The judgment from which this appeal was taken affirmed the judgment of the trial court dismissing the plaintiff's complaint on the merits.
The purpose of the action was to restrain by perpetual injunction the use by the defendants in their business of certain words, or a certain label or device, which it is alleged amounted to an infringement of the plaintiff's trade mark. It is claimed that long prior to the use of the device or label by the defendants the plaintiff had adopted it as its trade mark and that the use by the defendants was a wrongful invasion of the plaintiff's property rights and injurious to its business. It appears that both parties are engaged in the manufacture and sale of an article known as a letter file, or a sort of pocket book used as files for letters, invoices and other papers. They are or may be made of various materials, but those involved in this case are very cheap and made of paper. They are made of different sizes to fit note, invoice and letter paper. The particular brand of the article disclosed by the record in this case is made of strong, uncolored *Page 477 manila paper. The general appearance and sizes of the article made and sold by the defendants are necessarily similar to that made and sold by the plaintiff. The plaintiff's label is printed in large letters within a circle upon the goods, as follows: "The Improved Favorite Letter and Invoice File. Best. Cheapest." The defendants' label is printed upon the article made and sold by them and is as follows: "The Favorite Letter and Invoice File," the word "favorite" appearing in large capitals.
We think that the complaint was properly dismissed. In the absence of some restriction upon the defendants arising out of the patent law, as to which the record is silent and as to which the state courts have no jurisdiction, the defendants had the right to manufacture and sell the article in question, although it was similar in general appearance and made from the same material and upon the same plan as the article made and sold by the plaintiff. This proposition is not questioned, but what the plaintiff claims is, that the defendants have wrongfully appropriated for use in their business a label or device which belonged to the plaintiff as its trade mark, and so have invaded its property rights. This contention, we think, cannot be sustained either as matter of fact or matter of law. In the first place there is no similarity in the two labels except so far as the word "Favorite" is used in both. That is a word in common use, and except under special circumstances, not present in this case, is not the subject of exclusive appropriation as a trade mark by any one. The plaintiff's goods are described as to character and quality on the label by several adjectives taken from the body of the language. The defendants' goods are described on their label by only one. The fact that this one adjective had also been used by the plaintiff is the sole foundation for this action, and that does not present a case for the interference of a court of equity to restrain infringement of a trade mark. This proposition is well sustained by the reasoning of the learned court below, in which we fully concur.
It is urged that the plaintiff had made out a case upon the *Page 478 authority of Waterman v. Shipman (130 N.Y. 301), but we think that the facts here fall very far short of those appearing in that case. The trade mark protected by the judgment in that case was "Waterman's Ideal Fountain Pen." It embraced the proper name of the author or inventor of the article, and the name of a person has generally been regarded as the subject of exclusive appropriation as a trade mark. The only difficulty arising in such a case is when it is sought to assert such exclusive appropriation against a person of the same name. The word "Ideal" was also used in the trade mark involved in the case referred to, and that word was said to be non-descriptive, arbitrary and fanciful, and, hence, the subject of exclusive appropriation as a trade mark. The spirit of that decision will appear from a passage in the opinion of the learned judge who spoke for the court: "The word `fountain' as applied to pens of a certain kind is a common appellation, the word `ideal' as applied to fountain pens is non-descriptive, arbitrary and fanciful, and has no natural nor necessary application to a pen. It seems to indicate that the article sold by Waterman was of his own manufacture. The right to so use it was in the nature of property and had become `valuable.'" The decision in that case is not at all in conflict with the view which we think should prevail in the case at bar. Within the rules and principles to be gathered from the following cases, the plaintiff was not entitled to the injunction:Caswell v. Davis (58 N.Y. 223); Meneely v. Meneely (62 N.Y. 427); Munro v. Tousey (129 N.Y. 38); Brown v.Doscher (147 N.Y. 647); Mfg. Co. v. Trainer (101 U.S. 51);Canal Co. v. Clark (80 U.S. 311).
The trial court found that the defendants had not used the plaintiff's trade mark or any imitation thereof calculated to deceive any person desiring to purchase the plaintiff's goods This finding is supported by the evidence and is conclusive in this court, and so the judgment should be affirmed, with costs.