{ "id": 5288765, "name": "William J. Moxley Co. v. Braun & Fitts Co.", "name_abbreviation": "William J. Moxley Co. v. Braun & Fitts Co.", "decision_date": "1901-01-29", "docket_number": "", "first_page": "183", "last_page": "191", "citations": [ { "type": "official", "cite": "93 Ill. App. 183" } ], "court": { "name_abbreviation": "Ill. App. Ct.", "id": 8837, "name": "Illinois Appellate Court" }, "jurisdiction": { "id": 29, "name_long": "Illinois", "name": "Ill." }, "cites_to": [ { "cite": "77 Fed. Rep. 875", "category": "reporters:federal", "reporter": "F.", "opinion_index": 0 }, { "cite": "150 U. S. 460", "category": "reporters:federal", "reporter": "U.S.", "case_ids": [ 3571403 ], "opinion_index": 0, "case_paths": [ "/us/150/0460-01" ] }, { "cite": "98 Fed. Rep. 872", "category": "reporters:federal", "reporter": "F.", "case_ids": [ 6728798 ], "opinion_index": 0, "case_paths": [ "/f/98/0872-01" ] }, { "cite": "108 U. S. 218", "category": "reporters:federal", "reporter": "U.S.", "case_ids": [ 3503198 ], "opinion_index": 0, "case_paths": [ "/us/108/0218-01" ] }, { "cite": "136 Ill. 213", "category": "reporters:state", "reporter": "Ill.", "opinion_index": 0 }, { "cite": "142 Ill. 494", "category": "reporters:state", "reporter": "Ill.", "case_ids": [ 3086648 ], "opinion_index": 0, "case_paths": [ "/ill/142/0494-01" ] }, { "cite": "138 U. S. 537", "category": "reporters:federal", "reporter": "U.S.", "case_ids": [ 3549643 ], "opinion_index": 0, "case_paths": [ "/us/138/0537-01" ] } ], "analysis": { "cardinality": 807, "char_count": 16866, "ocr_confidence": 0.548, "pagerank": { "raw": 5.422188994090435e-08, "percentile": 0.34176567823066134 }, "sha256": "316b2710a0b183c8793746ed6988cc312c9411901fbb7872ce4302dab66f10d2", "simhash": "1:0e2b3916cbe0b2d8", "word_count": 2904 }, "last_updated": "2023-07-14T18:02:01.878414+00:00", "provenance": { "date_added": "2019-08-29", "source": "Harvard", "batch": "2018" }, "casebody": { "judges": [], "parties": [ "William J. Moxley Co. v. Braun & Fitts Co." ], "opinions": [ { "text": "Mr. J ustioe Freeman\ndelivered the opinion of the court.\nIt is contended, in justification of appellant\u2019s conduct in adopting and using the label of which complaint is made, that the device in question, viz., the seal and accompanying words, used by appellee, is not entitled to protection as a valid trade-mark, because it is not a new thing in any respect; and that appellee is by this suit seeking to appropriate, and take away from the public, the right to use what are old words and devices. It is not, however, necessary, as we understand it, that the device shall be absolutely new or novel. If it is new in its application to the particular merchandise in controversy it may be entitled to protection. Bump on Trade-marks, 2d Ed., p. 483 et seq.; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537. In the last mentioned case, Mr. Chief Justice Fuller (p. 546) cites Canal Co. v. Clark, 13 Wallace, 311, in which it was said that where the right to exclusive use of a trade-mark is invaded, \u201c the essence of the wrong consists in the sale of the goods of one manufacturer or vender as those of another.\u201d While it is claimed by appellant that it used the words \u201c high grade \u201d on signs distributed to grocers as descriptive of its goods before appellee adopted them for its device, it is not, apparently, denied, that the use of the seal or device containing those words as a trade-mark upon packages of butterine or oleomargarine was first adopted by appellee. \u201c A trade-mark owes its existence to the fact that it is actually affixed to a vendible commodity.\u201d Hazelton Boiler Co. v. Tripod Boiler Co., 142 Ill. 494 (507). Appellee\u2019s claim is not based alone on a seal with serrated edges, nor on the particular words and contrasting colors used thereon, but on the combination of seal and words and colors together, constituting the device as a whole, applied to identify and advertise its particular merchandise. In this view we do not deem it necessary to inquire at length whether, if the words \u201c Only High Grade \u201d alone constituted the whole device to which appellee lays claim as a trade-mark, such claim could be successfully maintained.\nIt is, however, insisted by appellant\u2019s counsel that the use of the words \u201c The Only High Grade \u201d is deceptive and misleading, and that a trade-mark which contains false representations will not be protected. If it be true that the phrase or combination of words in question does in fact contain a false assertion of a material fact made so as to deceive the public, it ought not to receive the protection of a court of equity. Sebastian on Trade-marks, 36; Bolander v. Peterson, 136 Ill. 213. As is said in Manhattan Medicine Co. v. Wood, 108 U. S. 218 (225), \u201c this is but an application of the maxim that he who seeks equity must come into court with clean hands.