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
Page 163 U. S. 170
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
Page 163 U. S. 171
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
Page 163 U. S. 172
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.
Page 163 U. S. 173
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
Page 163 U. S. 174
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
Page 163 U. S. 175
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.
Page 163 U. S. 176
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
Page 163 U. S. 177
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.
Page 163 U. S. 178
MR. JUSTICE WHITE, after stating the foregoing facts, delivered
the opinion of the Court.
The facts recapitulated in the statement just made are
undisputed. Those which are seriously controverted, and upon which
the legal issues depend, are, first, were the sewing machines made
by the Singer Company so, in whole or in part, protected by patents
as to cause the name "Singer" to become, during the existence of
the monopoly, the generic designation of such machines, as
contradistinguished from a name indicating exclusively the source
or origin of their manufacture? Second. Irrespective of the
question of patent, was the name "Singer," by the consent and
acquiescence of Singer himself and that of the Singer Company,
voluntarily used as a generic designation of the class and
character of machines manufactured by I. M. Singer & Co. or the
Singer Manufacturing Company, so that, in consequence of this
voluntary action, the name became the generic designation of the
machines, or was the name solely used by the company as a
tradename, a trademark, or one exclusively indicating machines made
by I. M. Singer & Co. or the Singer Manufacturing Company?
We will consider these two controverted propositions of facts
separately. Before doing so, we deem it well to say that on both
these questions there are many conflicting and confusing statements
in the record, adduced by both parties. Whatever may be their
merit, they are not testimony in the proper sense of the word,
being rather the expression of the opinion of the witnesses than
substantive proof of existing facts. And the testimony of this
character in favor of the respective parties, if allowed all
possible weight, produces no affirmative result, since it is
equally as strong by way of opinion on one side as it is upon the
other. We shall therefore rest our conclusions on a consideration
of the facts themselves,
Page 163 U. S. 179
rather than upon the conflicting and irreconcilable opinions of
witnesses.
1. It cannot be denied that the Singer machines were covered by
patents, some of which were fundamental, some merely accessory.
There can also be no doubt that the necessary result of the
existence of these patents was to give to the Singer machines as a
whole a distinctive character and form which caused them to be
known as Singer machines, as deviating and separable from the form
and character of machines made by other manufacturers. This
conclusion is not shaken by the contention that, as many different
machines were made by the Singer Manufacturing Company, therefore
it was impossible for the name Singer to describe them, all,
because the same designation could not possibly have indicated many
different and distinct things. The fallacy in the argument lies in
failing to distinguish between genus and species. To say that
various types of sewing machines were made by the Singer
Manufacturing Company in no way meets the view, borne out by the
testimony, that all machines by them constructed were in some
particular so made as to cause them all to be embraced under the
generic head of "Singer," and to be protected in some respects by
the patents held by the company. From this fact it resulted that
during the life of the patents, none of the machines as a whole
were open to public competition. Persuasive support of this view is
afforded by the fact that in many adjudicated cases to which we
shall have occasion hereafter to advert, where, since the
expiration of the patents the right to the exclusive use of the
name Singer has been asserted, it has almost without exception been
found that Singer machines, as a whole, were a distinctive class,
preserving a general uniformity of nature, however varying may have
been the types by which their structure was manifested.
It may be assumed that the proof establishes that for certain
classes of the general type of Singer machines -- that is, the
species used only for particular and exceptional manufacturing
purposes -- an addition of some other word or description to the
generic name Singer was necessary to completely
Page 163 U. S. 180
convey a perfect indication of the machine referred to -- that
is, Singer "carpet machine," Singer "leather machine," etc. But
this fact does not counterbalance the conclusive proof that, as a
whole, the Singer machines represented a general class, and were
known to the public under that comprehensive name and no other.
Indeed, any probative force which might result from the fact that,
as to a particular class of Singer machines, some additional word
may have been essential to a perfect designation bears no relation
to the variety of the machine which the defendant is averred to
have unlawfully imitated. That machine known as the "New Family,"
intended for general domestic purposes, constituted the larger part
of the enormous output of the Singer Companies. It was of a uniform
type, and had no other possible designation, in the mind of the
general public, other than the word "Singer." The foregoing views
find conclusive support from the unquestioned fact that, upon the
expiration of the patents held by the Singer Company, the price of
the machines made by that company fell enormously in amount. Thus,
to adopt the theory advanced by the complainant, we should have to
deny the inevitable law of cause and effect.
Abundant corroborative proof that the word "Singer" became
generically descriptive of the machines manufactured by the Singer
Company is afforded by the conduct of that company. From the
beginning every machine made by it had conspicuously marked on it
the name of the manufacturer, "I. M. Singer & Co." or the
"Singer Mfg. Co." Only occasionally was the word "Singer" alone
attached to any of the machines. This continued until the technical
trademark came into play, which was about the time the patents
expired. After this, the trademark was affixed to the machines, and
the name of the manufacturer, except as indicated by the trademark,
disappeared, and was regularly supplanted by the word "Singer"
alone. The trademark then adopted could not have been essential to
designate the source of manufacture, since, from the inception, the
company had subserved that purpose by marking the name of the firm
or corporation plainly upon the machines. The omission of the name
indicating
Page 163 U. S. 181
the origin of manufacture, and the substitution of the word
"Singer" just before the expiration of the patents, suggest a
coincident relation of purpose which is not explained by any
testimony in the record. This coincidence between the expiration of
the patents and the appearance of the trademark on the machines and
the use of the word "Singer" alone tends to create a strong
implication that the company, with the knowledge that the patents
which covered their machines were about to expire, substituted the
trademark for the plain designation of the source of manufacture
theretofore continuously used, and added the word "Singer," which
had become the designation by which the public knew the machine, as
a distinctive and separate mark, in order thereby to retain in the
possession of the company the real fruits of the monopoly when that
monopoly had passed away.
