Warner v. Searle & Hereth Company

William R. Warner, a citizen of Pennsylvania, filed this bill against The Searle & Hereth Company, a corporation of Illinois, and Gideon D. Searle and others, citizens of Illinois, in the circuit court of the United States for the northern district of Illinois, alleging: That complainant 'was the sole and exclusive owner and proprietor of, and had used in his business in Philadelphia and in commerce between the United States and foreign countries, and particularly with New South Wales and Victoria, a certain arbitrary and fanciful mark, termed Pancreopepsine, upon bottles and packages containing a certain medicinal preparation,' and had sold large quantities thereof 'throughout the United States and in commerce with foreign countries, and particularly in the cities of Philadelphia and Chicago;' and that the public generally had come to recognize packages and bottles so marked as containing the preparation manufactured by complainant.

That on December 26, 1882, complainant registered said trade-mark in the Patent Office, and obtained a certificate of registration according to law, a copy of which certificate and accompanying statement and declaration was attached. That defendants had, in violation of complainant's rights, 'counterfeited, copied, and colorably imitated the trade-mark registered,' and affixed the mark or symbol 'to a medicinal preparation of the same general nature as that manufactured' by complainant, and had so closely imitated complainant's mark or symbol, and the manner of placing it on bottles and wrappers, that the public had been deceived into believing that the goods of defendants were those of complainant; 'and that the said defendants, together and individually, have sold in the northern district of Illinois, and elsewhere, large quantities of the medicinal preparation intended for the cure of indigestion similar to that manufactured by your orator and contained in packages or bottles marked with the trade-mark or symbol heretofore referred to as belonging solely to your orator, or in such close imitation of your orator's trade-mark or symbol as has deceived the public, and led such public to believe the said mark or symbol designated the goods manufactured by your orator;' so that complainant's sales have been lessened, and profits lost.

It was further averred that 'the public in general, and particularly the citizens of the northern district of Illinois, identify the article by the name, mark, or symbol; and that the spurious article manufactured and sold by the defendants associated with the same mark or symbol, or a mark or symbol in close imitation thereof, is a fraud and deception upon such of the citizens of the northern district of Illinois, and elsewhere, as purchase the same, believing it to be the genuine article manufactured by your orator, and thereby the public generally, and particularly the citizens of the northern district of Illinois, are damaged and misled.'

Complainant prayed for an accounting; for damages; and for injunction.

Defendants in their answer denied that the word 'Pancreopepsine' was a proper subject for registration as a trade-mark; and charged that 'if not deceptive it is purely descriptive, being a mere compound of the ordinary names of the ingredients, or the principal ingredients, contained in the medicinal compound, with the name of one slightly modified, and they deny, on information and belief, that the public have associated the said name with the goods manufactured by the complainant.'

They averred that they were engaged in business in Chicago as general manufacturing chemists, and that they had, among other things, 'put upon the market a medicinal compound having special merit as an aid of digestion, consisting, aside from the diluent, of nearly 40 per cent of pure pancreatin, about 50 per cent of pure pepsin, and a few other ingredients in relatively small proportions; that pancreatin and pepsin are well-known medicinal agents of recognized efficacy in promoting digestion, and have been mixed together for medicinal purposes for nearly or quite thirty years past; that they have designated their compound upon the labels of their bottles and packages 'Pancro-Pepsin' in order that the nature of the compound may be expressed and its purpose as a digestive implied by the name; that they have put the said preparation in bottles and sold it upon the market both as a powder and in liquid form, the latter being designated 'Elixir Pancro-Pepsin."

Defendants said that in adopting the name they had only followed common usage where it was desired that the name should be generally descriptive of the compound to which it was applied, and that their compound could not be more appropriately designated; and they denied that they had in any manner or way whatsoever copied or colorably imitated complainant's alleged trade-mark, or that they had at any time misled the public or any member thereof, into supposing that the pancro-pepsin manufactured and sold by them was of complainant's manufacture, or that any person could have been so misled. And they averred that even if the name 'Pancreopepsine' could be the subject of a lawful trade-mark, which they denied, it had not been infringed by them.

Replication was filed, evidence taken, and hearing had. The circuit court held that complainant's contention touching unfair competition was not established, but that the trade-mark was valid and had been infringed, and granted an injunction.

The case was carried to the circuit court of appeals, and William R. Warner, Jr., executor, was made party in place of William R. Warner, deceased. The circuit court of appeals agreed that there was no proof establishing unfair competition; held that the monopoly claimed could not be sustained; and reversed the decree of the circuit court, and remanded the cause with directions to dissolve the injunction and dismiss the bill. 50 C. C. A. 321, 112 Fed. 674. From that decree this appeal was prosecuted, and argued on a motion to dismiss as well as on the merits.

Messrs. Frank T. Brown and Samuel E. Darby for appellant.

[Argument of Counsel from pages 198-200 intentionally omitted]

Mr. Philip C. Dyrenforth for appellees.

Statement by Mr. Chief Justice Fuller:

[Argument of Counsel from pages 200-202 intentionally omitted]

Mr. Chief Justice Fuller delivered the opinion of the court: