BEADLESTON & WOERZ v. COOKE BREWING CO., 74 F. 229

JENKINS, Circuit Judge, after the foregoing statement of the case, delivered the opinion of the court. This case in no wise falls within the ruling in Pillsbury v. Pillsbury-Washburn Flour Mills Co., 24 U. S. App. 395, 12 C. C. A. 432, 64 Fed. 841. There is here, neither in design nor in fact, a palming off upon the public of the goods of one as those of another. The labels are wholly dissimilar, with the exception of the use of the word “imperial.” The parties did not occupy the same market with their wares.

Tlie adoption by the appellee oí the word “imperial” seems to have been in entire good faith, and without knowledge of its prior adoption by the appellant. The ease is therefore one of a trade-mark, pure and simple. Tlie questions for consideration are, firstly, whether the word “imperial” was appropriated by the appellant: and designed for use, in connection with the designation of its beer, as a mark of origin or ownership, or as indicative of the grade or quality of the beer; and, secondly, whether the term “imperial” is of itself a designation of quality. First. If was ruled in Mill Co. v.

Alcorn, 150 U. 8. 460, 14 Sup. Ct. 151, that a trade-mark must be'designed, as its primary object and purpose, to indicate the owner or producer of the commodity, and to distinguish it from like articles manufactured by others; and that tlie device or symbol employed cannot be sustained as a valid trade-mark if it be ust'd for the purpose of identifying ihe class, grade, style, or quality of the article. In that case the word “Columbia” was employed to denote a particular grade of (lour.

It was held rliat the word did not indicate original manufacture or ownership, and, under the proof, was shown to be used to designate the grade of the Hour, and therefore could not be exclusively appropriated. That case is in accord with the leading cases of Manufacturing Co. v. Spear, 2 Sandf. 599, and Manufacturing Co. v. Trainer, 101 U. S. 51, in which cases the letters “A. C. A.,” although, of theui-sehes arbitrary, and conveying no meaning, were held i.o have been used to designate quality.

The court in the latter case observed, at page. 55: “The device previously and subsequently used stated the name of the manufacturer, and no .purpose could have been sub-served by any further declaration of the fact.” Ho, in the case in hand, the device, employed by the appellant and its predecessor as a trade-mark upon packages containing beer was the firm or corpora re name and the coat of arms of the state of New York surrounded by the words “Empire Brewery Bottling Department.” The words “Trade Mark” are connected with the device.

The various names employed, “Kulmbacher,” “Imperial,” and others, merely designate different grades or qualities of beer, and -were manifestly so designed to be used. It is not deemed necessary to review the evidence. Et is strong to show that the word “imperial” was adopted long after the employment of other words used to characterize particular grades of beer, and to designate another grade or quality of boor not known by the name “Kulmbacher,” or the other terms employed.

Being therefore so designed and used, the appellant is not entitled to be protected in the exclusive use of the word “imperial” as a lawful trade-mark. Tt was said in Candee, Swan & Co. v. Deere & Co., 54 Ill. 439, 457: “No man can have moro than one mark or brand, and it is required to bo recorded.

If the owner could have more than one trade-mark by which to distinguish his property, great confusion aud uncertainty would be produced, to such an extent as to defeat the object in view.” Whether that statement be strictly accurate with respect to one dealing with two or inore diffluent articles of manufacture need not be here considered; but this is certain, that names, whether they, of themselves, do or do not indicate grade or quality, cannot he employed to designate the grades or quality of goods, and be exclusively appropriated as valid trade-marks. Second.

The line of demarkation between words which of themselves do or do not import grade or quality is not at all times easy to be distinguished. This is owing to the growth and development of language. Words that originally had signification in relation to but one subject or matter come, in time, to be employed in a sense wholly foreign to their original signification. The word “epicure” is a notable instance of this.

