dissenting.
Symbols or devices used by a manufacturer or merchant to distinguish the products, manufactures, or -merchandise which he produces, manufactures, or sells, from that of others, are called and known by the name of trade-marks. They are used in order that such products, manufactures, or merchandise may *57be known as belonging to tbe owner of tbe symbol or device, and that he may secure the profits from its reputation or superiority. 15 Am. Cyclopedia, 882.
Equity courts in all civilized countries have for centuries afforded protection to trade-marks, the object of such protection being not only to secure to the individual the fruits of his skill, industry, and enterprise, but also to protect the public against fraud.
Property in a trade-mark is acquired by the original application to some species of merchandise or manufacture of a symbol or device not in actual use to designate articles of the same kind or class..
Devices of the kind, in order that they may be entitled to protection in a court of equity, must have the essential quali-' ties of a lawful trade-mark; but if they have, the owner becomes entitled to its exclusive use within the limits prescribed by law, the rule being that he who first adopts such a trademark acquires the right to its exclusive use in connection with the particular class of merchandise to which its use has been applied by himself or his agents.
Prior use is essential to any such exclusive claim, as the right to protection begins from such actual prior use ; nor does the right to protection extend beyond the actual use of the device. Hence the use of it on one particular article of manufacture or merchandise will not prevent another from using it on another and different class of articles, the rule being strictly applied that the right to protection in equity is limited to the prior use of the symbol by the owner.
Sufficient appears to show that the plaintiffs, at an early period in the fourth decade of the present century, engaged in the manufacture of a fabric known as ticking of various grades and quality, and that subsequently they made a valuable improvement in the mode of manufacturing the fabric, which enabled them to produce a very superior articles. Before the introduction of the improvement they had been in the habit of marking their products in that species of manufacture with one of the first four letters of the alphabet, to designate the different grades of their manufacture when offered for sale in the market. Thirty-four years ago or more they introduced the new jm*58provement in the manufacture of the fabric, and adopted the distinctive trade-mark, of which a fac-simile is exhibited in the transcript. When examined, it will be seen that it consists of the corporate name of the complainants, with a rough engraved surrounding, and the letters “ A. C. A.” plainly and conspicuously printed in the centre of the circular outside edge.
Conclusive proof is exhibited that the peculiar combination of letters adopted by the complainants as a symbol of trade originated with them, and that it suggested itself to them as comprising the initial letters of their familiar corporate name, with the addition of the letter “ A” at the close, which had previously been used by them as indicating the best quality of the fabric manufactured by them before they made the alleged improvement.
Single letters of the kind are frequently used as a mark- of quality; but the proofs in this case show to a demonstration that the peculiar combination of letters adopted by the complainants at the period mentioned were not adopted to denote quality merely, but as an appropriate and distinguishing trade-mark, symbol, or device, to indicate to the public and to purchasers that the fabric which bears the mark was of the manufacture of the manufacturing company of the complainants. Beyond all doubt, they adopted the symbol or device, and affixed it to the fabric of their trade to indicate the origin and ownership of the article.
Few manufactured products bear in their own external appearance sufficient, evidence of their real character to protect the purchaser against fraudulent imitations. Integrity in manufacture and uniformity in qüality are high recommendations to purchasers, and manufactured goods falling within that category are much preferred, both by the purchasers and consumers of the same; and when by long experience the public have learned to associate these elements of recommendation with a special symbol or brand, the wide and profitable sale of the articles bearing the same is assured, and the exclusive possession and use of the symbol or brand becomes of great value to the real owner. Purchasers are also interested that such a trade-mark should receive protection, as it is a guaranty of genuineness, and its value is proportioned to the business repu*59tation of the owners of the same and of the excellence of their manufactures. 4 Johns. Cyclopedia, part 2, p. 916.