2. Irrespective of the patents and the designative significance
of the word "Singer" which arose during their life, the proof also
clearly establishes that the word "Singer" was adopted by I. M.
Singer & Co., or the Singer Manufacturing Company, in their
dealings with the general public, as designative of their
distinctive style of machines rather than as solely indicating the
origin of manufacture. This is demonstrated by the fact that at the
inception of the manufacture of the machines the word "Singer"
alone was not used on them. The general method then adopted to
indicate the source of the manufacture was to mark conspicuously on
the machines the name of the firm or corporation. The name "Singer"
alone was used by the company on signs, on wagons, on
advertisements, on bill heads, accompanied with the name of the
firm or corporation. This could have had no other purpose than to
denote to the public the corporation's understanding of the general
name of the machines made by it. There is no proof that the name
thus adopted by the corporation did not subserve this contemplated
purpose of designating all the machines of whatever type, or that
its inadequacy compelled the corporation to add to it, in
particular cases, the word "carpet" or "leather" to describe
machines intended for other than general domestic use. The
Page 163 U. S. 182
conduct of the company in adopting the trademark and first
affixing the name at the time of the expiration of the patents, to
which we have already adverted, is also of great significance in
considering the question of the voluntary previous selection by the
corporation of the word "Singer" as a designation.
But the proof renders it unnecessary to base our conclusions
upon the deductions to which we have just referred, since it
contains affirmative testimony as to the purpose of I. M. Singer
& Co., or the Singer Manufacturing Company, in their general
use of the word "Singer."
William F. Proctor was sworn for the complainant, and his
relations with the Singer Company are shown by the following
excerpts from his testimony:
"Q. state in detail what connection you have had with the sewing
machine business."
"A. I have been connected with the manufacture of sewing
machines since 1853 up to the present time. I have been engaged in
various capacities, first as a machinist with I. M. Singer &
Co. I afterwards went to France for them for the sale of a patent,
and established a manufactory of machines there. Since the Singer
Manufacturing Company has become established, I have been a
director since its origin, and an officer in various capacities,
and am now its vice-President."
Continuing his examination in chief, the following questions
were asked this witness:
"Q. 72. For what purpose and for what object was the name
'Singer' marked upon the machines of the complainant and its
predecessors, and applied to them in advertising them?"
"Objected to by defendant's counsel as being merely accumulative
and irrelevant to the issue."
"A. To designate them, and after the formation of the company to
gratify the desire of Mr. Singer to perpetuate his name associated
with the machine."
"Q. 73. State what you mean by designating them."
"A. As a Singer machine."
"Q. 74. State whether the name was continued by the
Page 163 U. S. 183
corporate successors of the firm for any other reason than to
gratify the desire of Mr. Singer."
"(Objected to as suggesting the answer the witness is to
make.)"
"A. It was to continue the name."
It is true that this conclusive statement, made by the
vice-president of the company, is followed in the continuation of
his testimony by several leading questions, which could not have
failed to suggest to him that it was desired that the statement
thus made should be materially qualified. But the result of this
effort to lead the witness rather strengthens than weakens the
force of the testimony just quoted.
We conclude, then, upon the two pivotal and controverted
questions of fact, which we proposed at the outset to consider
--
1st. That the Singer sewing machines were covered by patents
which gave to the manufacturers a substantial monopoly; that in
consequence of the enjoyment of this monopoly by the makers the
name "Singer" came to indicate, in its primary sense, to the
public, the class and type of machines made by the Singer Company
or corporations, and thus this name constituted their generic
description; that also, as this name applied to and described
machines made alone by the Singer firm or corporations, the use
also came in a secondary sense to convey to the public mind the
machines made by the firm or corporations.
2d. That the word "Singer" was also voluntarily applied by the
Singer firm or companies as a designation of the general type of
machines made by them, with the intention that such machines should
be accepted by the public under that name. Thus, the course of the
business and the purpose for which the name "Singer" was used
brought about results identical with those which sprang from the
existence of the monopoly; hence that name became not only the
description of the machines, but also, in a subordinate sense, the
indication of the source of manufacture.
The case, as stated by the appellant in the pleadings and in the
argument, fails to discriminate between distinct and different
Page 163 U. S. 184
causes of action. The right to relief arising from the wrongful
use by the defendant of a specific trademark and from the illegal
use of a tradename, and also acts asserted to have been done by him
which would justify the relief commonly accorded where unfair
competition in business has been carried on, are commingled, and
treated as one. Avoiding, for the sake of brevity, a statement of
the elementary grounds upon which rest the law of specific
trademark, of tradename, or of unfair competition in business, and
the distinction between them, it is sufficient to say that all the
relief which complainant seeks is necessarily embraced in the
following classification:
First. Unfair competition in business, resulting from the
form in which the defendant makes its machines, and also from the
employment by it of the word "Singer" in connection with the marks
and devices on the machines, and the use of the same name in
circulars and advertisements.(2) The alleged violation of the
specific trademark of the complainant by the devices found on
defendant's machines, and by the use of the word "Singer." We will
examine these contentions. contentions.
1st.
Unfair competition in business, resulting from the form
in which the defendant makes his machines, and also from the use
made by him of the word "Singer" in connection with the marks and
devices on his machines, and the use of the same in circulars and
advertisements.