Derived from Epicurus, a Greek philosopher, who taught that peace of mind based on meditation is the origin of all good, the word, in its original sense, indicated a follower of or believer in the ethical system of that philosopher. Through popular misapprehension of his teachings, the word has come to mean, and is chiefly, and, perhaps, solely, used to designate, a devotee of sensual enjoyment; a voluptuary; a gourmand. Examples might be multiplied. It is thus'with the adjective “imperial” here in question.

Its primary signification was “Pertaining to supreme authority; royal; sovereign; supreme.” It had like meaning with the adjectives “royal,” “kingly,” “princely,” indicating, however, a more exalted authority. Like those terms, it has also come to be employed to designate that which is of imposing size, or of great excellence. Thus Pope, in his Moral Essays, observes: “Bid harbors open, public ways extend, These are imperial works, and worthy kings.” And in the last century — certainly before the year 1778 — Townley employed the term as indicative of high quality of excellence.

In “High Life below Stairs” he uses the expression— “From humble Port to imperial Tokay.” The Imperial, Encyclopaedic, Standard, Century, and Webster’s dictionaries also give one definition of the term to be “Of superior size or quality.” One illustration given in the Standard Dictionary is “Imperial Tea,” indicating a tea of superior excellence; tea fit for an emperor. So one speaks of a dinner as a “royal,” “kingly,” “princely,” “lordlyj” or “imperial” feast, to indicate its great excellence of quality. The record contains evidence of general use of the word in the sense of superior quality.

Thus we find the markets flooded with “Imperial Champagne,” “Imperial Whisky,” “Imperial Gin,” “Imperial Cigars,” “Imperial Ginger Ale,” “Imperial Cider,” “Imperial Claret,” “Imperial Port,” “Imperial Kimmel.” That the adjective does, of itself, indicate quality, is not without support of judicial authority. Thus in Corwin v. Daly, 7 Bosw. 222, 233, the words “Club House,” as applied to an

article of gin, were held to indicate quality or grade; the court observing that the “term meant no more than 'royal,’ 'imperial,’ or ‘princely’ would do.” And in the ease of Powder Co. v. Sherrell, 93 N. Y. 331, the term “royal,” applied to the

article of baking powder, was held to be indicative of quality, not of origin or ownership. The case of Crawford v. Shuttock, 13 Grant (U. C.) 149; has not been overlooked. There an injunction pendente lite was granted by Vice Chancellor Spragge, restraining the use of the words “Imperial Roap.” The learned jurist, however, expressed hesitation by reason of the frequent use of the word “imperial” as a term of designation in various branches of manufacture, but felt impelled to issue the restraining writ, through fear of serious injury to the plaintiff if his trade were interfered with.

This case was decided in 18(57, and seems not to have been carried further. It may be remarked that since that date a period of nearly 30 years has elapsed, and the adjective “imperial” has in that time been quite generally employed to indicate quality. We do not, therefore, feel bound to yield our judgment to a ruling that was delivered with hesitation, and has never been reviewed by a higher court. The word in question may be close to the border line between terms that signify quality and those that do not.

It is safer, however, in the interest of freedom of trade, to protect the use of those terms, and those terms only, which clearly do not refer to grade or quality. The monopoly of use granted by the law of trade-marks should not be extended to embrace terms of doubtful signification. Upon either and both of the grounds stated, the judgment appealed from was correct. RHOW ALTER, Circuit Judge. Upon the showing of this record complainant uses the 'word “imperial” to distinguish one grade of the beer made by it from another. Defendant uses the same word for the same purpose with respect to its product.

We must, therefore, under the law applicable to such a state of facts, affirm the judgment. But, I do not concur in the proposition — if we are called on in this case to discuss it — that the word “imperial” is descriptive of beer. When used by a trader, this word does not touch or have any relation that can be called descriptive to any quality or attribute of an

article like beer. I do not understand the record as showing that “imperial” has been, or that by any possibility it could have been, applied to whisky, gin, cigars, etc., in any sense descriptive of any one of said commodities. The use of a fancy word by a given manufacturer, to distinguish a particular grade of his goods from other grades made by him, is one thing; the use of the same word as a mark of origin by the manufacturer of a different

article is another. A fancy word certainly does not become descriptive of cigars because a distiller uses it, not as a mark of origin, but to distinguish one grade from other grades of his own whisky. A fancy word, when used to distinguish grade, does not describe; it identifies. By fancy word I hero mean not a newly coined word, but a word like "Imperial,” when applied to a commodity in trade, to distinguish either grade or origin. In Powder Co. v. Sherrell, 93 N.