\u201d \u201c If his case discloses fraud or deception or misrepresentation on his part, relief will be denied.\u201d The Superior Court found upon the hearing, and, we think, correctly, that appellee is not now the only manufacturer of high grade butterine. In view of this finding can it in truth be fairly adjudged that the use of that word \u201c only \u201d discloses fraud or deception or misrepresentation ? The conclusion of the learned chancellor in answer to this suggestion was, \u201c that after all, what the complainant puts out to the world is simply an opinion.\u201d It is urged by appellant that said phrase \u201c The Only High Grade \u201d means that appellee\u2019s goods are the only butterine in the market of a high grade or character, which is false. To justify such meaning, however, additional words will have to be supplied. As the phrase stands, it does not constitute a complete sentence and makes no positive assertion. To express the meaning suggested, it must be made to read, \u201c the only high grade butterine in the market,\u201d or to that effect. But with equal right the phrase may be made to read, \u201c the only high grade butterine we make,\u201d or to state that appellee is the manufacturer of \u201c only high grade butterine.\u201d Either construction is forced. The truth must, we think, be admitted to be that the words in controversy are not, when standing, as they do, alone by themselves, fairly to be considered as descriptive. They are rather to be deemed arbitrary; not capable of exact definition: and hence can not be said to assert a falsehood. If, however, they may be regarded as descriptive, the word \u201conly\u201d seems to us to be in the nature of a mere catch word, expressive of nothing more than the opinion of appellee in a bombastic way that the goods so marked are of such exalted character as to be properly entitled to be considered the only really high grade goods of the kind. Such would, we think, be the public understanding. In like boastful spirit appellant announces that its goods are \u201c the finest high grade goods made.\u201d There is evidence tending to show that when appellee adopted the device in controversy, it was the only manufacturer in the country, making only a single grade of butterine, always uniform, and of a high grade, all others making lower grades as well, and using therefor cotton seed oil, or a lower and cheaper grade of oleo. It is not. denied that appellee\u2019s butterine is high grade. Eo one purchasing it with such understanding would therefore be deceived; whether it is the \u201c only \u201d high grade or not is not therefore material. To sustain appellant\u2019s contention it would have to appear that the alleged misrepresentations are not only misleading or untrue, but that they are also material and do in fact mislead. Dadirrian v. Yacubian, 98 Fed. Rep. 872 (671) cited by appellant\u2019s counsel.\nPassing over minor points, appellant\u2019s counsel insist that there is here no infringement because, by ordinary attention, purchasers would have no difficulty in discriminating between the device claimed as a trade-mark by appellee and that used by appellant. If purchasers of an article were always careful to find out and to bear in mind the name of the maker of the particular brand or kind they are in the habit of using, and have found satisfactory, and were also careful to examine before buying to ascertain that they are getting that special manufacture, they could easily discriminate in this case by looking at the label of appellant, and could discover that the \u201c high grade \u201d butterine they are receiving is appellant\u2019s. But the ordinary buyer is not thus particular. \u2022 \u201c In many cases, where simulation is plain, injunctions have been issued without proof of specific instances of deception.\u201d Fairbank Co. v. Bell Co., 77 Fed. Rep. on p. 877. There is evidence here, however, tending to show that dealers have in fact been at least temporarily misled by appellant\u2019s label. We are not, therefore, left entirely to conjecture whether or not the ordinary observer is likely to be so misled and to mistake said label for appellee\u2019s trade-mark. In Columbia Mill Co. v. Alcorn, 150 U. S. 460 (467), cited by appellant\u2019s counsel, it is said : \u201c Even in the case of a valid trade-mark, the similarity of brands must be such as to mislead the ordinary observer.\u201d We think it fairly appears that this has actually happened in the case at bar, with customers of appellee to whom appellant has caused its own goods to be sent, bearing its label, and put up in the same kind of pails or packages as those used by appellee. It is true that appellant\u2019s label bears the name of \u201c Wm. J. Moxley,\u201d and that instead of the word \u201c only,\u201d appears in smaller type \u201c the finest \u201d preceding the words \u201c high grade \u201d in larger letters. Seen side by side there is no difficulty in discovering the difference; but seen apart, they might readily be mistaken as representing the same brand or manufacture, more especially as appellee\u2019s trade-mark does not contain the maker\u2019s name on its face, but relies on the device as pointing to and distinguishing' its product.