This question subdivides itself into two inquires: where the
name of a patented machine, whether it be an arbitrary one or the
surname of the inventor or manufacturer, has become, during the
monopoly flowing from the patent, a generic description of such
machine, and at the same time in a secondary and relative sense
indicates to the public the source of manufacture, has the
manufacturer, on the cessation of the monopoly, the right to
prevent the making by another of a like machine in the form in
which it was made during the life of the patents, and has he also a
right to prevent another from calling such machines, by him made,
by the generic name attributed to them during the monopoly, and
from placing this name on them, and using it in advertisements, in
circulars,
Page 163 U. S. 185
and generally for such purposes as his interest may suggest? If
no right exist in the original manufacturer to prevent another
under the foregoing circumstances from making machines of like form
and structure and using the name under the conditions stated, does
the one who so makes and uses or sells them enjoy the liberty
without any resulting duty whatever, or is it accompanied with the
obligation of so exercising the right as not to destroy the
property of others, and also in such a manner as not to deceive the
public?
It is self-evident that, on the expiration of a patent, the
monopoly created by it ceases to exist and the right to make the
thing formerly covered by the patent becomes public property. It is
upon this condition that the patent is granted. It follows as a
matter of course that on the termination of the patent, there
passes to the public the right to make the machine in the form in
which it was constructed during the patent. We may therefore
dismiss without further comment the complaint as to the form in
which the defendant made his machines. It equally follows from the
cessation of the monopoly and the falling of the patented device
into the domain of things public that, along with the public
ownership of the device, there must also necessarily pass to the
public the generic designation of the thing which has arisen during
the monopoly in consequence of the designation's having been
acquiesced in by the owner, either tacitly, by accepting the
benefits of the monopoly, or expressly by his having so connected
the name with the machine as to lend countenance to the resulting
dedication. To say otherwise would be to hold that, although the
public had acquired the device covered by the patent, yet the owner
of the patent or the manufacturer of the patented thing had
retained the designated name which was essentially necessary to
vest the public with the full enjoyment of that which had become
theirs by the disappearance of the monopoly. In other words, that
the patentee or manufacturer could take the benefit and advantage
of the patent upon the condition that at its termination the
monopoly should cease, and yet, when the end was reached,
disregard
Page 163 U. S. 186
the public dedication and practically perpetuate indefinitely an
exclusive right.
The public having the right, on the expiration of the patent, to
make the patented article and to use its generic name, to restrict
this use, either by preventing its being placed upon the articles
when manufactured or by using it in advertisements or circulars,
would be to admit the right, and at the same time destroy it. It
follows, then, that the right to use the name in every form passes
to the public with the dedication resulting from the expiration of
the patent.
Nor is this right governed by different principles where the
name which has become generic, instead of being an arbitrary one,
is the surname of the patentee or original manufacturer. It is
elementary that there is a right of property in a name which the
courts will protect. But this right, like the right to an arbitrary
mark or any other, may become public property by dedication or
abandonment. The latter is defined by De Maragy, in his
International Dictionary of Industrial Property, as follows:
"Abandonment in industrial property is an act by which the
public domain originally enters or reenters into the possession of
the thing (commercial name, mark or sign) by the will of the
legitimate owner. The essential condition to constitute abandonment
is that the one having a right should consent to the dispossession.
Outside of this, there can be no dedication of the right, because
there cannot be abandonment in the juridical sense of the
word."
But it does not follow, as a consequence of a dedication, that
the general power vested in the public to make the machine and use
the name imports that there is no duty imposed on the one using it,
to adopt such precautions as will protect the property of others,
and prevent injury to the public interest, if by doing so, no
substantial restriction is imposed on the right of freedom of use.
This principle is elementary, and applies to every form of right,
and is generally expressed by the aphorism, "
sic utere tuo ut
alienum non laedas." This qualification results from the same
principle upon which the dedication rests -- that is, a regard for
the interest of the public and the rights of individuals.
Page 163 U. S. 187
It is obvious that if the name dedicated to the public, either
as a consequence of the monopoly or by the voluntary act of the
party, has a two-fold significance, one generic and the other
pointing to the origin of manufacture, and the name is availed of
by another without clearly indicating that the machine upon which
the name is marked is made by him, then the right to use the name
because of its generic signification would imply a power to destroy
any goodwill which belonged to the original maker. It would import
not only this, but also the unrestrained right to deceive and
defraud the public by so using the name as to delude them into
believing that the machine made by one person was made by
another.
To say that a person who has manufactured machines under a
patented monopoly can acquire no goodwill by the excellence of his
work or the development of his business during the patent would be
to seriously ignore rights of private property, and would be
against public policy, since it would deprive the one enjoying the
patent of all incentive to make a machine of a good quality,
because at its termination all the reputation or goodwill resulting
from meritorious work would be subject to appropriation by
everyone. On the other hand, to compel the one who uses the name
after the expiration of the patent to indicate that the articles
are made by himself in no way impairs the right of use, but simply
regulates and prevents wrong to individuals and injury to the
public.
This fact is fully recognized by the well settled doctrine which
holds that although
"everyone has the absolute right to us his own name honestly in
his own business, even though he may thereby incidentally interfere
with and injure the business of another having the same name, in
such case, the inconvenience or loss to which those having a common
right are subjected is
damnum absque injuria. But although
he may thus use his name, he cannot resort to any artifice, or do
any act calculated to mislead the public as to the identity of the
business firm or establishment, or of the article produced by them,
and thus produce injury to the other beyond that which results from
the similarity of name."
Russia Cement Company v. Le Page, 147 Mass. 206, 208;
Pillsbury
Page 163 U. S. 188
v. Pillsbury, 64 F. 841;
Croft v. Day, 7 Beav.
