' clause. The court held that the registration of the mark under the ten years' clause removed it from the class of descriptive phrases—in other words, that registration under the ten years' clause was a prima facie evidence of validity. The defendant claimed, that in any case, "Knox-All" was so dissimilar to the ear and eye, there was no infringement of "Beats-All". This view was not sustained by the court, which held that a close similarity of ideas was sufficient to constitute infringement.

From these, and other cases, it may be seen that a question of whether a trade-mark has been infringed is sometimes a question of psychology.

It is not necessary for the complainant to produce evidence that buyers have been actually deceived. His case is established when he can show that the marks, or symbols, or packages, or general "get-up" of the goods are sufficiently similar to establish a strong probability of deception.

The case of Shaw Stocking Company v Mack (21 Blatch 1—1882. C. C. N. Y.), cited by Mr. Nims, is an example of infringement that seems to fall within the range of psychological analysis.

"Complainant manufactured at Lowell hosiery of high reputation and designated one style by the figures '830'. The label bore the trade-mark 'Shawknit' in script with a flourish and the words 'Seamless Half Hose,' with the name of the manufacturer and the figures '830.'

"Defendants at Albany bought large quantities of complainant's goods and with complainant's consent, in effect, held themselves out to the public as selling agents of complainant's. They then began to buy of a Connecticut manufacturer goods similar to complainant's '830' style, but inferior, and sold them under a label generally resembling complainant's in appearance and bearing the word 'Seamless' in script of a similar style, including the flourish, followed by the words 'Half Hose, Double Heels,' with defendant's name and address, and the figures '830.'

"The court enjoined them from using the figures '830' to designate the Connecticut goods, and from using on the label the word 'Seamless,' printed in imitation of Shawknit."

In the case given above there was no infringement of the actual trade-mark. But the intent to deceive purchasers was shown by the use of the style number 830 and by the careful imitation of the general appearance. Well-informed customers, looking for the trade-mark Shawknit, would not have been deceived, but the probability of deceiving the uninformed and careless was sufficient to justify the injunction.

It should be kept in mind that the term "infringement" covers not only the imitation of a technical trade-mark, in whole or in part, but embraces all violations of the rights of others, in trade, no matter whether such violations fall under the trade-mark law, or the law of unfair competition.

The noted case of McLean v Fleming (96 U. S. 245—1877) decided in 1877, is one of the cases that underlie the law of unfair competition. In this case the Court said:

"Nor is it necessary, in order to give a right to an injunction, that a specific trade-mark should be infringed; but it is sufficient that the court is satisfied that there was an intent on the part of the respondent to palm off his goods as the goods of the complainant, and that he persists in doing so after being requested to desist."

This is the gist of the whole matter of infringement. If an effort to trade on the reputation of another can be proved, irrespective of the form this effort may take, it is held to be an infringement.

"Chatter-Box" is an old-established publication for children, issued in the form of an illustrated book, once a year. It was held that "Chatter-Book", a publication issued for the same purpose, and of the same general appearance, was an infringement.

A piano manufacturer by the name of Henshaw placed upon the market a piano called the "Steinberg." It was held by the Court that the name "Steinberg" was an infringement of the name "Steinway," which had been long used as the name of famous pianos.

In the case of Johnson & Johnson v Bauer & Black (82 Fed. R. 662, reversing 79 Fed. R. 954) it was held that the complainant's mark of a red Greek cross, used on plasters, was infringed by the defendant's mark of a Greek cross with a red circle in the center, containing the letters "B & B", and used on the same class of goods.

A trade-mark adopted for a patented article during the life of the patent, is held to be descriptive of the article, and the right to its exclusive use expires at the expiration of the patent.

The import of this far-reaching trade-mark doctrine is illustrated in the celebrated Singer case.

