Corbin v. Gould

This is a suit in equity brought in the court below by Calvin R. Corbin and Horatio N. May, copartners, as Corbin, May & Co., doing business in Chicago, against Walter J. Gould, Edward Telfer, David D. Cady, and L. F. Thompson, copartners as W. J. Gould & Co., doing business in Detroit, for the alleged infringement of a trade-mark.

The bill, filed on the 24th of September, 1885, alleged substantially as follows: That for over six years complainants had been engaged in manufacturing, preparing, and shipping to the United States, and selling in the United States and elsewhere, a particular quality of tea, of which their immediate predecessors in business, Ingraham, Corbin & May, were the first and exclusive manufacturers, importers, and wholesale dealers in this country; that during this period they had imported large quantities of such tea, which, by reason of its superior quality, and because of the advertising they gave it, became well and favorably known, and was sold extensively in the chief cities and towns of the United States, particularly in Michigan; that said particular tea was known as 'Tycoon Tea,' the word 'Tycoon' being properly attached to the cases and coverings in which the tea was imported; that this name 'Tycoon' was given by them to their tea in 1879, in order to more clearly identify it, and had since been used as their adopted trade-mark for it; that having complied with the act of congress in such case made and provided, and with the regulations prescribed by the commissioner of patents, they procured the registration and recording of said trade-mark in the patent-office on the 27th of Decembe, 1881, and received from the commissioner of patents a certificate showing such record, that since the word 'Tycoon' was first applied by them as a trade-mark, and since the date of such registration, the defendants, confederating with divers other persons in different parts of the United States, with full knowledge of complainants' rights under and by virtue of their trade-mark, in violation thereof, without complainants' consent, and with the intent fraudulently to divert to themselves complainants' trade in such tea, put upon the market in Detroit and elsewhere large quantities of tea, in packages or cases of the same size and general appearance as those used by complainants, with the word 'Tycoon' stamped thereon, in imitation of complainants' trade-mark, all of which was intended to deceive and mislead the public into buying defendants' tea, which is of an interior quality, greatly to the injury of the reputation of complainant's tea; that, by reason of such fraudulent acts and practices on the part of defendants, complainants had been deprived of great gains and profits in the sale of their tea, and had been damaged more than $10,000; and that defendants were still using the aforesaid facings or labels, with the word 'Tycoon' stamped thereon, upon tea, and threaten to continue to do so, to the great injury and damage of plaintiffs. The bill prayed for an injunction to restrain the defendants and their agents from the further use of complainants' trade-mark, for an accounting, and for damages. Upon the filing of this bill, supported by a number of affidavits corroborating its allegations, the court issued a temporary restraining order as prayed for, and the defendants thereupon filed their answer, denying specifically all the material allegations of the bill. The answer further alleged that the word 'Tycoon' could not have been lawfully adopted and used as a trade-mark, because it had been a word in common use in trade, as a brand or name for various kinds of tea imported from Japan, for many years prior to the time when complainants claim to have adopted it as a trade-mark. It further set forth that the defendants had been using the word 'Tycoon' on the facings or labels of their tea in connection with the word 'Chop;' but it denied that these labels bore any more similarity to those of complainants than is usually the case with tea labels, and alleged that, except in the word 'Tycoon,' there was no resemblance whatever between them. It therefore prayed that the bill be dismissed. Considerable testimony was taken in the case; and the court below, on the 14th of June, 1886, rendered a decree dismissing the bill, without delivering any opinion. An appeal from that decree brings the case here.

L. L. Coburn and J. M. Thacher, for appellants.

Don M. Dickinson and E. G. Stevenson, for appellees.

LAMAR, J.