84;
Holloway v. Holloway, 13 Beavan 209;
Wotherspoon
v. Currie, L.R. 5 H.L. 408;
Montgomery v. Thompson
(1891) App.Cas. 217;
Howard v. Henriques, 3 Sandf. 725;
Mencely v. Mencely, 62 N.Y. 427;
Lawrence
Manufacturing Company v. Tennessee Manufacturing Company,
138 U. S. 537;
Brown Chemical Company v. Meyer, 139 U.
S. 540;
Coats v. Merrick Thread company,
149 U. S. 562.
Where the name is one which has previously thereto come to indicate
the source of manufacture of particular devices, the use of such
name by another, unaccompanied with any precaution or indication,
in itself, amounts to an artifice calculated to produce the
deception alluded to in the foregoing adjudications.
Indeed, the enforcement of the right of the public to use a
generic name, dedicated as the results of a monopoly, has always,
where the facts of a monopoly, has always, where the necessary
regulation to make it accord with the private property of others
and the requirements of public policy. The courts have always, in
every such case without exception, treated the one as the
correlative or resultant of the other.
In
Fairbanks v. Jacobus, (1877) 14 Blatchford 337, it
was sought to restrain the defendant from making or selling an
imitation of Fairbanks' scales, and from casting the words
"Fairbanks Patent" upon scales so made in imitation of scales of
the manufacture of the complainant. Johnson, J., held (p. 341) that
by reason of the expiration of the patents under which plaintiff
manufactured his scales, there was not, in the acts complained of,
any invasion of the plaintiff's rights. The court said:
"Certainly if the words 'Fairbanks Patent' do not mean to assert
the existence of a patent securing the scales, but only that they
are made in conformity with, and embody the invention of, the
expired Fairbanks patent, they are free to all the world. What is
not free is to pretend that a scale is made by one person which is
in fact made by another."
In
Singer Mfg. Co. v. Larsen (1878), 8 Bissell 151, it
was sought to restrain the defendant from the use of the name
Page 163 U. S. 189
"Singer" in connection with machines manufactured or sold by
him. Drummond, J., observed (p. 152):
"On a machine called the 'Singer Sewing Machine' there were
various patents. 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 may 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 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."
But in upholding the right, a duty was also enjoined, the court
adding:
"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 anyone believe that the machine which he
constructs and sells is manufactured by the plaintiff. Neither has
he the right to use any device which may be properly considered a
trademark so as to induce the public to believe that his machine
has been manufactured by the plaintiff, and therefore I shall
modify the injunction in this case by simply requiring the
defendant to refrain from selling any Singer sewing machines
manufactured by any person or company other than the plaintiff
without indicating in some distinct manner that the said machines
were not manufactured by the Singer Manufacturing Company."
In
Singer Mfg. Co. v. Stanage (1881), 6 F. 279, Treat,
District Judge, said (p. 280):
"The plaintiff and its predecessors had, in connection with
others, through other patents, a monopoly as to certain sewing
machines, known as the 'Singer Machines.' When these patents
expired, everyone had an equal right to make and vend such
machines. If the patentees or their assignees could assert
successfully an exclusive right to the name 'Singer' as a
Page 163 U. S. 190
trademark, they would practically extend the patent
indefinitely."
The court entered into no discussion of the limitations resting
on a party in the use of a name or designation dedicated to public
use, because the facts rendered it unnecessary, the court saying
(p. 282):
"Sixth. The distinctive names and devices of the plaintiff
corporation were not used by the defendant, and no one of ordinary
intelligence could suppose that the 'Stewart' manufacture was the
manufacture of the plaintiff. Each had its distinctive and detailed
names and devices, so that there was no probability that the
machine made by one would be mistaken for the manufacture of the
other."
In
Singer Mfg. Co. v. Riley (1882), 11 F. 706, where a
suit was brought to restrain the use of the word "Singer" by the
defendant in connection with sewing machines, the preliminary
injunction was refused, following the decision in the
Stanage case. The court called attention to the fact that
the word "Singer" was not used on defendant's machines. It made no
ruling as to the duty of the defendant to so use the name "Singer"
as not to deceive, because it found that the defendant's devices
were not calculated to mislead.
In
Brill v. Singer Mfg. Co. (1884) 41 Ohio St. 127, it
was held (pp. 137
et seq.) that, as Singer machines had
been protected by patents, and during the existence of such patents
became known and identified in the trade by their shape, external
appearance, or ornamentation, the patentee could not, after the
expiration of the patent, prevent others from using the same modes
of identification in machines of the same kind manufactured and
sold by them. It was also held that the Singer machines had become
known to the public by a distinctive name during the existence of
the patent, and that anyone at the expiration of the patent might
make and vend such machines and use such name.
It would appear that the name "Singer" had not been, directly or
indirectly, marked upon the machines. It might also be inferred
from the report of the case that the designation of defendant's
machine was accompanied by a statement as to
Page 163 U. S. 191
who was the manufacturer. At all events, the court did not
discuss the obligation of the defendant to avoid misleading, since,
under the facts, the question did not arise.
In
Gally v. Colt's Patent Firearms Mfg. Co., (1887), 30
F. 122, it was held that the name "Universal," applied by a
patentee to his patented printing press, upon the expiration of the
patent could not be appropriated by the inventor as a trademark.
Shipman, J., said (p. 122):
"Any manufacturer who uses the name now does so to show that he
manufactures the Gally press, which he may rightfully do, and does
not represent to the public that it is getting any skill or
excellence of workmanship which Gally possessed, and does not
induce it to believe that the presses are manufactured by the
plaintiff."
The machines manufactured by the defendant, upon which was
stamped the name "Universal," also bore the name of their
maker.
