Singer Mfg. Co. v. June Mfg. Co. - 163 U.S. 169 (1896)
U.S. Supreme Court
Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169 (1896)
Singer Manufacturing Company v. June Manufacturing Company
Argued October 16-17, 1894
Decided May 18, 1896
163 U.S. 169
The Singer machines were covered by patents, some fundamental, some accessory, whereby there was given to them a distinctive character and form which caused them to be known as the Singer machines, as deviating and separable from the form and character of machines made by other manufacturers.
The word "Singer" was adopted by Singer & Co. or the Singer Manufacturing Company as designative of their distinctive style of machines, rather than as solely indicating the origin of manufacture.
The patents which covered them gave to the manufacturers of the Singer sewing machines a substantial monopoly whereby the name "Singer" came to indicate the class and type of machines made by that company or corporation, and constituted their generic description, and conveyed to the public mind the machines made by them.
On the expiration of the patent, the right to make the patented article and to use the generic name passed to the public with the dedication resulting from the expiration of the patent.
On the expiration of a patent, one who uses a generic name by which articles manufactured under it are known may be compelled to indicate that the articles made by him are made by him and not by the proprietors of the extinct patent.
Where, during the life of a monopoly created by a patent, a name, whether it be arbitrary or be that of the inventor, has become, by his consent, either express or tacit, the identifying and generic name of the thing patented, this name passes to the public with the cessation of the monopoly which the patent created, and where another avails himself of this public dedication to make the machine and use the generic designation, he can do so in all forms, with the fullest liberty, by affixing such name to the machines, by referring to it in advertisements and by other means, subject, however, to the condition that the name must be so used as not to deprive others of their rights or to deceive the public, and therefore that the name must be accompanied with such indications that the thing manufactured is the work of the one making it, as will unmistakably inform the public of that fact.
The Singer Manufacturing Company, a corporation organized under the laws of the State of New Jersey, filed its bill
in equity in the Circuit Court of the United States for the Northern District of Illinois against the June Manufacturing Company, an Illinois corporation.
The bill alleged that the complainant was engaged in the manufacture of sewing machines, and had an exclusive right to the word "Singer" as a tradename and "designation" for such sewing machines. It averred that defendant, for the purpose of inducing the belief that sewing machines manufactured and sold by it were made by the complainant, was making and selling machines of the exact size, shape, ornamentation, and general external appearance as the machines manufactured by complainant; that the defendant was imitating a described trademark which the complainant had for many years placed upon its machines; that it was imitating "devices" cast by complainant in the legs of the stands of the machines manufactured and sold by it, and that the defendant advertised the machines by it made by means of cuts and prints, imitations of the cuts and prints made by complainant and representations of the machines manufactured by complainant. An accounting for the profits received by defendant was prayed, as also an injunction to restrain the use by defendant in its business of the word "Singer" as a designation of the machines manufactured by it, and to restrain a continuation of its other alleged wrongful practices.
In its answer, the defendant denied that it had attempted to avail itself of the complainant's "representation" and tradename, or that in anything done by it, it had sought to induce the belief that the machines manufactured and sold by it were manufactured by the complainant, and alleged that the form, size, shape, and appearance of its machines were public property, and not the exclusive property of the complainant. It was averred that the defendant constructed its machines on the principles of machines which had been protected by letters patent held by the Singer Company by license or otherwise, but which patents had long since expired, and that the name "Singer" was the generic name of such machines. The defendant admitted that it affixed an oval plate to its machines, but claimed that the device placed by it thereon
was dissimilar to that used by the complainant, and averred that the words "Improved Singer," stamped on such plate, was the correct name of the machine. It was also averred that while formerly an elaborate monogram was placed on said plate, composed of the letters "S. M. Co.," being the initials of the "Standard Manufacturing Company" (a former corporate name of defendant), the monogram now placed upon said plate was "J. M. Co." It was also claimed that the device on the legs of the stands of machines manufactured by the defendant was not an imitation of that employed by complainant upon its machines, but that, on the contrary, the device used by the defendant was adopted by it to prevent confusion in the minds of the public as to the manufacture of the machines.
It appeared from the evidence that the construction of the Singer sewing machines was commenced in 1850, in the latter part of which year the firm of I. M. Singer & Co. was formed. Witnesses testified that the firm named made and introduced the first practical sewing machine. I. M. Singer & Co. continued in the business of manufacturing sewing machines until June, 1863, when that firm transferred all its assets, property, patents, and goodwill to the Singer Manufacturing Company, a corporation formed under the laws of the State of New York, and the manufacture of Singer sewing machines was continued by that corporation. In the year 1873, a new corporation, known also as the Singer Manufacturing Company, was organized under the laws of New Jersey, to which corporation the New York concern transferred its assets. The stockholders in both companies were the same, and the business of the New York corporation has ever since been continued by the New Jersey corporation.
