Singer Manufacturing Co. v. June Manufacturing Company,
ante, 164 U. S. 169
The case is stated in the opinion.
MR. JUSTICE WHITE delivered the opinion of the Court.
The pleadings here are substantially similar to those in the
case of the Singer Manufacturing Company against the June
Manufacturing Company, and the testimony in that case, insofar as
applicable, was by stipulation used in this. Some additional
testimony was, however, introduced bearing upon the particular
alleged wrongdoing here complained of. The circuit court rendered a
decree in favor of the defendant. 41 F. 214.
There is no difference in legal principle between the two cases.
The sewing machines sold by the defendant were made by the June
Manufacturing Company, and were in form like those generally made
and sold by it. These machines contained the oval plate fixed at
the base of the arm; a device cast in the leg of the stand of the
machine; the plate and the casting being of the same general shape,
size, and appearance of those used by the Singer Manufacturing
Company. There was, however, no exact identity between the words
and marks used on the brass plates and in the casting of the Singer
Company and those placed on the machines of the defendant. The
device, which the defendant styled his trademark, contained
Page 163 U. S. 206
an eagle surrounded with the wording "NEW YORK S. M. MFG. Co.
WARRANTED." The lettering "New York S. M. Mfg. Co.," on the brass
plate of defendant, corresponded in size and style of letters with
the lettering "The Singer Manufacturing Company" on the brass
plates of the latter company. It is plain that the position and
size as well as the inscription found on these devices were
calculated to deceive by creating the impression, on one not
familiar with all the details of the marks of the Singer
Manufacturing Company, that they were the marks of that company.
The defendant argued that there is a difference between his devices
and those of the June Manufacturing Company in that he does not, in
so many words, employ the name "Singer." In other words, the
contention is that a fraudulent device which is tantamount to a
certain word is not equivalent in law to the word for which it
stands. The deceptive purpose of the devices and the lettering or
words on them is abundantly established by the proof. The principal
business office of the Singer Manufacturing Company is in the City
of New York. In the so-called trademark of the defendant, the
letters "S. M. Mfg. Co." are preceded by the word "New York,"
although there was no such company, and the defendant had no
factory or office there, but did business in Chicago, and bought in
that city from the June Manufacturing Company the machines upon
which he put the marks in question. There is no doubt that the
marks were imitations of those used by the Singer Company and were
intended to deceive, and were made only seemingly different to
afford a plausible pretext for asserting that they were not illegal
imitations, although they were so closely imitative as to deceive
the public. The defendant therefore must be treated as if he had
actually used the Singer marks. So treating him, however, we should
be obliged to allow the use of the name "Singer," since that name,
as we have already held in the case just decided, fell into the
domain of things public, subject to the condition on the one who
used it to make an honest disclosure of the source of manufacture.
This rule controls and is applicable to this case, and renders
necessary a reversal of the decree below.
Page 163 U. S. 207
It follows that 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, his agents, servants, and representatives,
from marking upon sewing machines made or sold by him, 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 not the manufacture of the Singer Manufacturing Company, and
the defendant must be ordered to account as to any profits which
may have been realized by him, because of the wrongful acts by him