Merriam v. Holloway Pub. Co. (1890), 43 F. 450,
involved the right of the defendants to use the words "Webster's
Dictionary" in connection with a reprint of the 1847 edition of
that work upon which the copyright had expired. Mr. Justice Miller,
in the opinion delivered by him, said (p. 451):
"I want to say, however, with reference to the main issue in the
case, that it occurs to me that this proceeding is an attempt to
establish the doctrine that a party who has had the copyright of a
book until it has expired may continue that monopoly indefinitely
under the pretense that it is protected by a trademark or something
of that sort. I do not believe in any such doctrine, nor do my
associates. When a man takes out a copyright for any of his
writings or works, he impliedly agrees that at the expiration of
that copyright such writings or works shall go to the public and
become public property. I may be the first to announce that
doctrine, but I announce it without any hesitation. If a man is
entitled to an extension of his copyright, he may obtain it by the
mode pointed out by law. The law provides a method of obtaining
such extension. The copyright law gives an author or proprietor a
monopoly of the sale of his writings
Page 163 U. S. 192
for a definite period, but the grant of monopoly implies that,
after the monopoly has expired, the public shall be entitled ever
afterwards to the unrestricted use of the book."
And the justice further observed (p. 452):
"The contention that complainants have any special property in
'Webster's Dictionary' is all nonsense, since the copyright has
expired. What do they mean by the expression 'their book,' when
they speak of Webster's Dictionary? It may be their book if they
have bought it, as a copy of Webster's Dictionary is my book if I
have bought it. But in no other sense than that last indicated can
the complainants say of Webster's Dictionary that it is their
book."
Although the right to use the words was thus adjudged, the duty
not to deceive by the method of their employment was upheld and
enforced, the court saying (p. 451):
"Now taking all these allegations together, there may be some
evidence of a fraudulent intent on defendants' part to get the
benefit of the reputation of the edition of Webster's Dictionary
which the complainants are publishing, and it may possibly be that,
in consequence of the facts averred, the public are deceived, and
that the complainants are damaged to some extent. We think
therefore that this in one of those cases where, as the facts are
stated in the complaint, the interests of justice would be best
subserved by requiring the defendants to answer, so that there may
be a full and fair investigation of the law and facts upon a final
hearing."
In
Merriam v. Famous Shoe & Clothing Co., 47 F.
411, a ruling similar to that announced by Mr. Justice was made.
But although the right to use the words "Webster's Dictionary" was
sustained, the obligation to so use as not to mislead was again
stated, Thayer, J., saying (p. 414):
"It is unnecessary at this time to determine what form of relief
should be administered if the allegations of the bill are proven on
final hearing. It may be that some change in the form of
defendants' circulars and advertisements will be all the relief
that the circumstances of the case fairly warrant, or it may be
that the proof will warrant an order that the defendants place a
notice in their book that it is a reprint
Page 163 U. S. 193
of the edition of 1847 of Webster's Dictionary, with such
auditions as they may have made to it. This is a matter, however,
to be considered on final hearing, when the exact nature of the
injury and the causes that mislead the public are ascertained. It
is sufficient to say at present that, on the showing made, the
complainants are entitled to relief, and the demurrer to the bill
is accordingly overruled."
The principles thus maintained by the American cases are also
supported by the English decisions.
In
Wheeling Mfg. Co. v. Shakespear (1869), 39 L.J.Ch.
36, Vice Chancellor James refused to enjoin the use of the name of
Wheeler & Wilson as a designation in advertisements of machines
dealt in by the defendant. The advertisements of the defendant
clearly indicated, however, that the machines in question were not
manufactured by the plaintiffs. He said (p. 40):
"I could not restrain the defendant from using the words
'Wheeler & Wilson' as descriptive of any sewing machine other
than the sewing machine manufactured by the plaintiffs. It appeared
to me that 'Wheeler & Wilson' was really not the name of the
manufacturer or the name of the company, either abbreviated or
otherwise, but the name of the thing in particular. As the
plaintiffs' bill represents it, it is called 'The Wheeler &
Wilson Sewing Machine,' and, there being no other designation for
this particular machine, one can easily understand that that was
the name of the patentee, or the person who at one time had the
patent, for I take it that Wheeler & Wilson are not really the
patentees' names, because the allegation in the bill is that they
became entitled to the letters patent. It seems to me that the name
'Wheeler & Wilson' machine has come to signify the thing
manufactured according to the principle of that patent. That being
so, I cannot restrain anybody, after the expiration of the patent,
from representing his article as being the article which was so
patented. A man cannot prolong his monopoly by saying 'I have got a
trademark in the name of a thing which was the subject of the
patent,' and therefore to that extent I think the plaintiffs are
not entitled to the relief they ask. "
Page 163 U. S. 194
In
Cheavin v. Walker (1877), 5 Ch.Div. 850, it was held
that the trademark or label of the defendant, which fully stated
that a filter to which it was attached, upon which the patent had
expired, was made by him, did not infringe the trademark or label
of the complainant, who had succeeded to the rights of the original
patentee. In the Court of Appeals, James, L.J., said (p. 863):
"It is clear that on the expiration of this patent, it was open
to all the world to manufacture the article which had been
patented. That is the consideration which the inventor gives for
the patent. The invention becomes then entirely
publici
juris. The plaintiff, and also the defendants, had a right to
tell the world that they were making the article according to the
expired patent, and both parties have done this. It is impossible
to allow a man to prolong his monopoly by trying to turn a
description of the article into a trademark. Whatever is mere
description is open to all the world. In the present case, the
plaintiff's label was nothing more than a description, and he
cannot therefore have protection for it as a trademark."
Bagalley, L.J. said (p. 865):
"The Vice Chancellor thought that the words 'Cheavin's patent'
were calculated to deceive the public. But 'Cheavin's patent' is a
correct description of the principle according to which the article
was made, and there follows a distinct statement that it was
manufactured by Walker, Brightman & Co. Therefore, on this
ground also, the case made by the plaintiff's claim fails."
