J. Walter Thompson Company

“ Consequently it is not surprising to find that the best merchandise on any retailer's shelves consists of advertised goods, and that, moreover, concerns that advertise have the most efficient sales organizations, as well as the most enlightened relations with retailers and the public.
The best trade-mark ever devised is not worth a cent until it has become known as an identifying mark of a commodity. A trade-mark has no inherent, natural value. Whatever it is worth is the result of advertising in some form, plus the desirable qualities of the goods that it represents. ”

“ A very effective trade-mark is a combination of Thomas A. Edison's portrait and signature, used with the Edison Phonograph. Edison is known by reputation to every American, and his picture and signature used in connection with a mechanical device, give it the stamp of high excellence. Imagine how much more difficult the selling effort of the Edison Phonograph Company would have been if they had called their instrument The Voltex Phonograph, for example, or some similar name. ”

“ And this must be done continuously, and that means that the combined advertising and selling effort must be permeated with a sense of stability and permanency.
The manufacturer who is investing money in advertising, year after year, feels that he has too much at stake to endanger his possibilities by putting out inferior goods. Advertising is a systematic method of creating Good Reputation—but when Reputation is only an empty form of words, with nothing tangible behind it, the chances of its lasting are rather slight. ”

“ Infringement There is no intrinsic value in a trade-mark. Its worth in dollars is a creation, and it depends upon the successful sale, or popularity, of the commodity to which the trade-mark is applied, the distribution of this commodity, the extent to which it has been advertised, and the profit that there is in it. ”

“ The trade-mark is the connecting link between the manufacturer and the ultimate consumer. By the use of trade-marks, widely advertised, manufacturers are able to build up a trade that becomes, to a great degree, independent of jobber, wholesaler, and retailer. In the public mind a trade-mark grows, in time, to mean a certain standard of quality, workmanship and material. ”

“ Money invested in advertising is as much a part of a business as if invested in buildings or machinery, and when the goods of a manufacturer have become popular, not only because of their intrinsic worth, but also by reason of the ingenious, attractive and persistent manner in which they have become advertised, the good-will thus created is entitled to protection against unfair competition. ”

“ It is a settled principle of law that a complainant must appear in a court of equity with clean hands. In other words, an essential misrepresentation of a complainant's goods, by means of his trade-mark, or on his labels, or through advertisements, is a bar against his action for relief from infringement. ”

“ It is a curious fact that so many manufacturers of proprietary articles, when confronted with some well-advertised trade-name or mark of a rival manufacturer, seem to find their inventive faculties so singularly unresponsive to their efforts to differentiate. ”

“ In cases where the business is of such a personal nature that the trade-mark or trade-name is identified in the public mind with the work of some particular individual, it is obvious that deception would be practised if the same identifying mark were used after that individual had ceased his connection with the enterprise. ”

“ The natural result is that its trade-mark is enormously valuable.
Advertising capitalizes human faith, and faith is a mental impression. It is a quality of the human mind that the most profound impressions are made by things—not by abstract ideas. Consequently, successful advertising must be tied hard and fast to a name (or trade-mark) and this trade-mark must be distinctive, and not easy to confuse with something else. It must be easy to remember, and it must identify the advertised product.
[9]
The functions of a trade-mark in advertising may be concisely stated as follows ”

“ In devising a trade-mark, any one who does not clearly keep the requirements of the law in mind is likely to fall into one or another of three classes of errors.
First, there is a natural tendency to make a trade-mark descriptive, to insert in the wording some phrase like "Best Quality", "Sold the World Over", or "Fits the Figure" or "Good for Children"—all of which are descriptive phrases. You cannot register or protect an advertisement used as a trade-mark, and such phrases are advertisements. A trade-mark is a thing to be advertised. ”

“ The lamp is the symbol of light and clearness of vision. Used in its figurative sense it is as old as civilization, for the ancients held the sign of a lamp to mean the power of imagination, illuminating the future. ”

“ A trade-mark may be legally valid without having been registered, and on the other hand, a registered mark may be proved legally invalid. Registration is prima facie evidence of validity, but it is not conclusive evidence.
Upon this subject the Supreme Court of the United States has said, "The right to adopt and use a symbol or device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, has been long recognized by the common law and the chancery courts of England and of this country. ”

“ A patentee or his assignee, by incorporating into his trade-mark the distinctive name by which a patented machine has become known to the public during the existence of the patent, cannot, after the expiration of the patent, take away from the public the right of using such name. The trade-mark cannot be made a guise for extending the monopoly, or preventing the name from becoming, with the patent, the property of the public. ”

“ No deception is practised, because the place of its manufacture is given, and it is known that bread cannot be imported from abroad for use here."
"Durham", a name applied to tobacco, has been judicially held not to be a valid trade-mark against another manufacturer located in the town of Durham. While any tobacco manufacturer in Durham has a right to call his tobacco "Durham Tobacco", he cannot imitate the label of the original Durham tobacco, or use the advertising symbol of a bull, without being liable to injunction and a suit under the law of unfair competition. ”

“ And, consequently, the expanding circle of a manufacturer's trade rippled out with exceeding slowness. A national sale of any product was the result of perhaps several generations of slowly expanding effort—and when once established, it was generally entrenched far beyond the reach of competitors or substitutes. People lived simply, and manufactured articles were few. ”

