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Keywords

plaintiffdefendantinjunctionappealwillcopyrighttrademarkcorporation

plaintiffdefendantappealwill

Related Cases

Prestonettes, Inc., v. Coty, 264 U.S. 359, 44 S.Ct. 350, 68 L.Ed. 731

Facts

Francois Joseph de Spoturno Coty, a French citizen, brought a suit against Prestonettes, a New York corporation, to restrain the alleged unlawful use of his registered trademarks, 'Coty' and 'L'Origan', on toilet powders and perfumes. The defendant purchased Coty's genuine products, modified them, and sold them in smaller containers with labels indicating the products were independently rebottled. The District Court initially allowed some modifications, but the Circuit Court of Appeals issued a preliminary injunction against the use of the trademarks, leading to the current appeal.

Issue

Whether the plaintiff can prevent the defendant from using his trademarks on products that the defendant has modified and rebottled.

The issue is whether the plaintiff has the naked right alleged to prohibit the defendant from making even a collateral reference to the plaintiff's mark.

Rule

A trademark only grants the right to prohibit its use to protect the owner's goodwill against the sale of another's product as his own. It does not confer a right to prevent the use of the trademarked name in a truthful manner, nor does it function as a copyright or taboo against the use of descriptive terms.

A trade-mark only gives the right to prohibit the use of it so far as to protect the owner's good will against the sale of another's product as his.

Analysis

The court analyzed the nature of trademarks and concluded that the defendant had the right to modify and sell the products it purchased, as long as it did not mislead consumers about the source of the goods. The court emphasized that the existence of a trademark does not prevent truthful communication regarding the components of a product. Since the defendant's actions did not deceive the public, the court found that the plaintiff could not prohibit the defendant from using the trademark in a descriptive manner.

If the compound was worse than the constituent, it might be a misfortune to the plaintiff, but the plaintiff would have no cause of action, as the defendant was exercising the rights of ownership and only telling the truth.

Conclusion

The court reversed the decision of the Circuit Court of Appeals, allowing the defendant to continue its practices of modifying and selling the plaintiff's products with appropriate labeling.

We are of opinion that the decree of the Circuit Court of Appeals must be reversed and that that of the District Court must stand.

Who won?

The prevailing party in this case is Prestonettes, Inc. The Supreme Court ruled in favor of the defendant, stating that the plaintiff could not prevent the defendant from using the trademarked name in a truthful manner. The court emphasized that trademarks do not grant absolute control over the use of descriptive terms and that the defendant's modifications did not mislead consumers about the source of the products.

The defendant of course by virtue of its ownership had a right to compound or change what it bought, to divide either the original or the modified product, and to sell it so divided.

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