221 U.S. Argument for Appellants. see where the secret process or formula was originally protected by letters patent, but the patent has expired, Singer Company v. June, 163 U. S. 169, 185. The only distinction between the cases where no patent ever existed and where a patent has expired, is in the method by which the right is obtained-in the one case by dedication, and in the other by the acquisition of knowledge of the secret. The resulting right is the same, as was intimated by this court in the Hunyadi Case, 216 U. S. 381. Fowle v. Park, 131 U. S. 88, is distinguishable. Complainant has no exclusive right to the manufacture and sale of these pills, nor to the use of the word "Beecham" in connection therewith; that word being generic and the only designation of the product, is open to use by anyone who actually engages in the business of manufacturing and selling this commodity, care being taken to state by whom it is in fact manufactured. The false use of the word "patent" disentitles complainant to equitable relief. Holzapfel's v. Rahtjen's Co., 183 U. S. 1; Oliphant v. Salem Flouring Mills, 5 Sawyer, 128; Consolidated v. Dorflinger, Fed. Cas. No. 3129; Leather Cloth Co. v. Am. Leather Cloth Co., 11 H. L. Cas. 523; Worden v. California Fig Syrup Co., 187 U. S. 516. Cases cited in 28 Am. & Eng. Ency. of Law, 356, and Solez Cigar Co. v. Pozo, 16 Colorado, 388; Ford v. Foster, L. R. 7 Ch. Div. 611, relate only to where there was a patent which had expired; but see Cheavin v. Walker, 5 Ch. Div. 850; Preservaline Mfg. Co. v. Heller Chemical Co., 118 Fed. Rep. 103; and § 4901, Rev. Stat. The English courts have established a similar doctrine. In the case at bar, complainant relied on a secret process, and defendant used the name given to the article by the discoverer of the invention, adding, however, that it was manufactured by themselves. Cheavin v. Walker, 5 Ch. Div. 850; Pharmaceutical Society v. Piper, 1893, L. R. 1 Q. B. 686; Fulton on Patents, Trade-marks and Argument for Appellants. 221 U.S. Designs (London, 1902), 188; Consolidated v. Dorflinger, Fed. Cas. No. 3129. Complainant has been guilty of deceiving the public, and he now attempts to wash the stain of unconscionable conduct from his hands by a denial of misrepresentation. The case is unlike that of patent leather shoes, because the word "patent" as used by him is not descriptive. The misrepresentation of manufacture in England, and the continued use of the name Thomas Beecham disentitle complainant to equitable relief. A complainant who has deceived the public by a false statement in regard to the place of manufacture of his commodity is not entitled to relief in equity. Manhattan Medicine Co. v. Wood, 108 U. S. 218, 222; Worden v. California Fig Syrup Co., supra, at 528; Palmer v. Harris, 60 Pa. 156. There is certainly enough in Joseph Beecham's labels to convey to everyone who can read that the pills are still made in England, where the business was solely conducted until about 1890, particularly in view of the express statements on circulars used for years thereafter that the pills were prepared in that country. Saunion & Co., Cox's Manual, case 625; Browne on Trade-marks, 2d ed., § 71, p. 78; Solez Cigar Co. v. Pozo & Suarez, 16 Colorado, 388, 394; Wrisley v. Iowa Soap Co., 104 Fed. Rep. 548. See also Kenny v. Gillet, 70 Maryland, 574; Prince M. Co. v. Prince's Metallic Paint Co., 135 N. Y. 24; Hobbs v. Francis, 19 How. Pr. (N. Y.) 567; Millrae Co. v. Taylor, 37 Pac. Rep. 235 (Cal.); Coleman Co. v. Dannenberg Co., 103 Georgia, 784; Raymond v. Royal Baking Powder Co., 85 Fed. Rep. 231. Complainant's failure to state in his labels the change of manufacture after the assignment from Thomas Beecham is another element of his inequitable conduct. The continued use of the name of Thomas Beecham by complainant should, therefore, disentitle him to the relief 221 U.S. Argument for Appellee. sought. Paul on Trade-marks, § 318, p. 543; Stachelberg v. Ponce, 23 Fed. Rep. 430 (affirmed on other grounds, 128 U. S. 686); Symonds v. Jones, 82 Maine, 302, 315; Hegeman & Co. v. Hegeman, 8 Daly (N. Y.), 1, 22; Royal Baking Powder Co. v. Raymond, 70 Fed. Rep. 376; S. C., aff'd 85 Fed. Rep. 231. See also Seigert v. Abbott, 61 Maryland, 276; Alaska Packer's Assn. v. Alaska Imp. Co., 60 Fed. Rep. 103 (even where labels corrected after suit brought). The court has jurisdiction of the case at bar under § 6 of the act of March 3, 1891. Mr. John L. Wilkie for appellee. The appellee has not represented that his pills are manufactured under letters patent by using the words "Patent Pills." As to cases where the word "patent" was held not to indicate and did not in fact indicate that the article to which it was applied was in fact patented, see Cahn v. Gottschalk, 14 