“ Infringements are generally more subtle and clever than a mere bodily adoption of a trade-mark. For instance, a piratical trade-mark may be devised so nearly like a well-known mark that it will readily deceive an unwary or careless or ignorant purchaser, and yet be so different that a show of defending it may be made. ”

“ A Valid Trade-Mark Cannot Be any Arrangement of Words or Devices Descriptive of the Goods with which They are Used, or of the Character or Quality of the Goods
The intent of the law here is to prevent the individual appropriation of general terms descriptive of a class of goods. If it were allowable to register and protect such phrases as "The Best Soap in the World", applied to a certain brand of soap, for instance, it is easy to see that all desirable superlatives and descriptive words would soon be appropriated, to the detriment of other concerns in the same line of trade. ”

“ The force of recognized distinction is tremendous, not only in literature, but in business, in science—in short, it is [8] one of the most valuable assets in every field of human endeavor.
A commodity may attain a height of distinction, in the public's estimation, that places it, among other commodities of its class, on the level attained by Shakespeare in literature. ”

“ There is hardly a doubt that it was heard and used by a vast number of people who did not receive any Kodak-buying suggestion from it.
A short, incisive phrase which does not possess this defect is "O'Sullivanize Your Walk", used in the advertising of O'Sullivan's Rubber Heels. When you have a pair of O'Sullivan's Heels put on your shoes you do not merely invest in a comfort-giving device. It is a bigger transaction than that. You begin to walk like a man who means business—you have the erect and confident bearing of success—in short, you "O'Sullivanize Your Walk". ”

“ In England, the court enjoined the use of the word "Kodak" as a name for bicycles. There is little doubt that the unauthorized use of any widely-known coined word, that has been nationally advertised, would be enjoined by the courts, even if applied to a wholly different line of merchandise.
Advertising Symbols of Railroads
A railroad cannot have a trade-mark in the true sense, inasmuch as the business of transportation produces no product to which a trade-mark can be affixed. ”

“ When a trader has sold some particular article under a selected name to such an extent as to secure registration, he has established a special business in which that trade-mark is used, and if the trade-mark becomes so valuable as to induce him to sell it, he must, as a condition of transfer under the statute, assign that special business with the trade-mark of which it was the parent. ”

“ A Portrait of a Living Individual Cannot be Registered as a Trade-Mark Unless by Consent of the Individual Whose Portrait is Used, or, if a Minor, by Consent of his Legal Guardian
This section of the law is based on the recognized right of any person to prohibit the unauthorized reproduction of his portrait for any advertising purpose. In some of the states—New York, for example—there are state laws specifically forbidding such unauthorized reproduction. ”

“ This view was not sustained by the court, which held that a close similarity of ideas was sufficient to constitute infringement.
From these, and other cases, it may be seen that a question of whether a trade-mark has been infringed is sometimes a question of psychology.
It is not necessary for the complainant to produce evidence that buyers have been actually deceived. His case is established when he can show that the marks, or symbols, or packages, or general "get-up" of the goods are sufficiently similar to establish a strong probability of deception. ”

“ It is often considered desirable to register the name of a product as a trade-mark. Consequently, in the case of new products, the selection of a trade-mark often means the selection of a name for the merchandise with which the trade-mark is to be used. ”

“ Names, descriptive in their nature, and therefore not registrable under the Act of 1905, may, nevertheless, be protected by the law of unfair competition, if the circumstances are such as clearly to indicate that a new user of the name has adopted it for the purpose of trading upon the reputation of an older or more widely known concern.
A Trade-Mark Must Not Misrepresent the Quality, Composition, Character, or Origin of the Product
A fraud cannot be legalized, and a misrepresentation of any kind, made by a trade-mark, renders it invalid. ”

“ The ownership of an advertised and favorably known trade-mark is, therefore, a valuable property right. In estimating the assets of a business, its trade-mark is included under the head of Good-Will, and Good-Will is Reputation. ”

“ Is our Registered and common-law Trade-Mark and cannot be rightfully applied except to goods of our manufacture.
If a dealer tries to sell you a camera or films, or other goods not of our manufacture, under the Kodak name, you can be sure that he has an inferior article that he is trying to market on the Kodak reputation. ”

“ To recognize the applicant's right to a trade-mark in that feature of [42] the machine, would enable the applicant to prevent the manufacture of its machines as constructed to-day, after all the patents covering it had expired, since no salable machine could be produced without infringing the trade-mark."
Trade-Marks Are Not Registrable if against Public Policy
The common good takes precedence of the rights of individuals. This is a principle of equity which has run through the fabric of Anglo-Saxon law for a thousand years. We find it developed into diverse and widely separated forms. ”

“ Defendants present the usual voluminous bundle of affidavits by persons in the trade to the effect that in their opinion no one is likely to mistake defendant's biscuit for complainant's. As has been pointed out before, it makes no difference that dealers in the article [56] are not deceived. No one expects that they will be. It is the probable experience of the consumer that the court considers. ”

“ In a business as far-reaching and as complex as that of Swift & Company, the quality of adaptability in a trade-mark is highly desirable. This trade-mark is of such a character that it may be used with appropriateness upon merchandise, stationery, packages, boxes, sides of cars, and in advertisements. ”

“ There is nothing in any of the state laws which make it safer to register by states, since California's obnoxious law has been repealed, but in some cases, where persistent infringers are at work, owners of trade-marks secure state registration as an extra precaution. ”