desires to express to the public the same facts. Nor does the coupling together, in a new combination, of words which before that had been used apart, and had entered into the common scientific vocabulary, give a right to the exclusive use of such combination, where it is indicative, not of origin, maker, use, and ownership alone, but also of quality and other characteristics."

The sole question for decision is whether or | not the words "acid phosphate," as applied to complainant's preparation, are words of that class which the law will protect as a trademark. This narrow question, of great importance to the complainant, has been most thoroughly and ably presented by counsel, and it resolves itself into a question of fact; for as to the principles of law there is no contest. The right of the complainants to protection in the trademark In the case then before the New York Court claimed by them depends upon whether or not of Appeals, the plaintiffs, Caswell, Mack, & "acid phosphate" is an arbitrary name given by Co., had prepared a medicine to which they them to a preparation to which it had never had given the name of "Ferro-Phosphorated before been applied, and not a description of Elixir of Calisaya Bark." The plaintiff's were it; for, if it is a reasonably sufficient descrip- the first to invent and use the combined word tion of the character, kind, and quality of the "ferro-phosphorated," and gave it to the prething to which it has been applied, then it is a paration to distinguish it as the preparation well-settled rule of law that no one can make made by themselves, and also to announce that an exclusive appropriation of such a name. there was iron and phosphorus in it. This it The phrase "acid phosphate" is common in was decided they could not do to the exclusion chemistry, and constantly found in treatises of other persons; for although the combined and text-books. It was not invented by the word was their own invention, and did, as their complainants, but had been in use some 20 or trademark, indicate the origin and maker of 30 years before they made use of it. Any com- the article, it did more; and, by words which pound of any phosphoric acid with a base may were of common significance, it indicated that appropriately be called a phosphate; and if the ingredients iron and phosphorus were comthere is present so much acid that it could satu- bined with the calisaya bark, and therefore it rate a greater quantity of the base, it is proper- | could not be protected as a trademark. This ly called an "acid phosphate," to distinguish it case only applies the recognized ruling in many from a basic phosphate," in which the base pre-other cases. ponderates, or a "neutral phosphate," in which It seems impossible to maintain that the neither is in excess,-all three of these terms words "acid phosphate" are not, in this sense, being perfectly well known in chemistry. It descriptive words, indicative of the composiis not to be gainsaid that, as a complete and ex- tion and characteristics of Horsford's preparahaustive indication of all that the preparation tion. There is evidence in what has heretocontains, the phrase "acid phosphate" is inex- fore been done by the complainant, and by act. It does not indicate that it is a solution, Horsford himself, which tends strongly to supwhich it is, while a proper acid phosphate is a port this conclusion. The complainant's tradesolid until it is dissolved. It does not indicate mark, as originally registered in the United the character of the acid, and it does not indi-States patent-office in the year 1877, states that cate what base or bases have been used. But this criticism is true of most words or phrases in common use. "Fresh bread" is one of the commonest phrases, and yet it does not indicate with precision whether the bread is made of wheat or rye, of bolted or unbolted flour, whether or not it contains salt, or with what character of yeast it is made. In fact, it means a somewhat different thing in every community in which it is used, as travelers are apt to find out. The true test, it appears to me, must be, not whether the words are exhaustively descriptive of the article designated, but whether in themselves, and as they are commonly used by those who understand their meaning, they are reasonably indicative and descriptive of the thing intended. If they are thus reasonably descriptive, and not arbitrary, they cannot be appropriated from general use and become the exclusive property of anyone. This rule is clearly explained and applied by Judge Folger, speaking for the Court of Appeals of New York in the case of Caswell v. Davis, 58 N. Y. 223. He says: "Nor is the question whether the name used as a trademark will convey an exact notion of how to compound an article, so that one reading it will be able to make a like article. If the necessary effect is to inform the reader or hearer of the general characteristics and composition of the thing, it is a name which may be used with equal truth by anyone who has made and offers for sale a thing compounded of the same ingredients, and who

