to prevent the publication of private correspondence;61 to restrain parties from using the name chosen and used by plaintiff for his inu.62 For fraudulent change of trademark, injunction will be granted,63 and mere colorable differences will not in general prevent an injunction from issuing.64 The court will consider whether the public would probably be deceived, rather than whether manufacturers could distinguish, if the article. is of such a kind that the public would be apt to purchase upon the strength of the trademark.65 Such action may be maintained without alleging or proving special damages. 66 One of two joint owners in a trademark may sue separately in respect of the injury caused by an infringement.67

§ 2829. Action will not lie. An injunction will not be granted to assist a wrongdoere. g., to a plaintiff who is himself counterfeiting another man's mark, so as to give him exclusive power to deceive;68 nor in case plaintiff is in anywise imposing by fraudulent statements on the public concerning

61 In re Long Island R. R. Co., 3 Edw. Ch. 515.

62 Howard v. Henriques, 3 Sandf. 725. As to infringement of trademark, see, generally, Williams v. Johnson, 2 Bosw. 1; Brooklyn, etc., Co. v. Masury, 25 Barb. 417; Amoskeag Co. v. Spear, 2 Sandf. 605; Coats v. Holbrook, 2 Sandf. Ch. 586; S. C., id. 613; Leather Cloth Co. v. American Leather Cloth Co., 11 H. L. C. 523; 32 L. J. Ch. 199; 35 id. 53; Blackwell v. Crabb, 36 id. 504; Seixo v. Provezende, L. R., 1 Ch. App. 194; Cope v. Evans, L. R., 18 Eq. 138; Siegert v. Findlater, L. R., 7 Ch. D. 801; Ewing v. Johnston, 13 id. 434; Mitchell v. Henry, 15 id. 181; Solis Cigar Co. v. Pozo, 16 Col. 388; 25 Am. St. Rep. 279; Avery v. Meikle, 81 Ky. 73; Gesler v. Grieb, 80 Wis. 21; 27 Am. St. Rep. 20; Frost v. Rindskopf, 42 Fed. Rep. 408.

63 Gillott v. Kettel, 3 Duer, 626; Lemoine v. Ganton, 2 E. D. Smith, 347.

64 Williams v. Johnson, 2 Bosw. 6; Clark v. Clark, 25 Barb. 78; Brooklyn Lead Co. v. Masury, id. 418; Amoskeag Co. v. Spear, 2 Sandf. 608.

65 Shrimpton v. Laight, 18 Beav. 164.

66 Rodgers v. Nowill, 5 C. B. 109; Blofeld v. Payne, 4 Barn. & Ad. 410; Singer Co. v. Wilson, L. R., 2 Ch. D. 434; Braham v. Beachim, L. R., 7 id. 848.

67 Dent v. Turpin, 2 Johns. & H. 139; Sheehan v. G. E. R'y Co., L. R., 16 Ch. D. 59.

68 Samuel v. Berger, 4 Abb. Pr. 88; Partridge v. Menck, 2 Sandf. Ch. 622; S. C., 1 How. App. Cas. 548; Stewart v. Smithson, 1 Hilt..

the matter.69 And where plaintiff falsely stamped his production with the word "patented," an injunction for his protection was refused.70 But in a case where the articles had really been patented and the patent has expired, the plaintiff continuing the use of the old label, including the word "patented," this was held justifiable, and no ground for denying an injunctiou for plaintiff's benefit." And the plaintiff may even use a fictitious name, and be protected in it.72 If the facts are doubtful, or if the case is for any reason not a clear one, injunction should not be granted before a verdict upon the issues. But security may be required for an accounting. The registration of a trademark under the act of Congress, on articles of a particular kind only, does not enable the person so registering it to restrain another person from using such trademark upon another kind of article of the same nature, to which the second , person had been in the habit of affixing such trademark prior to the registration.75

74

§ 2830. Common-law rule. By the common law, the manufacturer of goods, or the vendor of goods for whom they have been manufactured, has a right to designate them by some peculiar name, symbol, figure, letter, form or device, whereby they may be known in the market as his own, and be distinguished from other like goods, manufactured or sold by other persons; and, when original with him, the owner of such mark will be protected by the courts in its exclusive use, but only so far as it serves to indicate the origin and ownership of the goods to which it is attached, to the exclusion of any symbols, figures, and combinations of words, which may be interblended with it, indicating their name, kind, or quality.76

69 Hobbs v. Francais, 19 How. Pr. 571; 4 Abb. Pr. 144; 6 Beav. 76; Helmbold v. Helmbold Mfg. Co., 53 How. Pr. 453; Hennesy v. Wheeler, 51 id. 457; but see Fetridge v. Merchant, 4 Abb. Pr. 156; and Comstock v. White, N. Y. Trans., Feb. 17, 1860, contra. 70 Flavel v. Harrison, 10 Hare, 471, 472.