In
Linoleum Mfg. Co. v. Nairn (1878), 7 Ch.Div. 834,
where the right to the exclusive use of the word "Linoleum" was
asserted, the substance to which the name was attached having been
covered by patents which had expired, Fry, J., said (p. 836):
"In the first place, the plaintiffs have alleged, and Mr. Walton
has sworn, that having invented a new substance, namely, the
solidified or oxidized oil, he gave to it the name of 'Linoleum,'
and it does not appear that any other name has ever been given to
this substance. It appears that the
Page 163 U. S. 195
defendants are now minded to make, as it is admitted they may
make, that substance. I want to know what they are to call it. That
is a question I have asked, but I have received no answer, and for
this simple reason -- that no answer could be given except that
they must invent a new name. I do not take that to be the law. I
think that if 'Linoleum' means a substance which may be made by the
defendants, the defendants may sell it by the name which that
substance bears. . . ."
"In my opinion, it would be extremely difficult for a person who
has been by right of some monopoly the sole manufacturer of a new
article, and has given a new name to the new article, meaning that
new article, and nothing more, to claim that the name is to be
attributed to his manufacture alone after his competitors are at
liberty to make the same article."
As the article manufactured by the defendant was clearly marked
with the source of manufacture, the case was not one requiring the
enforcement of the duty to designate the origin of the manufacture,
but the court also said (p. 837):
"If I found they were attempting to use name in connection with
other parts of the trademark so as to make it appear that the
oxidized oil made by the defendants was made by the plaintiffs, of
course the case would be entirely different. . . ."
"It appears to me, therefore, that there has been neither
infringement of any essential part of the plaintiffs' trademark nor
any attempt on the part of the defendants to represent the goods
which they intended to sell as goods made by the plaintiffs."
(P. 838.)
Nor is there anything in the Scotch case of
Singer Mfg. Co.
v. Kimball, 11 Ct.Sess. 3d s. 267, or the English cases of
Ainger Machine Manufacturers Co. v. Wilson, 3 App.Cas.
376, 2 Ch.Div. 434, and
Singer Mfg. Co. v. Loog, 8
App.Cas. 15, and 18 Ch.Div. 395, which in any way contravene the
doctrines heretofore stated. In the
Kimball case, the fact
that there had been no patents in England was expressly referred
to, the court finding that, for many years prior to 1870, machines
like Singer machines had been manufactured
Page 163 U. S. 196
under various names in England and Scotland by other parties
than the Singer Company. It was upon these facts that the court
based the right of the Singer Company to an exclusive trademark in
the name. Indeed, Lord Ardmillon (p. 276) expressly declared that
he regarded the facts above stated as distinguishing the case from
the
Shakespear Case, supra.
This distinction is also true of
Singer Mfg. Co. v.
Wilson and
Singer Mfg. Co. v. Loog. In neither was
there a claim of a generic description as a consequence of a
monopoly, and it becomes therefore needless to review these cases
at length. It may, however, be said that both these cases recognize
the right of a party in his advertising matter to state that his
machines were constructed upon the Singer system or model.
The contention advanced by the complainant that his right to the
exclusive use in the name "Singer" after the expiration of the
patents, although that name became the generic description of the
machines during the monopoly, is in accord with the law of France
is without foundation. On the contrary, the French writers and
courts recognize the doctrine to be substantially like that which
is enforced in America and England. Braun, Marques de Fabrique, p.
232, sec. 68, says:
"The question is not whether an inventor can attribute to his
patented invention a particular designation which remains the
exclusive property of the patentee by the same title and for as
long a time as the invention itself. This is evident, for without
this right existing in the patentee, his patent would be in certain
respects illusory. But at the expiration of the patent, does the
designation fall into the public domain with the patented
invention? Does the patented thing lose the right to be solely
individualized in favor of the inventor by the designation which up
to that time has served as its mark. Three theories present
themselves."
After fully stating these three different points of view, the
author adds:
"To resume, the three systems may be formulated as follows: (1)
the designation of the thing patented becomes
Page 163 U. S. 197
public property on the expiration of the patent; (2) the
patentee retains in every case the sole use to the designation,
after the expiration of his monopoly. If he had deposited the name
[as a legal trademark] before the expiration of the patent; (3) the
designation continues to belong to the patentee in every case but
one, if the name given to the product has become the only and
necessary designation of the patented article. We think there can
be no hesitation in pronouncing in favor of the third proposition,
except, however, that it requires to be completed by a second
exception, which is that the name is also public property if in the
interval which has elapsed between the expiration of the patent and
the deposit of the trademark the inventor has allowed the
designation to become public property."
Pouillet, Brevets D'Invention, Nos. 327, 328, pp. 278, 279,
reviews the opinions of the commentators and the decisions of the
courts as follows:
"The expiration of a patent has for its natural effect to permit
every one to make and sell the object patented, and it has also for
effect to authorize every one to sell it by the designation given
it by the inventor, but upon the condition in every case, not, in
so doing, to carry on unfair competition in business (Concurrence
De Loyal) against him. Without this, say Pecard & Olin, the
monopoly would be indefinitely prolonged, because in commerce one
could not recognize the thing produced by the invention under any
other designation than that given during the life of the patent.
