776
FEDERAL REPORTER.
harass :tbeir opponents 'by capriciously removing a. 'case upon slight grounds,}rom the state to the national court hundreds of miles distant, and not readily, accessible· for trial, as in this instance. The statute interpolation of should not he extended by loose construction ,or provisi,orls not inserted by. congress in order ·to reach cases where there is but little apparent ground to apprehend.a fallure of justice in the state courts, by reason of prejudice 02' local influence. The parties who know .their own belief should, at least, be required to make the affidavits of thatbelief,i'J8lndassume the responsibility themselves, as the statute '. appears to JO{) to require. " It is said that this motion is based ,upon mere formal defects, and comestoolateafter issue taken by defendants upon the petition for re:naval. . It is true that the answer denying the allegations of the petition apon was ihad was filed a few days before the motion to remand was made; But the grounds of the motion are not mere formal <,iefects.. · They are matters of substance.. TheJ;e is no affidavit, at all, by the party seeking to remove, as required' by the statute, upon which alone a removal is authorized. There was nothing upon whien to base a removal.' The judge did not order a removal in fact. As there was no order fot a'remdv,al, and no affidavit sufficient to justify a reo. the filing of the affidavit of the attorney did not operate to a removal. An improper filing of a transcript here does not constitute a removal, in such sense as to- confer jurisdiction upon this court. As the record of the state court does not show a lawful removal, or a loss of jurisdiction, there is nothing to prevent that court from proceeding with the case. The oasaroust be remanded, and it is so ordered, with costs. !'
LAWl,'tENCE MANl1F'G
Co.
'V. TENNESSEE MANUF'G
{Oircuit Gour.t, M. 'D. Tenne8dee. ,,0 .', '!'JtADE-MARK-WHAT OONSTITU'J'ES-OOMMON USE.
July 1, 1887.}
A manufacturhlg company ado-pted and used .tl?-e capital letters "LL" as. a stamp or mark upon cotton sheet,lUgs of a certam class manufactured by It. The letters were used in connection with the words "Lawrence Mills," and also sometimes in connection with the figure of a rampant bull or a bull's head. The defendant manufactured cotton sheeting of a similar class upon which it stamped the words "Cumberland LL The said firstmentioned company thereupon filed its bill against the defendant, claiming a trade-mark in the said letters "LL, "and praying for an injunction to restrain the use of them by defendant. The proofs showed that the letters" LL" were commonly known in the trade to indicate sheetings of a particular grade and class; that the;\'; had been used for some time by another manufacturer berore the plaintIff made lise of the same; and that they had also beea used by several other manufacturers fora number of years without objection by the plaintiff. It further appeared that the plaintiff had stamped the same letters upon other· of its manufacture inferior in grade to the sheetings to distinguish WhICh they were claimed as a trade-mark. Held, that the plaintiff was not entitled to the exclusive use of the letters, and the bill must therefore be dismissed.
LAWRENCE MANUF'G
CO.
V.TENNESSEE :MA!\UF'G CO.
