Alexandria gazette. [volume] (Alexandria, D.C.) 1834-1974, 1878-01-14

before lst5 or 1906, either OF the Labels OF MOTIFS
i, Wri,ht. o. Of any OF the successive Trims WicA
fo,rovsd the original firm OF Morris & WIigat, n
The hnsiness az Durhan's. Iii, was used. however,
they claim the right TO the exclusive use OF |: a.
successors snd assgness OF Morris, who bought out
Wrieh,-s interest in the business OF Most!s -
Wright. They insist, moreover, that Durham as
DESCRIPTIVE Of tobacco, Is geographical lelH'
which frst gained its Significance Iust aits' 'Ne
war, in 1856: thst it derived its Significance
solely from the use Of it By j. +, Green aud that
as Green's Successors they are bow entitled 10 the
exclusive use OF it, They patented trade mark N
1870 no. I2), their patent describing their trade
mark as s:painted on glazed paper, upon which Is
represented side view OF Durham ball and the
words Genuine Durham smoking tobacco
In 1871 a suit was brought in the Superior Court
If North Carolina by ". r Blackwell against ".
\. Wright (Bi1c!lcsU rs. Hrt0hE. - y c. 5lu),
ia which the complainant. claiming right 10 the
exclusive use Of the word Durham As descriptive
term for his smoking tobacco on the same !a0e!
with his symbolic trade mark OF the side view OF a
short horn bull, sought 70 enjon the defendant
Wright, from using the same word Durham as 3
description of his smoking tobacco upon LABEL
similar in color, material and general appearance
having on il the head and neck II short horn
bull. The suit was a trade mark salt. and the
complaint contained no charge OF fraud in de-
caivice the public and no prayer for al Injunction
TO prevent the use Of label decep:iyely asSmated
to that of the complainant. This Suit, after going
20 the Supreme Court of N0-tt Carolina, was dis
missed on demurrer to the complaint The demurrer
being based on the ground that the complainant
did not BIZ formal allegations OF assignments,
trace mis- title 70 the exclusive OF the trade mark
in question trom J. r Green.
In the same year a sui: was brought il the
Cnited States Circuit Cour; for tie Western Dis
trict Of Virginia al Lynchburg by ". I. Blackwell
and J. S. Car, partners trading noder the nF!n
name Of ". T. Blackwell, against 5. 5: Arms:eac'
BiocElcsl IS Ar1nst.aa, Browne on Trade Mark,
.. 5l0) In that suit the compainanIs claimed the
exclusive right 10 use the trade mark already de.
scribed, including the word Durham and the side
view of short horn bull, charged an Infringement
O; il by Armstead as assignee OF VIM. A. Wright in
the use CT the label OF "Eisht' also already de,
scrhsi; and prayed in junction against all further
use OF the last named label. In this suit the COM
plain ants prevailed, and perpetual IN junction was
granted and the matters in controversy were al
rewards compromised.
Cpon this condition OF facts the companants,
". 7. Blackwell q Co., g firm now consisting Of
W T. Blackwell, james +. Day, and Julian S. Carr,
of Durham " c., have brough! their dill into this
court against ". E. Dibrell and ". ". Phillips,
par1uers doing business II Richmond, Va, under
the firm name OF w E. D!brell s Co. The COM
claimants claim an exclusive right TO use the trade
mark described in their patent (No. 1929; they
charge that the defendants are using The device
imitation of their aud in infringement o: their
exclusive right; they allege that the defendants
owhere pu, their name upon their labels, ID
that they disclose BY such concealnens an intention
TO defraud the complainants and the public gencr-
ally and they charge also that by the use of the
said label and trade marx the defendants are prac-
Using fraud and deception By which the public
are deluded, and ind1ced to buy the said smoking
tobacco as and for smoking tobacco made in Dur
ham by the conplainants. They charge also that
the decree in the suit Of Blackwell vs. Armstcad
estops Wright and all others claiming under him
from using the Wright Label The bill prays for
an account and for perpetual Injunction.
The answer of defendants denies the right OF
complaiuants to the exclusive use Of the word Dur
ham in their label denies that the Wright label is
fraudulent stimulation of BlackWe's; POUNDS
their own title to it upon the title of Wright, orig
mating in $780, and claimed 10 be still subsisting
and denies any intention to defraud the complain
ants or to deceive the public The answer also
claims that Blackwell and w. T. Blackwell & Co.
are estopped from claiming the exclusive use of the
word Durham in their label by the decree Of the
Supreme Court of North Carolina in the case OF
Blackwell ys. Wright.
MIR. Solicitor General Samuel Z. Phillips and
W. A. Maury, Of Washington; Mr.. L:gh T..
Page, Of Richmond; MIR. John w. Daniel, OF
Lychburg. and Dir. Fuller, of North Carolina,
appeared for the compaipsns. and Mr.. w. D.
Browne, of Washington; Mr. Harding, Of Phil
adelphia; and MessTs Williams and Digges, OF
Lynchburg, appeared for the deleDdants
OPINION OF JUDGE HUGHES.
The following opinion was fled b. Judge
Hughes:
It ia useless to review all the points relied
upon by counsel on each side 10 their able aIgu
meus 10 the cause. shall consider only bose
questions upon which, 10 my judgment. the
case really turns.
[ shall feat deal with the objection Of estop.
pei or res judtcatd urged By each party against
the other.
10 order for one suit to constitute IN estop-
pei upon any party to aoother sul', four coudi-
tiops must CD exist VIZ: lst. There must be
an identity OF the cause of action ID Thare
must be an identity of parties to the suits. 81.
There must be an identity in the character or
qualify of the respective parties; and 4sh. There
must be an identity of the thing in controversy.
(See Smith vs.. Turner, l Hughes 375.
These conditions of identity do not exist be
of Blackwell Us. Wright, or BldchueN vs.. Arm
istead. Those cases, therefore, do not operate
as estoppe's Nor do they at all effect the one
now under consideration except so far as they
are precedents Of authority upon the principles
which were decided by them. 10 BlackwellrS.
Wright the decision was upon demurrer to the
complaint; and. in technical effect, it was only,
that Blackwell had not traced his title TO bis
trade mark by proper allegations from Green;
while, on the meri.s, the decision went only so
far as to determine that the allegations Ct the
con plalDt did not make q case OF exclusive
right to the trade mark fer the plaintiff. The
complaint there Gid not charge that Wright f
use IF the trade mark was I: fraud upon Il e
public. or pray for an injunction On that ground.
None OF these allegations can be- made Of The
com plainants' bill 10 this case.
In Blackwell rs Arnai&ea1, it is true that
the decision was upoo the principal questions
raised in the present cas-; but owins TO the
character Of the picadings it was base! upon
grounds narrower and more technical than
those upon which [ propose 10 iourd the pres
ent decision. That suit was trade mark case.
This is more, and Involves the question ct the
fraudulent use of trade mark 10 the ir Jury OF
the public 1t large, ~ we'll as OF the compIaa-
ants. Therefore, neither of the Two cases
which have been urged in cstoppel, go7eras
even as preccdents the present one, which 7