However, the question is not without difficulty when the name of
the inventor enters into the designation of the product. . . . In
such case, the courts should not allow third persons to employ the
name of the inventor but with extreme caution, and by taking the
most rigorous measures to prevent a confusion as to the origin of
the product which it would be very easy to abuse. It has been
adjudged, conformably to these principles (Paris, 20th of January,
1844; Trib. comm.; Seine, 22d of December, 1853, Trib. comm.;
Seine, 28th of July, 1853): 1st. that the denomination under which
a patented article is designated by the inventor falls into the
public domain at
Page 163 U. S. 198
the same time as the invention, at least when this denomination
has been drawn from common language and does not reproduce the name
of the inventor himself; nevertheless the right to announce the
product under the same denomination affixed to it by the inventor
does not go to the extent of allowing its sale with the plates or
stamps, or metallic paper, or tickets, or the manner of securing
it, or the envelopes, or form or color analogous to that used in
such a way as to cause appearances of deception. (Nancy, 7th of
July, 1854, Verly, Sir., 1855, 2 vol. 581.); 2d, that when an
invention falls into the public domain, it enters with the name
which the inventor has given it, and he cannot prevent a person
from employing this designation. Thus, the inventor of the
'harmonium' was not allowed, after the expiration of his patent, to
prevent others from making this instrument and selling it under the
name which had been given to it. (Paris, 30th December, 1859,
Pattaille, 1859, 414.); 3d. that the patented invention falling
into the public domain can be advertised and sold by the
designation given to it by the inventor, even when the name of this
last person figures therein. If by usage and by the act of the
inventor his name has become the necessary element to designate the
product, it is essential, however, that the competitors of the
inventor avoid all confusion which can induce the public into error
as to the origin of the products."
(Cassation, 31st of January, 1860, Charpentier.)
The same author again says:
"In principle, a surname is inalienable, and each one keeps the
imprescriptible ownership in it. We know, however, that when the
name of the inventor has become the designation of the thing
patented, it belongs to everyone at the expiration of the patent,
to make use of this designation."
Pouillet, Brevets D'Invention, p. 280, sec. 329.
The French decision mainly relied on by the plaintiff in error
is that relating to the use of the surname "Bully" in a toilet
preparation known as the "Vinegar of Bully," but the facts upon
which the case was decided are misapprehended. In that case, the
sole question was whether the surname "Bully" had been either
expressly or tacitly dedicated by
Page 163 U. S. 199
him to the public by connecting it with his preparation. The
Court of Cassation rested its decree upon the finding of fact by
the court below, which was conclusive on it, that no such
association of the name, by either the express or tacit consent of
Bully, had ever taken place. We excerpt, briefly, the language of
the Court of Cassation as reported in the Dictionary of De Marafy,
col. 1, p. 11:
"Whereas without doubt the methods of manufacture of a patented
product fall into the public domain after the expiration of the
patent, but it is otherwise as to the name of the inventor, and
that this rule suffers no exception except in the case where,
either by long usage or in consequence of a consent either
expressly or tacitly given by the inventor, his surname having
become the sole usual designation of his invention, it is employed
to indicate the mode or the system of manufacture, and not the
origin of the particular manufacture."
"Whereas it is declared by the judgment appealed from that
Claude Bully has never manifested an intention to indissolubly bind
up or unite his name for the benefit of his invention,"
etc.
And the same distinction controlled the case of Howe, where the
French courts enjoined the use of that name on a sewing machine.
There, the court, as a basis of its decree, used the following
language:
"And whereas they [Howe and his heirs] did not take patents in
France for the invention and their improvements, which have
therefore fallen into the public domain,"
and have "never, either expressly or tacitly, abandoned the
right to affix his name [that of Howe] to the products of the
invention."
The result, then, of the American, the English, and the French
doctrine universally upheld is this: that where, during the life of
a monopoly created by a patent, a name, whether it be arbitrary or
be that or 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. Where another avails himself of this
public dedication to make the machine and use the generic
designation, he
Page 163 U. S. 200
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.
It remains only to apply these legal conclusions to the facts
already recapitulated. Of course, from such application all claim
of right on the part of plaintiff in error to prevent the use of
the name "Singer" is dispelled. This leaves only two questions:
first, whether that name, as used in the circulars and
advertisements of the defendant, is accompanied with such plain
information as to the source of manufacture of the machines by them
made as to make these circulars and advertisements lawful, and
second whether this also is the case with the use of the word
"Singer" on the machines which the defendant makes and sells. As to
the first of these inquires, the proof shows that the circulars
were so drawn as to adequately indicate to anyone in whose hands
they may have come that the machines therein referred to were made
by the June Manufacturing Company, and not by the Singer Company.
We therefore dismiss the circulars from view. As to the
advertisements, without going into details, some of those offered
in evidence were well calculated to produce the impression on the
public that the Singer machines referred to therein were for sale
by the June Manufacturing Company, as the agent or representative
of the Singer Company.
On the second question, the proof also is clear that there was
an entire failure on the part of the defendant to accompany the use
of the word "Singer," on the machines made and sold by him, with
sufficient notice of their source of manufacture as to prevent them
from being bought as machines made by the Singer Manufacturing
Company, and thus operate an injury to private rights and a deceit
upon the public. Indeed, not only the acts of omission in this
regard but the things actually done give rise to the overwhelming
implication that
Page 163 U. S. 201
the failure to point to the origin of manufacture was
intentional, and that the system of marking pursued by the
defendant had the purpose of enabling the machines to be sold to
the general public as machines made by the Singer Company.
