The Federal Reporter with Key-Number Annotations, Volume 250: Cases Argued and Determined in the Circuit Courts of Appeals and District Courts of the United States, August-October, 1918. Page: 964
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250 FEDERAL REPORTER
correct, because prima facie he might use the common speech in any
context. The courts were necessarily in fact compromising between
two conflicting rights, of which one had no substantial value.
[2] It is m cases where the connotation of origin arises, not from
verbal description, but only from the appearance of the article, that the
trouble arises in application, because the appearance must in some
way be changed, or the article must be wrapped or marked. Thus has
arisen the principle often applied in this court that minor, or "non-
functional," changes in appearance may be required, so long as the
substantial elements are left in the public domain. Enterprise Mfg.
Co. v. Landers, 131 Fed. 240, 65 C. C. A. 587; Yale & Towne Mfg.
Co. v. Alder, 154 Fed. 37, 83 C. C. A. 149. In the same class stand
cases like Fox v. Hathaway, 199 Mass. 99, 85 N. E. 417, 24 L. R. A.
(N. S.) 900; Fox v. Glynn, 191 Mass. 344, 78 N. E. 89, 9 L. R.
A. (N. S.) 1096, 114 Am. St. Rep. 619; Coca Cola Co. v. Gay-Ola Co.,
200 Fed. 720, 119 C. C. A. 164; Walker v. Grubman (D. C.) 222 Fed.
478. Indeed, this principle has been pressed very far in this court.
Rushmore v. Manhattan Screw & Stamping Co., 163 Fed. 939, 90 C.
C. A. 299, 19 L. R. A. (N. S.) 269; Lovell-McConnell Mfg. Co. v.
American Ever Ready Co., 195 Fed. 931, 115 C. C. A. 619; Rush-
more v. Badger Brass Mfg. Co., 198 Fed. 379, 117 C. C. A. 255. The
first Rushmore Case was recognized at the time as trenching hard
upon the other limit in application, which is that where the "secon-
dary meaning" is bound up in elements of the appearance which can-
not be changed without cutting off the defendant's substantial right
to make and sell that kind of goods the plaintiff must suffer the re-
sulting confusion. These are the converse of the "nonfunctional"
cases. Daniel v. Electric Hose & Rubber Co., 231 Fed. 827, 145 C.
C. A. 647; Marvel Co. v. Pearl, 133 Fed. 160, 66 C. C. A. 226; Dia-
mond Expansion Bolt Co. v. U. S. Expansion Bolt Co., 177 App. Div.
554, 164 N. Y. Supp. 433; Fairbanks v. Jacobus, 14 Blatchf. 337, Fed.
Cas. No. 4,608; Meide v. Wallace, 135 Fed. 346, 68 C. C. A. 16;
Globe-Wernicke Co. v. Fred Macey Co., 119 Fed. 696, 56 C. C. A. 304;
Flagg Mfg. Co. v. Holway, 178 Mass. 83, 59 N. E. 667. Under the
guise of protecting against unfair competition, we must be jealous not
to create perpetual monopolies.
We do not see any possible change in the appearance of the bis-
cuit itself which would be of enough service to the plaintiff to justi-
fy its imposition upon the defendant. Concededly, variation could be
enforced only in its form, color, or size. As to form, the plaintiff ap-
pears to us finally concluded by its own design patent. Whether or
not the evidence might have allowed us to prescribe some variation in
the form, had that form been only the result of the plaintiff's original
adoption, we do not say. Fox v. Hathaway. supra, suggests that we
might have found a way out. But the plaintiff's formal dedication of
the design is conclusive reason against any injunction based upon the
exclusive right to that form, however necessary the plaintiff may find
it for its protection. As to color, also, we feel ourselves limited, be-
cause, while the shade of brown depends upon the baking, the plain-
tiff's own biscuits vary within appreciable limits, and to require the
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The Federal Reporter with Key-Number Annotations, Volume 250: Cases Argued and Determined in the Circuit Courts of Appeals and District Courts of the United States, August-October, 1918., legislative document, 1918; Saint Paul, Minnesota. (https://digital.library.unt.edu/ark:/67531/metadc38821/m1/979/: accessed April 24, 2024), University of North Texas Libraries, UNT Digital Library, https://digital.library.unt.edu; crediting UNT Libraries Government Documents Department.