the complainant "has adopted for its use a trademark for acid phosphate (a chemical preparation used for various purposes). The trademark consists essentially of the word-symbol 'Horsford,' which is used in conjunction with the name of the article to which it is applied, and in the form, namely, 'Horsford's Acid Phosphate,' as shown with the accompanying facsimile. . . . The particular goods to which this trademark is appropriated is acid phosphate." Subsequently, about eight years later, and after the beginning of the difficulty which has led to this litigation, the complainants registered, in 1885, their trademark as simply "Acid Phosphate;" and they then described the article to which it was applied, in general terms, as a medicinal preparation for disorders of the digestive organs and nervous system, and a condiment and ingredient for a beverage. It seems to me that when, in the specification of the first registration, the complainant declared that its trademark was the word "Horsford," and then, in compliance with the Act of Congress requiring that they should state "the class of merchandise and the particular description of goods comprised in such class by which the trademark has been or is intended to be appropriated," it stated simply that the particular goods was acid phos phate, they conceded that acid phosphate was a descriptive name sufficiently describing, not a class of goods, but a particular description of goods. There is evidence also that Prof. Hors

It seems to me that it is fairly to be inferred from this specification of Prof. Horsford, and it is distinctly stated in other portions of the evidence, that the particular base used in obtaining the phosphate to be used in this pre-ation as a trademark. paration is not deemed of substantial importance. It would appear that it is the phosphoric acid, presented to the stomach in that form in which it is found in an acid phosphate which has been dissolved, which is supposed to have the therapeutic effect attributed to the prepara

UNITED STATES CIRCUIT COURT, SOUTH. DIST. NEW YORK,

2. It is not requisite, under the Act of 1839, that prior sale or use which will defeat a patent shall have been with the applicant's consent or allowance, and allegation or proof of such consent or allowance is not required from a

defendant in a suit for an infringement. 4. The two years prior to which a sale or use will defeat a patent are to be calculated from the date of filing the application in the pa

tent office, and not from the date of its execu

tion.

4. The use and sale of an invention prior to the application for a patent therefor, at the request of the applicant for purposes of experiment and perfecting the invention, do not invalidate the patent, under the Acts of Congress of 1836 and 1839.

& Letters patent No. 42,920 for an improvement in steam fire-engines, consisting of a relief valve, declared invalid, and a bill for infringement thereof dismissed, by reason of a sale of an engine embodying such improvement, by the company which had been employed to manufacture the improved appliance by the inventor by way of experiment more than two years prior to the filing of the application for the patent, such sale not having been fraudulent, surreptitious, or piratical.

(July 10, 1888.)

"because that the said alleged invention, with the knowledge, acquiescence, and consent of said inventor," had been in public use and on sale in this country for more than two years before the application for the patent, among other defenses. The answer was traversed, and proofs were taken, and the cause was heard in chief at February Term, 1881. On the hearing, the Amoskeag Manufacturing Company appeared to have put the invention into other steam fire-engines made and sold more than two years prior to the application for the patent; but without the consent, acquiescence, allowance, or knowledge of the applicant.

The patent was granted under the provisions, in this respect, of the Acts of 1836 and 1839. The Act of 1836 cut off all right to a patent if the invention had been in public use or on sale, with the applicant's consent or allowance, prior to the application. The Act of 1839 gave to makers and purchasers of newly invented machines, manufactures, or compositions of matter, before the application for a patent, the right to use, and to sell for use, the specific things without liability; but provided that such purchase, sale, or use should not invalidate the patent unless it had been for more than two years prior to the application. This was un

QILL in equity to restrain the infringement derstood to mean that if the purchase, sale, or

dismissed.

The facts are stated in the opinion.
Messrs. Roger M. Sherman, Marcus P.
Norton, Harvey D. Hadlock, William
E. Hagan, and Horace G. Wood for
plaintiff.

Mr. Frederic H. Betts for defendant.
Wheeler, J., delivered the opinion of the

court:

This suit is brought upon letters patent No. 42,920 granted to James Knibbs for an improvement in steam fire-engines, consisting of a relief valve. He was the engineer of a steam fire-engine called the "Arba Reade," of the city of Troy, and made the invention, and applied it to that engine in 1860, and it was used on that engine as occasion required afterwards. It operated well, but he thought that experience might suggest improvements. In 1861 the city of Troy ordered another engine, to be called the "J. C. Osgood," to be built for its use by the Amoskeag Manufacturing Company, of Manchester, N. H., and at the request of Knibbs this invention was put into it in a somewhat modified form, for which he furnished some rough drawings. That engine was completed and sent to Troy, where it arrived on January 14, 1862, and it was put to use January 27, 1862. The invention operated well on that engine, but he made some further changes up to February, 1863, when he became satisfied that the invention could not be further improved, and consulted counsel about applying for a patent for it. On April 27, 1864, an application was made and executed; on May 13 it was filed in the Patent Office, and on May 24, 1864, the patent was granted. It was applied for and granted for the invention as first made, and did not cover any improvement made afterwards. This bill was brought for infringement of the patent in October, 1877. The answer alleged that the patent was void

