(dissenting). As I have reached a conclusion different from that announced by my associates, I deem it proper to state my views concerning the questions of law and fact which arise in the case, and, first, with respect to the facts. The l-Teller & Merz Company, hereafter termed the “complainant,” or its predecessors, began the manufacture of bluing, as it seems, at Newark, N. J., about the year 1868 or 1869. At first they manufactured bluing only in the form of a powder. Later, in the year 1872, they began to- put it up in the form of round pellets or balls about the size of small marbles; and later still, in the year 1874 or 1875, they began to manufacture bluing, to some extent, in the form of round lozenges or wafers. To the bluing which was put up in the form of balls they applied the name “American Ball Blue,” and to- that put up in the form of round lozenges they claim to have applied the name “American Wash Blue” when they first began to manufacture it in that form. The evidence shows, however, that what is now termed “American Wash Blue” was as commonly, and perhaps more' frequently, termed “Lozenger Blue” until the year A878, when Pomeroy & Olmsted, a firm which subsequently be*835came Gf. M. Olmsted & Co., took hold of the latter kind of bluing, and advertised it extensively in the Northwest, with the consent of the complainant, as an article of their own manufacture, under the name “American Wash Blue.” Even while Olmsted & Co. were thus advertising and selling it as their own product under the name “American Wash. Blue,” the plaintiff company most frequently referred to it in their letters and bills as “.Lozenger Blue.” To my mind, the evidence leaves little room for doubt that the words “American Ball Blue” and “American Wash Blue” were originally adopted by the complainant itself solely for descriptive purposes,— that is to say, to describe a bluing made in the United States, and to be used for laundry purposes; the one kind put up in the form of balls, and the other in the shape of round lozenges. There is no evidence, I think, which indicates that either name was chosen as an artificial brand, but the testimony rather indicates that the names were selected because they accurately described the articles-to which they were applied, the word “American” differentiating them from several kinds of bluing which were made abroad, and imported into this country for sale. Olmsted & Co., who were soap makers at Cedar Rapids, Iowa, for 20 years succeeding the year 1878, advertised bluing put up in the form of round lozenges, extensively, as “American Wash Blue,” throughout the states of Iowa, Minnesota, and the Dakota territories, and built up an extensive trade in the article in those slates and territories. The bluing was put up in cylindrical-shaped blue paper boxes of sufficient diameter to contain the lozenges. The cylindrical boxes bore on one end a while label on which was stamped the letter “II” surrounded by a small triangle, and on ihe three sides of this triangle were printed in very small letters the words “American Ultramarine’ Works. Trade-Mark.” Wrapped around the cylindrical box was another larger label, commending the qualities of the article, and giving directions for its use, which was signed as follows: “Gf. M. Olmsted & Company, Soap Makers, Cedar Rapids, Iowa.” The small cylindrical paper boxes were packed in larger wooden ones, on the ends of which were stenciled the following words: “American Wash Blue. Gf. M. Olmsted & Co,, Cedar Rapids, Towa.” The packages of American wash blue as put up and sold by Olmsted & Co. with the full knowledge of the complainant bore no marks indicating to the public that the article was made by the complainant other than the above-described label on the end of the cylindrical boxes, and the evidence shows beyond perad-veniure that nearly all of Olmsted’s customers were ignorant of the existence of such a concern as the Heller & Merz Company, and supposed that the article was made by or for Olmsted & Co!, and that the words “American Wash Blue” were wholly descriptive. While Olmsted & Co. handled American wash blue, — ilmt is to say, for 20 years succeeding the year 1878, — the complainant manufactured and sold no oilier lozenger bluing, except a small amount in the states of Illinois and Wisconsin. They manufactured bluing in that form for- 20 years, principally to fill orders for Olmsted & Co. The defendants below. Shaver. Blake & Co., acquired the good will of the business of Olmsted & Co. when the latter firm was dissolved *836by the death of one of its members. Shortly thereafter, in the' year 1898, they commenced to advertise and sell Iozenger blue in the same form of package that it had been sold by Olmsted & Co., using the words “American Wash Blue,” as their predecessor in interest had used them; but they ceased to affix the label at the end of the cylindrical boxes which bore the impress of the letter “U” surrounded by the triangle above described. The defendants purchased the bluing from, or had it manufactured for them by, the International Ultramarine Works located at Staten Island, N. Y., and they ceased to patronize the complainant company. Thereupon, as it seems, the complainant began to sell American wash blue put up in the form of lozenges in the territory formerly occupied by Olmsted & Co., and — to retaliate apparently, as Olmsted & Co. had never sold the ball blue — the defendants began to advertise and sell it as well as the wash blue. The boxes, however, in which the defendants packed and sold ball blue which was manufactured for them by the International Ultramarine Works, bore no resemblance whatever to the boxes in which the complainant had theretofore packed and sold its ball blue. The defendants’ boxes were different in color, and had the words “Shaver, Blake & Company, Cedar Rapids, Iowa,” prominently displayed on the face of the boxes. No one, in my judgment, could have possibly mistaken the defendants’ ball blue for similar goods of the complainant’s manufacture, if he had exercised the slightest care. Moreover, this record fails to show that there is any substantial difference in the bluing made by the complainant and by the International Ultramarine Works. The article manufactured by each concern is the same, and nothing in this record would indicate that one is a better article than the other. This litigation, as I view it, is the outgrowth of the foregoing facts.