Infringement by the respondents is charged, and the complainants pray for an injunction and for an account. Service was made, and the respondents appeared and set up various defences, as follows: 1. That the alleged trade-mark was never designed or used as such, but merely to designate one of the .grades of the fabric which the complainants manufactured. 2. That the complainants are estopped by a prior decision of a court of competent jurisdiction to set up that the alleged symbol is a trade-mark. . 3. They admit that they mark their goods with the letters “ A. C. A.,” but they deny that the mark is fraudulent or that it is calculated to deceive the public. 4. They deny that their conduct is in the slightest degree fraudulent or inequitable, or that the sale of their goods injures the complainants.
Proofs were taken, hearing had, and the Circuit Court entered a decree dismissing the bill of complaint. Prompt appeal was taken by the complainants to this court, and they assign the following causes of error: 1. That the Circuit Court erred in entering a decree dismissing the bill of complaint. 2. That the court erred in not granting the injunction as prayed. 3. That the court erred in not decreeing that the complainants are entitled to an account. 4. That the court erred in not sustaining the bill of complaint.
Attempt is made in argument to show that the symbol of the complainants was not adopted by them for any other purpose than to designate the grade or quality of the fabric which they manufacture and sell in the market; but it is a sufficient answer to that proposition to say that it is wholly unsupported by evidence, and is decisively overthrown by the proof introduced by the complainants.
Words or devices, or even a name in certain cases, may be adopted as a trade-mark which is not the original invention of the party who appropriates the same to that use. Phrases, or even words or letters in common use, may be adopted for the purpose, if at the time of their adoption they were not employed by another to designate the same or similar articles of production or sale. Stamps or trade-marks of the kind are *60employed to point to the origin,; ownership, or place of manufacture or sale of the article to which it is affixed, or to give notice to the public who is the producer, or where it may be purchased. Canal Company v. Clark, 13 Wall. 311, 322.
Subject to the preceding qualifications a trade-mark may consist of a name, symbol, figure, letter, form, or device, if adopted and used by a manufacturer or merchant in order to designate the goods he manufactures or sells, or to distinguish the same from those manufactured or sold by'another, to the end that the goods may be known in the market as his, and to enable him to secure such profits as result from his reputation for skill, industry, and fidelity. Upton, Trade-marks, 9 ; Taylor v. Carpenter, 2 Sandf. (N. Y.) Ch. 603.
Brands or stamps called trade-marks, says Waite, may consist of a name, figure, letter, form, or device adopted and used by a manufacturer or merchant in order to designate the goods that he manufactures or sells, and to distinguish them from those manufactured or sold by another, to the end that they may be known in the market as his, and thus enable him to secure such profits as result from a reputation for superior skill, industry, or enterprise. 6 Waite, Actions and Defences, 21.
Such a manufacturer or merchant who first adopts such a trade-mark, and is accustomed to affix the same to a particular fabric of his manufacture or sale to distinguish it from all others, has a property in it, and may maintain an action for damages if used by another, or he may restrain another from using it by application to a court of equity. Hall v. Barrows, 4 De G. J. & S. 149, 156 ; s. c. 12 W. R. 322, 323.
Judicial protection is granted in such a case upon the ground that the honest, skilful, industrious manufacturer or enterprising merchant who has produced or brought into the market an article of use or consumption that has -found favor with the public, and who by affixing to it some raime, mark, device, or symbol which serves to distinguish it as his and from that of all others, shall receive the first reward of his honesty, skill, or enterprise, and shall in no manner and to no extent be deprived of the same by another who to that end appropriates the same or a colorable imitation of the same to his. production, so that the public are or may be deceived or misled. Wolfe *61v. Barnett & Lion, 24 La. An. 97 ; Newman v. Alvord, 15 N. Y. 189, 196; Lee v. Haley, Law Rep. 5 Ch. Ap. 155 ; Blackwell v. Wright, 73 N. C. 310, 313.
Nothing can be better established, says the Master of the Rolls, and nothing ought to be otherwise than fully established in a civilized country, than that a manufacturer is not entitled to sell his goods under the false representation that they are made by a rival manufacturer. Singer Manufacturing Co. v. Wilson, 2 Ch. D. 434, 440 ; Browne, Trade-marks, sect. 385 ; Osgood v. Allen, 1 Holmes, 185, 194.
