Irrespective of any question of trademarks, rival manufacturers
have no right, by imitative devices, to beguile the public into
buying their wares under the impression that they are buying those
of their rivals.
The proofs establish that there was no intention on the part of
the appellees to impose their thread upon the public as that of the
plaintiff in error, or to mislead the dealers who purchased of
them.
When the letters patent to Hezekiah Conant protecting "a new
design for embossing the ends of sewing-thread spools" expired, the
public became entitled to use them for the purpose for which the
assignee of Conant used them.
This was a bill in equity by the firm of J. & P. Coats, of
Paisley, Scotland, to enjoin the defendants, the Merrick Thread
Company, a Massachusetts corporation, and Herbert F. Palmer, its
managing agent in New York, from infringing plaintiffs' trademark
and unfairly competing with them by simulating
Page 149 U. S. 563
certain labels and symbols used by the plaintiffs upon the ends
of wooden spools upon which sewing thread is wound.
The bill set forth in substance that plaintiffs had, since 1830,
been engaged in the manufacture and sale of sewing threads on
spools, and since the year 1840 the thread made by them had been,
and still was, sold largely in the United States; that since about
the year 1869, said firm had also been engaged in the manufacture
of thread at Pawtucket, in the State of Rhode Island; that their
business was very large and valuable, and their thread was well
known to the trade as "J. & P. Coats' thread;" that all the
thread manufactured by plaintiffs, which is wound on spools of
200-yard lengths, had been and still was composed of six separate
strands twisted together, known as "Six-Cord Thread," and was
designated upon their labels and wrappers as "Best Six Cord." That
about the year 1842, the name "J. & P. Coats," with the
quantity reeled on each spool, and the words "Best Six Cord," with
a designating number, were placed upon circular black and gilt
label upon the end of every spool, and had always been one of the
designating trademarks of the plaintiffs in the United States; that
in 1869, they adopted the idea of embossing upon the natural wood,
and upon the outer edge of the heads of the spools, numerals
corresponding with those upon the paper labels pasted upon the
center of said spool heads, the object of such embossing being to
show the number of the thread in case the paper label showing such
number should be defaced or removed, and also to give a distinctive
appearance to the plaintiffs' spools, and to indicate the origin
and manufacture of the thread. The bill further averred that on the
9th of February, 1875, plaintiffs registered as a trademark at the
Patent Office the central label of paper, and the peripheral band
of natural wood, embossed with an ornamental design of crossed
lines and central stars, with intermediate spaces, in which were
embossed numerals corresponding to those in the center of the
label.
The bill further charged the defendant the Merrick Thread
Company with being the manufacturer of both the three-cord thread,
a thread of inferior grade, and also of
Page 149 U. S. 564
six-cord thread, on spools in length of 200 yards; that for the
three-cord thread, the defendant used paper labels wholly unlike,
in color or design, to any labels used by the plaintiffs, but that
in selling, in competition with the plaintiffs, the six-cord
thread, it used labels upon the spools made in colorable imitation
of the plaintiffs', and intended as a counterfeit of their designs
and trademark, the object being to so imitate the general
appearance of plaintiffs' thread that the same may pass into the
hands of tailors, illiterate men, and others buying at retail, and
using sewing thread, as the genuine thread of plaintiffs.
In their answer, the defendants denied the material allegations
of the bill and that the marks, embossment, and labels used by the
Merrick Thread Company were a simulation or infringement upon the
plaintiff's labels and trademarks, but, upon the contrary, averred
that they had endeavored to mark their goods so that no one could
mistake their origin, and that their labels were so different from
those of the plaintiffs and other manufacturers that they were
plainly distinguishable from them by ordinary purchasers. They
further averred that the use of embossing the number of the spool
thread on the wood of the spool head around the paper label was on
April 5, 1870, patented as a design to one Hezekiah Conant, which
patent had long since expired, and alleged that since such
expiration the defendants had the free right to use such design,
including any paper label which was not in and by itself an
infringement of any lawful trademark of the plaintiffs.
On a hearing in the court below upon pleadings and proofs, the
bill was dismissed, 36 F. 324, on the ground that defendants were
not shown to have made an unlawful use of the plaintiffs' labels.
Plaintiffs thereupon appealed to this Court.
Page 149 U. S. 565
MR. JUSTICE BROWN, after stating the facts in the following
language, delivered the opinion of the Court.
The gravamen of the plaintiffs' bill is contained in the
allegation that the defendants have been guilty of an unlawful and
unfair competition in business in that they have been infringing
the rights of plaintiffs in and to certain marks, symbols, and
labels by selling in competition with the plaintiffs a spool thread
of "six cords" put up on spools of 200 yards length, which thread
is not manufactured by these plaintiffs, but is put upon the market
and sold among retailers and customers, as well in the City of New
York as in other and distant parts of the United States, as and for
the thread of the plaintiffs, by reason of the labels, marks, and
devices upon the spools whereon the said thread is wound.
It will be observed in this connection that no complaint is made
of the conduct of the defendants with respect to any other thread
than that of six cords, put up in spools of 200 yards in length,
notwithstanding that both plaintiffs and defendants have been long
engaged in the manufacture of thread of several different sizes and
lengths. Nor is it alleged that defendants have used any other
means of imposing their thread upon the public as that of the
plaintiffs except by the imitation of their device upon one end of
the spool. The dissimilarity between the labels on the other end of
the spool is so great that it is not, and could not be, claimed
that any intent to imitate existed.
It is admitted, however, that six-cord spool cotton is the
thread most largely used for domestic consumption, and, put up on
spools of 200 yards length, in numbers from 8 to 100, is best known
and purchased by the great mass of consumers, and that it is as
manufacturers of this description of thread that the plaintiffs
are, and have for a long time been, known throughout the
country.
The controversy between the two parties, then, is reduced to the
single question whether, comparing the two designs upon the main or
upper end of the spool, there is such resemblance as to indicate an
intent on the part of defendants to put off
Page 149 U. S. 566
their thread upon the public as that of the plaintiffs, and thus
to trade upon their reputation. There can be no question of the
soundness of the plaintiffs' proposition that, irrespective of the
technical question of trademark, the defendants have no right to
dress their goods up in such manner as to deceive an intending
purchaser and induce him to believe he is buying those of the
plaintiffs. Rival manufacturers may lawfully compete for the
patronage of the public in the quality and price of their goods, in
the beauty and tastefulness of their enclosing packages, in the
extent of their advertising, and in the employment of agents, but
they have no right, by imitative devices, to beguile the public
into buying their wares under the impression they are buying those
of their rivals.
Perry v. Truefitt, 6 Beav. 66;
Croft
v. Day, 7 Beav. 84;
Lee v. Haley, L.R. 5 Ch. 155;
Wotherspoon v. Currie, L.R. 5 H.L. 508;
Johnston v.
Ewing, L.R. 7 App.Cas. 219;
Thompson v. Montgomery,
41 Ch.D. 35;
Taylor v. Carpenter, 2 San.Ch. 603;
Amoskeag Mfg. Co. v. Spear, 2 Sand. 599;
McLean v.
Fleming, 96 U. S. 245;
Boardman v. Meriden Britannia Co., 35 Conn. 402;
Gilman v. Hunnewell, 122 Mass. 139.
For the better understanding of the question in this case, the
respective devices of the plaintiffs and defendants are here given
in juxtaposition:
image:a
It will be seen that in both devices there is a paper label,
circular in form, much smaller than the head of the spool,
containing, in black letters upon a gilt ground, the name of the
manufacturer, the number of the thread, and the words "Best Six
Cord," arranged in circular form to correspond with the shape of
the label. Around this label in each case is
Page 149 U. S. 567
a peripheral border of natural wood, having the number of the
thread embossed upon such periphery. The differences are less
conspicuous than the general resemblance between the two. At the
same time, they are such as could not fail to impress themselves
upon a person who examined them with a view to ascertain who was
the real manufacturer of the thread. Plaintiffs' label contains the
words "J. & P. Coats, Best Six Cord," in a gilt band around the
border, and, in the center, the symbol "200 Yds," and the number of
the thread. Defendants' label contains the words "Merrick Thread
Co.," and the number of their thread in the gilt band upon the
border, and, in the center, the words "Best Six Cord," enclosing a
star. The periphery of defendants' spool is also embossed with four
stars, instead of the loops of the plaintiffs, as well as the
number of the thread.
