Stern v. Barrett Chemical Co.

Fbeedman, P. J.

This action is for damages alleged to have been sustained by the plaintiff by reason of the publication by the defendant of a libel concerning the plaintiff in his business as a manufacturer of and dealer in an insecticide.

The libel complained of was contained in a letter sent by the defendant to a number of dealers in plaintiff’s article. The defendant and its predecessors in business, since 1895, had manufactured an insecticide and sold the same under a label upon which, together with descriptive matter, was prominently displayed the word “ Boaclisault.” That word was registered in the patent office at Washington as a trade-mark. Plaintiff called his article “ Insectago ” and described it, at the top of the label used by him, which in appearance was very different from that of the defendant, and prominently set forth plaintiff’s name as the manufacturer, as “ Warranted' Chemical Eoach Salt.” The defendant addressed to a number of dealers who were selling plaintiff’s insecticide, labelled as aforesaid, a letter in which it charged plaintiff with unlawfully imitating its trade-mark, and characterized his acts as robbery and threatened to prosecute, both civilly and criminally, all parties who dealt in or kept any insecticide put up or sold under any label including the word “ Roachsault ” or any imitation of that word. The letter also contained extracts from the Penal Code relating to trade-mark imitations and the punishment therefor. The plaintiff thereupon brought this action for damages alleging that the publication mentioned was libelous and upon the trial gave evidence in support thereof.

The case, as it shaped itself upon the trial, became one for the jury to determine. Defendant’s motion, at the close of plaintiff’s case, for a dismissal of the complaint was properly denied, and the denial of the defendant’s motion, at the close of the whole case, for the direction of a verdict in defendant’s favor was equally proper. Under these circumstances this court cannot consider the weight of the evidence, but only the exceptions taken.

Aside from the question of damages the evidence, as it stood at the close of the whole case, called for the determination of the following questions, viz.: (1) Whether the defendant had or had not a trade-mark in the word “ Roachsault ” as used upon its label; (2) if it had, whether the plaintiff had or had not been guilty of an infringement thereof; and (3) whether, in case of an infringement, the defendant had or had not been justified, in whole or in part, in issuing and sending the letter referred to.

Upon the first question the evidence was undisputed and fully sustained defendant’s claim of a trade-mark. Defendant’s counsel thereupon requested the trial judge to instruct the jury that defendant had a valid trade-mark in the word “ Roachsault.” The judge refused the request and left the question to the jury as a question of fact, to which ruling defendant’s counsel duly excepted. This ruling constituted error. It appeared without contradiction -that defendant’s predecessors in business in 1895, adopted the- arbitrary word “ Roachsault ” for use upon their labels and had it duly registered in the United States patent office, and that subsequently they transferred all their right, title and interest in and to the same to the defendant in connection with the business to which it related. At the time of such adoption the said word was not one otherwise known in the English language, nor used by anybody else, and was thereafter exclusively used by defendant’s predecessors and the defendant. By the decisions of Keasbey v. Brooklyn Chemical Works, 142 N. Y. 467 (relating to the words “ Bromo Caffeine”); Selchow v. Baker, 93 id. 59 (relating to the words “ Sliced Animals ”); Rawlinson v. Brainard & Armstrong Co., 28 Misc. Rep. 287; 59 N. Y. Supp. 880 (relating to the words “ Filo Floss ” as applied to silk floss), and Waterman v. Shipman, 130 N. Y. 301 (relating to the word “Ideal” as applied to fountain pens); it has been established that a suggestive word may be none the less a valid trademark and that before a term or word will be held purely descriptive and insufficient as a foundation for a trade-mark its description must import information as to the general characteristics and composition of the article to which it applies. For the reasons stated it conclusively appeared that the defendant had a valid trade-mark, and the defendant was consequently entitled to have the jury instructed that, as matter of law, the fact had been sufficiently proven. The trial judge not only refused the defendant’s request to that effect and left the jury free to determine the question either way as one of fact, but he also told them that if the defendant had a trade-mark, it was the end of plaintiff’s case. The importance of this error becomes evident when it is considered that the jury, in finding for the plaintiff, as they did, may have based their finding upon the fact found by them irrespective of the other questions in the case, that the defendant had no trade-mark. They' should have been instructed that the defendant had established a valid trade-mark, and that it was for them to determine whether or not the plaintiff had infringed upon it, and that, if he did, it remained to be seen whether the defendant, in issuing and sending the letter in question, had kept within, or stepped beyond, justifiable limits.

The instructions given the jury as a whole contain nothing which cured the error already pointed out, and hence a reversal of the judgment cannot be avoided. This being so, it is unnecessary to consider any of the other questions argued upon the appeal.

Judgment appealed from reversed, new trial ordered, with costs ■to the appellant to abide the event.

Leventritt, J., concurs.