Hygeia Distilled Water Co. v. Hygeia Ice Co.

40 A. 534, 70 Conn. 516, 1898 Conn. LEXIS 43

• Court: Supreme Court of Connecticut
• Decided: June 1, 1898
• Status: Published

Opinion

Toeeance, J.

The assignments relating to the exceptions to the finding may be laid out of the case. They are all founded upon the action of the court in finding or in refusing to find certain facts from conflicting testimony, and therefore cannot be considered by this court so as to be available to the defendant upon this appeal. Atwater v. Morning News Co., 67 Conn. 504; Thresher v. Dyer, 69 id. 404.

Before considering the questions based upon the overruling of the defendant’s claims, it may be convenient to dispose of those relating to the rulings upon evidence, the first of which is the admission of the record in the suit of the plaintiff against the Waukesha Mineral Springs.Company. This evidence came in by way of rebuttal. It was offered generally, and the objection to it was general. If, then, it was admissible for any purpose, the ruling complained of was correct; Morris v. Bridgeport Hydraulic Co., 47 Conn. 279, 287; and it will be presumed that the trial court used it only for an admissible purpose. Hurlbut v. McKone, 55 Conn. 31, 46. One of the defenses was, in substance, that the word “ Hygeia ” was in common use both in the ice and water business long before the plaintiff or its predecessors in business used it, and that in 1893 it had been publicly registered as a trade-mark by the Waukesha Mineral Springs Company. The defendant offered evidence in support of this defense, and from that, and other evidence given without objection, relative to the dealings between the plaintiff and the Waukesha Mineral Springs Company, was entitled to claim and doubtless did claim that such common use of the word was known to the plaintiff and its predecessors in business and had been acquiesced in by them and it; and especially that it had been acquiesced in by the plaintiff after the registration of said trade-mark in 1893. The plaintiff was entitled to show in rebuttal that it had not, in any way inconsistent Avith the right which it now claims, acquiesced in such common use of the word “ Hygeia,” and to show this by any appropriate evidence, including its own acts and conduct. Prosecuting a suit to a finality for an infringement of its right is an act clearly tending to show a want of acquiescence in an invasion of such right, and the record of such suit was appropriate evidence of that act.

The precise objection now made to the admissibility of this record is that the defendant was not a party nor in privity Avith any party to it. Had the record been offered as evidence of any of the facts adjudicated in the suit, this objection would be a valid one; but it was not offered nor received for any such purpose, and the objection cannot prevail.

The next ruling upon evidence relates to the testimony of the witness Simpson. He, at the plaintiff’s request, had, at stores and other places, asked for the plaintiff’s products by name, and had at some places been furnished with the plaintiff’s products, and at others Avith the defendant’s products. Simpson’s testimony to these facts was offered by the plaintiff to show that the defendant’s products Avere known in the market by the name applied to the plaintiff’s products, that dealers sold them as such and that thereby the public were liable to be misled. The court excluded the evidence for this purpose, but did admit it solely to show that the products of both parties were on sale at the same or different places in the same cities. Simpson having testified that he made his first purchase at a certain drug store in New Haven, Avas then requested to state what he there called for, and the defendant objected to the question. It nowhere appears that the question was answered, or that the answer, if given, did or could do the defendant any harm; but assuming that an answer was given, and that the objection was to that rather than to the question, and that the answer could possibly harm the defendant, we think the ruling was correct under the facts disclosed by the record.

The court had ruled that evidence of the fact that the products of both parties were on sale at the same or different places in New Haven, was admissible. This was, in effect, a ruling that such fact was or might be relevant and material under the issues in the case, and for aught that appears in the record, this ruling was correct. The defendant did not object to the ruling, and did not claim that such fact was irrelevant and immaterial. It objected generally to certain evidence of the fact. The only ground on which it now claims that this evidence was inadmissible is that the fact in proof of which it was offered was immaterial. This objection comes too late to avail the defendant now. We think the fact was material and the evidence objected to was relevant evidence of it.