The Singer Manufacturing Company, when the patents on its sewing machine were about to expire, adopted as a trade-mark the word "Singer" blended with a device. The effect of this action, if the validity of the trade-mark had been sustained, would have been to perpetuate the right to the exclusive use of the word "Singer" as applied to sewing machines. In this event, at the expiration of the patents, any person would have had the right to manufacture Singer machines, but only the Singer Manufacturing Company would have had the use of the name "Singer."

It was held by the courts that the right to use the name "Singer", as applied to machines of this particular design, became public property when the patents expired. The court said, in the case of Brill v Singer Mfg. Co. (41 Ohio St.):—

"A patentee or his assignee, by incorporating into his trade-mark the distinctive name by which a patented machine has become known to the public during the existence of the patent, cannot, after the expiration of the patent, take away from the public the right of using such name. The trade-mark cannot be made a guise for extending the monopoly, or preventing the name from becoming, with the patent, the property of the public."

But if the trade-mark is adopted and used before the article is patented, the exclusive right to the trade-mark continues after the patent expires.

In this case the patent is secondary to the trade-mark, and the trade-mark is held not to be descriptive. The word "Gants" was used as a trade-mark on corsets for several years before the article was patented. At the expiration of the patent, another manufacturer began to make corsets of this description, calling them "Gants". On the showing of the plaintiff that the patent was subsequent to the adoption of the trade-mark, the defendant was enjoined from using the name, although there was nothing to prevent him from continuing to make corsets of this description.

An individual has a right to use his own name in business transactions, but he cannot use it in a way that will deceive, directly or by inference, those who buy his goods. He cannot use the likeness of his name to that of another party of the same name for the purpose of trading on the latter's established reputation.

This principle of equity is well illustrated by the legal contentions over the name Baker, used as a trade-mark for chocolate.

For a hundred and thirty-one years the firm of Walter Baker & Co., and its predecessors, have manufactured chocolate at Dorchester, Mass. For more than a generation past, the firm has done business under its present name. "Baker's Cocoa," as the principal product of the firm is popularly called, has achieved great success. This national popularity of the name "Baker" as applied to cocoa and chocolates, began, some years ago, to attract other persons by the name of Baker. One of the Bakers—a William H.—began to manufacture chocolate in Winchester, Va., in 1894, and put it on the market, labeled "W. H. Baker & Co." At that time the products of Walter Baker & Co. were labeled "W. Baker & Co." It can be seen that the substitution of W. H. Baker & Co.'s goods for those of Walter Baker & Co., was an easy matter for any retailer who wanted to do it. The packages were much alike. The retailer made a larger profit on the product of W. H. Baker & Co.

Walter Baker & Co. sued W. H. Baker in the Federal Court in Virginia, and at the same time began a suit against W. H. Baker's New York agent, Sanders, to prevent their use of the name "Baker" or the firm name, "Baker & Co." In the Virginia suit, the opinion of the court was that while W. H. Baker had a right to use the name "Baker," it being his own name, he could not use it in connection with the sale of cocoa or chocolate unless he made a distinction between it and the name of Walter Baker & Co. which would be easily observed by customers. The nature of the required distinction was not specified by this court.

In the suit in the Federal Court for the Southern District of New York against Sanders, the New York agent of W. H. Baker, the court's decision was essentially the same as that of the Federal Court in Virginia. The New York court specified, however, that the defendant should put in conspicuous lettering on his packages these words: "W. H. Baker is distinct from and has no connection with the old chocolate manufactory of Walter Baker & Company."

This suit had been settled a year or two, when in New York, another Baker—William P.—began to sell a "Baker's Chocolate." Suit being brought to enjoin him by Walter Baker & Co., it was decided by the court that he must not use the name "Baker" alone, or "W. Baker." He was allowed to use his own name if spelled in full, "William Phillips Baker," or he might use a middle initial—"William P. Baker"—and he was directed to state on his labels that his goods were made and sold by "William P. Baker, of New York."

The contentions of the various Bakers were stilled and the mantle of peace lay upon them for a short space. Then, as the record shows, a William H. Baker, of Syracuse, felt the calling of chocolate manufacturer stir within him.