\n* It is insisted by appellee that appellant\u2019s label is an imitation of the former\u2019s device and presents a clear case of unfair competition in trade, entitling appellee to the relief granted by the Superior Court upon that ground alone. In this we are compelled to substantially concur. There, is evidence tending to show that appellant began the use of the label complained of about the beginning of the year 1899. Notice was served early in February of that year that appellee regarded it as an infringement upon the latter\u2019s rights, and demand was made that it be abandoned. No reply was made and no attention paid to this request. No reason is suggested by appellant\u2019s counsel why, in all the wide range of devices which can be formulated and designed for a distinguishing mark, appellant should, in 1899, adopt a label which could be so readily taken for that which appellee had been using for about six years before, which it had freely advertised as its own, and which had become known to the trade and the public as indicating oleomargarine of its manufacture. It may be true, as stated by appellant\u2019s counsel, quoting from Elgin Butter Co. v. Creamery Co., 155 Eep.. 127 (135), that \u201c fair and healthy competition in business is beneficial to the public and redounds to the welfare of the State,\u201d but .there is no fair and healthy competition where one party seeks to appropriate to himself the benefit of the labor and skill and expenditure of another, by the deceptive and fraudulent method of simulating so nearly the latter\u2019s well known trade-mark or device, as to induce the purchase of the former\u2019s goods by those who suppose they are getting the latter\u2019s. If appellant had confined itself to securing the favor of the public by manufacturing and selling goods of a high character, marking them with a clearly distinctive label of its own, contrasting with those used by others so clearly and strongly as not to be mistaken, seeking to secure the sale of its goods so marked by reason alone of their superior excellence, it would not be open to any attack upon its conduct or motives. It is said by appellant\u2019s counsel that no false statements or representations on the part of appellant\u2019s officers or employes are shown in evidence. This may be conceded, but the query remains, how did it happen that appellant only discovered its need of a seal for its own goods after appellee had-used and advertised such e seal as its distinguishing device for so long a time % It is said in Brown Chem. Co. v. Frederick Stearns & Co., 37 Fed. Rep., on p. 363, \u201cFTo man, however honest his personal intentions, has a right to adopt and use so much of his rival\u2019s established trade-mark as will enable any dishonest trader into whose hands his goods may come, to sell them as the goods of his rival.\u201d And it is said in Fairbanks v. Bell Company, 77 Fed. Rep. 875, that \u201c courts will not tolerate a deception devised to delude the consuming purchaser by simulating some well known and popular style of package.\u201d We have already alluded to the fact that appellee\u2019s trade-mark.does not bear appellee\u2019s name upon its face, but it seems to be conceded that by association it points \u201c distinctively to the origin, or ownership, of the article to which it is applied.\u201d Canal Company v. Clark, 13 Wallace, 311 (323). On the other hand, appellant\u2019s name is placed upon its label. This last fact is emphasized by the latter\u2019s counsel as a distinguishing difference. We regard it, however, as in this case increasing the liability of injury to appellee. People familiar in a general way with appellee\u2019s device as making its particular brand of butte ri\u00f1e, and subsequently seeing a similar label, also upon butterine, but bearing appellant\u2019s name, might readily forget appellee\u2019s name, and infer that appellant was the manufacturer of the goods associated in their minds with that kind of a seal, and so be led to order from appellant under the impression that the latter is manufacturer of the brand in fact made by appellee.\nWe are of opinion that the decree of the Superior Court is correct, and it must be affirmed.\nMr. Justice Horton, dissenting.", "type": "majority", "author": "Mr. J ustioe Freeman" } ], "attorneys": [ "Ephraim Banning, Thomas A. Banning, and Thomas F. Sheridan, attorneys for appellant.", "Poole & Brown, attorneys for appellee; TaylorE. Brown, of counsel." ], "corrections": "", "head_matter": "William J. Moxley Co. v. Braun & Fitts Co.\n1. Trade-marks\u2014General Requisites.\u2014It is not necessary that a device shall be absolutely new or novel to entitle it to protection as a trade-mark. If it is new in its application to a particular merchandise it is entitled to protection as such.