99 F. 971 | U.S. Circuit Court for the District of Western Missouri | 1900
This is a bill of complaint to enjoin the defendant from the use of the complainants-’ alleged trade-mark, and for an accounting. The words claimed as a trade-mark symbol are “Steel Shod/-’ used in connection with the representation of an anvil, stamped on the; shank of shoes manufactured by the complainants since 1891. In considering this case, regard must be had to the fact that the whole allegations of the bill in respect of the alleged infringement are lodged against the Emery-Bird-Thayer Dry-Goods Company, a corporation created under the laws of the state of Missouri. It is, therefore, its acts and conduct which are the subjects of inquiry and determination. The evidence shows that this corporation was organized in ^November, 1895. The complainants have taken evidence and based much of their argument toucliing ihings done by the co-partnership firm of Bullene, Moore, Emery &'Co., which existed for several years prior to January, 1895, and the co-partnership firm of Emery, Bird, Thayer & Co., which came into existence perhaps in January, 1895, as the successors of Bullene, Moore, Emery & Co. This last concern went out of existence on the creation of said corporation. As the corporation is a distinct legal entity, in the absence of any averment in the bill and evidence showing a devolution of the
It appears that one Robinson had been in the employ of said co-partnership firms as their agent, in charge of their shoe department, in a department store, and that he attended to making all the purchases of 'shoes for them, and that he had sustained the same relation ’to the corporation since its organization. The evidence also shows that not all of the persons who composed said co-partnerships are directors or stockholders in the defendant corporation. I do not under- stand the law to be that any information or knowledge which said '.Robinson may have acquired in his capacity as agent for said co-partnerships is imputable to the defendant corporation. The foundation of the doctrine that knowledge of the agent is chargeable to the principal rests upon the proposition that such knowledge comes to him while acting within the line of his agency for the given principal; and, as it is his duty to advise his principal of facts, and information pertaining to his office as agent, the law presumes that he performs this duty, and therefore the further presumption arises that his principal obtains such information. Story, Ag. par. 140; Bank v. Lovitt, 114 Mo. 525, 21 S. W. 825. With the dissolution of the co-partnership, .the office of Robinson as its agent ceased. When the corporation -was created this legal entity became a distinct existence. Any knowledge or notice which an agent may have received while acting for another party or association, or which any individual member of the corporation may have obtained prior to the constitution of the corporate body, most certainly would not, as matter of law, by implication, be carried over and imputed to the corporation, simply because one or more of the members of a previously existing concern may have become officers or stockholders of the corporation, nor because such agent afterwards became an agent for the corporation. Were the law otherwise, most serious and unjust consequences might be brought upon the corporate body. “The notice must be given to the agent while the agency exists, and it must refer to business which comes within the scope of his authority.” Anderson v. Volmer, 83 Mo. 406. See, also, National Waterworks Co. v. City of Kansas City (C. C.) 78 Fed. 434, 435.
In this view of the law, what are the facts to be dealt with in this case? The last sale of shoes by complainants was to Bullene, Moore, Emery & Co. in June, 1892, more than three years before the defendant came into being; and, in so far as the evidence discloses, it does not appear that, when the defendant had the shoes in question made, after November, 1895, and up to December, 1896, It knew that the complainants were manufacturing and stamping ■such shoes. It had no notice that the complainants were using or •claiming their alleged trade-mark. On the contrary, the testimony •oh behalf of. the defendant shows affirmatively that its agent in charge of the shoe department, when knowledge came to him in 1891 and 1892, assumed and believed that the stamp in question
The shoe marked “Complainants’ Exhibit March 28, 1898,” as the one manufactured by them after the defendant began business, is unlike the shoe bought and sold by the defendant. Complainants’ shoe had a plain black sole unquilted, while the defendant’s had a steel-quilted sole of wires; and while it is true that the brand on the sole of defendant’s shoe, with the words “Steel Shod” above the anvil, stamped on the shank, is practically the same as that of the complainants, the defendant had stamped beneath the anvil in large, letters the initials of the defendant company, “E., 1!. T. & Co.,” indicating that it was defendant’s manufacture. There was .nothing about the symbol on complainants’ shoe to indicate that it was used as a trade-mark, or to indicate ownership or the manufacturer of the shoe. Hot until December, 1896, did the agent, Robinson, learn that-the complainants claimed the words “Steel Shod” as a trademark. Even this information did not come from complainants, but from Rice & Hutchings, of Boston, who manufactured shoes for the defendant. Immediately on receipt of such information, Robinson wrote to Rice & Hutchings to the effect that he was not aware that the complainants claimed such words as a trade-mark, and to discontinue the use thereof in the manufacture of shoes for the defendant. Thenceforth the defendant had not another shoe made with such stamp or symbol.