777
In Chancery. J. H. Raymond and W. G. Rainey, for complainant. ' Dickinson &- Fraser and A. J. Hopkins, for defendant. JACKSON, J. This suit is brought to restrain the defendant from using the capital letters "LL" upon brown sheetings'manufactured and sold by it, on the ground that said letters constitute an essential feature 'or portion of complainant's trade-mark, by which it designates cotton sheetings of a particular quality of its own manufacture, which it is claimed the defendant infringes by using said letters upon sheeting' Of the same class or grade; and also to recover damages for said infringement. The bill, after setting out several into which sheetings are generally classed according to weight,-one class including sheetings . of such weight that 2.85 yards thereof weigh a pouhd; another, of such weight thatg yards weigh a pouhd; and a third class, of such weight that 4 yards thereof weigh the differences which exist cas to excellence, quality, and guaranties between rival manufacturers'.of such goods, etc. ,-alleges that, prior to 1870, the complainant adopted, and thereupon became duly vested with the exclusive right to u'se, a label or trade-mark for all goods of its manufacture coming within sa.id third class,' to distinguish sheetings of its manufactute from sheetings of the same general class manufactured by others, the substantive and distinctive ahd chief feature of which label was and is an ftTbitrary sign or symbol, consisting ofthe capital letters "LL", prominently and separately appearing upon such label or stamp; and said trade-mark, with certain environments, which have been changed froIn time to time, 'has been so used by complainant since the said date of adoption, and; 'towit, for more than 15 years, and has been imprinted upon each and every piece or bolt of such sheetings'of said third general class made and sold by complainant during said period; and, further, said tmdemark was so adopted by your orator for the purpose of distinguishing sheetings of its manufacture of said third general class from similar goods manufactured by others, and then known in the trade under distinctive trade-rnarks,-such, for instance, as the manufactures known as "Agawam F's" and" Atlantic P's".. In connection with said trade-mark or substantive element of said label, under and in connection with which the trade reputation of complainant has been established, as hereinafter alleged, complainant has used the words "Lawrence Mills," and. the word "Sheetirigs," in different juxtapositions, and also at times a-picture or representation of a "bull rampant,"-that is, of the whole Body of a bull in a rampant position; and, in connection therewith, and underneath the same, and in a separated position, has always used said capital letters "LL," and for the purpose aforesaid; that at great expense, and by years of endeavor, yout orator has earned and acquired a fl'nde reimtatioh of great value as a manufacturer of saId sheetings under its said trade-mark, with this result: that the sheetings oftbe said third general class of your orator's manufacture have come to be universally known as "LLsheetings," arid sheetings so know'n) named, and caUed
778
: FEDERAL REPORTER.,
for import the excellent raw material, the method and care of manufacture, and the general and lasting quality for which your orator has a long, and thoroughly established reputation as to all goods of its manufacture." It is further alleged that since complainant 'became vested,aIld while it continued to be vested with the e;x:clusivEl right to the.use,of asid the defendant herein has, since April, 18,S.5, been manufacturing and selling large quantities of said sheeting thh:d class, upon which, and for the purpose ofta]png of complainant's trade label, trade-mark, h;as placed a or label, in imitaand tlllderep.1,1tation, tion .of ,its, or limitation by defendant consisting in stamping on the capital letters "LL," separately land prQminently from the other parts ofitlliabel; that said acts llJl,d, Q9ings, qf, defendant tende]d to deceive the public, constituted a fraud public,as'VlfeJJ as upon comI>,ll!oinant; Rnd that the' said was for. the purpose and with the tlilIldency and a part atleast of the good'fill and of the.pomplainantj against which was of darpages thence resulting, asked by illjU[lction, and for an etc. -', . L , ':'. :' " , : ;' " admits thilJ in of sheetings there are recognized in weight gQods per yard; that classes" in one ,2.85 pound; in,another, 3 .yards weigp: lJ,.pou,nd; in,$e weigh a pound; and in ,the fourt4,0 yards weigplla pqundj that the <iefendant has, since April, 1885, "staIX;lped llPOl1.its ,cotton goods'feighing one-thh:d of a tothe,y;a,rd 'fords "CJlmberland LJ:, She,eting-4-4j" that the well-known river near which its works arelocated ,.was used to designate itsrnanufactureand as a. trnde-mark; the.-tJhe letters "LL" in "Sheetings," were to ,denote the class to ;which said accordiug to the oOha trade, aud the ,"4-4" to indiClltethat the goods are .Qne yard widoe.. :J;'he;aqswer. proceeds to co,utrovert in detail the materialallegaiJ,otlS.of the,hill. It denies that complainant adopted said trade-mark" or as forming anYrsubstantive part of.the letters same; and inMsts that said letters were and. intended to designate an4 this g1-'ade of sheeting from, ,other classes or grades ·madeby it;iJ};l.atcomp!l;tinant's I;1ny, consists in the Mills," stamped; upon its goods; that "LL"ha'S·q.lways,iI;l the trade. been,understood to grade, class, that, 'at the time complainant or quality, apdnot origi,n or <;>f these letters, and for prior thereto, commenced the Jhey had acqui:r;edJn the trat:le tp.e general meaning of four.yard sh,eeting".and that. it indicated, without respect. to ownership, that the goodsot;l' :which they were stamped were of a general class or grade ;In)own. t(), as fOU;r"yard sheeting; that It number of mills besides used said 'letters for many years indicate this grade, using t4el;Il in cqnnection with their seyeral OJ: trade-marks, but j
LAWRENCE MANUF'G CO. V. TENNESSEE MANUF'G CO.