1836, would defeat a patent if it took place before the application, it should not have that effect unless it took place two years before the application. This would require that it should be a public use or a being on sale, with the applicant's consent or allowance, two years before the application. On this construction of the statutes the issue formed by the traverse of this part of the answer, as well as the other decisive issues in the case, was found for the plaintiff, and an accounting was ordered (9 Fed. Rep. 500), which has been entered upon, and proceeded with at great expense, and is far from being completed.

-on mo

Since the decision in Andrews v. Hovey, 123 U. S. 267 (31 L. ed. 160); and 124 U. S. 694 (31 L. ed. 557), holding that the applicant's consent or allowance is not requisite,-o tion of the defendant a rehearing has been had. The orator insists that as the answer sets up public use and being on sale with the knowledge, consent, and acquiescence of the inventor, the whole must be proved. The defendant claims that only enough of the answer to make out a good defense need be proved, but asks leave to amend if more is held to be necessary. If what is said about knowledge, consent, and acquiescence should be stricken out, a good answer would be left. It is wholly immaterial, and mere surplusage, although it appears to have been regarded as quite material when the answer was drawn. Mere surplusage in pleading may be wholly disregarded in evidence, both at common law and in equity. The answer and traverse appear to well raise the question now made. The evidence is all in, without objection on this account. This would be no waiver, however; for the evidence as to sale and use without consent would be equally admissible under either form of answer.

The orator insists, further, that the former finding in this respect, as stated in the opinion

then filed, is not borne out by the evidence. | two years shall not be held to defeat the pa 20 Blatchf. 67, 9 Fed. Rep. 500. In the view tent. The wells put down by others, which deof the law then taken, this would not be defeated the driven-well patent in Andrews v. cisive, and it might be considered with less Hovey, were individual wells put down from pains than it would otherwise receive. It has time to time. There were several of them, but now been reconsidered upon further argument. no stress was laid upon the number. Mr. Jus The evidence tends to show that several en- tice Blatchford said, in delivering the opinion gines containing this invention, besides the J. of the court (124 U. S. 709, 31 L. ed. 561): C. Osgood, were made and sold by the Amos-"The first clause of the seventh section of the keag Manufacturing Company after the inven- Act of 1839 gave to the persons for whom tion was made known to them, and before May those wells were constructed a right to use 13, 1862, the limit of the two years prior to the them without the consent of Green, and the application. Some doubt, and perhaps a rea- second clause of that section had the effect to sonable and fair doubt, is raised about all of make Green's patent invalid, because of the use those except the Governor Hill, sold and for- of the invention by those persons more than warded to the city of Concord, N. H., April two years before he applied for his patent." 28, 1862. There is no evidence to which at- The statute makes no distinction upon the tention has been called about any use of this source or means of obtaining knowledge by engine further than what may be implied from which the thing is constructed more than two its purchase by that city. It was probably years prior to the application. In Kendall ▼. bought for the use for which cities ordinarily Winsor, 62 U. S. 21 How. 322 (16 L. ed. 165), want such engines. Such use is so occasional the question arose between the inventor and that none may have been had prior to May 13 constructors of machines prior to the applicaafter its purchase. The sale only is to be con- tion by means of knowledge of the invention sidered. That was not till within the two surreptitiously obtained, and it seems to have years before the application was executed. been held that the Act of 1839 gave no right to The statute requires that it be more than two use machines so got up. Under the construcyears prior to the application, to defeat the tion now put upon the statute, if the right to patent. The orator argues that a sale not use the machines had existed, their use would shown to have been two years prior to the exe- appear to have been sufficient to overthrow the cution and completion of the application as an patent. This distinction between an honest instrument is not shown to have been two and a piratical construction, purchase, or use, years prior to it. But the application is to be more than two years before the application, as for a patent, and must be made to the Patent affecting the validity of the patent, appears to Office, to be there acted upon; and such an ap- be recognized in Andrews v. Hovey in referring plication cannot justly be said to be so made to to Kendall v. Winsor. Mr. Justice Blatchford, that office until that office is reached, and that as to that, said (124 U. S. 708, 31 L. ed. 560): cannot be done until the application is filed, or "It may well be that a fraudulent, surreptiotherwise made there. This sale of the Gov- tious, and piratical purchase or construction or eruor Hill is therefore deemed to have been use of an invention prior to the application for two years prior to the application. The sale the patent would not affect the right of the and use of the J. C. Osgood were two years patentee under either clause of the seventh secprior to the application, beyond any question tion." or suggestion; but that sale and use were so had at the request of the inventor, for the purposes of experiment, that they were not before, and are not now, understood to be within the statutes. They were in reality for and by the inventor himself for the purposes of perfecting the invention, to which the statutes in this respect do not refer. Elizabeth v. American Nicholson Pave. Co. 97 U. S. 126 (24 L. ed. 1000). This question must turn, therefore, upon the sale of the Governor Hill alone. The Act of 1839 says nothing about public use or being on sale. It refers to individual manufacture, and use, and sale for use, of specific things, and eaves the patent therefrom, except "that such purchase, sale, or prior use has been for more than two years prior to such application for a patent." Neither the public character of the use, nor the being on sale in the sense of being kept ready for sale, of the Act of 1836, is carried into the Act of 1839, any more than the consent and allowance of the applicant are. The construction established by Andrews v. Hovey seems to be that the Act of 1839, by declaring that no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the application, except on proof that such purchase, sale, or prior use has been for more than two years prior to the application, impliedly declares that the same within the