Daly, 542; Cochrane v. McNish, 1896, App. Cas. 225; Marshall v. Ross, L. R. 8 Eq. 651; Stewart v. Smithson, 1 Hilton, 119; Leather Cloth Co. v. Am. Leather Cloth Co., 11 H. L. 523; Ins. Oil Tank Co. v. Scott, 33 La. Ann. 946. The word "patent" is frequently used in combinations not intended to indicate that the article has been in fact patented. See Century Dictionary; Murray's Oxford Dictionary; Encyclopædic Dictionary; Stormonth's Dictionary; Brewer's Etymological and Pronouncing Dictionary of Difficult Words. In many statutes in this country the word "patent" as applied to medicines is used as interchangeable with "proprietary," and such use of the word has, therefore, obtained a legislative sanction. The citations are so numerous that they can at best be merely classified. In the following statutes the phrase "patent or proprietary medicines" occurs in provisions regulating their Argument for Appellee. 221 U.S. preparation and sale: Rev. Stat., § 3436; Arkansas Dig. of Statutes, § 5283; Dakota Territory Rev Stat., §§ 228, 229; Hawaii Territory Rev. Stat., § 1095; Illinois Rev. Stat., c. 91, § 30; Indiana Rev. Stat., § 5000i; Maine Rev. Stat., c. 30, § 13; Michigan Rev. Laws, § 5312; New Jersey Public Laws, 1895, p. 365, § 8; North Dakota Rev. Stat., §7281; Ohio Rev. Stat., § 4405; Tennessee Code, § 3635; Vermont Rev. Stat., § 4663; Washington Codes and Statutes, § 2877; Wyoming Rev. Stat., § 2222. In the following three statutes the phrase is "proprietary and patent medicines." Colorado Rev. Stat., § 4909; Florida Rev. Stat., § 814; Oregon Codes and Statutes, 3811. See also Massachusetts Rev. Stat., c. 76, § 23; Utah Rev. Stat., § 1725; Kentucky Rev. Stat., § 2631; Delaware, c. 36, Vol. 18, § 1; South Carolina Civil Code, 1126; Louisiana Laws of 1888, act 66, p. 74, § 3; Pennsylvania Public Laws, 189, §6 (1887, May 24); Rhode Island Rev. Stat., c. 152, § 8; South Dakota Political Code, § 281; West Virginia Code, c. 150, § 7. For legal construction see State v. Donaldson, 41 Minnesota, 74; Nordyke v. Kehlor, 155 Missouri, 643, 653; Palmer v. McCormick, 30 Fed. Rep. 82. The appellee has not been guilty of any false representations either as to the place of manufacture of his product or the person by whom the same is manufactured. Even if a statement as to place of manufacture were misleading, it has been abandoned for seventeen years and cannot be made the basis of successful piracy of the name "Beecham." The discontinuance of a misstatement when made before suit brought relieves the complainant of the effect of the rule. Moxie Nerve & Food Co. v. Modox Co., 153 Fed. Rep. 487; Johnson & Johnson v. Sedbury & Johnson (N. J.), 67 Atl. Rep. 36; Symonds v. Jones, 82 Maine, 302. As to the alleged misstatement that the pills are prepared only and sold wholesale by the proprietor, Thomas 221 U.S. Argument for Appellee. Beecham, Lancashire, England, all of the forms used since 1902 are necessarily objectionable and under the authorities cited appellant cannot rake up the past to find in a long discontinued user, evidence of untrue statements. See "Moxie" and other cases, supra. Also the alleged misstatement is that the pills are specially packed for the United States of America, being covered with a quickly soluble, pleasant coating, completely disguising the taste of the pill. This was used while the pills were both packed and made in the United States, and the whole question is whether or not the clause is false, not by virtue of what it says, but of what it suggests. Wrisley Co. v. Iowa Soap Co., 104 Fed. Rep. 548, does not apply. The words here do not call for the interpretation that the pills are made in England, although packed for the United States. They are equally true wherever the pills are made. See Tarrant & Co. v. Johann Hoff, 76 Fed. Rep. 959; Clark Thread Co. v. Armitage, 74 Fed. Rep. 936; Société Anonyme v. Western Distilling Co., 43 Fed. Rep. 416; Siegert v. Gandolfi, 149 Fed. Rep. 100; Gluckman v. Strauch, 99 App. Div. 361; aff'd 186 N. Y. 560. As to alleged misrepresentations as to the persons by whom the pills are manufactured, there was no misrepresentation. Manhattan Medicine Co. v. Wood, 108 U. S. 218. The real proprietor of the trade-name used in connection with these pills has never been the person of Thomas Beecham as distinguished from Joseph, or any other person, but has always been and is "Thomas Beecham of St. Helens, England," a partnership formerly composed of both Thomas and Joseph to which the latter succeeded as sole surviving partner. The appellee is lawfully continuing the business under the old name, as he has done since 1895, and the statement that the pills were manufactured and sold "by the proprietor Thomas Beecham, St. Helens, England," was strictly speaking as accurate |