lying such inquiries, the court finds that the signatures of some of the 'creditors to the composition deed were obtained by giving to them more than their pro rata under the deed, with the view of securing their signatures, and that thereby the equality on which the validity of such deeds must rest was not observed. Hence said composition deed is invalid, and the plaintiff is entitied to recover what remains due to him.
(Circuit Com·t, W. D. Tenne88ee. April 7, 1882.)
'tRADE-MARx':""Um OF TRADE' NAME AND MARX-AFTER PATENT ExPIRED.
Where a patentee useS his name andmatks to designate his invention, and also the product of it, as manufactured by himself, so that the public cannot separate the one from the other, he cannot acquire any right to the exclusive use of the name and marks after the patent has expired. Held, therefore, that the Singer Manufacturing Company, of New Jersey, has no exclusive property or trade name in the word" Singer," and that their shuttle device, as a trademark, had not. been' violated .by the devices used on the Williams machine, of Montreal, or the Sigwalt machine, of Chicago, the alleged irnitationsllot being calculated to deceive a purchaser.
In Equity. Application for injunction. The bill and amended bill allege that the plaintiff manufactures and sells "Singer Sewing-Machines;" has done so for many years; in all the countries of the world; and that by their excellence the machines have acquired a valuable It claims a trade name for the use of the word "Singer," and alleges that the defendants are fraudulently using it for purposes of injury to the plaintiff and to deceive the public. They also claim a trade-mark in certain devices, described in the bill, which it is alleged the defendants have violated. The pra;yer is for an injunction: The answer denies that the defend- ' ants have ever pretended to sell machines of plaintiff's manufacture, and avers that they sell machines as good or better in point of manufacture. But defendants admit that' they do use the name "Singer," either alone or in combination with other descriptive names of machines they sell. They explain this by averring that one Singer procured a patent for an invention of sewing-machines of great excellence of mechanical construction, and enjoyed a monopoly of the patent for many years, until recently, when the patent expired and congress refused to renew it; that this peculiar patented construction was from the beginning designated by the word "Singer," and the
SINGER HANUF'a 00. V. RILEY.
name was used to describe it throughout the world. . Defendants aver that they have always been careful not to'represent their goods al! manufactured by the plaintiff, nor to deceive anyone on that point. They deny the use of the same devices or such similar ones as are calculated to deceive, and produce samples of their own and plaintiff's machines in support of the denial. Affidavits are filed with both the bill and answer, and also the circulars and advertisements of the defendants. U. W. MiUer, for plaintiff, cited:
Ooates v. Halbrook, Cox, Trade-mark Cases, 20,27; Taylor v. Oa",enter, Id. 45,57; Ooffeen v. Brunton, Id. 85, 86'; Davis v. Kendall, Id.114; Howard v. Hen1'iques, Id. 129; Walton v. Id. 172; Brooklin White Lead 00. v. ManSU1'1f, Id. 210; Clark v. Ola1'k, Id. 210; Dale v. Smithson, Id. 282; Oolton v. Thomas, Id.507; Amoskeag Manuf'g Co. v. Gamer, Id. 540; Dixon Orucible 00. v. Guggenlteim, lei. 559,562, 569; Congress Spring Co. v. High Rock Spring 00. Id. 599, 624; Filley v. Fassett, Id. 530; S. C.44 Mo. 168; Holmes v. Holmes, 27 Ct. 278; Meriden Britannia 00. v. Parket·, 39 dt. 450; Newby v. Oregon Cent. R. R. 1 Deady, 609; Kimball v. Singer Mantif'g 00. 45 ScottiSh Jurist, 201; Dunbar v. Glenn, 42 Wis. 134; Canal Co. v. Clark, 13 Wall. 322; MoLean v. Flemming, 96 U. S. 245, 251; Braham v. Bustard, 1 Hem. & Miller, 447; Eddleton v. Fick, 23 Eng. L. & Eq. 51; Singer Manuf'g 00. v. Wilson, 3 App. Cas. L. R. 389; Witthaus v. Mattfeld, 44 Md. 303; Brown, Trade-marks, pp. 33, 34, §§ 396, 496; Coddington, Trade-mark Dig. 415, 416, 418, 429, 453; Singe?' Manuf'g 00. v. Larsen, 13 Chi. Leg. N. 59; U. S. Y. Roche, 1 McCrary, 385; 2 Daniell, Ch, 1648, et nota; 3 Wait, Ac. & Def. 195, 741, 742; 20 .Am. Law Reg. 34; 9 Reporter, 603, 737; Patridge v. Menek, 2 Barb. 101; Fronks v. Weaver, 10 Beav. 297; Singer Mantif'g 00. v. Brill, Superior Ct. Cincti. July term,1880; Singer v. Lemaire, Belgium MSS.; Warren v. Wing, Superior Ct. N. Y. Referee's Report Jan. 13, 1881; Singer Mantif'g Co. v. Phillips, Ky. Dist. Oct. 11, 1880; Singer Mantif'g Co. v. Kayser, N. Y. Supreme Ct. Jan. 1879. II. F. Dix and W. W. Goodwin, for defendunts, cited: Bell v. Locke, 8 Paige, 75; Fairbanks v. Jacobs, 14 Blatchf. 337; Singer 00. v. Wilson, L. R. 2 Ch. Div. 434; Tucker Manuf'g Co. Case, 9 O. G 455; Singer Manuj"g 00. v. Stanage, 6 FED. REP. 297; Singe1' Manuj"g Co; v. Loo.g, London Daily News, Dec. 15, 1880; Manul'u Co. v. Trainer, 101 U. S.51.
