41 F. 208 | U.S. Circuit Court for the Northern District of Illnois | 1889
This is a bill in equity, charging defendant with an infringement of complainant’s trade name and trade-mark, and seeking an injunction and accounting by reason of the alleged infringement. The material allegations of the bill are that in the year 1850 the firm of I. M. Singer & Co. commenced the manufacture of sewing-machines in the city of New York. That in 1863 said I. M. Singer & Co. transferred their business to the Singer Manufacturing Company, a corporation organized and existing under the laws of the state of New York, and in 1873 the Singer Manufacturing Company of the State of New York transferred its business, good-will, and trade-marks to the present complainant, the Singer Manufacturing Company of the State of New Jersey. That, from the commencement of said business of the firm of I. M. Singer & Co. up to the time of the filing of this bill, complainant and its predecessors have manufactured and sold sewing-machines of many different kinds and varieties, and have from the first marked their machines with the name “Singer, ” that being the name of the founder of, said business, and have always called, advertised, and sold all of their said machines as “Singer Sewing-Machines:” have spent large sums of money in improving and perfecting ,said machines, and in advertising the same; and that the machines so manufactured by complainant and its predecessors have acquired a world-wide reputation for the excellence of their workmanship and their merit, and have been universally called and known by the name of “Singer Sewing-Machines. ” That the adoption and appropriation of said name was original with said I. M. Singer & Co.; and they and their successors, including complainant, have ever since used the same continuously and exclusively as a designation for the sewing-machines manufactured by them; and that said I. M.
Defendant, by its answer, denies that it has used a colorable imitation of complainant’s machine for the purpose of inducing the belief that machines made and sold by the defendant are manufactured by complainant, or that it makes and sells machines in the same shape, outline, ornamentation, and general external appearance as the complainant’s ma
Voluminous proofs have been taken upon the issues made by the bill and answer, from which it appears that in 1850 Isaac M. Singer and Edward Clark formed a'copartnership for the purpose of manufacturing sewing-machines under certain patents which had been granted to the said Singer and others, which had been acquired by said firm as assignees or licensees; and that the machines made by the said firm becameat once publicly known as “Singer Sewing-Machines” or “Singers;” that said firm continued to manufacture sewing-machines under the said patent until some time in 1863, when the business of the firm was transferred to the Singer Mahufacturing Company of New York, a corporation organized under the laws of the state of New York, and afterwards, in 1873, the business of said Singer Manufacturing Company of New York was transferred tothe present complainant, a corporation organized and existing under the laws of the state of New Jersey; and that the principal patents under which said machines were manufactured remained in force Until about 1877 and during all the time the property ofthé firm of I. M. Singer & Co., and the Singer Manufacturing Company of New York, and until after-the said business passed to the present complainant, and the expiration of said patents, the-sewing-machines made by the firm and its successors were publicly known as “Singer Sewing-Machines,” and the name or-word ^Singer” became a.tefm-of description to identify the
The contention of complainant is that it is entitled to the exclusive use of the word “Singer” as a trade name, and that the defendant has no right to use the word “Singer” in any way,.or in any combination, as descriptive of the machines made by the defendant. The questions raised by this bill are by no means new ones. Substantially the same
“I think there can be no doubt that the plaintiff cannot claim the exclusive right to manufacture the • Singer Sewing-Machine.’ All that it can claim is to make a machine of its own peculiar manufacture, with a device in the nature of a trade-mark. Otherwise, after a patent has expired which has established the nomenclature of a sewing-machine, as the Howe patent or the Wilson patent, the patentee might go on and have the benefit of the patent indefinitely. * * * These patents have all expired; and nothing can, therefore, be claimed under them. Other persons cannot be prevented from manufacturing a machine like the Singer sewing-machine, and which mfiy be called, to distinguish it from other machines, ‘Singer’s Sewing-Machine.’ If a sewing-machine has acquired a name which designates a mechanism or a peculiar construction, parts of which are protected by patents, other persons, after the expiration of the patents, have the right to construct the machine, and call it by that name, because that only expresses the kind and quality of the machine.”
