#### Hostetter and others *v.*Fries and others.

*(Circuit Court, S. D. New York.*

May 31, 1883.)

1. Name of New *&*rticle—Right to Use of.

When a new article is made d name must be given to it, and this name becomes, by common acceptation, the appropriate descriptive term by which it is known, and therefore becomes public property, so that all who have the right to manufacture and sell the preparation have the right to designate and sell it by the name by which alone it is known, provided care is observed to sell the preparation as the manufacture of the seller, and not the preparation made by another.

2. Trade-Mark—Defemtiost.

A trade-mark consists of a word, mark, or device adopted by a manufacturer oi vendor to distinguish his 'production from other productions of the same article.

*621S. Same—Name Indicating Kind on Description on Thing.

A name alone is not a trade-mark when it is understood to signify, not tlio particular manufacturo of a certain proprietor, but the kind or description of thing which is manufactured.

4. Same—Injunction IIeeused.

Complainants claimed the right to use the name “ Dr. J. Hostetler’s Stomach Bitters” in connection with certain labels, bottles, and other devices which designated the preparation, as *of*their own manufacture and indicated its origin. and in their bill they averred that defendants were selling' to tho trade an extract out of which it was claimed Host otter’s Bitters could bo made, with directions how *to*make such bitters, and that the retail dealers were making these bitters and refilling complainant’s bottles, with their labels and devices thereon, and thus selling them. *Held,*that defendants had the right to sell 1 heir extract as charged, as no purchaser could suppose that he was purchasing Die preparation made by complainants; that they could not bo held responsible for the acts of third parlies; and that an injunction would not bci granted.

In Equity.

*A. II. Clark*and *James Watson,*for complainants.

*I. A. Englehart*and *A. J. Dittenhoe/er,*for defendant.

Wallace, J.

The motion for a preliminary injunction must be denied, because it does not appear from tho bill and affidavits that defendants are infringing the complainant’s trade-mark. Complainants’ property consists in the right to uso the name “Dr. J. Ilostetter’s Stomach Bitters” in connection with certain labels, bottles, and other devices, which designate the preparation as of their own manufacture, and indicate its origin.. The bill alleges that the defendants are engaged inmamifacturing and selling certain essences, oils, and extracts which they represent can bo so manipulated and used as to produce a good imitation of various well-known brands of bitters, among them an imitation of Ilostetter’s Bitters; that they sell the same to compounders and jobbers, with instructions to the purchaser as to the mode of compounding the bitters and selling them as the genuine article; and that such purchasers compound the essence and sell the bitters made thereby to retail dealers, and the latter procure the second-hand empty bottles that have been sold by the complainants, having the labels thereon, and refill them with the bitters compounded from tho defendants’ essences and palm them off upon the public as tho genuine bitters of the complainants’ manufacture.

The complainants have neither tho exclusive right to make bitters compounded after the formula of Dr. Hostettor, nor the exclusive right to soil bitters by the name of Ilostetter’s Bitters. The preparation never had any name until it was offered to the public and christened. When a now article is made a name must be given to it, and this name becomes by common acceptation the appropriate descriptive term by which it is known, and therefore becomes public property. If this were not so any person could acquire the exclusivo right to a formula by giving a name to tho compound produced, not only when tho compound has not been patented, hut when it might not be the subject of a patent. All who have the right to manufac*622ture and sell the preparation have the right to designate and sell, it by the name by which alone it is known, provided care is observed to-sell the preparation as the manufacture of the seller and not the preparation made by another. A trade-mark consists of a word, mark, or device adopted by a manufacturer or vendor to distinguish his production from other productions of the same article. A name alone is not a trade-mark when it is understood to signify, not the particular manufacture of a certain proprietor, but the kind or description of thing which is manufactured. *Singer Manufg Co.*v. *Loog, 15*Reporter, 538; *Wheeler & Wilson Manuf'g Co.*v. *Shakespear,*39 Law J. Ch. 36; *Young*v. *Macrae,*9 Jur. (N. S.) 322.

Obviously, no one would be deceived into the supposition that the defendants were selling the complainants’ production when they only profess to sell an extract from which Hostetter’s Bitters can be made. Defendants not only have the right to make and sell the extract, but they have the legal right to make and sell a preparation which they call Hostetter’s Bitters, provided they do not employ the bottles, labels, symbols, or devices which have been used by the complainant to distinguish their own production of that preparation, or such equivalents as may deceive the public in that regard. If the bill had distinctly alleged that the defendants were engaged in a scheme to put upon the market and palm off upon the public a preparation of their own as the complainants’ preparation, and these allegations were shown to be true, the defendants could not escape an injunction merely upon the' ground that they had not sold the preparation themselves. But all the general allegations of fraud and conspiracy in the bill are resolved into the specific acts of wrong-doing particularly stated; that is, selling the extract and informing their customers how it maybe made into Hpstetter’s Bitters. The actionable transgression of the complainants’ rights is that committed by the retail purchasers who buy from the defendants’ customers—those who use the bottles, labels, and symbols which constitute the complainant’s trade-mark. The defendants may be instrumental in effecting the wrong by providing some of the means employed, but they only do what the law permits them to do. And even if it could be assumed that they contemplated the further" wrong-doing of the retailers, the law does not visit motives or intent unaccompanied by a wrongful overt act. The bill, however, does not allege that they are participants in the violation of the complainants’ rights further than by selling the extract, and giving instructions how it can be made into Hostetter’s Bitters.

The motion is denied.

See *Wilcox & Gibbs Sewing-machine Co.*v. *The Gibbens Frame, infra; Burton*v. *Stratton,*12 Fed. Rep. 696, and note, 704; *Shaw Stocking Co. v. Mack,*Id. 707, and note, 717.—[Ed.