As bearing upon the question of fraudulent intent, the history
of these labels is pertinent. Since 1830, plaintiffs have been
engaged in the manufacture of thread at Paisley, Scotland, in the
name of J. & P. Coats. About 1840, their thread was first put
upon the market in this country, and for more than twenty-five
years past they have been manufacturing thread at Pawtucket, Rhode
Island, in the name of the Conant Thread Company. Prior to this
time, six-cord thread was not made in this country, a kind of
thread known as "glace," and composed of three cords, being the
only thing made prior to 1865. At about the same time, the
manufacture of this thread was also begun by the Willimantic Linen
Company, George A. Clark & Co., and the defendants. From the
time plaintiffs' thread began to be exported to this country to the
present time, their spools have borne the black and gold label
represented above, and still in use. For the past thirty years,
they have been, by far, the largest manufacturers and dealers in
spool thread in this country. On April 5, 1870, Mr. Conant, the
treasurer of the company, obtained a design patent "for embossing
the ends of sewing-thread spools," which was subsequently assigned
to the plaintiffs, and which covered a
"design for ornamenting the ends of the sewing-thread spools,
which consists of a chain of loops,
aa, within which loops
is a
Page 149 U. S. 568
number expressive of the number of the thread wound on the
spool, substantially as shown and described."
The purpose of the design was stated to be
"to preserve the number of the thread with which the spool is
would after the label has been destroyed by the act of setting the
spool upon the spool-stand of a sewing-machine."
This patent expired in 1877. In 1875, February 9, plaintiffs
registered a trademark consisting of
"a central label of paper formed of concentric circles of black
on a light ground, containing on one of the light bands the words
'J. & P. Coats, Best Six Cord,' and on the central black circle
the figures and letters '200 Yds,' and a numeral. . . . On the end
of the spool, surrounding the label, is a peripheral band of the
natural wood, embossed with an ornamental design of crossed lines
and central stars, with intermediate spaces, in which are embossed
numerals corresponding to that on the center of the label."
The essential features of this trademark were declared to be
"the label of concentric rings, having in the central spot a
numeral, and an embossed peripheral border of the natural wood,
including among its ornamental designs the same numeral as that
displayed in the center."
This trademark has been in use by the plaintiffs from its date
to the present time.
Upon the part of the defendants, it was shown that the Merrick
Thread Company was organized under that name in 1865, soon after
which it began and has ever since continued to make at its mills at
Holyoke, Massachusetts 200-yard spools of six-cord thread, and to
designate it on one head of the spool with a black and gold label
of concentric rings, bearing thereon the name, size, and quality of
the thread, following in this particular the method of designating
such thread which has been in vogue for more than fifty years, and
without which it is claimed to be impossible to market such thread.
About the same time, plaintiffs began to manufacture at Pawtucket,
Rhode Island, the same article, and to designate it with the usual
black and gold label, the same label they had used abroad upon a
thread marketed here. For a dozen years or more, the defendants
continued this method of designating their thread without objection
from the plaintiffs, but after the expiration of plaintiffs'
Page 149 U. S. 569
design patent, and in 1878, defendants embossed this numerical
design, somewhat changed, upon their own spool heads, in connection
with their own label. Whereupon, plaintiffs notified them of their
claim to an exclusive use of this combination, and sometime
thereafter brought this suit, claiming that defendants were guilty
of unfair competition in business.
In disproof of any intention upon their part to impose their
thread upon the public as that of the plaintiffs, defendants show
that their thread was expressly advertised through the country as
that of the "Merrick Thread Company," or the "Star Thread," and
also put in evidence the cabinets furnished by the defendants for
the exhibition of their threads in the retail shops, upon which is
conspicuously labeled, in large gilt letters, the words, "Merrick's
Six Cord Spool Cotton," as well as their advertising or show cards,
of which several specimens were shown, which were also lettered
conspicuously in the same manner. Their wrappers and boxes are also
so clearly distinguishable from those of the plaintiffs that it
would be hardly possible to mistake one for the other. We think the
defendants have clearly disproved any intention on their part to
mislead the dealers who purchase of them. Indeed, such dealers
could not possibly fail to know what they were buying, and the
fraud, if any, was practiced on the buyer of a single or a small
number of spools, who might be induced to purchase the thread of
the defendants for that of the plaintiffs.