The reasons which justify the ruling in regard to Simpson’s testimony, justify also the ruling in regard to Colt’s testimony. In both cases the evidence was substantially the same, the objection was the same, and it was admitted for the same purpose under substantially the same circumstances.

The last ruling upon evidence complained of relates to the testimony of Smith, the general manager of the plaintiff. He was asked as a matter of knowledge to state the meaning in the trade of certain names applied to the plaintiff’s products. The defendant objected to this, substantially on the ground that it had not been shown that the witness had such knowledge. The witness had previously testified that he entered the plaintiff's employment in 1887 as a traveling salesman, and had been actively connected with the business of selling plaintiff’s products ever since. The court, with all the evidence before it bearing upon this matter, decided that the witness had such special knowledge, and it does not appear that this decision was based upon incompetent or insufficient evidence. Under such circumstances this court will not review that decision. State v. Main, 69 Conn. 123, 141.

The assignments of error based upon the claims overruled, are next to be considered, and the first of these involves the question whether the word “ Hygeia ” could be appropriated as a trade-mark. The general principles to be applied in determining such a question are fairly well settled. A trademark is something used upon vendible articles to designate them as the articles made or sold by A, and to distinguish them from similar articles made or sold by B. Speaking generally, its office or purpose is to indicate the origin or ownership of such articles. When it consists of a word, that word must be capable of performing that office or serving that purpose. In law certain common words are not deemed capable of serving this purpose, as, for instance, words merely descriptive of the article, constituting its ordinary or known name, or indicating its ingredients, or its qualities, or properties, or its mode of composition, or the like. Such words cannot be appropriated as trade-marks. But a word not falling within the class of words incapable of being adopted as a trade-mark, may be adopted as one, although it cannot and does not of itself in any way indicate origin or ownership. If, by use as a trade-mark, such a word has acquired, by association in the minds of men, an understood reference to the maker or seller of the articles upon which it is used, that would entitle the owner of such trademark to protection. Under such circumstances a word may be a valid trade-mark, although it does not of itself indicate any particular person as maker or seller of the goods, nor his name nor address. Boardman v. Meriden Britannia Co., 35 Conn. 402; Mfg. Co. v. Trainer, 101 U. S. 51; Godillot v. Harris, 81 N. Y. 263; Insurance Oil Tank Co. v. Scott, 33 La. Ann. 946, 39 Amer. Rep. 286.

The only ground upon which the defendant claims that the word “ Hygeia ” cannot be adopted as a trade-mark, is that “ it has become a term merely descriptive of the character and quality of the goods to which it is applied,” as healthful or health-giving. The parties were in dispute over this matter, and the question between them was one of fact. The defendant claimed, in effect, that “ Hygeia ” had become an ordinary English word with a fairly well defined secondary meaning, and the plaintiff denied this. The dispute, of course, related mainly to the time when the word was first adopted as a trade-mark by the plaintiff’s assignor, and not to the time of the trial. The question thus presented was one to be determined by the court from its own judicial knowledge aided by reference to any appropriate authorities, or by evidence, or both. Grennan v. McGregor, 78 Cal. 258; Com. v. Marzynski, 149 Mass. 68; Atty.-Gen. v. Dublin, 38 N. H. 459; School District v. Ins. Co., 101 U. S. 472. In the standard dictionaries the word “ Hygeia ” is uniformly used as a proper name and not as an adjective. In Webster’s International Dictionary it is used solely as the name of the “ Goddess of Health,” while in the Century Dictionary it is used in this sense, and also as the name of one of the planetoids discovered in 1849. We are not aware of any standard authority that supports the defendant’s contention upon this point. The court below heard evidence upon this question from both parties. It was in evidence that the word as late as 1893 had been registered in the patent office as a trade-mark, and this was entitled to weight in determining the question. “The authorities of the patent office, from long experience, are familiar with the law of trademarks, and their decisions, though not conclusive, are entitled to great consideration by the courts in the determination of such questions.” Insurance Oil Tank Co. v. Scott, 33 La. Ann. 946, 952. It may be conceded, as claimed by the defendant, that there was evidence tending to show that at or about the time of the trial the word, to some persons, had acquired the secondary meaning it contends for, but the evidence was conflicting and may have arisen out of the very use which the plaintiff and its predecessors had made of the word in their business; and if this were so such evidence would be of little weight. The mere fact that the word, by association of ideas, would suggest to some persons the idea of purity or healthfulness, would not prevent its being available as a trade-mark word; Keasbey v. Brooklyn Chemical Works, 142 N. Y. 467; and the fact that such association grew out of its use by the plaintiff and its predecessors would not make it common property. Burton v. Stratton, 12 Fed. Rep. 696; N. K. Fairbank Co. v. Central Lard Co., 64 id. 133. Upon the knowledge of this matter acquired by the exercise of its power of judicial cognizance, aided by evidence, and by reference to standard authorities upo;n the subject, the court below decided against this contention of the defendant, and we are of opinion that it decided correctly.