When we consider, says Duer, the nature of the wrong that is committed when the right of property in a trade-mark is invaded, the necessity for the interposition of a court of equity becomes more apparent. He who affixes to his own goods an imitation of an original trade-mark, by which those of another are distinguished and known, seeks by deceiving the public to divert to his own use the profits to which the superior skill and enterprise of the other had given him an exclusive title, and endeavors by a false representation to effect a dishonorable purpose by committing a fraud upon the public and upon the true owner of the trade-mark. Amoskeag Manufacturing Co. v. Spear, 2 Sandf. (N. Y.) 599, 605; The Collins Company v. Brown, 3 Kay & J. 423, 428.
Thirty years and more before the suit was commenced the plaintiff company adopted the trade-mark in question and affixed the same to their improved manufacture of ticking, and it appears from the evidence that they have continuously from that date to the day the bill of complaint was filed used the same as the symbol to designate that peculiar manufacture, which of itself is sufficient to show, if any thing in the nature of proof can be, that the first defence set up in the answer ought to be overruled.
Much discussion of the second defence cannot be required, as the statement of the proposition that the complainants are estopped to ask relief in this case because they were partially unsuccessful in a prior suit against .another party is quite sufficient for its refutation. Neither argument nor authority is necessary to show that it has no foundation in law or justice, and it is equally clear that the supposed analogy between an *62admiralty decree in r.em and a decree dismissing a bill in equity for tbe invasion of a trade-mark is illusory, unfounded, and without the slightest legal effect.
Suppose that is so, still the respondents deny that the trademark which they use is in the slightest degree fraudulent, or that it is calculated to deceive the public. They admit that they use the letters “ A. C. A.,” but they deny that in any other respect they have used the trade-mark adopted by the complainants.
Manufacturers' and merchants have severally the unquestioned right to distinguish the goods they manufacture or sell by a peculiar mark or device,’ so that the goods may be known in the market as the product or sale of the owner of the trademark, or device, in order that they may thus secure the profits which the superior repute of the goods may be the means of giving to the producer or seller. Gillott v. Esterbrook, 48 N. Y. 374, 376.
Confirmation of that proposition is found in all the reported cases, and it is equally true that the owners of such trade-marks are entitled to the protection of a court of equity in the exclusive use of the symbols they have thus adopted and affixed to their goods, the foundation of the rule being that the public interest as well as the interest of the owner of the trade-mark requires that protection. 2 Story, Eq. Jur., sect. 951.
Such a party has a valuable interest in his trade or business, and having appropriated a particular label or trade-mark indicating to those who wish to give him their patronage that the article is made or sold by him or by his authority, or that he carries on his business at a particular place, he is entitled to protection against. any other person who attempts to pirate upon the good-will of his customers or of the patrons of his trade or business by sailing under his flag without his authority or consent. Partridge v. Menck, 2 Barb. (N. Y.) Ch. 101.
Redress is given in such cases upon the ground that the party charged is not allowed to offer his goods for sale, representing them to be the manufacture of the first and real owner of the trade-mark, because by doing so he would be guilty of a misrepresentation, and would deprive the real owner of the *63profits lie might make by the sale of his goods which the purchaser intended to buy.
Compensation for such an injury was in early times given to the injured party by an action of deceit at common law, long before the Court of Chancery attempted to exercise jurisdiction to grant relief for such wrongful acts. In such an action it is doubtless true that the plaintiff is required to allege that the party charged infringed the trade-mark with a fraudulent intent, and to prove the charge as alleged, in order to secure a verdict and judgment for redress. Certain early cases in equity may be found where it is held that it is requisite that the allegation and proof in a chancery suit should be the same; but the practice in equity has long been settled otherwise, the rule now being that the injury the owner of the trade-mark suffers by the offering for sale in the market of other goods side by side with his, bearing the same trade-mark, entitles the real owner of the trade-mark to protection in equity, irrespective of the intent of the wrong-doer, it being held that the inquiry done to the complainant in his trade by loss of custom is sufficient to support his title to relief.