Y. 331, the word “royal” was used, not as a mark of origin, but to distinguish one grade of flavoring extracts from two other grades of the same product, all made by complainant. Defendant used the same word to designate one grade of flavoring extracts from other grades of the saihe goods as made by himself. On this ground went the ruling in that ease. There was in that case no question touching the application of the word “royal” to the commodity, baking powder. By suggestion or metaphor the word “imperial,” when applied to an

article of trade, carries the idea of comparative excellence or superiority, as does the word “excelsior,” held by Sir W. Page Wood in Braham v. Bustard, 1 Hem. & M. 447, to be a valid trade-mark for soap; and as does the word “ideal,” held in Waterman v. Shipman, 130 N. Y. 301, 29 N. E. 111, to be a valid trade-mark for pens. It has been repeatedly ruled (Keasbey v. Chemical Works, 142 N. Y. 467, 37 N. E. 476, for instance) that a word which suggests even the composition, quality, or characteristics of an

article to which it is applied may yet be a good trade-mark. I am not willing to say that the word “imperial,” when applied to a manufactured

article to indicate origin, and when it does in fact indicate origin, and is so understood in the particular instance by the trading public, ought not to be held a valid trade-mark. As was declared, in substance, by the supreme court of the United States in Canal Co. v. Clark, 13 Wall. 311, 322, every trade-mark case is a case of unfair competition in trade. If there be no unfair or fraudulent competition, either extant or apprehended, there can be no recovery.

The significance of a word alleged in a particular instance to be a trade-mark, as being by general usage descriptive or nondescriptive, is incidental or subordinate to the essential point, — namely, that defendant shall not, for the express purpose of trespassing on plaintiff’s good-will, use, not descriptively, but as a mark, of origin for his goods, a word which in fact already serves that very function in the case of plaintiff’s goods. A trade-mark, as in effect said by the United States supreme court in the case last mentioned, is a notice, a medium of information touching origin or ownership.

Whatever word does in fact serve that purpose is, to that extent, a trade-mark. The reason of the rule against a descriptive word is .that it is incapable of the function. People will not understand it as a mark of origin. They will not be deceived by it into buying the goods of one manufacturer for those of another. Or, if any person be in fact misled, it will not be because of any representation by the competing manufacturer which can rightly be deemed false. A representation concerning a given product, which is-. none the less true when made by one dealer in that product than by another, cannot be actionable.

The point is illustrated in Raggett v. Findlater, L. R. 17 Eq. 29, where the controversy arose over the word “nourishing” as applied to malt liquor. And in Bennett v. McKinley, 13 C. C. A. 25, 65 Fed. 505, the word “instantaneous,” as applied to tapioca, to indicate that variety which was ground, and on that account could be most quickly prepared for the table, being as truthful and appropriate when used by defendants as by plaintiffs, the action failed.

The word “imperial” by association or suggestion may call up, among other fancies, the notion of excellence or superiority, but it seems to me not descriptive in the sense of trade-mark law. I am not willing to declare that this word, habitually stamped by a manufacturer on his product, would not signify to the trading public, so far as his goods are concerned, the origin thereof, or that a subsequent similar use of the word by a competitor would not be a false representation. In Bennett v.

McKinley, above cited, the court, speaking of the capability of a word to serve as a trade-mark, said: “If it is merely suggestive or is figurative only, it may be a good trade-mark, notwithstanding it is also indirectly or remotely descriptive.” In the case at bar the goodwill of complainant is not trespassed upon, since neither it nor the defendant uses the word “imperial” as a mark of origin. The decree is affirmed.