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The validity of a trademark does not, indeed, rigidly depend upon its meaning only the differential between a genus, defined by the kind of goods, and a species, defined by that kind when emanating from the owner. When it means the owner as well as the kind, it will be entitled to a qualified protection; when, as here among the trade, there is another current word, it may be entitled to an absolute protection, patent or not. For a patent gives the public no greater rights than it has without patent. In fact, the public may be always practice the invention, except as the monopoly interferes, and it gets that right independently of the patent. But when, as here among consumers, a mark does not give even an intimation of the owner, there is no room at all for any protection. After all presumptions and other procedural advantages have been weighed, the owner must show that his mark means him, else he cannot prevent others from using it. There is no invention in the word, qua word, which he can protect.
Plaintiff drug company owned patent on the chemical compound "acetyl salicylic acid," which it marketed under the trademark "Aspirin." From 1899, plaintiff flooded the mails with assertions that "Aspirin" meant its own manufacture. Manufacturing chemists, physicians, and retail druggists recognized that "Aspirin" meant plaintiff's product, while the phrase "acetyl salicylic acid" indicated the generic name for the product. In 1904, various manufacturers began to market tablets of the drug labeled "Aspirin" directly to consumers. A couple years before its patent expired in 1917, plaintiff attempted to reeducate the public that the term "Aspirin" had proprietary meaning. Alleging trademark infringement and unfair trade, plaintiff sued defendant drug company.
Were defendants guilty of trademark infringement and unfair trade?
The court enjoined defendant from directly selling "acetyl salicylic acid" under plaintiff's trademark to manufacturing chemists, physicians, and retail druggists. However, since the word "Aspirin" had already passed into public domain, defendant could market "acetyl salicylic acid" as "Aspirin" without qualification to public. The court also rejected plaintiff's unfair trade claim, except for defendant's use of the adjective "genuine" before "Aspirin."