HAMMOND, D. J. The application for a preliminary injunction must be denied. The case of Singer Manuf'g Co. v. Stanage, 6 FED. REP. 279, so fully expresses the conclusions to which I have come that it is not necessary to repeat the argument to be there found in favor of this judgment, although I have given the subject an extensive investigation. The bill before me would, perhaps, entitle the
plaintiff to an injunction, for it makes no mention of any patf1 11 t, nor any reference to the fact that for many the plaintiff's manufacture of sewing-machines was thus protected, whatever may be said of those patents in their relation to the question of fact, which the house of lords was unable to determine in Singerv. Wilson, L. R. 3 App. Cas. 376. The answer, however,avers that the plaintiff used its alleged trade name and trade-marks to designate the principles of construction of sewing-machines under the patents, and, while denying all allegations of misrepresentation and deceit, explains that the defendants only used the name "Singer" to represent that the machines sold were of that construction, and never to represent that they were machines manufactured by the plaintiff. The affidavits of plaintiff's witnesses only show that the defendants represented theirs as genuine "Singer" machines, and are not inconsistent with the averments of the answer; while the defendants' witnesses swear that they were told that the machines were of superior manufacture to those of the plaintiff, but that they were "Singer" machines. Hence, however the proof at the hearing may affect the case, as it now stands there can be no injunction in any view of the question. So, in reference to the labels and other devices claimed as tradehere is not satisfactory of any counterfeiting 01' mismarks, the representation by defendants. The respective machines have be.en brought into court, and I must say ldo not see how any person could be deceived by mistaking one for the other, if any reliance is placed on the devices as distinguishing characteristics. It is true, the general appearance of the machines is somewhat the same, as two tables or desks are alike, but even here some of the defendants' machines are dissimilar to those of the plaintiff in having the box used to cover the machinery on the table ornamented with moulding. The labels affixed to the arms of the machines are in no way alike, except that they are brass and oval, and are placed in relatively the same spot on the machines. The well-known device of the plaintiff, consisting of a shuttle, needles crossed, and the letter S made with the representatio:n of the thread surrounded by a partial wreath of a plant and the words "The Singer MFG. Co." and "Trade-Mark," is replaced in the other labels by entirely dissimilar devices. The one is a lion's head in bold relief, surrounded by the words "C. W. Williams MFG. Co., Montreal," and "Trade-Mark," while the other is a monogram of S. and M. upon a rough, flat surface, made by a chasing of parallel horizontal lines, surrounded with a raised dotted line, indented at
SINGER MANUF'G CO. V. RILEY.
opposite sides in the shape of a small segment of a circle, the words "The Sigwalt Sewing Machine Co., Chicago, IlL" being imprinted around the entire device. The sail shuttle device is also cast in the frame-work of the leg or stand of one pattern of the plaintiff's machine. It is, of course, in that form more rude, but is plainly enough recognizable as the same device as that on the brass label. The corresponding device on the Williams machine is a large and well-defined horseshoe, surrounding the letter S (broad in its construction, and in no way resembling . the S of the shuttle device) and the word "Trade-Mark." I am well aware that mere dissimilarity of detail is not a defence in cases like this, and the location of the mark on the package or article has mucl: to do with the intention to deceive. Some of the cases have carried this principle to a great length, to prevent the fraud of using another's trade name or labels, or even form of packages. But the fraud consists in an imitation calculated to deceive, and I think none of the best-considered cases would hold that a trader acquire an exclusive right to use an oval brass label on the fore-arm, and the letter S on the leg, of a sewing-machine. It must be so ruled to declare against these devices of the defendants' machines, for they are not otherwise like those of the plaintiff. The precise attitude of the English cases on this question is stated in a review of them by the Solicitors' Journal, reproduced in the Central Law Journal, vol. 11, pp. 3, 25, 84, 106. Vice Chancellor Bacon's opinion in Singer Manuj'g Go. v. Loog, L. R. 18 Ch. Div. 395, 401, in favor of the plaintiff's claim, held that the plaintiff had established a right to the word "Singer" as its trade-mark and property, and that the defendant, whose unlicensed use of the name was clearly proven, had entirely failed to show that the name "Singer" was known to the trade as descriptive of sewing-machines of a particular \:onstruction or character not necessarily of the plaintiff's manufacture. But the opinion of the court of appeals, overruling this judgment of the vice chancellor, says of the circulars and and devices, what as well applies to this case, that the documents set forth how the machines were manufactured, and there was nothing to lead any purchaser of them to suppose that he was buying machines manufactured by the plaintiff. The plaintiff company had no monopoly in the manufacture of sewing-machines, their patent having expired some years ago, nor had they any property or right in the word "Singer" in the sense that they could restrain anyone from describing his goods as "Singer's," however he might qualify or