In answer to the question whether the defendants have been
guilty of a fraudulent imitation of the plaintiffs' marks and
symbols, it is also pertinent to consider to what extent the black
and gold label, which constitutes an important feature of this
device, had been used by others with their consent, and to what
extent it has become recognized as a means of identifying the best
six-cord thread. If the plaintiffs had been the first and only ones
to make use of this label, another person seizing upon and
appropriating a black and gold label of the same size, and for the
same purpose, might be held guilty of infringement when, if the
plaintiffs had no exclusive right thereto, and defendants had done
only what others had
Page 149 U. S. 570
done before, they would not be so considered. In this
connection, it appears that the Willimantic Linen Company, which
now seems to be in combination with the plaintiffs, began the use
of the black and gold label of concentric rings as early as 1865 as
a designation of six-cord 200-yard spool thread, and that other
firms, both before and after that, made use of similar labels for
the same purpose, including those of Orrs & McNaught (from 1855
to 1870), George A. Clark, J. & J. Clark, the Williston Mills,
the Semples, the firm of Kerr & Co., the Hadley Co., E.
Ashworth & Sons, and others at different times from 1850 to the
present, who have made use of black and gold labels bearing nearly,
though it must be admitted not quite, as close a resemblance to
plaintiffs as do those of defendants. There was also evidence that
as early as 1821, the thread of John Clark, Jr., or of J. & J.
Clark, was imported into this country with labels in black and gold
in concentric rings, with the makers' name upon them. Indeed the
testimony indicates that the black and gold labels have become so
identified with this quality of thread by immemorial usage that it
would be impossible to introduce or sell a new manufacture of such
thread without making use of that character of label, and that a
six-cord thread attempted to be put upon the market with a label of
any other general color would be suspected of being a three-cord or
basting cotton, and practically unsalable as six-cord. In fact, the
defendants produced testimony tending to show that, in two
instances, attempts had been made to put a six-cord thread upon the
market without a black and gold label, but in one case, at least,
the project had to be abandoned, and the manufacturer was obliged
to return to the usual black and gold label. In addition to this it
appeared that the Merrick Thread Company began to make and put upon
the market 200-yard six-cord thread in the early part of 1868, and
made use of a black and gold label bearing the name of the American
Thread Company, which in 1877 was changed to the Merrick Thread
Company, the word "American" being placed upon the other end of the
spool to preserve the identity of the thread.
Regarding it, then, as established that other manufacturers
Page 149 U. S. 571
had by long practice, and with the acquiescence of the
plaintiffs, acquired the right to make use of the black and gold
label, it is difficult to see how the defendants could have
advertised more clearly the fact that it was their own thread, or
better accentuated the distinction between its own and Coats', than
it did by the alleged infringing label. Of course, a person seeking
to distinguish his label from that of another labors under certain
disadvantages, in the fact that the shape of the head almost
necessarily requires the label to be round, and the size of the
spool demands that it shall be small. In the defendants' spool, not
only did the words "Merrick Thread Co." clearly and distinctly
appear, but the number of the thread is placed conspicuously in the
margin, and the center is ornamented with a star, which does not
appear upon the plaintiffs'. As already observed, the label upon
the reverse end of the spool is wholly different from that of the
plaintiffs. It is clear that neither the words "Best Six Cord," nor
"200 Yds" are capable of exclusive appropriation, as they are
descriptive, and indicative only of quality and length.
The propriety of the employment of the embossed periphery
depends upon somewhat different considerations. In 1870, Hezekiah
Conant, of Pawtucket, Rhode Island, the manager of plaintiffs'
American manufactory, took out the design patent for this embossed
periphery. This patent seems to have been respected until 1877,
when it expired, shortly after which the defendants introduced upon
the periphery of their spool corresponding numerals, but with stars
substituted for plaintiffs' loops. Defendants were guilty of no
wrong to the plaintiffs in making use of corresponding designs for
their own spool heads after the expiration of plaintiff's patent.