71 11 Hare, 86.

72 Stewart v. Smithson, 1 Hilt. 121.

73 Wolfe v. Goulard, 18 How. Pr. 69; Samuel v. Berger, 4 Abb. Pr. 88; id. 161; Merrimack, etc., Co. v. Garner, 2 id. 326; Amoskeag, etc., Co. v. Spear, 2 Sandf. 618: 2 Phillips, 156; 2 Sandf. Ch. 628; 39 Eng. L. & Eq. 514; S. C., 4 Kay & J. 650.

74 Fetridge v. Merchant, 4 Abb. Pr. 161; Spottiswood v. Clarke, 2 Phillips, 156.

75 Smith v. Reynolds, 13 Blatchf. 458.

76 Falkinburg v. Lucy, 35 Cal. 52; 95 Am. Dec. 76.

§ 2831. Imitation of label. In an action to recover damages for an alleged invasion, by imitation of the plaintiff's trademark for the sale of a certain washing-powder, which consisted of a highly-colored picture representing a washroom, with tubs, baskets, clotheslines, etc.; also the following legend interblended on it: "Standard Soap Company, Erasive Washing-Powder;" followed by directions for the use of the "washing-powder," and the place of manufacture, the alleged imitation by defendants consisted of a picture and label which were the same as in plaintiff's alleged trademark only in the use of the words washing-powder," the direction for the use of the powders, and in use of paper of the same color as that used by plaintiff; it was held that this did not constitute an infringement of plaintiff's trademark.77 The action may be maintained against the vendor of the simulated article, though he sells it as an imitation.78 It is sufficient to show the fact of falsity, and that the effect will necessarily be to deceive.79 Where a party has a right to the exclusive enjoyment of a trademark, it is not necessary for him to show, in order to make out a case for an injunction, that it has been copied in every particular by the defendant. It is enough that the representatives employed bear such resemblance to his as to be calculated to mislead the public generally.80 But the similarity must be sufficient to amount to a false representation, and calculated to deceive the public generally. When ordinary attention on the part of customers will enable them to discriminate, the courts will not interfere 81

82

§ 2832. Name, use of. A manufacturer will be protected in the use of his own name. And so if defendant's real name be used in such a manner as is likely to mislead and deceive, an injunction will be allowed. Thus, where a hotel had been kept for many years by one Lovejoy, and after his death, by other persons using still the name "Lovejoy's Hotel," another 77 Falkinburg v. Lucy, 35 Cal. 52; 95 Am. Dec. 76.

78 Coats v. Holbrook, 2 Sandf. Ch. 586.

79 Peterson v. Humphrey, 4 Abb. Pr. 394.

so Walton v. Crowley, 3 Blatchf. 440; see Liggett, etc., Tobacco Co. v. Reid Tobacco Co., 104 Mo. 53; 24 Am. St. Rep. 313; El Modello, etc., Mfg. Co. v. Gates, 25 Ala. 886; 23 Am. St. Rep. 537. 81 Popham v. Cole, 66 N. Y. 69; 23 Am. Dec. 22.

82 Howe v. Searing, 19 How. Pr. 14; but see, contra, 1 Johns. (Eng.) 1174; compare Priestley v. Adams, 59 Hun, 380; Jay v. Ladler, 40 Ch. Div. 649.

Lovejoy opened a hotel under the title "Lovejoy House," he was restrained from so doing. So, where the "Irving Hotel " was opened in opposition to the "Irving House," and where the "Original What Cheer House" was opened in opposition to the "What Cheer House," injunction issued restraining the use of the titles "Irving" and "What Cheer," respectively.

