Scott v. Standard Oil Co.

106 Ala. 475

• Court: Supreme Court of Alabama
• Decided: November 15, 1894
• Status: Published

Opinion

McOLELLAN, J.

— There was a- decree pro confesso against W. L>. Scott and the Southern Oil Co., the sole defendants to this bill; a submission for final decree on bill and decree pro confesso ; a decree declaring the complainant entitled to relief, and referring the case to the register to ascertain and report the profits for which the defendants should account, or the damages to which the complainant was entitled ; a report upon said reference to which no exceptions were filed ; and a final decree enjoining the defendants as prayed in the bill, confirming the report of the register' as to profits which defendants had made through the infringement of complainant’s alleged trade-mark, fraudulent imitation- of complainant’s label and fraudulent use of packages or barrels labelled by complainant, and previously used by it in the sale of oil, but which the defendants procured after they had been emptied of their contents and refilled and sold, and adjudging the defendants liable to the complainant for the amount of said profits. From -that decree both defendants prosecute this appeal, though they did not appear at all or for any purpose in the city court nor be-, fore the- register on reference. It is conceded that the defendants, notwithstanding their being in contempt below, may on this appeal question and have,passed upon the equity of complainant’s bill.

A prominent question in the case, going to the equity of the bill in part, is whether certain words stamped upon or affixed to packages of goods sold by the complainant constituted a trade-mark. Of course, it is well settled that a mere word, or several words in a certain sequence, may constitute a trade-mark the exclusive use of which the courts will protect. To entitle words to this protection, however, they must indicate the source or origin and the ownership of the article to which they are attached. By this is not meant that such indication shall result from their intrinsic significance, blit it may well be the consequence of such continued and uniform use of them by a manufacturer or dealer as to create in the mind of the public an association between the words and the commodity to which they are attached, on the one hand, and the manufacturer or dealer or the place of manufacture on the other; so that mere words which upon their face import no reference to or connection with the dealer in or owner or manufacturer of goods to which they are constantly affixed, not any index to their origin, may, because of their customary use upon the goods of a certain person, come to indicate very clearly that a particular package bearing the mark of them was produced by or belongs to that person.

But a word which is the name of the thing to which it is affixed cannot become a trade-mark in respect to that thing, nor words which describe the thing to which they are attached and indicate its characteristics, its virtues, the quantity contained in the package, &c. &c. For if the thing is not patented all men have the right to make and vend it, to the use of its name and to every word in the language to aptly describe it; and the exclusive use by one of words which are thus necessary to all and equally belong to all will not be protected.

It not infrequently happens — very generally indeed— that words used for the purposes of a trade-mark, and which either in themselves as originally used denote only origin or ownership, or by user come in the public mind to indicate origin or ownership though intrinsically importing nothing of the kind, come finally do a sort of adjective or descriptive significance in respect of the wares upon which they appear, and to be in the nature of an assurance that, the commodity possesses certain virtues and qualities. But this is not because the words themselves are descriptive of the thing, but because they point to an origin or ownership known by experience to be the source, or the manufacturer or vendor, of goods of certain qualities. The words do not describe the thing, but they indicate who made it. This knowledge of the maker involves an assurance of quality, through the reputation which articles manufactured by him and put on the market under his mark has acquired. This reflex descriptive quality in words which, dissociated from their use in connection with the article, are not descriptive of it at all, constitutes indeed the chief value of trade-marks composed of them both to the manufacturer or dealer and the public. Such words are not descriptive in the sense of the proposition stated next above ; and that they come in this indirect way to show-quality is no objection to their employment in trademarks, since their exclusive use by one would not deprive another of the full vocabulary of primarily descriptive words to which the public are entitled and to which these do not belong.

On the other hand, it is often the case that words used as, and intended to constitute, trade-marks * and which are primarily and intrinsically descriptive merely, come, by their continued use by one person to mark goods manufactured or sold by him, to clearly indicate the origin and ownership of such goods. But they do not thereby lose their primary meaning or become the exclusive property of the person who thus uses them. They continue to oelong to the common vocabulary of adjective words, and as such the public have a right to use them in the description of its wares which cannot be interfered with by the courts on the theory of preventing infringement of trade-marks. Such words, however clearly they may finally come to perform the legitimate offices of a trade-mark by indicating origin or ownership, still have their primary significance and they cannot be wrenched out of their places as descriptive words for the common use of all, merely because one of the public has assumed for a time to use them for a purpose the law does not warrant. — 26 Am. & Eng. Encyc. of Law, pp. 289-300, 302-305; Browne on Trade-Marks, Chapters III and IV; Manufacturing Co. v. Trainer, 101 U. S. 55.