Neither will the complainant be deprived of remedy in equity, even if it be shown by the respondent that all the persons who bought goods from him bearing the trade-mark of the real owner were well aware that they were not of the complainant’s manufacture. If the goods were so supplied by the wrong-doer for the purpose of béing resold in the market, the injury to the complainant is sufficient to entitle him to relief in equity.
Nor is it necessary, in order to entitle the party to relief, that proof should be given of persons having been actually deceived, or that they bought goods in the belief that they were of the manufacture of the complainant, provided that the court is satisfied that the resemblance is such as would be likely to cause the one mark to be mistaken for the other. Edelston v. Edelston, 1 De G. J. & S. 185; McAndrew v. Bassett, 4 id. 380; Sebastian, Trade-marks, 70.
Two trade-marks are substantially the same in legal contemplation, if the resemblance is such as to- deceive an ordinary purchaser giving such attention to the same as such purchaser usually gives, and to cause him to purchase the one supposing it *64to be the other. Gorham Company v. White, 14 Wall. 511; McLean v. Fleming, 96 U. S. 245, 256; Adams, Trade-marks, 107.
Difficulties attend the effort to describe with precision what resemblance is necessary to constitute an infringement, and perhaps it is not going too far to say that the term is incapable of . exact definition as applied to all cases. Grant that, and still it is safe to say that no manufacturer or merchant can properly adopt a trade-mark so resembling that of another engaged in the same business as that ordinary purchasers buying with ordinary caution are likely to be misled.
Positive evidence of fraudulent intent is not required where the proof of infringement is clear, as the liability of the infringer arises from the fact that he is enabled through the unjustifiable use of the trade-mark to sell a simulated article as and for the one which is genuine. McLean v. Fleming, supra.
Unless the simulated trade-mark bears a resemblance to that which is genuine, it is clear that the charge of infringement is not made out, and it is doubtless true that the resemblance of the simulated one to the genuine must be such that the former is calculated to deceive or mislead purchasers intending to buy the genuine goods; but it is a mistake to suppose that the resemblance must be such as would deceive' persons seeing the two trade-marks placed side by side. Exact definition may not be attainable; but if a purchaser looking at the article offered to him, said Lord Cranworth, would naturally be led from the mark impressed on it to suppose it to be the production of the rival manufacturer, and would purchase it in that belief, the court considers the use of such a mark fraudulent. Franks v. Weaver, 10 Beav. 297.
Apply that rule to the case before the court, and it is sufficient to control the decision; but the Chancellor went much further, and said, that if the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, he thought that the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market, may be as much a violation of the rights of the owner as the actual copy of his device. Seixo v. Provezende, Law Rep. 1 Ch. 192, 196.
*65When the entire trade-mark is copied, the case is free of difficulty, as the rule is universal that the infringer is liable; but the question is, when may it be said that a trade-mark has been taken by another ? Answers to that question are found in several cases, of which no one is more satisfactory than that given by the Master of the Rolls in a recent case. He says that a trade-mark to be taken need not be exactly copied, nor need it be copied with slight variations, but it must be a substantial portion of the trade-mark; to which he adds, that it has sometimes been called the material portion, but that, as he states, means the same thing, and he then remarks that it means the essential portion of the trade-mark, and finally concludes the subject by saying that “ what the court has to satisfy itself of is that there has been an essential portion of the trade-mark used to designate goods of a similar description.” Singer Manufacturing Co. v. Wilson, 2 Ch. D. 434, 443; Cod. Dig., sect. 342.
Argument to show that that rule is applicable to the case before the court is unnecessary, as the proposition is self-evident ; and if so, it is impossible to see how any one can vote to affirm the judgment of the Circuit Court. Beyond all question, the letters “ A. C. A.” are the essential feature of the trade-mark adopted by the complainants, and the respondents admit in their answer and in argument that they use the same three letters in the same combination.
