CLINTON E. WORDEN & CO. v. CALIFORNIA FIG SYRUP CO., 102 F. 334

GILBERT, Circuit Judge, after stating the case as above, delivered the opinion of the comí:., The question presented in this case is whether the appellee has so fraudulently represented to the public the nature of the preparation which he has sold under the name of “Syrup of Figs” that a court of equity may not protect him in the use of that name. We are referred to two decisions of the circuit courts of appeals which it is said answer this question in the affirmative. California Fig Syrup Co. v. Frederick Stearns & Co., 20 C. C. A. 22, 73 Fed. 812, 33 L. R. A. 56, and Same v. Putnam, 16 C. C.

A. 376, 69 Fed. 740. It is said, moreover, that the decision of this court in the case of Improved Fig Syrup Co. v. California Fig Syrup Co., 4 C. C. A. 264, 54 Fed. 175, holding the appellee herein guiltless of any attempt to impose upon or defraud the' public, was rendered upon a proposition that was not involved in the case, and that therefore the remarks of this court upon that subject are obiter, and are not authority upon the question which is now under consideration.

The two decisions so cited from the circuit court of appeals for the First and the Sixth circuits were based upon facts which differ in material respects from the facts upon which the decree was rendered in the case at bar.

In those cases it was shown that the appellee’s fig syrup was offered to the public under the representation that it contained the laxative and nutritious juice of the figs of California, and the preparation was designated “The California Liquid Fruit Remedy,” whereas in fact it was shown that there never had been in' the preparation more than one-tenth of 1 per cent, of the juice of figs, — a quantity so small as to have no perceptible effect either medicinally or by way of flavor.

The record in the present case shows that, after the decisions in those cases were rendered, the appellee made material alterations in the representations which were printed on the cartons or boxes inclosing its remedy, and in its new label eliminated the representations which had controlled decision in the cases referred to, and that in lieu thereof it set forth the following representations: “This excellent remedy presents in the most acceptable form the medicinally laxative principles of plants known to act most beneficially, to cleanse the system effectually, to permanently overcome habitual constipation and the many ills dependent on it, etc.

The juice of figs in the combination is to promote the pleasant taste.” It is by these representations so offered to the public that the rights of the appellee in the present case must be measured. It is urged that there still remains the false representation which is suggested by the name of the preparation which is thus offered for sale. It is said that the name “Syrup of Figs” is a false name; that it declares to the public that the preparation is composed of a liquid decoction of figs; that, therefore, it is calculated to deceive the public.

It is argued that, if the name does in fact properly designate the preparation, it is not susceptible of appropriation as a trademark, and that, if it does not in fact properly designate the preparation, it is deceptive, and therefore not entitled to protection in a court of equity. The first horn of this dilemma so presented may be disregarded. The appellee’s medicinal preparation is not a syrup of figs. It is not made from figs, and the quantity of figs used in its preparation is so small that it must be conceded to have little, if any, perceptible effect, either in promoting the pleasant taste or otherwise.

It is shown, also, that there is known to the drug trade no such preparation as a syrup of figs, and that appellee’s grantor was the first to use the name. We do not think the name "Syrup of Figs,” as applied to the appellee’s preparation, is in itself calculated to mislead or deceive the public to any material extent. Any one who knows enough to take medicine when he is ill must know that a liquid medicine to be taken in small doses as a laxative would b( worthless for the purpose intended, if it consisted of nothing more than a syrup or decoction of figs.

There is in the form in which the medicine is presented, the purpose for which it is used, and the size of the dose which is prescribed, sufficient to charge him with notice that the medicine contains something more than a preparation of figs. And if, indeed, he be so uninformed and ignorant that the name “Syrup of Figs” alone conveys to him the impression that the compound is made of figs, there may be found in the carton a distinct intimation to the contrary.

It is there declared that the “remedy presents in the most acceptable form the medicinally laxative principles of plants known to act beneficially,” and that the juice of the figs in the combination is only to promote the pleasant taste. As the name “Syrup of Figs” is so used by the complainant, it is a fanciful name only. The equities of the case are not affected either for or against the appellee by the use of the very small quantity of figs which enter into the preparation of its medicine. Centaur Co. v. Robinson (C. C.) 91 Fed. 889; Von Mumm v. Frash (C. C.) 56 Fed. 830; Stone Co. v. Wallace (C.

C.) 52 Fed. 431; Stuart v. F. G. Stewart Co., 38 C. C. A. 480, 91 Fed. 243; Société Anonyme de la Distillerie de la Liqueur Benedictine de L’Abbaye de Fecamp v. West Distilling Co. (C. C.) 43 Fed. 416. It is contended that there was reversible error in the ruling of the court upon the question of the multifariousness of the bill. It is said that the bill was multifarious for the reavon that it failed to charge that there was concert of action between the various defendants who sold the fig syrup which was manufactured by Clinton E.

Worden & Co., and that in the absence of such an alienation the defendants could not be joined in a single suit. If the bill was indeed multifarious, it was a defect which could be waived by the defendants. We think they did so waive it by their failure to include in their assignments of error the ruling of the court upon that question.

It is contended further that the portion of the decree which awards an accounting is erroneous, for the reason that, in a suit on a common-law trade-mark, the complainant is not entitled to recover the defendants’ profits, but only his own damages, and for the further reason that in the present case the bill contains no allegation that the defendants realized any profits. The action of the court in so decreeing an accounting of the profits is not assigned as error, and we do not consider it such plain error as to require our consideration in the absence of such assignment.

The appellant suggests that the court must have adopted that portion of the decree through inadvertence. If such is the case, and the decree is erroneous in that respect, we apprehend that no difficulty would be encountered in obtaining its correction upon application to the circuit court. The decree is affirmed. ROSS, Circuit Judge, dissents.