Gessler v. Grieb

48 N.W. 1098, 80 Wis. 21, 1891 Wisc. LEXIS 159

• Court: Wisconsin Supreme Court
• Decided: June 3, 1891
• Status: Published

Opinion

Cassoday, J.

“ It seems to be the office of a trade-mark to point out the true source, origin or ownership of the goods to which, the mark is applied, or to point out and designate a dealer’s place of business, distinguishing it from the business locality of other dealers.” Marshall v. Pinkham, 52 Wis. 578, 88 Am. Rep. 758. Such trade-mark usually includes the name of the manufacturer or dealer, as the best designation of such source, origin, ownership, or place of business. Howard v. Park, 21 Am. Law Reg. 644, and note. Sometimes, however, it consists of some novel device, arbitrary character, or fancy word, applied without special meaning, and which by use and reputation comes to serve the same purpose. In re Trade-Mark “Alpine” 29 Ch. Div. 877; In re James’s Trade-Mark, (Jame v. Soulby), 33 Ch. Div. 392; Jay v. Ladder, 40 Ch. Div. 649; In re Australian Wine Importers, 41 Ch. Div. 278; American S. L. B. Co. v. Anthony, 15 R. I. 338, 36 Am. Law Reg. 173; Selchow v. Baker, 93 N. Y. 59, 45 Am. Rep. 169.

In the case at bar the plaintiff appears to have rightfully used a label upon a box, and a wrapper on the same, upon which were the words, “ Gfessler’s Magic Headache Wafers, manufactured by Max Gessler, manufacturing chemist, Milwaukee, Wis.,” as designating the medicine, prepared and sold by him at his place of business in Milwaukee, as u a positive cure for headache and neuralgia.” Such or some other designation is undoubtedly essential to protect and increase his sales of such medicine, which is said to be meritorious. Eor that purpose courts may protect him against infringement, and the public against deception, to his damage. But it is only his trade and his business which are thus to be protected by his trade-mark. It gave him no monopoly of the headache business. He had no patent upon the mixture or preparation constituting his medicine. There is no claim that the defendant is precluded from manufacturing or selling such medicine by reason of any contract or trust relationship with the plaintiff. These things being so, the plaintiff had no exclusive right to such mixture, preparation, or sale. Chadmiok v. Cornil, 151 Mass. 190. The defendant, or any other person, therefore, was at liberty to manufacture or sell, as his own, a similar, or even the same, mixture or preparation as a cure for headache, provided he did so in a manner not calculated to mislead incautious persons into the belief that they were buying the medicine manufactured and sold by the plaintiff or some one else. Ilid. See, also, Singer Mfg. Co. v. Loog, L. R. 8 App. Cas. 15.

The medicine sold by the defendant as a “ cure for headache and neuralgia ” was put up in boxes similar to those used by the plaintiff, and purported to be “ manufactured at Brown's Pharmacy, Marquette, Mich.” Upon each box there was a label containing the words, “ W. J. Brown’s Alpha Wafers,” or “Brown’s Alpha Headache Wafers;” and the wrapper thereon contained the words, “Alpha Wafers for headache and neuralgia, manufactured only at Brown’s Pharmacy, Marquette, Mich.” There is no claim that the medicine sold by the defendant was not, in fact, manufactured by Brown in Michigan, as thus stated. As indicated, Brown had the legal right to manufacture such medicine, and sell or authorize the sale of it, as his own, in a manner not calculated to mislead incautious persons. He had the same right to build up a trade for the medicine so manufactured by him, through the agency of the defendant, and have the same protected by his trade-mark, as the plaintiff had. Brown Chemical Co. v. Myer, 31 Fed. Rep. 453. There is no claim that the defendant ever used upon any of his boxes, or in any of his labels or wrappers, the words, “ Gessler’s Magic,” or either of those words, in connection with other words or alone, or that he ever in any way indicated that the medicine so sold by him was manufactured by the plaintiff, or in Wisconsin, or by any other person than Brown, at Marquette, Mich. It is therefore very manifest that the defendant never infringed the plaintiff’s trademark, unless be did so by. the use of tbe word “Wafers,” or the words, “ Headache Wafers,” or the words, “ a guaranteed cure for headache and neuralgia,” or “ a positive cure for headache and neuralgia.”