The original members of the firm of I. M. Singer & Co. -- I. M. Singer and Edward Clark -- were the principal stockholders of both corporations, and on their death, in 1875 and 1882, respectively, their interests passed to their children and grandchildren, who yet are among the principal stockholders of the concern. During the existence of the firm of I. M. Singer & Co. and the life of its successor, the New York
association, the domicile of both was in New York, and after the creation of the New Jersey corporation, that company also carried on the business through a general office in New York City.
Machines of various patterns were constructed by the firm and the corporations, intended both for domestic purposes and for use in manufacturing. The differences in the arrangement of varying types of these machines were, in some respects, essential, and extended to many, but not all, of the mechanical principles employed, although all the machines were in certain particulars covered by a few fundamental patents of which the corporations were owners or licensees. None of the machines, however, was patented as a whole.
The patent to Elias Howe, granted September 10, 1846, and which remained in force until 1867, covered the use of the eye-pointed needle in combination with a shuttle and automatic feed. A patent issued to John Bachelder in 1849, and which remained in force until about 1877, covered the principle of a continuous feed. The firm of I. M. Singer & Co. purchased this patent, and it subsequently passed to their corporate successors. A third important patent utilized in the machines was one issued in 1851 to Allen B. Wilson for a feeding bar. This extended patent expired in 1872. The Singer Manufacturing Company became a part owner of this latter patent.
The use of the patents of Howe and Bachelder were not confined to the Singer machines, but were employed under license by manufacturers of other sewing machines where an automatic feed was employed.
Nearly one hundred other patents relating to a sewing machine mechanism and attachments to sewing machines were owned or controlled from time to time by the Singer firm or its corporate successors, and among those owned by them were "a vibrating presser, thread guide, binders, embroidery attachments," etc. The use of some of these was early discontinued, and others have been and are still in general use by the Singer Company on machines made by it, and some were used under license by other manufacturers.
While it is true that all the patented inventions owned or controlled by the Singer Company were not all used on every type of Singer machine, it is also true that all Singer sewing machines contained some features of some of these inventions, which to that extent distinguished them from machines made by others of a similar class. Among the machines made by the Singer corporation for general domestic use was one by it styled the "Singer New Family Machine."
These Singer "New Family" machines were intended to take the place of a machine which had theretofore been known as "Old Family" and "Letter A" machine, and were first sold in the spring or winter of 1866. The New Family machine was essentially different in form and appearance and in some of the mechanical principles employed from machines of other manufacturers used for similar purposes, and formed a distinctive Singer machine.
Some of its parts were covered by patents. It passed into very general use, and its sale formed a large part of the business of the corporation.
On the front or top of the arm of the machines made by the Singer firm was marked the name "I. M. Singer & Co.," and on those constructed by the corporations the words "The Singer Mfg. Co." At infrequent periods prior to 1877, the successors of I. M. Singer & Co. marked upon various styles of their machines, sometimes upon the treadle and again on the arm of the machine, the name "Singer" alone, but even where this was done, the corporate name of the company was always somewhere affixed to the machines. Some few years before the Bachelder patent expired, the Singer Company began, in addition to the name of the corporation, as above stated, to affix to all its sewing machines of every grade a trademark, which device consisted of a shuttle, two needles crossed, with a line of cotton in the form of a letter "S," with a bobbin underneath. This device was placed in the center of an ellipse. Surrounding the upper half of the device were the words "THE SINGER MFG. CO., N.Y." and underneath it were the words "Trade Mark;" beneath those words a wreath of flowers. This trademark was stamped on a brass
plate of oval shape, which plate was attached at the base of the arm of the machine, so as to be readily seen, and to be at once under the eye of a person using of looking at the machine.
The Bachelder patent expired about 1876, and at once on the monopoly which it had created coming to an end, the prices of the Singer machines were very materially reduced, and competitors sprang into existence, who began to manufacture machines which they called Singer sewing machines. Controversies arose between the Singer Manufacturing Company and such persons as to the right of the latter to make machines in the form and appearance of those manufactured by the Singer Company, and their right to style such machines Singer machines. In order to more completely mark the machines made by it, the Singer Company, in 1879, cast their trademark on the side of the legs of the stand of each machine, and at the time this was done, the following warning was issued:
"WARNING! To protect the public against the devices of a swarm of counterfeiters, every Real Singer Machine is now being made with our trademark cast into the stand as in the above cut."
"Buy No Machine Without It."
The trademark was registered in July, 1885.
As already stated, some of the machines made by the Singer Company before the expiration of the Bachelder and other patents were sporadically marked "Singer" in addition to the name or initials of the firm or corporation and to the trademark. After the expiration of the last of the patents, the Singer corporation changed its method, and put the word "Singer" on the front and rear of the arm of each machine, unaccompanied with the name of the corporation, except insofar as it appeared on the trademark. At all times, also, it was the custom of the Singer Company to mark on its machines the number thereof. These numbers ran consecutively from the beginning, and therefore indicated with substantial accuracy the total number of machines made. In
addition, all the machines during the life of the various patents were marked with the numbers of the patents by which the mechanism was in part covered.