In the case at bar. the complainant claims as its trademark, in respect of a certain brand or grade of coal oil manufactured and sold by it, the words “Fire-Proof Oil.” These words, it is alleged — and proven for all the purposes of this case — were first used by the complainant, as a part of the brand or label for barrels of oil of a certain excellent quality, many years ago and have been ever since so used by it, that they had not been so used by others for this purpose before their adoption by complainant, and have nob since then been so used except by the defendants. It appeal’s also that by their uniform and long continued use upon barrels of oil of a certain grade by the complainant alone, these words upon such packages have come by association with the name of the complainant in the public mind to denote in and of themselves the origin and ownership of the commodity to which they are attached, though originally of course they did not afford any indication of origin or ownership. And bv further association of ideas, as it also appears in the case, the words, wholly apart from any intrinsic significance they may have, have come also to indicate a certain excellence of quality in the oil to which they are affixed through the reputation which oil of this brand manufactured by the complainant has acquired. On the principles stated above, neither the fact that the words did not originally indicate the source or ownership of the commodity nor that they now indirectly give assurance of its quality can hinder the complainant in its effort to have its exclusive use of them as a trade-mark protected; and on the other hand, if the words disconnected from their long association with complainant’s products, are descriptive thereof, the fact that their use in this connection had also made of them a symbol or index of origin or ownership would not j ustify their attempted appropriation to the purposes of a trade-mark.

So that the real and only inquiry on this branch cif the case is as to whether these words in the collocation of their use are descriptive of the article to which they are attached, and in and of themselves, as thus arranged, indicate the grade, quality, characteristics &c. &c. of such article, and did so indicate quality &c. when they were first used by complainants in this' way. The question is not without difficulty even upon principle, and the difficulty is rather enhanced than relieved by adjudication of courts and departments. The trouble does not, of course, arise upon the literal and abstract meaning of the words “Fire-Proof;” that is clear enough — proof against fire, incombustible — but upon their meaning as used here in collocation with and having manifest reference to (an illuminating) “Oil.” We know that in a general sense this oil is not proof against fire, not 'incombustible, not “fire-proofand hence it is that these words in that sense do. not and cannot accurately indicate a grade or quality of the thing to which they are attached.. But we know also that oils of the class involved here contain inflammable vapors which are evolved or thrown out at a greater or less temperature as the oil in a given instance is of a greater or less degree of density and refinement. The evolution of these vapors gives an explosive character to the oil. The baser grades will evolve these vapors it may be under normal temperature, but the higher grades will not throw off explosive vapors except when subjected to a temperature so high as practically never to exist under normal conditions — say 110 to 120 degrees — so that under ordinary circumstances the oil is not explosive, and a lighted match may be plunged into it without ignition. The grade or quality of oil in this respect is ascertained or proved by means of an apparatus “for proving light hydrocarbon oils by heat, to find the temperature at which they evolve . explosive vapors.” — Century Dict’y,p. 6250. This apparatus, or its application, is called an ‘ ‘oil test” or a fire-test of oil; and oils which are shown to be explosive at a low temperature are said tobe of a low fire-test, and those from which explosive vapors are evolved only at a high degree of heat are said to be of a high fire-test; and when it appears that the fire-test is so high as that under normal conditions the temperature is never high enough to evolve these inflammable vapors producing explosion in contact with fire, that oil is practically nonexplosive, i. e. it is uninflammable, it will not explode from contact with fire, it is proof against explosion by fire, it is, in the sense of inflammability, “firerproof oil.” And in this sense, the words claimed by complainant to constitute its trade-mark must, in our opinion, be taken and understood. As first used by the complainant, they clearly gave no indication of origin or ownership of the commodity, and as 'they were never used by the complainant except upon a label which contained, aside from them, the most unmistakable reference to the source and ownership of the article, being none other than the full name of the complainant and of its place of business, it is not readily conceivable that they have ever been intended to indicate origin or ownership. It would be absurd to say that complainant intended by their use to indicate that the illuminating oil to which they were attached was incombustible, would not burn, could not be used for' the purpose of illumination. Yet they stand in an adjective relation to “oil” and are adjective in character. Bearing, as they do, no relation to origin or ownership and obviously not intended to denote incombustibility, the purpose of their use must have been to affirm that the oil was non-explosive from fire contact, that it was of that high degree of purity which is fire-proof against explosion. And this purpose of the complainant is a fact to be considered in determining whether the words themselves are descriptive of the articles to which -they are attached. — Manufacturing Co. v. Trainer, 101 U. S. 51.

