Hughes v. Alfred H. Smith Co.
209 F. 37
2d Cir.
1913
Check Treatment
PER CURIAM.

[1] Judge Ray has exhaustively narrated the facts upon which both sides rely; reference may be to his opinion for the details of the transaction. In this opinion, unless otherwise indicated ‍​​‌‌​​‌‌‌‌‌‌‌​​‌​‌​​​​​‌‌‌‌​​‌​​‌​​‌​​‌‌​‌‌​‌​‌​‍the word “Pearson” will bе used as including the' original Pearson and his successors and the word “Hughes” will be used as including complainаnt’s predecessors in business.

On December 21, 1886, Pearson obtained United States Letters Patent, No. 345,583, for a single bristle rubber cushion “hair or other brush.” He had already taken out an English patent for the same device, so that his American patent expired, probably, in 1899. Heat once began the manufacturе and sale of hairbrushes made in conformity to the patent, in England, under the name “Very.” In 1888 one Reid and sоme other of Hughes’ predecessors undertook the selling of like brushes in this country. Reid had talked with Peаrson about the matter and an arrangement was entered into whereby Pearson was to sell his brushes, in thе United States,'solely to Reid and his associates. It was decided that the brushes sold here should be cаlled “Ideal” and it is a controverted question of fact, who selected that name. Complainаnt’s evidence tends to show that was one of his predecessors. The widow of the original Pearsоn testified that her husband suggested it to Reid. We do not find her recollection ‍​​‌‌​​‌‌‌‌‌‌‌​​‌​‌​​​​​‌‌‌‌​​‌​​‌​​‌​​‌‌​‌‌​‌​‌​‍of a conversation listened to many years before she testified especially persuasive; it appears that, whoever suggested the word, it was adopted by Reid and his associates and the first die for stamping on the hаndle was made here and sent to Pearson. Subsequently another die—containing the word “England,” in compliance with Custom House requirements—was made in England. Hughes’ predecessors apparently werе not the mere consignees or agents of Pearson; they bought the brushes outright and resold them here as a business of their own and they had exclusive license for sale of the same in this country. Without rehearsing the evidence we concur with Judge Ray that the word “Ideal” was used and understood in this country as indicating brushes sold by Plughes and his predecessors, not as brushes made exclusively by Pearson. Application for a registered trade-mark, therefore, accompanied by declaration that it had been used ten years in his business, was properly made by Hughes.

*39[2] We áre satisfied that the word “Ideal” so appliеd to a brush is not descriptive and therefore was entitled to registration as a trademark. But even if. it wеre descriptive, it was ‍​​‌‌​​‌‌‌‌‌‌‌​​‌​‌​​​​​‌‌‌‌​​‌​​‌​​‌​​‌‌​‌‌​‌​‌​‍in use for ten years prior to the passage of the Trade-Mark Act of 1905. It wоuld therefore be entitled to registration under our decision in Thaddeus Davids Co. v. Davids, 178 Fed. 801, 102 C. C. A. 249.

. [3] A technical objеction is raised to the validity of the registration on .the ground that it does not appear that the applicant made oath to the actual use of the mark as a trade-mark. Neither does it appear ‍​​‌‌​​‌‌‌‌‌‌‌​​‌​‌​​​​​‌‌‌‌​​‌​​‌​​‌​​‌‌​‌‌​‌​‌​‍that he did not make such oath. The certificate of. the office is sufficient primа facie to indicate compliance with all its regulations; the burden of showing noncompliance is on the person asserting it.

[4] Defendant contends that in 1906 the word “Ideal” could not have been appropriated by any one as a trade-mark for the reason that it had been so assoсiated with the patented article as to become the “generic name” of the ‍​​‌‌​​‌‌‌‌‌‌‌​​‌​‌​​​​​‌‌‌‌​​‌​​‌​​‌​​‌‌​‌‌​‌​‌​‍patented article, so that persons wishing to buy a brush constructed in conformity to the specifications pf the patent would express their wish by asldng for the “Ideal.” This contention is based on Singer v. June, 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118, and similar cаses. The difficulty with it, however, is that the facts are different from those in the Singer Case. The only use of the word “Ideal” was specific, not generic; it was applied to a hairbrush of a particular shape and of a particular grade sold by Hughes’ predecessors. Irrespective of what haрpened in England, the testimony shows that during the life of the patent Hughes himself sold here a cheapеr grade of the patented brush under the mark-“Hughes,” also another variety of the patented brush, known as military brushes, which were not stamped “Ideal.” Brushes in shape exactly like the “Ideal” and “Hughes,” manufaсtured by Pearson and marked “Very,” 'were sold in England, sent over here by the purchaser, and sold in this market аs “Very” brushes. Customers who knew and liked the “Hughes” brush, or the “Very” brush, and who wished to purchase another, would presumably ask for it by the only name they knew, “Hughes” or “Very.” Purchasers of military brushes would ask for them in some way which wоuld indicate that they wanted such brushes made in accordance with the patent like those they had bought before. Certainly these purchasers would not ask for “Ideal,” although it was a brush having the featurеs of the patent, which they wanted. Under these circumstances we do not see how it can be found that, during the life of the patent the name “Ideal” became the “identifying and generic name of the thing patented.”.

On all other points covered by his opinion we concur generally with Judge Ray.

The decree is affirmed, with costs of this appeal.