So, in Brill v. Manufacturing Co., it is said:
“Descriptive as the name Singer is of machines of a really distinctive character in their construction and principle of operation, when the patents protecting them expired, the right to use that name accompanied the right to make and sell the machines. It would be a poor return for the exclusive privilege which the public gives for a long period to the patentee, if, after the expiration of his patent, he shall be allowed to virtually perpetuate his monopoly, in a measure, by preventing all others from using the name which will describe and make known the invention that has become dedicated to the public. ”
Much more might be quoted from the other cases which I have cited, asserting the same general principle; but, while it has been, since the expiration of the patents, the right of any one to make sewing-machines embodying the form of construction and mode of operation of the Singer patents, it does not follow that any person has the right to so mark or indicate upon machines of his manufacture any sign or lettering to the effect that it is, the manufacture of the complainant. A paragraph from Judge Drummond’s opinion, above referred to, is pertinent upon this point :
“So that, while I hold that the defendant is not prevented from constructing a ‘Singer Sewing-Machine,’ still he cannot be permitted to do any act, the necessary effect of which will be to intimate, or to make any one believe, that the machine which he constructs and sells is manufactured by the plain*213 tiff. Neither has he the right to use any device which may be properly considered a trade-mark, so as to induce the public to believe that his machine has been manufactured by the plaintiff.”
The rule deductible from these adjudged cases seems clearly to be this: that, if the manufacturer of a patented machine .adopts a peculiar style or form in which to embody the working mechanism covered by his patents, or any special mode of ornamentation to make the machine attractive and salable, such form of construction and ornamentation, although not strictly essential to the operation of the mechanical device covered by the patents, still becomes a part of the machine as presented to the world on the expiration of the patents. It goes to the public in the dress and with the features which have been given it by its manufacturer under the patents. It is presumable that an intelligent manufacturer, wishing to secure a large sale for a mechanical device of which he lias a monopoly, especially in a machine of the kind under consideration, which has become a part of household furniture, used his best skill and tasto as a constructor to make the machine convenient and attractive, so as to give the best possible embodiment of his patented mechanical devices; and, as J have already said, this dress, thus given to the machine, becomes a part of it, and the public, when they have the right to use the patent, have the right to use the dress in which the patentee clothed it. Hence any sewing-machine manufactured by another person, after the expiration of the patents, upon the principles covered by the Singer patents, may be a perfect imitation of the machines which the complainant or its predecessors manufactured under their patents. It does not lie in the mouth of the complainant to object to the close imitation or similarity which the defendant’s machines may bear to those made by the complainant. It is the misfortune, perhaps, in a certain sense, of the complainant, if it continues to manufacture Singer sewing-machines of the style originated by it, that others may also manufacture machines which look, as well as operate, so nearly like those of complainant as that it may take a person of experience to tell the difference between them, aside from the name or trade-mark of the manufacturer thereon; but the fact that this right of others may embarrass the complainant’s business is only a consequence"following the right of the public to make and use, without tribute to the patentee, machines which have in their mechanical principles and forms of construction become public property. It would be a dangerous doctrine to concede that a patentee, who has invented a machine which has gone into extensive public use, can, after the patents have become public property, still prevent the public from having the benefit of the invention until they devise and adopt some new form of construction from that adopted by the manufacturers under the patents, and create a now reputation for their machine. I am, therefore, clear that the claim set up by complainant to the exclusive use of the word “Singer” as a trade name, and to the exclusive right to the mode of construction, external shape, appearance, and ornamentation adopted by' the complainant while the patents were in force for its “New Family Singer” and “Medium Singer, ” is not.
As to the alleged infringement of complainant’s trade-mark, I can only say-that defendant’s oval plate, when inspected and examined, is not an imitation of the complainant’s trade-mark. Complainant has not, according to the showing of its bill and the proofs, acquired any special right to the oval brass plate affixed upon the side of the sewing-machine nearest the operator; but that oval brass plate must bear certain symbols and letterings which make the complainant’s trade-mark, and which I do not find in the oval brass plate used by the defendant. The claim is that complainant originated this trade-mark, and began the use of it, early in 1871, which, according to the proof, was while many of the patents owned, by complainant and its predecessors remainded in force; and, while I do not deem it necessary to pass upon the question here, I have serious doubts whether a manufacturer making a machine under a patent or patents can, while so doing, apply a trade-mark which shall continue his exclusive property after the expiration of the patents which gavé character to the mechanism; but I feel very sure that if, in so applying a trade-mark, the plate or escutcheon -on which it is impressed or engraved became a -part of the ornamentation of the machine, the plate itself may be used by others, as an ornament of the machine, after the expiration of the patent, even if the later manufacturer has no right to use the special symbols of the trade-mark. I do not find, from the proof, that the defendant has been guilty of infringing the complainant’s trademark. The bill is therefore dismissed, for want of equity, at complainant’s costs.