\n2. Same\u2014Invasion of the Right to Use a Trade-mark.\u2014The essence of the wrong of invading the right to the exclusive use of a trade-mark. consists in the sale of the goods of one manufacturer or vender for those of another by means of such trade-mark.\n3. Same\u2014To What a Trade-mark Owes Its Existence.\u2014A trademark owes its existence to the fact that it is actually affixed to a vendible commodity.\n4. Same\u2014 What is Not to be Considered as a Fraud or Deception in. \u2014The fact that the trade-mark of a manufacturer of butterine contains the words \u201c The only high grade,\u201d is not to be construed as a statement that he is the only manufacturer of high grade butterine, or that the use of the word \u201c only \u201d discloses fraud or deception of such a character as to deprive him of the protection of a court of equity in its use as a trade-mark.\nBill to Restrain the Infringement of a Trade-mark.\u2014Appeal from the Superior Court of Cook County; the Hon. Philip Stein, Judge, presiding. Heard in this court at the March term, 1900. Mr. Justice Horton dissenting.\nAffirmed.\nOpinion filed January 29, 1901.\nStatement by the Court.\u2014This is a bill in equity filed by appellee, charging appellant with infringement of trademark and unfair competition in trade. The Superior Court allowed a preliminary injunction which, upon final hearing, was made perpetual, and from the decree so directing and referring the cause to a master for an accounting as to profits and damages this, appeal is prosecuted.\nAppellee avers in its bill of complaint that it has for many years been engaged in the manufacture and sale of oleomargarine, and that by reason of the superior quality of the ingredients, and the skill and care used in manufacturing, its products have acquired a high reputation in the markets, and its business has become a source of great. profit. The trade-mark in controversy is described in the bill as \u201c a simulation of a seal with serrated edges containing the words \u2018 The Only High Grade,\u2019 \u201d and was adopted in 1893, \u201c as its general trade-mark for all its various brands of oleomargarine or butterine.\u201d This device, with the words \u201c trade-mark \u201d on the seal, has been applied to its wrappers and to the outside of all its packages containing butterine, and.has been used upon its stationery and advertising matter. It is alleged to be appellee\u2019s sole and exclusive trade-mark, and that it has been continuously so used since its adoption in 1893, \u201c not only as a common law trade-mark, but also as a label or form of advertising,\u201d for which appellee has expended annually a large sum of money. It is charged that appellant began several years after the device had been adopted by appellee, and had become well known, to use a substantial copy or imitation of said trade-mark upon oleomargarine of its own manufacture, put up in boxes, packages or pails in imitation of appellee\u2019s goods, by which purchasers are liable to, and have been and are being deceived, and induced to purchase appellant\u2019s goods believing they are obtaining appellee\u2019s.\nCopies of the device and label as used by the respective parties were introduced as exhibits. Appellee\u2019s device is in the form of a circular seal, with serrated edges, of a red color, containing in large white letter the words \u201cThe Only \u201d at the top of the seal in semi-circular form; extending across the center is the word \u201c High \u201d and in circular form at the bottom, the word \u201c Grade.\u201d The words \u201c trade \u201d and \u201c mark,\u201d are printed in small black letters, respectively above and below the word \u201c High.\u201d\nThe label used by appellant, of which complaint is made, is likewise a circular seal, of about the same size as appellee\u2019s, with indentures of its edge smaller and more numerous, but not so deep as those of appellee\u2019s. Its color likewise is red, although of a slightly lighter shade. It contains the words, \u201c Wm. J. Moxley\u2019s \u201d in white letters of medium size, printed in circular form at the top, the words \u201c The finest \u201d in smaller letters and \u201c High Grade \u201d in large letters across the center, and at the bottom the words \u201c Goods Made,\u201d also i n large letters, printed in circular form. It appears that blue, green and possibly other colors have sometimes been used by appellee. The latter registered its device as a trademark in the patent office at Washington in October, 1894, and again in the office of the Secretary of State, at Springfield, in February, 1899.\nEphraim Banning, Thomas A. Banning, and Thomas F. Sheridan, attorneys for appellant.\nPoole & Brown, attorneys for appellee; TaylorE. Brown, of counsel." }, "file_name": "0183-01", "first_page_order": 207, "last_page_order": 215 }