The commencement of the Singer business was small. Thus, in 1851, the firm of I. M. Singer & Co. employed about twenty-five machinists, and up to that time had only sold about three hundred machines. The proof shows that the business was rapidly pushed, agencies were established in all parts of the world, and the machines became widely known. In the development of the business, the Singer Company constantly advertised their machines as "Singers," and they were referred to on the billheads, circulars, etc., of the company as "Singers," or "Singer Sewing Machines." The agents of the company, in selling the machines, spoke of them as "Singer" machines, and the greater part of the business signs in use by the company and its predecessors at its various offices or agencies, as also its wagons, cards, letter heads, bill heads, etc., had upon them the words "Singer Sewing Machines."
The vast increase in the business carried on by the Singer corporation is shown by the fact that in the year 1870, 127,883 Singer machines were sold; in the year 1878, 356,432; while in 1882, the sales aggregated 603,292. Of those sold in the year 1882, 451,538 were the New Family machines.
The defendant started in Chicago, in 1879, in the business of manufacturing "sewing machine heads," under the name of the Standard Manufacturing Company, which company purchased a business theretofore carried on by one Hughes, who thereupon entered the employ of the Standard Company as superintendent. A sewing machine head is the mechanical part of a sewing machine ready to be attached to a stand. These heads, thus made, were in all respects similar as to style and pattern with the "New Family Singer."
For some time, its entire product was furnished by the Standard Company to one H. B. Goodrich of Chicago, a dealer in sewing machines. In 1880, sales were made to one or two other dealers, and still other customers were supplied in 1881. In the month of June, 1881, the name of the corporation was changed to the June Manufacturing Company.
In the fall of 1881, that company commenced manufacturing the stands as well as heads of machines, and sold its machines direct to dealers throughout the country.
Although the machine heads, as stated, were in the exact form and shape of the New Family Singer, they contained no mark indicating the source of their manufacture except an oval brass plate, a trifle larger than, but of exactly the same shape of, the one found on the Singer machines, and attached at the base of the arm in the same position as the Singer Company placed its plates. Upon this plate the Standard Company stamped in circular form, around the upper half, the words "Improved Singer," with the word "Chicago" at the lower part of the plate, and a monogram, "S. M. Co.," with the words "Trade Mark" above such monogram. The oval plate thus used by the Standard Company continued to be used by the June Company after the change of name; this fact being explained by testimony showing that there was a supply of these plates on hand. When the supply was exhausted, the June Company attached an oval plate of exactly the same description, except that the monogram was "J. M. Co.," and the words "J. Mfg. Co." were placed beneath the monogram. In both of these plates, the words "Improved Singer" were cast in prominent lines. The June Company never attempted to register a trademark.
On the bed plate of each machine the defendant stamped or cast a number, and on one of these machines put in evidence by complainant the number was 2,543,707. The President of the defendant company gave as an explanation for this method of numbering that he merely followed what he claimed was the custom of other companies, to affix three additional figures to the actual number of the machines manufactured. When the defendant began to make complete machines -- that is, including stands -- it placed on the latter a device, cast in the legs thereof, in the same relative position as was the trademark device cast in the legs of the stand which had been adopted by the Singer Company, as heretofore stated, in lieu of the plain style of stand used during the life of the patents. This device of the defendant consisted of
the word "Singer" alone, in very large letters; the letters "I. S." in monogram form above this word "Singer," and the words "J. Mfg. Co.," in small letters underneath. Concerning this stand, the President of the defendant testified as follows:
"The stand being the most prominent and more generally noticed by the public, we adopted as a device . . . the word 'Singer' alone, which never to our knowledge had been used by the Singer Manufacturing Company, with the letters 'J. Mfg. Co.' under it, and the large letters 'I. S.' in monogram over it."
At the time when the right to make Singer machines vested in the public, the complainant also used a device for regulating the tension, called a "tension screw," which it placed upon the top of the face plate of its machines. This improvement continued, however, to be protected by a patent. In precisely the same position upon its machines the June Company placed a "dummy" screw.
The defendant advertised its machines extensively, and also issued many circulars concerning them, and furnished with their machines a printed warranty. Their machines were referred to as the "Improved Singer Sewing Machine," "June Improved Singer Sewing Machine," "Genuine Improved Singer," "The Improved Singer," "High Grade Singer Sewing Machines," "Improved Singer New Family Sewing Machine," and "The New Greatly Improved Singer Sewing Machine," but all the circulars offered in evidence contained substantially the statement that the machines referred to in them were manufactured by the June Manufacturing Company.
After hearing, there was a decree dismissing the bill for want of equity, the court below substantially concluding first that the sewing machine in the form made by the defendant was public property, and therefore no infringement of the rights of the complainant had resulted from its use; second, that the name Singer was also public property, and hence no legal injury was caused to the complainant by the use of the name in the manner and form in which it was employed by the defendant; third, that the defendant had not imitated the trademark of the complainant. The opinion is reported in 41 F. 208.