§ 2833. Origin, not quality. A trademark must indicate origin, not quality. So any words of common use in connection with goods, such as "No. 1," " premium," "best," etc., can not become exclusive property, under guise of a trademark. But such common words if so put together, in form, color, and appearance, that they are likely to deceive, will be enjoined.&

§ 2834. Owner of vessel. The protection of a court of equity, in the matter of injunction, has been extended to the owners of lines of vehicles connected with a hotel;86 and to hotel-keepers;87 and to proprietors of places of amusement;8 and to the proprietor of a dining-saloon whose sign was counterfeited by the owner of a neighboring saloon;89 and to publishers. whose publications have been imitated.90

§ 2835. Prior use of words. Injunction will not be granted if the words used are such as have been or might reasonably have been used to designate the articles before plaintiff adopted them as his.91

§ 2836. Publication of advertisement. No action can be maintained to restrain the publication of advertisements of

83 Woodward v. Lazar, 21 Cal. 448; 82 Am. Dec. 751.

84 Amoskeag Co. v. Spear, 2 Sandf. 606; and see Stokes v. Landgraff, 17 Barb. 608; Manufacturing Co. v. Hosiery Mills, 129 Mass. 325; 37 Am. Rep. 362.

85 Williams v. Johnson, 2 Bosw. 9.

86 Stone v. Carlan, 3 Code Rep. 68; Knott v. Morgan, 2 Keen, 213; Marsh v. Billings, 7 Cush. 322; 54 Am. Dec. 723.

87 Howard v. Henriques, 3 Sandf. 725; Woodward v. Lazar, 21 Cal. 448; 82 Am. Dec. 751.

88 Christy v. Murphy, 12 How. Pr. 77.

89 N. Y. Trans., Jan. 10, 1861.

90 Hogg v. Kirby, 8 Ves. 215; Bell v. Lock, 8 Paige, 75; 34 Am. Dec. 371; Snowden v. Noah, Hopk. 347; 14 Am. Dec. 547.

91 Wolfe v. Goulard, 18 How. Pr. 94; Burgess v. Burgess, 3 De G., M. & G. 896; Smith v. Reynolds, 13 Blatchf. 458.

goods unless it is established that the publication is malicious and for the purpose of injuring the other party; if made to advance the publisher's own sales, and upon a reasonable claim that he has the right which he asserts, the action must fail.92

§ 2837. Same name. Two manufacturers of the same name must use their names in such a manner as not to deceive the public. Every man has a right to the use of his own name, but he must avoid imitating the mark of another bearing the same name.93 And the assignee of a trademark will be protected under the same rule, either against another person of the same name, or against the assignor himself.94 But the legitimate use, by any man, of his own name can not be interfered with.95

§ 2838. Allegation in case of a periodical publication.

Form No. 645.

That he is the proprietor and publisher of a newspaper [or magazine, or other periodical] at known and distinguished as [name of publication]; and that as such proprietor he has published the same daily [or otherwise] for years last past, and that such publication has been made by the plaintiff, and those through whom he purchased the same, as the owners and proprietors thereof, since the original establishment of the same in the year

.....

under the name of ..

§ 2839. Against purchaser of goods, and for injunction restraining sale.

[TITLE.]

Form No. 646.

The plaintiff complains, and alleges:

I. [Allege sale as in forms Nos. 162 and 163.]

II. That to induce the plaintiff to make said sale and deliv

92 The Celluloid Mfg. Co. v. The Goodyear Dental Vulcanite Co., 13 Blatchf. 375.

93 Clark v. Clark, 25 Barb. 79; Rodgers v. Newill, 3 DeG., M. & G. 614; Croft v. Day, 7 Beav. 84; Taylor v. Taylor, 23 Eng. L. & Eq. 281; Sykes v. Sykes, 3 Barn. & Cress. 541; 5 Dowl. & Ry. 292; Fraser v. Fraser, 121 Ill. 147; 2 Am. St. Rep. 73; Caswell v. Hazard, 121 N. Y. 484; 18 Am. St. Rep. 833; Weinstock v. Marks, 109 Cal. 529.

941 Johns. (Eng.) 174.

95 Burgess v. Burgess, 3 De G., M. & G. 904; 17 Eng. L. & Eq. 257; see § 2832, ante.