The marks on the machines are found on the oval plate and on the
device cast in the leg of the stand. On the first of these (the
oval plate), the words "Improved Singer" are found in prominent
letters, unaccompanied by anything to indicate that the machines
were manufactured by the June Company except the words "J. M. Co."
and the monogram "J. Mfg. Co." The shape of the plate, its
material, the position in which it was placed upon the machines,
its size, its color, the prominence given to the words "Improved
Singer," all could have conveyed but one impression to one not
entirely familiar with the exact details of the device upon the
Singer Company's plates, and that is that the machine was one
coming from the factory of the Singer Company. So in the second
(the device cast in the legs of the stand), the word "Singer,"
alone without any qualification, is there found in bold relief, and
above this the word "I. S." and in small letters "J. Mfg. Co." The
similarity between the letter J. and the letter S., the failure to
state in full the name of the manufacturer, the general resemblance
to the device of the Singer Company, the place where it was put,
which had no necessary connection with the structure or working
capacity of the machines, and the prominence of the casting of the
word "Singer" in comparison with the other mark, brings out in the
plainest way the purpose of suppressing knowledge of the actual
manufacturer, and suggesting that it was made by the Singer
Company. It is significant of the fraudulent purpose of the
defendant that the device which the Singer Company cast in the legs
of its machines was only by them adopted after the expiration of
the patents and the resulting cessation of the monopoly, and for
the avowed purpose of distinguishing their machines from others
which had come upon the market, and therefore the colorable
imitation which the defendant immediately proceeded to make had no
necessary connection with the right to make machines according to
the Singer system,
Page 163 U. S. 202
and to call and sell them as Singer machines in consequence of
their dedication to the public. But there are other circumstances
in the record which throw light upon the facts which we have just
stated and lend to them an increased significance. On the plate of
the Singer machines there was plainly marked a number which the
proof shows had run with relatively accurate consecutiveness from
the beginning. These numbers, as a result of the vast development
of the business of the Singer Company and the enormous number of
New Family machines sold by them, ran into the millions. The
defendant, who was in the commencement of his business, at once
began also to number his machines in the millions, thereby
conveying the obvious impression that they were the result of a
manufacture long established, and as they were marked "Singer,"
suggesting, by an irresistible implication, that they were machines
made by the Singer Company. There is an attempt in the evidence to
explain this fact by the statement that it was the habit of sewing
machine makers to add three figures to the actual number of
machines by them made, but the proof does not sustain the
explanation, and if it did, it amounts to but the contention that
the commission of a fraud should be condoned because others were
guilty of similar attempts to deceive. There is another significant
fact. On the machines made by the Singer Company there was a
tension screw. This screw on the Singer machines served a useful
mechanical purpose, and did not pass into the public domain with
the expiration of the fundamental patents, because specially
covered by a subsisting patent. The defendant, in making his
machines, placed thereon a dummy screw, serving no mechanical
purpose whatever, and which could have had no object but that of
producing the impression that his machine was made by the Singer
Company.
There remains only for examination the second proposition, that
is:
Second. The alleged violation of the specific trademark of
the complainant by the device found on the defendant's machine and
by the use of the word "Singer."
This question is necessarily involved in and determined by
Page 163 U. S. 203
the foregoing considerations. There can be no doubt, if the
right to use the word "Singer" did not exist, that the plate and
the device cast in the leg of the defendant's machine would be a
plain infringement of the specific trademark of the Singer Company.
There can also be no doubt that the marks used by the defendant
would not constitute a specific infringement unless they contained
the words "Singer," or a representation equivalent in the public
mind to that word. It follows that the marks used by the defendant
become only an infringement from the fact that each of them
contained and embodied the word "Singer." But the word "Singer," as
we have seen, had become public property, and the defendant had a
right to use it. Clearly, as the word "Singer" was dedicated to the
public, it could not be taken by the Singer Company out of the
public domain by the mere fact of using that name as one of the
constituent elements of a trademark. In speaking of a mark
containing composite words, some of which become dedicated to
public use, others of which are not, Braun, in his Traite des
Marques de Fabrique, No. 135, pp. 354, 355, says:
"The surname, says a judgment of the Court of Paris, is property
in the most necessary and in the most imprescriptible sense.
(Paris, 18th of November, 1875, Pattaille.) Does this mean that a
mark composed of a name can never be lost? The courts, on the
contrary, have decided that two elements which compose a name --
that is, the surname of the individual or the firm upon the one
side and its tracing or distinctive form [in a trademark] are
susceptible of falling into the public domain together or
separately. In this last case, the exclusive right to the trademark
may survive the exclusive right to the name and
vice
versa. Thus one may keep the exclusive right to the use of the
name, while the remainder of the mark will belong to everyone."
The right to use the word "Singer," which caused the imitative
infringement in the device, being lawful, it is plain that the
infringement only resulted from the failure to plainly state, along
with the use of that word, the source of manufacture, and therefore
this branch of the question is covered by the same legal principle
by which we have determined the other.
Page 163 U. S. 204
It follows, therefore, that the judgment below, which recognized
the right of the defendant to make or vend sewing machines in the
form in which they were made by him -- that is, like unto the
machines made upon the principles of the Singer system -- with the
use of the word "Singer," without a plain and unequivocal
indication of the origin of manufacture, was erroneous.
Therefore the decree below must be
Reversed, and the cause be remanded, with directions to
enter a decree in favor of complainant, with costs, perpetually
enjoining the defendant, its agents, servants, and representatives
first from using the word "Singer," or any equivalent thereto, in
advertisements in relation to sewing machines without clearly and
unmistakably stating in all said advertisements that the machines
are made by the defendant, as distinguished from the sewing
machines made by the Singer Manufacturing Company; second, also
perpetually enjoining the defendant from marking upon sewing
machines or upon any plate or device connected therewith or
attached thereto the word "Singer," or words or letters equivalent
thereto, without clearly and unmistakably specifying in connection
therewith that such machines are the product of the defendant or
other manufacturer, and therefore not the product of the Singer
Manufacturing Company. And the decree so to be entered must also
contain a direction for an accounting by the defendant as to any
profits which may have been realized by it because of the wrongful
acts by it committed.