Complete imitation is not required by any of the well-considered cases. Instead of that, it is well settled that the proof of infringement is sufficient if it shows even a limited and partial imitation, provided the part taken is an essential portion of the symbol.' None of the cases show that the whole must be taken, nor is it necessary to show that any one has in fact been deceived, if the imitation is such as to prove that it is calculated to deceive ordinary purchasers using ordinary caution. Proof of actual intent to defraud is not required, but it is sufficient if the court sees that the trade-mark of the complainant is simulated in such a manner as probably to deceive the customers and patrons of his trade and business. Filley v. Fassett, 44 Mo. 168, 178; Coats v. Holbrook, 2 Sandf. (N. Y.) Ch. 586, 626.
Courts of justice do not always.use the same language in *66defining what is the requisite similarity in the two trade-marks to entitle the complainant to relief, but they substantially concur that if it be such that the public may be led to believe while they buy the goods of the respondent that they are buying an article manufactured by the complainant, the proof of similarity is sufficient. Hirst v. Denham, Law Rep. 14 Eq. 542, 552.
For the purpose of establishing a case of infringement, it is not necessary to show that there has been the use of a mark in all respects corresponding with that which another person has acquired an exclusive right to use, if the resemblance is such as not only to show an intention to deceive, but also such as to be likely to make unwary purchasers suppose that they are purchasing the article sold by the party to whom the right to use the trade-mark belongs. Wotherspoon v. Currie, Law Rep. 5 Ap. Cas. 508-519; s. c. 27 L. T. n. s. 393.
Chancery courts will protect the property rights of a party in his trade-mark, and for its invasion the law will award compensation in damages. Legal redress will be accorded when it is shown that the 'symbol or device used by the wrong-doer is of such a character that by its resemblance to the established trade-mark of the complainant it will-be liable to deceive the public and lead to the purchase of that which is not the manufacture of the proprietor, believing it to be his.
It is not necessary that the symbol or device should be a facsimile or a precise copy of the original trade-mark, or that it should be so close an imitation that the two cannot be easily distinguished by one familiar with the genuine device; but if the false or simulated one is only colorably different, or if the resemblance is such as may deceive a purchaser of ordinary caution, or if it is calculated to mislead the careless and unwary, and thus to injure the sale of the goods of the proprietor of the true device, the injured party is entitled to redress. Colman v. Crump, 70 N. Y. 573, 578; Glenny v. Smith, 11 Jur. n. s. 964.
Trade-marks usually exhibit some peculiar device, vignette, or -symbol, in addition to the name of the party, which the proprietor had a perfect right to appropriate, and which, as well as the name, is intended as a declaration to the public *67that the article is his property. Imitators frequently drop both the name and certain parts of the surroundings, and substitute tbeir own name with a different vignette; but if the peculiar device is copied, and so copied as to manifest a design of misleading the public, the omission or variation ought to be wholly disregarded.
Proof of an intention to defraud is not required; but it is plain that the respondents acted with a design, and it would be absurd to suppose that they had no further object than the mere imitation of the trade-mark which they copied. On the contrary, it is.obvious that they expected to gain an advantage in the sale of their goods by attaching their simulated device to fabrics resembling in appearance and quality the fabric of the complainants. Of course they meant to secure to their goods a preference in the market which they otherwise would not have commanded; and it is difficult, if not impossible, to see how any such advantage could be gained unless the simulated trade-mark would enable them to sell their fabrics as that of the injured party. Amoskeag Manufacturing Co. v. Spear, supra; Fetridge v. Wells, 13 How. (N. Y.) Pr. 386.
Proprietors of a trade-mark, in order to bring the same under the protection of a court of equity, are not obliged to prove that it has been copied in every particular by the wrongdoer. It is enough for them to show that the representations employed bear such resemblance to their symbol or device as to be calculated to mislead the public who are purchasers of the article, and to make it pass for the one sold by the true owner of the trade-mark. Walton v. Crowley, 3 Blatchf. 440-447.
Candid men cannot read the record in this case without being forced to the conclusion that the respondents took the essential feature of the complainants’ trade-mark, which they had used for forty years to designate the fabric of ticking which they manufactured, and which had become known throughout the United States as the authorized symbol to indicate that description of goods; and if so, it follows to a demonstration that the decree • of the Circuit Court should be reversed.