Manhattan Medicine Company v. Wood

This is a suit in equity to restrain the defendants from using an alleged trade-mark of the complainant, upon certain medicines prepared by them, and to compel an accounting for the profits made from its use in their sale of the medicines; also, the payment of damages for their infringement of the complainant's rights. The complainant, a corporation formed under the laws of New York, manufactures in that state medicines designated as 'Atwood's Vegetable Physical Jaundice Bitters;' and claims as its trade-mark this designation, with the accompanying labels. Whatever right it possesses it derives by various mesne assignments from one Moses Atwood, of Georgetown, Massachusetts. The bill alleges that the complainant is, and for a long time previous to the grievances complained of was, the manufacturer and vendor of the medicine mentioned; that it is put up and sold in glass bottles with 12 panel-shaped sides, on five of which, in raised words and letters, 'ATWOOD'S GENUINE PHYSICAL JAUNDICE BITTErs, georgetOWn, mass.,' are bLown in the glass, each bottle containing about a pint, with a light-yellow printed label pasted on the outside, designating the many virtues of the medicine, and the manner in which it is to be taken; and stating that it is manufactured by Moses Atwood, Georgetown, Massachusetts, and sold by his agents throughout the United States. The bill also alleges that the bottles thus filled and labeled are put up in half-dozen packages with the same label on each package; that the medicine was first invented and put up for sale about 25 years ago by one Dr. Moses Atwood, formerly of Georgetown, Massachusetts, by whom, and his assigns and successors, it has been ever since sold 'by the name, and in the manner, and with the trade-marks, label, and description substantially the same as aforesaid;' that the complainant is the exclusive owner of the formula and recipe for making the medicine, and of the right of using the said name or designation, together with the trade-marks, labels, and good-will of the business of making and selling the same; that large sales of the medicine under that name and designation are made, amounting annually to 12,000 bottles; that the defendants are manufacturing and selling at Portland, Maine, and at other places within the United States unknown to the complainant, an imitation of the medicine, with the same designation and labels, and put up in similar bottles, with the same, or nearly the same, words raised on their sides, in fraud of the rights of the complainant and to its serious injury; that this imitation article is calculated and was intended to deceive purchasers, and to mislead them to use it instead of the genuine article manufactured by the complainant, and has had, and does have, that effect. The bill, therefore, prays for an injunction to restrain the defendants from affixing or applying the words 'Atwood's Vegetable Physical Jaundice Bitters,' or either of them, or any imitation thereof, to any medicine sold by them, or to place them on any bottles in which it is put up, and also from using any labels in imitation of those of the complainant. It also prays for an accounting of profits and for damages.

Among the defenses interposed are these: That Moses Atwood never claimed any trade-mark of the words used in connection with the medicine manufactured and sold by him; and assuming that he had claimed the words used as a trade-mark, and that the right to use them had been transferred to the assignors of the complainant, it was forfeited by the misrepresentation as to the manufacture of the medicine on the labels accompanying it,-a misrepresentation continued by the complainant.

Philo Chase and Thorndike Saunders, for appellant.

''Wm. Henry Clifford'', for appellee.

[Argument of Counsel from pages 220-222 intentionally omitted]

FIELD, J.