There was no attempt to imitate the peculiar chain or loop
characteristic of this design, but the embossed numerals were made
use of for the same purpose for which they had been originally
designed -- namely to preserve the number of the thread when the
label became defaced or lost or destroyed by the use of the spool
in the sewing machine. Indeed, the idea of stamping the numeral
upon the periphery of the spool does
Page 149 U. S. 572
not seem to have been original with Conant, but appears to have
been used by the defendants as early as 1867.
However this may be, plaintiffs' right to the use of the
embossed periphery expired with their patent, and the public had
the same right to make use of it as if it had never been patented.
Without deciding whether, if the embossed periphery had contained a
word which was capable of being appropriated as a trademark,
defendants could have appropriated the same upon the expiration of
their patent, it is clear that no such monopoly could be claimed of
mere numerals, used descriptively and therefore not capable of
exclusive appropriation because they represent the number of the
thread, and are therefore of value as information to the public.
Amoskeag Mfg. Co. v. Trainer, 101 U. S.
51. Clearly the plaintiffs cannot, as patentees, claim a
monopoly of these numerals beyond the life of the patent, and it is
equally clear that where used for the purpose of imparting
information, they are not susceptible of exclusive appropriation as
a trademark, but are the common property of all mankind. The patent
being not simply for the embossed number, but for embossing the
same upon the periphery of the spool head, defendants were
entitled, upon the expiration of such patent, to use them for a
like purpose. Neither was there anything misleading to the public
in such use of them, as the testimony is clear and uncontradicted
that thread is bought and sold not by its distinctive marks, but by
the name of the maker.
Plaintiffs, however, claim that, being the first to use the
combination of a black and gold label with an embossed periphery,
they should be protected against any such imitation by others as
would mislead an ordinary purchaser of thread in small quantities.
A large number of witnesses were sworn upon this subject, whose
testimony tended to show that they had either purchased themselves,
or seen others purchase, defendants' thread, supposing it to be
Coats'. This testimony was not, however, wholly satisfactory, and
threw but little light upon the controversy.
There is no doubt a general resemblance between the heads of all
spools containing a black and gold label which might
Page 149 U. S. 573
induce a careless purchaser to accept one for the other.
Defendants, however, were not bound to any such degree of care as
would prevent this. Having, as we have already held, the right to
use the black and gold label and the periphery embossed with the
number of the thread, they were only bound to take such care as the
use of such devices, and the limited space in which they were used,
would allow. In short, they could do little more than place their
own name conspicuously upon the label; to rearrange the number by
placing it in the border instead of the center of the label, and to
omit the loops of the plaintiffs' periphery and substitute their
own star between the numerals. Having done this, we think they are
relieved from further responsibility. If the purchaser of such
thread desires a particular make, he should either call for such,
in which case the dealer, if he put off on him a different make,
would be guilty of fraud for which the defendants would not be
responsible, or should examine himself the lettering upon the
spools. He is chargeable with knowledge of the fact that any
manufacturer of six-cord thread has a right to use a black and gold
label, and is bound to examine such label with sufficient care to
ascertain the name of the manufacturer. Indeed, the intent to
imitate plaintiffs' spool heads, if any such intent existed, is
manifest rather in the label than in the periphery; but plaintiffs,
having submitted to this without protest for twelve years, have
waived their right to relief upon this ground.
McLaughlin v.
People's Railway Co., 21 F. 574;
Ladd v. Cameron, 25
F. 37;
Green v. French, 4 Bann. & Ard. 169; 3 Rob. on
Patents ยง 1194. Having already held that defendants had a right to
make use of the embossed numeral in the periphery, their union of
the two devices upon the same spool head, both being originally
designed to be used in conjunction, cannot be made the basis of a
suit.
Upon the whole, we think the plaintiffs have failed to prove a
case of unfair competition or any illegal attempt of the defendants
to impose their thread upon the public as that of the plaintiffs;
that with the right to use the black and gold label as other
manufacturers have used and continue to use it, and with the same
right to use the embossed numerals which the plaintiffs
Page 149 U. S. 574
have, we think they have taken all the precautions which they
were bound to take to prevent a fraudulent imposition of their
thread upon the public, and that the decree of the court below
dismissing the bill should therefore be
Affirmed.