It is “quite clear, from defendant’s evidence, that there was never any purpose on its part to infringe upon the complainants’ alleged trade-mark, or to palm off its goods as those of complainants’ make. This suit was filed in March, 1897, without any previous complaint or notice from complainants to defendant that they made claim to a trade-mark; and the testimony of Mr. Robinson,' the agent, and that of Mr. Thayer, defendant’s secretary and treasurer, the only parties representing the defendant who had anything to do with this matter, is that their best impression is that at the time the house only had on hand a dozen or two of the shoes manufactured for them by Rice & Hutchings; and their best recollection is that before this suit was filed the house had erased entirely from said shoes said words and the impression of an anvil, which erasure is shown by an exhibit in this case. Certainly it should be the equity of the case that under such circumslances, indicating entire absence of any purpose on defendant’s part to interfere with complainants’ claimed prescriptive right, that any reasonable doubt as to' the
“It is a soima rule for the prevention of unnecessary litigation, and to encourage parties who have ignorantly and without bad faith infringed a trademark to promptly desist, without suit, upon being notified, that where a complainant had already obtained, before entering suit, by prompt acquiescence of the defendant, all that an injunction could give him, he should not recover costs.”
If it be said that, notwithstanding, the case should be retained by the court in order, to ascertain and assess damages, the answer is that it is perfectly clear from the complainants’ evidence in this case that no conceivable, tangible loss has ensued by reason of any act of the defendant. The evidence shows that the complainants sold all the shoes which they made up to the capacity of their factory in 1896 and 1897. “In 1897 we had the full benefit of our increased capacity, and then we did a good deal more, $232,000,” which was a decided increase over 1895. The falling off! in 1896 was, as the witness concedes, solely attributable to the delays occasioned in the improvement of the factory. During the period run that year, their books show a decided increase over the preceding year, it is only made to appear from the evidence that one man called at defendant’s store for a “steel-shod” shoe; and the books of the complainants, in evidence, show that beginning with 1893, and up to June 6, 1896, .the sales of the complainants to other merchants in •Kansas City were in no wise affected by the fact that Bullgne,
Impressed, as the complainants must have been, in view of the foregoing facts, with the slender thread upon which they were suspending a lawsuit, they now contend that, since the defendant abandoned the use of their exact symbol, it resorted to a device so similar to theirs as to constitute a continuation of the alleged infringement. " It should be a sufficient answer to- this suggestion to say that no such issue is presented by the bill. The thing complained of solely in the bill is the use of the alleged trade-mark of the complainants, — the same, or substantially the same, as complainants’, with the words, “as by reference to defendant’s said shoes here in court to be produced will more fully appear.” The shoes thus referred to, and the only shoes put in evidence, are those above referred to, stamped with the words “Steel Shod” in connection with the representation of an anvil. The case of P. Lorillard Co. v. Peper, 30 C. C. A. 496, 86 Fed. 956, referred to in counsel’s brief as supporting its contention, is not applicable. That case having been tried below by me, I am quite familiar with the state of the pleadings therein. In that case between the time of filing the original bill, in which an injunction was denied, and the filing of the amended bill, on which the case was finally tried, the defendant had abandoned the first simulated trade-mark, and substituted another, which fact had escaped the attention of the complainant up to the time of the argument and final hearing. It was in that state of the case that the complainant insisted that the change made did not destroy the similitude, and therefore it was a continuing infringement, which existed at the time the amended bill was filed. That is not this case. Here the change was made after the suit was brought; and, even if the rule contended for by complainants’ counsel could be applied to suck a situation of the pleadings, there is no such resemblance between the alleged trade-marlc of the complainants and the words “Steel Clad,” stamped on the bottom of the defendant’s present shoe, as would entitle the complainants to relief against it. The evidence shows that since the suit was brought the defendant has had its shoes manufactured with the words “Steel Clad” stamped on the shank, without employing the representation of an anvil, which designates the complainants’ shoe. Such contention excites impatience. It seems to the court to carry the idea of a trade-mark beyond precedent or any reasonable necessity.
The court has not taken upon itself the burden of discussing and determining whether or not the complainants could appropriate to their exclusive use as a trade-mark the words “Steel Shod,” used on a shoe with steel in the composition of the heel, as shown, by
“Steel is often used in tbe formation of compounds, generally of obvious meaning, as steel-clad, steel-girted, steel-bardened, steel-plated, steel-pointed.”
Such combined words are of the most obvious meaning. No person, seeing those words stamped upon the sole of a shoe, like that sold by the defendant, would for a moment imagine that they were a mere arbitrary symbol, indicating a trade-mark or ownership; but the purchaser would at once conclude that it was merely descriptive of the quality and characteristics of a shoe with quilted soles and prominent steel posts- in the heel, indicative of strength and ■ durability. Nor is it conceivable that a purchaser of common observation and common sense could mistake the words, plainly stamped, “Steel Clad,” for the words “Steel Shod,” and especially when the latter words are designated and pointed out by the accompaniment of art anvil. Nor is there any evidence in this case that any purchaser was deceived into purchasing defendant’s shoe in the belief that it was of the complainants’ manufacture.
If the complainants can maintain that “steel clad” is similar to “steel shod,” with equal reason might it be said that they could exclude the use of the words “steel girted,” “steel hearted,” “steel plated,” or “steel pointed,” on shoes. The combined words are not the same in sound or in spelling. Carried to its logical sequence,
The injunction is refused, each party to pay its own costs.