The William H. Baker of Syracuse imitated the packages and labels of the William H. Baker of Winchester, Va. His evident intention was to make it appear that he was the William H. Baker who had been enjoined by Walter Baker & Co., for he stated conspicuously on his label "W. H. Baker is distinct from and has no connection with the old chocolate manufactory of Walter Baker & Co."

William H. Baker, of Winchester, Va., brought suit against the Syracuse Baker to prevent him from using the former's label. Injunction was granted, but the defendant was permitted to use the name "William H. Baker" if he printed the name "Syracuse" conspicuously in connection with it.

The suit of Royal Baking Powder Co. v Royal (122 Fed. 337—1903; 58 C. C. A. 499-506), deals with the controversy of this well-known baking powder concern over the use of the name "Royal" on baking powder by an individual by the name of "Royal." The court held that Royal could make and sell baking powder under his own name, but to prevent confusion he should not place his name on the front label, and that he should make it inconspicuous.

From a consideration of these cases, and many others where the same issue was involved, the principle may be definitely established that, while courts will not prevent an individual from using his name altogether, they will restrict the manner of its use when there is shown an intention to trade on another's reputation.

It is a settled principle of law that a complainant must appear in a court of equity with clean hands. In other words, an essential misrepresentation of a complainant's goods, by means of his trade-mark, or on his labels, or through advertisements, is a bar against his action for relief from infringement.

One Flavel made and sold a stove under the name "Flavel's Patent Kitchener." The defendant, Harrison, began to make and sell another stove under the same name. Flavel sued to enjoin Harrison, but an injunction was denied when it was shown that Flavel's stove was not patented, although its name would lead one to believe that it was made under a patent.

In another case, the makers of a toilet preparation known as "The Balm of a Thousand Flowers" brought suit to enjoin another party from selling a similar preparation under the name of "The Balm of Ten Thousand Flowers." The complainant's motion to enjoin was denied, when it was shown in court that his "Balm of a Thousand Flowers" did not contain the balm of any flower whatsoever—in fact, was not a balm at all, but a soap—and that its chief ingredients were oil and alcohol. It was held that the trade-mark was deceitful and complainant's motion was denied. Fetridge v Wells (4 A 66 Pr. 144; B. How. Pr. 385).

The infringement of trade-names and trade-marks in most classes of merchandise is relatively infrequent compared with the extensive substitution, infringement and counterfeiting that are continually going on in the liquor, wine, cigar and allied trades.

This had become an evil of such formidable proportions that in 1904 an organization under the title of the Trade-Mark Protective Company was formed to run down and prosecute offenders. The clients of this company are mostly importers and producers of whiskies, wines, olive oils, cordials, cigarettes and cigars. The company has a staff of skilled detectives, who are always at work looking for imitators and counterfeiters of the goods of the company's clients. After securing evidence of an infringement the company undertakes the prosecution of the offenders.

The methods of the Trade-Mark Protective Company in prosecuting infringers and counterfeiters are of the kind that inspire evil-doers with terror as well as respect.

In many cases the bottles, or packages, and labels—including trade-marks—have been counterfeited so perfectly, and in such detail, that expert bottle-makers and lithographers were required as witnesses to show the difference between the spurious and the genuine.

An account of a few of the cases prosecuted by the Trade-Mark Protective Company are given here for the purpose of showing the methods of this class of dealers in spurious goods.

One Young, doing business as the "Cincinnati Distilling Company" was found using counterfeits of the labels of the Wilson Distilling Company. He was tried, convicted, and sentenced to six months in the workhouse and to pay a fine of $300.

A cigar dealer, when asked by customers for the well-known "Romeo and Juliet" cigar, which bears a label reading "Romeo y Julieta", sold an imitation bearing a label on which the words "Romeo, el Amante de Julietta" appeared—the words "Romeo" and "Julietta" being in large type. The cigars bearing this label were seized, and the dealer was restrained from selling any "Romeo and Juliet" cigar which did not bear the genuine label.