The next and last question to be considered is whether the court below erred in the judgment which it rendered.

The first count of the complaint alleged, in substance, that the defendant was wrongfully and unlawfully, in the conduct of its business of making and selling distilled water and products made therefrom, using its corporate name and an assumed name, to the injury of the plaintiff and in violation of its rights. The issues upon this count were found in favor of the defendant. The issues formed upon the third count also were found in favor of the defendant, and so these two counts may be laid out of the case.

The finding is, therefore, based upon the matters alleged in the second count of the complaint, and these relate to the infringement of the plaintiff’s trade-mark. This count charges, in substance, that the defendant in the conduct of its business of selling distilled water in all its forms as a beverage, has used the word “Hygeia,” both alone and in combination in its corporate and assumed names, conspicuously upon its goods and by way of advertising, in such a way as to constitute an infringement of plaintiff’s trademark, and to make purchasers liable to mistake defendant’s goods for plaintiff’s goods.

The finding is not as broad or specific as the charge in the second count. The finding is that “in the transaction of its business as aforesaid by the defendant, the word ‘Hygeia’ has been and is used by it, alone and in combinations, conspicuously upon its bill heads, letter heads, advertisements, labels, wagons, bottles, wooden boxes, cases,” etc.; and the court further finds “from a comparison of the bill heads, advertisements, labels, etc., used by the defendant with those used by the plaintiff,” and from other evidence, that such use is liable to make purchasers using ordinary care mistake defendant’s goods for plaintiff’s goods. The finding thus states, in effect, that the defendant’s use of the word “ Hygeia,” either alone or “ in combinations,” is a violation of plaintiff’s trade-mark or name. What the “ combinations ” are that have been used or which constitute an infringement, is not stated. The second count alleged that the use of the defendant’s corporate or assumed name in the distilled water business as a beverage, constituted such an infringing “combination;” but the court does not so find, either expressly or by implication. The most that can be said about the finding upon this point is, that certain “ combinations” used conspicuously are infringements, and not that all are, however used.' It is nowhere found, either expressly or by clear implication, that the mere ordinary use by the defendant of its legitimate corporate name constitutes such an infringement, or is liable to work the slightest injury to the plaintiff or to the public.

The judgment restrains the defendant from in any way or manner engaging in such business so long as it retains the word “ Hygeia ” in its corporate name, whether it uses such name in said business or not, and from in any. way or manner using its corporate name, conspicuously or otherwise, in such business. It is conceded that the plaintiff has no monopoly of the business of making and selling distilled water and products made therefrom, as a beverage, and that anjr one may engage therein; the only claim is that any person engaging therein must not use the word “ Hygeia ” in such a way as to constitute an infringement of the plaintiff’s rights in that word. We think the facts found did not warrant the court in rendering the sweeping judgment complained of in this case, and that for this error, under the circumstances of this case, the entire judgment should be reversed and set aside. Moreover, as the evidence in the case may possibly have warranted a broader finding than was made in the case, we think the ends of justice will be best subserved by granting a new trial.

Error, judgment set aside and new trial granted.

In this opinion the other judges concurred.