Derringer v. Plate

By the Court, Rhodes, J. This is a suit in equity for an injunction to restrain the defendant from pirating the plaintiff’s trade mark, and for the recovery of damages for a violation of the plaintiff’s trade mark property.'

The defendant’s demurrer to the complaint was sustained, and the only question presented on the appeal is whether the statute of 1863, concerning trade marks, repealed or abrogated the remedies afforded by the common law in trade mark cases. The plaintiff does not allege a compliance with the provisions of the statute. He contends that the remedies given by the statute are cumulative to those which a party was entitled to at common law, and the defendant insists that the statute forms a “ complete scheme ” in respect to trade marks, and thereby repeals the common law rules relating to the same subject matter.

Right, to a trade marie at common law.

Any name, symbol, letter, figure or device adopted by the persons manufacturing or selling goods, and used and put upon such goods to distinguish them from those manufactured or sold by others, and employed so often and for such a length of time, as to raise the presumption that the public would know that it was used to indicate ownership of the goods in the person manufacturing or selling them, constitutes his trade mark. His right to the trade mark accrues to him from its adoption and use for the purpose of designating the particular goods he manufactures or sells,-and although it has no value [295]except when so employed, and indeed has no separate abstract existence, but is appurtenant to the goods designated, yet the trade mark is property, and the owner’s right of property in it is as complete as that which he possesses in the goods to which he attaches it, and the law protects him in the enjoyment of the one as fully as of the other. In order that the claimant of the trade mark may primarily acquire the right of property in it, it must have been originally adopted and used by him—that is, the assumed name or designation must not be one that was then in actual use by, others, (Upton’s Trade Marks, 46)—and such adoption and use confer upon him the right of property in the trade mark. It was at one time thought that no man could acquire a right to a particular trade mark, (Blanchard v. Hill, 2 Atk. 284,) but as the true interests of manufactures and commerce were more fully developed and appreciated, the right of property in trade marks was recognized, and the doctrine has been uniform for many years, that the manufacturer or merchant does possess an exclusive property in the trade mark adopted and used by him. The right of property does not in any manner depend for its inceptive existence or support upon statutory law, though its enjoyment may be better secured and guarded, and infringements upon the rights of the proprietor may be more effectually prevented or redressed by the aid of the statute than at common law. Its exercise may be limited or controlled by statute, as in case of other property, but, like the title to the good will of a trade, which it in some respects resembles, the right of property in a trade mark accrues without the aid of the statute. The right is not limited in its enjoyment by territorial bounds, but subject only to such statutory regulations as may be properly made concerning the use and enjoyment of other property, or the evidences of title to the same; the proprietor may assert and maintain his property right wherever the common law affords remedies for wrongs. The manufacturer at Philadelphia who has adopted and uses a trade mark, has the same right of property in it at New York or San Francisco that he has at his place of man