It appears that the plaintiff registered as his trade-mark the words “ Magic Headache,” but he neither has nor could have any exclusive right to those words, in a case like this, by reason of such registration, nor does his counsel claim any. Trade-Mark Cases, 100 U. S. 82. Besides, as. stated, the defendant has never used the word “Magic” at all; and such registration, if valid, would not give the plaintiff any right to the word “ Headache ” alone, or in some other connection. Corbin v. Gould, 133 U. S. 308. True, the directions ■on the label used' by the defendant are substantially ithe same as the directions on the plaintiff’s label. But' the plaintiff makes no claim to any copyright upon such directions; and it is not the office of a trade-mark to “authorize a monopoly upon fragments of the language, nor the exclusive appropriation of words in common use, descriptive of common objects and qualities. It has often been decided that words which were merely descriptive of the kind, nature, style, character, or quality of the goods or articles sold cannot be exclusively appropriated and protected as a trademark.” Marshall v. Pinkham, 52 Wis. 578. See, also, In re Anderson's Trade-Mark, 26 Ch. Div. 409; Street v. Union Bank, 30 Ch. Div. 156; In re James' Trade-Mark (James v. Parry), 31 Ch. Div. 340; Manufacturing Co. v. Trainer, 101 U. S. 51; Goodyear Co. v. Goodyear Rubber Co. 128 U. S. 598.

We must hold that the words “ Headache Wafers,” as used by the plaintiff, whether together or separately, are each in common use, descriptive of common objects and qualities, and hence he has no exclusive right to the same as a trade-mark; and consequently there has been' no infringement of thp plaintiff’s trade-mark by the defendant.

The learned counsel for the plaintiff contends, however, that, assuming that no specific trade-mark had been infringed, yet that the general similarity in appearance between the wafers, boxes, labels and wrappers used by the defendant and those used by the plaintiff was such as to mislead customers, exercising ordinary caution, into purchasing “ W. J. Brown’s Alpha Wafers,” or “Brown’s Alpha Headache Wafers,” as and for “ Gessler’s Magic Headache Wafers,” manufactured and sold by the plaintiff. Undoubtedly, where the similarity is such as is likely'to thus deceive the public to the injury of a private dealer, an injunction may be granted. McLean v. Fleming, 96 U. S. 245; Carson v. Ury, 39 Fed. Rep. 177; Frost v. Rindskopf, 42 Fed. Rep. 408; Jay v. Ladler, 40 Ch. Div. 649; In re Dunn’s Trade-Mark, 41 Ch. Div. 439. But where, as here, there is no such substantial similarity, and where there is nothing indicating that the defendant is selling his goods as and for the goods manufactured or sold by the plaintiff, no in-, junction should be granted. Liggett & M. Tobacco Co. v. Finzer, 128 U. S. 182; Goodyear Co. v. Goodyear Rubber Co. 128 U. S. 598; Corbin, v. Gould, 133 U. S. 308; Philadelphia N. M. Co. v. Rouss, 40 Fed. Rep. 585; Fleischmann v. Starkey, 25 Fed. Rep. 127; Brown Chemical Co. v. Myer, 31 Fed. Rep. 453; Singer Mfg. Co. v. Loog, L. R. 8 App. Cas. 15; Ln re Anderson’s Trade-Mark, 26 Ch. Div. 409; Street v. Union Bank, 30 Ch. Div. 156; In re James’ TradeMark (James v. Parry), 31 Ch. Div. 340.

After a careful consideration we are constrained to hold that the plaintiff made no showing entitling him to an injunction.

By the Goumt.— The order of the circuit court is reversed, and the cause is remanded with direction to dissolve the injunction, and for further proceedings according to law.