Burke v. Cassin

California Supreme Court Jul 1, 1873 No. No. 2,396Published

Before: Rhodes

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Holding. The court held that while generic terms like 'Schiedam,' 'Schnapps,' and 'aromatic' cannot be protected as trademarks, the use of a name deceptively similar to the manufacturer's name ('Wolfe') and the imitation of labels and stamps constitute actionable fraud. Consequently, the court ruled that a party is entitled to injunctive relief against the use of colorable imitations of their labels and trade names.

Issues

Whether the terms 'Schiedam,' 'Schnapps,' and 'aromatic' can be appropriated as a trademark.
Whether the use of the names 'Von Wolf' or 'Van Wolf' constitutes a violation of the trademark 'Wolfe.'
Whether a label, though not strictly a trademark, is entitled to legal protection against colorable imitation.

Disposition. reversed and remanded

Quotations verified verbatim against the opinion

“One of those rules is that a word, figure, etc., in common use, which indicates the name, nature, kind, quality, or character of the article, cannot be appropriated as a trademark”

“We are clearly of the opinion that “Van Wolf” or “Von Wolf” are but imitations of the plaintiff’s name, and are violations of his trademark.”

“On principle, a person is as fully entitled to be protected in the use of his label as his trademark, and the authorities fully sustain this position.”

Synopsis

Trademark.—A trademark is a word or device adopted or devised and used by the manufacturer or vender of goods, to designate the origin or ownership of his goods.

What Cannot bb Appropriated as a Trademark.—A word, figure, etc., in common use, which indicates the name, nature, kind, quality, or character of the article, cannot be appropriated as a trademark.

Idem.—The word “ Schnapps,’’ which has long been in use to designate gin manufactured at Scheidam, cannot be appropriated as a trademark for gin, in the United States, even if its former use had been confined to Europe.

Idem.—The word “ Scheidam ” cannot be adopted as a trademark, because it has long been used to denote quality or kind.

Idem.—The word “ aromatic,” when employed to express one of the qualities of liquor, cannot be protected as a trademark.

Piracy op a Trademark.—The name of the manufacturer or seller of goods may be used as a trademark, and the adoption of the same name, as a trademark for goods of the same kind, by a person of a different name, is “piracy of a trademark.”

Idem.— A slight change in the name, such as cutting off the final letter, or prefixing “ Von ” or “ Van ” to it, so long as it is an evident imitation, does not prevent its use from being piracy of the trademark.

Label on Goods.—A label, at common law, is not a trademark, but when a manufacturer or seller of goods adopts a label to distinguish his goods from those of another, he is entitled to be protected in its use, and others will be enjoined from using the same, or a colorable imitation thereof.

Imitation op Label.—An imitation of a label used on goods, is such a colorable representation thereof as is calculated to produce in the mind of the purchaser of goods the impression that they were manufactured or sold by the person whose label has been imitated.

By the Court, Rhodes, J.: , From the year 1848 to the time of the commencement of these actions, Udolpho Wolfe, the plaintiff’s testator, who has died since the commencement of these actions, has been engaged in the manufacture of gin at Schiedam, in Holland, and in the importation of it into Hew York, and in the sale of it in different places in the United States. The gin is put up in bottles having labels attached, and the bottles are inclosed in wrappers, also having labels thereon, and are packed in boxes, upon which are stamped certain words which appear on the labels. Wolfe claims as his trademark, the words: “ Wolfe’s Aromatic Schiedam Schnapps.” The defendants are engaged in manufacturing or compounding and offering for sale, at San Francisco, gin, or an article [478]which resembles gin, but which is inferior in quality to that which is sold by the plaintiff; and the labels and stamps which they place on their bottles and the wrappers and boxes, bear a striking resemblance to those which are used by the plaintiff. The labels used by the defendants in one of the actions, represent the commodity to which it is attached as “ Von Wolf’s Aromatic Schiedam Schnapps;” and those which are used by the defendants in the other, action, represent it as “Van Wolf’s Aromatic Schiedam Schnapps.” The plaintiff claims that, the use of those words,.stamps and labels, by the defendants, is a violation of his trademark.

A trademark is a word, symbol, figure, form, or device, or a combination thereof, adopted or devised and used by a manufacturer or vender of goods, to designate the origin or ownership of his goods, and is used by him to distinguish his goods from those which are manufactured or sold by others. A violation of a trademark consists in the adoption or colorable imitation thereof, and its use by the wrongdoer on his goods in such manner that the purchasers of the goods of the wrongdoer are deceived, or liable to be deceived, and induced to believe that such goods were manufactured or sold by the owner of the trademark. In its essence, it is a false representation in respect to the origin or ownership of the goods, to which the false or simulated trademark is attached. There is but little conflict among the cases in regard to the rules of law governing the acquisition or enjoyment of the right of a trademark, or those applicable to controversies growing out of the violation of those rights; but the principal difficulties arise in the application of those rules to the varied and sometimes complicated facts of the several cases. One of those rules is that a word, figure, etc., in common use, which indicates the name, nature, kind, quality, or character of the article, cannot be appropriated as a trademark; and even a new word which is devised for a

Burke v. Cassin

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