An illustration of this may be found in the case of a trademark for a certain medicine; the words °Candy Cathartic' are certainly de scriptive, as fully descriptive as any words well can be; but they had been used to so large an extent and were so thoroughly advertised in connection with the medicine in question that it was shown that many purchasers in-* stead of calling for the trade-marked name of the article would ask for "Candy Cathar tic"; and, vice-versa, druggists handling the article so associated and identified the sec ondary phrase or title, "Candy Cathartic,' with the trade-mark proper that when "Candy Ca thartic* was called for a box of the tablets would be promptly handed out. The court ac cordingly protected such descriptive phrase against use by a competing firm.
°Camel's Hair,* a purely descriptive term for belting, was protected after it had acquired a secondary meaning on the market, as apply ing to a particular make of belting. Likewise, °Stone was upheld as a designation for ale, the name Stone being the name of the village in which the brewery was located, and which through such use had come to designate a par ticular product.
Likewise, a geographical name may ac quire a secondary meaning, especially against infringers who do not reside in the same geo graphical territory or locality; as witness the fact that *Saint Louis' was protected as a mark for lager beer against brewers using the same title, but not doing business in the city of Saint Louis. The history of the *Dur ham* tobacco case may also be profitably con sidered, where Blackwell, the proprietor of *Durham* smoking tobacco, failed in his at tempt to restrain another tobacco manufacturer of Durham from using such title in connection with tobacco, whereat certain Virginia tobacco manufacturers outside of Durham, becoming emboldened by the defeat of the Blackwell con cern, began to use the title °Durham* in con nection with their tobacco, but were promptly enjoined from so doing by the courts.
It by no means follows, however, that the defense of such trade-marks by the courts estab lishes the wisdom of their selection as such marks. On the contrary, they are to be avoided as leading to litigation more or less annoying and expensive. In the selection of a trade mark every precaution should be taken against personal, geographic and descriptive names. and equally against such marks as in appearance or in sound as spoken shall simulate trade marks already owned by others. An error in these respects, even though it escapes legal prosecUtion, may result in the partial or total waste of money spent in advertising, which, indeed, may redound as well to the advantage of a competitor as to one's self. Another point
to be remembered in devising or selecting a trade-mark is that it should be simple and easily recognized. Few customers give keen and close observation to goods purchased, and the ultimate value of the goodwill of a manu facturing business may be largely dependent upon the instant and unqualified recognition of favorite brands.
The Doctrine of "Clean Hands."—Another and most important matter to be considered by the owner of trade-marks is in their cor rect use of their trade-mark.
The usual protection and relief sought against infringement and the invasion of trade mark property is by means of a suit in equity brought to restrain the infringer from continu ing to imitate or use the infringing mark, and for an accounting for damages; but as such a proceeding in equity is governed by well settled principles of equity, one defense which has been very often successfully urged and raised to defeat any action on the part of the owner of a trade-mark is what is known as the defense of 'unclean hands.* It is a well-settled principle of equity that ehe who enters a cOUrt of equity, seeking equity, must do equity, and come with clean hands" In other words, a party will not be heard to complain of the wrongful acts of another as against himself, if that same party has been guilty of similar wrongful acts of fraud, misrepresentation or deceit against the pur chasing public.
The United States Supreme Court in the celebrated and leading case of Manhattan Medicine Company against Wood, many years ago, laid down the doctrine that a party would find no relief in a court of equity as against an alleged wrongdoer if he himself were guilty of wrongdoing in using the mark to deceive the purchasing public.
Having this important fact in mind, it be hooves trade-mark owners and users to be very careful in the use of their marks, labels and packages, and the following simple rules may well be observed for their protection and benefit.
No misstatements concerning the origin, quality or quantity of the articles to which the mark is attached should be used in connection with the labels, packages or accessories of the goods. So, also, if a trade-mark was not orig inally adopted by a party but was acquired by transfer or assignment, such fact must be dis tinctly announced on the labels or packages. The courts, however, will not countenance the trans fer or assignment of a trade-mark except as a part of the transfer of the business which it has represented. The business cannot be trans ferred to one party and the trade-mark to an other.