The decree of the lower court, which is approved by the majority opinion, enjoins the defendants, among other things, from selling or offering for sale any blue or bluing under the name “American Wash Blue” or “American Ball Blue” unless it is manufactured by the complainant company. It is also said in the majority opinion that the defendants “have no right to make or sell American ball blue or American wash blue”; and, furthermore, that “the names of the articles in which they [the defendants] have the right to deal are ‘Ball Blue’ or Wash Blue.’ ” At the same time it is conceded in the majority opinion — and of this proposition there can be no doubt — • that the words “American Wash Blue” and “American Ball Blue” are purely descriptive words and phrases, which cannot be monopolized as a trade-mark by any manufacturer of bluing. To my mind, the two propositions thus announced are antagonistic, namely, that a manufacturer of bluing cannot, as respects that article, obtain a monopo,ly of the aforesaid words and phrases, because they are confessedly descriptive, but that he may make use of the words himself, and enjoin another manufacturer, who mákes the same article, from using them to describe his own product. If the latter of these propositions is sound law, then it is apparent, I think, that the former proposition ought to be abandoned, and that it be henceforth conceded that one *837of the fundamental doctrines of the law of trade-mark is no longer lenable, namely, that no one is entitled to monopolize either words or phrases, which, as applied to a given article, are purely descriptive of its kind, or quality, or place of manufacture. It will he observed that the opinion of the majority concedes the defendants’ right to sell their product under the names “Ball Blue” and “Wash Blue,” but denies their right to make use of the word “American” in connection therewith, and I am unable to perceive any substantial reason why the right to use the former of these words .should be admitted, and the right to use the latter denied. The word “American” is no less descriptive than the words “Wash Blue” or the words “Ball Blue.” It indicates that the bluing is made in America, and is a domestic product, just as the word “Wash” indicates that the bluing is designed for washing purposes, and the word “Ball” indicates that the bluing is put up in the form of small pellets. The words in question are each purely descriptive, and, as’the complainant company and as the defendants both employ them, they are used in a very natural relation to each other to apily describe the two articles to which they are applied, and to show that they are a domestic, and not a foreign, product.