Moi’eover, the public knowing that the words “fireproof” as applied to illuminating oil, could not imply incombustibility, and knowing also that such oil of a certain high degree of purity and excellence was as to inflammability and consequent explosiveness proof against fire, would and does readily and naturally understand these words in this connection to refer to and carry assurance of that valuable quality of uninflammability in oil of this kind. So that it may well be said that they are not only of a general descriptive character, but also that they aptly and unmistakably to common apprehension point out a very desirable quality or grade of the thing to which they are applied. Fully capable of this meaning and in point of fact conveying it as here used, there is no room to say that this use of them is arbitrary or fanciful. They clearly differ, we think, in this respect from the terms “Sunlight,” “Daylight,” “Gaslight,”'and !‘Insurance,” as applied to illuminating oils, which have been protected as trade-marks ; and also even from the term “Snowflake” as applied to breads and starch, which has been denied protection because descriptive. All these terms, upon the face of them, it seems to us, are clearly fanciful in the connection they are thus used and are arbitrarily applied — not to indicate that the oil is sunlight or gaslight or daylight, nor that the light it makes is as bright as sunlight or daylight or as soft and bright as gaslight, nor any positive quality of the oil, but — as a mere fanciful name or designation for the particular commodity. And so with “Insurance Oil” and perhaps also “Snowflake” bread or starcli (which latter, however, have been held descriptive and not appropriable as trade-marks). It cannot be said that “Insurance” indicates any quality in the oil to which it refers or is a generic name for oil. And at the most “Snowflake” is amere fanciful suggestion of whiteness. But the words ‘ ‘Fire-Proof” in the sense they were used by the complainant and understood by the public are descriptive and assertative of a positive, inherent quality and a consequent high degree of excellence in the product to which they are attached ; they do not present a mere similitude between the oil and other very different things having pretty and catchy names, but they refer alone to the oil and directly characterize and describe it. They are in the category of words which have been rejected for trade-mark purposes, and which embrace such terms as “Beeswax Oil,” “Parriffin Oil,” “Macassar Oil,” “Invisible” with reference to face powder, “Crack-proof” rubber goods, “Razor Steel,” “Tasteless,” for drugs, because either descriptive or deceptive, ‘ ‘Straight Cut” tobacco, “Cable Twist Tobacco,” &c., &c., and like these terms are not appropriable to this use, because they are descriptive.

It is of no consequence that the complainant first produced oil of this quality and first applied to such or other oil the appellation of “Fire-Proof.” If, as we think, these words are descriptive, every other person who subsequently produced or dealt in oil of this quality had an equal right with complainant to the use of them in describing his product or wares. Of course the complainant might have coined a word to identify its oil and been protected in its exclusive use, but this is a very different matter from the use of. words, or a single word rather — for that used is really but one compound word —which already existed as a part of the language and hence was publici juris.

We, therefore, conclude that the bill presents no case of infringement of a trade-mark, and that so far as it seeks an injunction of the use of the words “Fire-Proof Oil” by the defendants and an account of profits accruing to them through the use of said words, dissociated from complainant’s label, it is without equity.

This conclusion will operate a reversal and remandment of the cause. The question whether the defendants have imitated complainant’s label can better be determined in the chancery court — and in this court should there be another appeal — upon answer and proof than on the present appeal, and, since the bill on another ground clearly has equity, we will not now underbake to decide whether defendants have fraudulently or wrongfully imitated the label of the complainant; but will content ourselves with saying, what is not questioned in this case, we believe, that a manufacturer or trader is entitled to an injunction against a wrongful or fraudulent imitation of his distinctive label, though the label is not a trade-mark and contains no word, sign or symbol filling the definition of a trade-mark or to be protected as such.

The 'bill presents a clear case for injunction and an accounting for profits in respect of the use by the defendants of barrels bearing complainant’s label which, after being sold by complainant containing oil and emptied of their contents, are bought up by the defendants, refilled with their oil and sold. This is a flagrantly fraudulent appropriation of the complainant’s label and the good will attaching to it to the manifest injury of the complainant and the public.. — Browne on Trade-Marks, § 443, et seq.

Unless The Southern Oil Company answers the bill, or some further showing is made that it is a partnership or a myth, service upon some agent of it should be proved before the register before decree pro confesso passes.

Reversed and remanded.