plain his use of that word. Lord Justice James said that aside from the brass label he could not "see anything which could deceive any human being." In that case the label, which was voluntarily discontinued, unlike the labels in this case, contained upon it the word "Singer" in combination with others calculated to deceive a purchaser into the belief that he was buying a machine manufactured by the plaintiff. L. R. 18 Ch. Div. 395, 412. The case of Singer v. Phillips, in the circuit court for the district of Kentucky, was ex parte, the bill being taken for confessed, and a formal decree entered for the plaintiff. There was no opinion or judgment such as could be considered an authority binding on this court. Our patent laws protected the plaintiff for many years in a monopoly to that extent that it needed no trade-marks for any other purpose than to designate the comparative excellence of the inventions protected. It and its licensees could have, while the patent lasted, no rival manufacturers of "Singer's sewing-machines," and their work, as manufacturers of them, could not, therefore, be brought into competition with anyone. Nor do I think the suggestion of counsel that there were many parts of the machine and principles of mechanical action and combination not patented affects the question as long as any part of it was so patented. The word had come to be descriptive of peculiarities, not of manufacture by a particular person, but inherent in the machine itself, and when this is so no right to an exclusive use can arise, whether there be a patent or not. It is a part of the history of our inventions, known to the· courts as well as others, that the names of inventors are used to distinguish their inventions, and there have been "Howe," "Singer," "Grover & Baker," "Wheeler & Wilson," etc., to indicate the different kinds of patented sewing-machines. It is the consideration now due to the public, when the patents have expired, that it shall have the unobstructed benefit of these inventions, and there is not the least foundation in principle or reason for allowing the patentees to continue to enjoy as much of the monopoly as they can save by the claim to use exclusively the trade names and marks by which they identified and secured to themselves the reputation of their inventions. These go along with the invention as a dedication to the public for purposes of description and identification, and the patentees should not by this means be permitted to take any advantage by them where they have so commingled their marks for the invention, and their marks for their own manu-
COLWELL LEAD CO.
facture, that the public cannot separate the two as in this case. The following additional authorities may be instructively consulted on the general Ilubject. 25 Abb. L. J. 203; 21 Abb. L. J. 444; London Law Times, Jan. 1, 1881; Levy v. Walker, L. R. 10 Ch.Div. 436; Singer Manui'g Co. v. Loog, L. R. 11 Ch. Div. 656; Ewing v. Johnston, L. R. 13 Ch. Div. 434; Massam v. Thorley Cattle Food Co. L. R. 14 Ch. Div. 748; S. C. ld. 736; Pepper v. Labrot, S FED. REP. 29; Sawyer v. Kellogg, 7 FED. REP. 720; Sawyer v. Horn, 1 FED. REP. 24; Carroll v. Ertheiler, ld. 688; Dixon v. Benham, 4 FED. REP. 527. Injunction refused.
COLWELL LEAD Co.March 18,1882.)
(Oil'cuie OQUll'e,8. D. New York.
3,744-TIN-LmED LEAD P1l'lIl- VALID-
The second claim of reissue No.3, 744, for" the manufacture of lead-encased tin pipe from a compound ingot, composed of concentric parts pf lead and tin, when the central ingot is made of tin in the form of superposed inverted frusta of cones, or their equivalents," construed, and held valid.
The application for a reissue is not an application for a patent, but for the amendment of one, and is not such an application as must be made before two years of public use have been had.
3. SAME-UTILITy-PATENTABH,ITY. To be patentable, inventions need not be superior to or better than all other things known before; it is sufficient if they are useful in themselves, if they are also new. 4. SAME-PERMISSIVE USE-JURISDICTION. Though in itself the defence of permissive use, if acknowledged by complainant, might be a bar to a suit for infringement, yet if the defendant, in his answer and proofs, attacks the validity of the patent and denies all recognition of its validity, such denial leaves the complainant his standing in court, and a defence to the infringement must be made out to defeat his right of recovery.
In Equity. Final hearing.
A.mos Broadnatt, for orator. Ten Eyck Remington, for defendant. WHEELER, D. J. This suit is brought for relief against infringement of letters patent reissue No. 3,74:4, dated November 23, 1869, for an improvement in the manufacture of tin-lined lead pipe. The bill alleges the grant of the original letters, No. 74,613, dated Feb.Reported by S. Nel80n White, Esq., of the New York bar.