Another observation to be made concerning the decree below and the majority opinion is that the relief afforded is not based on the ground that the descriptive words in question have been used on boxes or packages containing bluing which are made in imitation of the complainant’s boxes and packages, and for that reason aré liable to deceive the public, and lessen the complainant’s trade. The injunction is so framed that the phrases “American Wash Blue” and “American Ball Blue” cannot be used by the defendants under any circumstances, even though they put up ball blue and lozenger blue in boxes which are so totally unlike those employed by the complainant that they would not mislead a customer who was grossly negligent. The injunction against using the words, therefore, is not founded upon «any deception practiced or attempted to be practiced, except such as may result from the use of words in a purely natural relation to each other, which are confessedly descriptive, and cannot be monopolized as a trade-mark. The reason assigned for awarding such an injunction is that it may be granted on the ground that the defendants employ these words with intent to purloin some of the complainant’s trade, and that their conduct in so doing is fraudulent. But, in my opinion, an appropriate answer to this suggestion is, that a person cannot be said to have been guilty of any such fraud as a court of law or equity will redress when he makes use of words, or phrases to describe an article whicli he manufactures, which, as applied to that article, are purely descriptive, and hence are the common property of all' who manufacture or deal in the article. The law, except in a few rare cases, does not concern itself with the motives of men when their acts are lawful, and injuries which result, to others from the exercise of lawful rights or privileges are damnum absque injuria. Passaic Print Works v. Ely & Walker Dry-Goods Co., 41 C. C. A. 426, 105 Fed. 163. If the words “American Wash Blue” and “American Ball Blue,” as the complainant contends, have *838become associated in the public mind with two articles which it manufactures in such a way that they have ceased to be descriptive of the articles, and have acquired a meaning which is secondary and arbitrary, then this result is attributable to the complainant’s own fault. If such a result was liable to ensue, it should have chosen a brand originally which was arbitrary, and that might have been monopolized. It had no greater need of employing the descriptive words in question than the defendants have to describe the bluing which they sell. It cannot, therefore, by reason of the peculiar result above mentioned, insist that other manufacturers of bluing in this country shall not call their product “American Wash Blue” and “American Ball Blue” if it is so in fact. It requires but little penetration to see that, if this doctrine of “secondary signification” is adopted in these days of fierce competition, the most common descriptive words and phrases will be monopolized, or at least that attempts will be made repeatedly to monopolize them, and little difficulty will ordinarily be experienced in obtaining testimony to support the claim that common and necessary descriptive words have by long-continued use acquired a secondary meaning. I am willing to concede- that one or two English cases cited in the majority opinion, particularly Thompson v. Montgomery, 41 Ch. Div. 35, and the same case as reported in [1891] App. Cas. 217, sustain the doctrine contended for .by my associates that a descriptive 'word by association with an article may acquire a secondary signification, and that, when such secondary meaning has been acquired, the use of it by another may be enjoined; but, as I read and -cnstrue the American decisions, — particularlv +he decisions of the supreme court, which are controlling authority here, — the doctrine in question has not been approved to the extent to which it has been carried in the case in hand. In Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118, the right of the public to make use of the word “Singer” as descriptive of a particular sewing machine after the expiration of the patent on the machine was upheld, with the single limitation that one who makes such machines, and calls them by that name, must, by other marks and signs on the machines, clearly indicate to the public that they are made by him, and not by the original Ringer Company. The recent case of Elgin Nat. Watch Co. v. Illinois Watch-Case Co. (decided Jan. 7, 1901] 21 Sup. Ct. 270, 45 L. Ed. 365, as I construe.it, inculcates the same doctrine, namely, that a manufacturer cannot be enjoined from making use of words or phrases which in their primary sense are clearly descriptive of the article which he manufactures, and that, even when such words, as used by another, have acquired a secondary signification, the most that a court of equity can do for his protection is to require third parties who have occasion to use them to affix other marks and signs, or indulge in such explanations, as will most effectually prevent a confusion of goods. These are the latest decisions by the supreme court on the subject, but prior thereto it was said in Chemical Co. v. Meyer, 139 U. S. 540, 547, 11 Sup. Ct. 625, 35 L. Ed. 247, concerning descriptive words which could not become a trade-mark:
*839“If the words * * * cannot be lawfully appropriated as a trade-mark. It is difficult to see upon what theory a person making use of these or similar words can be enjoined. We understand it to be conceded that these words do not ia themselves constitute a trade-mark. It follows, then, that another person has the right to use them unless he uses them in such connection with other words or devices as operate as a deception upon the public.”
Similar views were also expressed in the case of Goodyear’s India-Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598, 602, 9 Sup. Ct. 166, 32 L. Ed. 535. See, also, Illinois Watch-Case Co. v. Elgin Nat. Watch Co., 35 C. C. A. 237, 94 Fed. 667.
My conclusion is, therefore, that the injunction in its present form ought not to stand, because the defendants have the right to use the words “American Wash Blue” and “American Ball Blue,” and to use the words in that relation to each other, these being clearly descriptive words and phrases, provided they neither simulate the complainant’s boxes or packages, and provided they display their own name prominently on their boxes, circulars, and advertisements, and with equal prominence state that the bluing which they sell is manufactured for them by the International Ultramarine Works of Staten Island, N. Y., and is not the complainant’s product. I have no fault to find with that part of the restraining order which enjoins the defendants from holding themselves out to the public as the owners of the names “American Wash Blue” and “American Ball Blue,” or as the manufacturers of those articles, since no one, in my judgment, is or can be the owner of these names, or have an exclusive property therein.