The orator argues that the construction and sale of the Governor Hill, so far as this invention was included, was of that character. But there was no injunction of secrecy on the part of the inventor, nor intimation that he intended to apply for a patent, so far as has been made to appear, when he made known the invention to the Amoskeag Manufacturing Company, and requested that it be put into the J. C. Osgood. Neither did he give any leave to apply it to other engines. He did not abandon his invention to the public; but the Governor Hill, embodying it, got built and sold, without anything which can be called fraudulent, surreptitious, or piratical with any good reason. Nothing about this appears to be any more dishonest than the putting in of the wells without the knowledge of the inventor, in Andrews v. Hovey. The sale was single, but was as extensive as the use that defeated the patent in Egbert v. Lippmann, 15 Blatchf. 295, 104 U. S. 333 (26 L. ed. 755).

A further suggestion has been made that the Act of 1839 does not mention, and therefore does not cover, improvements upon machines, manufactures, or compositions of matter, but only those wholly new. A machine with an improvement about it would, however, be an improved machine, and would appear to be included in the general term "machine," as used

in this statute. In Andrews v. Hovey the point | dence was taken, and is in the record, and was made that the statute did not cover a patent for a process, because there was no word apt to include it; but that point was overruled. Upon the whole, in view of the construction put upon the statutes-on which the validity of this patent depends-in Andrews v. Hovey, the patent is invalid, and the bill should be now dismissed. Spring v. Machine Co. 13 Fed. Rep. 446; Drill Co. v. Machine Co. 22 Blatchf. 298, 21 Fed. Rep. 74; Wooster v. Handy, 22 Blatchf. 307, 21 Fed. Rep. 51; Boring Co. v. Sheldon, 23 Blatchf. 286, 24 Fed. Rep. 374, 25 Fed. Rep. 768, 28 Fed. Rep. 217.

must have its due weight. It establishes this fact. Neither does there appear to be any question left open about the law. This point was fully decided in Andrews v. Hovey, in the circuit court (16 Fed. Rep. 387), and affirmed by the supreme court on appeal (123 U. S. 267, 31 L. ed. 160). The decision against the patent has been adbered to on rehearing, on a most elaborate argument and comprehensive judgment. 124 U. S. 694 (31 L. ed. 557). Nothing remains but to follow that decision. Still, as the principles of that decision may have been misapplied to this case, and a different result may be finally reached, it seems proper to save the expenses of the accounting already incurred to that end, so far as may be. For that purpose the decree now made is to be upon the express condition that it is without prejudice to the use of the testimony before any master appointed to take an account in the cause, in case such account shall be finally decreed.

The plaintiff suggests that in any view the decree ought to stand until the accounting is completed, to save the expense of what has been done in case the decree should be finally upheld. If the expense of completing the accounting would be comparatively slight, or the law or the fact was in doubt, that course would seem to be prudent. There is no question, however, about the fact of this sale of the Governor Hill. It is proved by the testimony of both parties. There is contradiction about all the others, but as to this there is none. This does not seem to have been regarded as material when the testimony was taken; but the evi- | may be decreed.

Let there be a decree dismissing the bill of complaint, with costs, but without prejudice to the right to use the testimony and evidence taken on the accounting on any other accounting which

It is one of the fundamental rights and privileges of every American citizen to adopt and follow such lawful industrial pursuits, not injurious to the community, as he may see fit.

32 Alb. L. J. 6; People v. Marx, 99 N. Y. 377; Re Jacobs, 98 N. Y. 99.

THE HE first case is an indictment, under chapter The right of acquiring, possessing, and pro68 of the Laws of 1885, for selling oleomar-tecting property is asserted in the Bill of Rights garine, an article made in imitation of butter, as a natural right. It is not established by any

NOTE.-Police power of State. The police power of the State embraces its whole internal affairs and its civil and criminal polity. Prigg v. Pennsylvanía, 41 U. S. 16 Pet. 627 (10 L. ed. 1093); Com. v. Suberg, 1 Cr. L. Mag. 779, 94 Pa. 85; Harlan v. People, 1 Doug. (Mich.) 210; Dashing v. State, 78 Ind. 357; Hammond y.State, 14 Md. 149. It extends to the protection of the lives, health, and property of the citizens, and to the preservation of good order and public morals. People v. Phippin (Mich.) 14 West. Rep. 247; Boston Beer Co. v. Massachusetts, 97 U. S. 32 (24 L. ed. 991); Woodruff v. Rochester & P. R. Co. (N. Y.) 10 Cent. Rep. 442; Thorpe v. Rutland & B. R. Co. 27 Vt. 149; Ex parte Shrader, 33 Cal. 279; Philadelphia, W. & B. R. Co. v. Bowers, 4 Houst. 506; Toledo, W. & W. R. Co. v. Jacksonville, 67 Ill. 37; Davis v. Central R. & B. Co. 17 Ga. 323. The third clause of Fed. Const. art. 1, § 8, relating to the congressional power to regulate commerce, does not interfere with the right of the States to enact health laws. Wiggins Ferry Co. v. East St. Louis, 107 U. S. 365 (27 L. ed. 419); Gibbons v. Ogden, 22 U. S. 9 Wheat. 1 (6 L. ed. 23); New York v. Miln, 36 U. S. 11 Pet. 102 (9 L. ed. 648); Conway v. Taylor, 66 U. S. 1 Black, 633 (17 L. ed. 202); State v. Fosdick, 21 La. Ann.

See also 3 L. R. A. 449; 8 L. R. A.

256. It is within the province of the Legislature to determine the exigency calling for the exercise of police powers, and of the courts to decide the proper subjects of its exercise. Lake View v. Rose Hill Cemetery Co. 70 Ill. 191; Daniels v. Hilgard, 77 Ill. 640.

Regulation of the use of private property. The Legislature is the exclusive judge of the propriety of interference in the use of private property, within the scope of its legislative power. Munn v. Illinois, 94 U. S. 113 (24 L. ed. 77). All property in the Commonwealth is held subject to those general regulations which are necessary to the common good and general welfare. Com. v. Alger, 7 Cush. 84. Private interests are subservient to the general interests of the community. Slaughter House Cases, 83 U. S. 16 Wall. 62 (21 L. ed. 404); Com. v. Alger, 7 Cush. 53. States may regulate the carrying on of business within their limits. Higgins v. Rinker, 47 Tex. 381. And State laws may regulate the same for the protection of markets upon the sale of commodities unfit for commerce. State v. Fosdick, 21 La. Ann. 256; New Haven & E. H. Tollbridge Co. v. Bunnel, 4 Conn. 59; Northwestern Fertilizing Co. v. Hyde Park, 97 U. S. 669 (24 L. ed. 1039). Inspec

551; 11 L. R. A. 355; 35 L. R. A. 844.