779
not as trade-marks; that complainant was nof the first to' 'employ or appropriate these as a label or brand upon goods of this general class; that in fact the Atlantic Mills" another cotton manufacturing company, had used these letters on sheeting of the same grade and character' before complainant did; and that said letters were known in the trade in connection with brown cotton sheetings before complainant commenced stamping them on its goods. It is further averred that besides its "Lawrence Mills Sheeting," labeled "LL," the complainant is now, and has been since it commenced the use of said letters, manufacturing other sheetings of the same weight and class·. but of an inferior or different quality, which it brands as "Shawmut," with 'the addition of said ca.pitalletters "LL," impressed upon them in the same way as upon those branded" Lawrence Mills." The defendant denies that. in using said letters upon its four-yard sheeting there was any intention to simulate the label of complainant, or to impose its goods upon the public as the goods of complainant, and that no purchaser of ordinary Caution and ordinary intelligence has ever heen or will deceived, by anyiSimilarity in the two labels, into mistaking the defendant's goods for those oUhe complainant, etc. Upon the issues thus presented by the pleadings, the parties have examined a large number of witne5lses, engaged in or connected with the trade in. cotton sheetings, in various cities and· sections· of the country. This evidence is too voluminous to be recited in full or commented on in detail. It has been carefully examined by the court, and the general conclusions of fact estabishedby or deducible from it, so far as material to the proper determination of the questions involved, will be briefly stated. It appears that, prior to 1867, the complainant employed as itg brand on third class, or four-yard sheeting, manufactUTedandsold by it, the picture of a bull in a rampant position, in connection with the words, "Lawrence Mills [the name by which the Lawrence Manufacturing Company was commonly known] Sheeting," and beneath these was the single capital letter "L." In January 1867, the complainant made the addition of another capital "L" to its said label or device, forming the double "L," which it has since continuously used 011 said goods. The reason for this change, and the cirC'wmsiance8 under which it was made,are stated by Charles S. Smith, general selling agent of oomplainantfrom 1865 to 1866, as follows: "We were induced,tochange [from'L' because it was a time when cotton goods were depreciating. We had made considerable sales of the single' L,' but a party who had bought a large lot was underselling us at a price lower than we could afford to meet,and I suggested 'that. in order to keep them out of this competition, the mills should change the fold of the single' L' from a narrow to a wide fold, and to put on a double,'LL'." This was accordingly done. When this chauge w:as made, .by placing the double "LL" on its four-yard goods, the complainant was a, well-known maunfacturing company, having manufactured andsald large quantities of said third-c1ass sheetings. In place of the "bull rampimt,"the complainant,.
780
in 1883, substituted .the "bull-head," so that its full brand in all fouryard sheetingof first qualityisfnow, the "bull's head," in connection with the words "Lawrence Mills Sheeting," and underneath these the letters "LL." Contemporaneous with its employment, as aforesaid, of the capital letters ':LL" on its third-class goods of first quality, the complainant put into the trade a brown cotton sheeting, of the same weight as that stamped with the bull rampant, the words "Lawrence Mills" and "LL," which it branded "Shawmut LL Sheeting," and which, on account of imperfections and defects, was and is inferior to' and of less value than the former. These "Shawmut LL Sheetings" have been put on the market by complainant continuously since 1867. It is shown that complainant 'makes two lother kinds of brown sheetings" graded according to weight, and stamps one and the qther" XXX," to indicate in grade. Through its authorized selling agents, or denote the complainant has for many, years advertised its sheetings in Sheldon's Pamphlet5, a well-known dry goods advertising periodical, heading its advertisement with ,the picture of a bull's head, (or bull rampant,) the words, "Lawrence Mills," and then following are the letters "XX," "XXX," "LL.", The complainant ml1kes other goods ber>ides sheetings, called'"' flannels," I' denims," on which it,uses the picture ofa bull's head. and the words "Lawrence Mills" similar,to that used on the four-yard sheetings, but not the letters "LL." It'is shown by the proof that letters of the alphabet are, ,and for many years have been, used by manufacturers to designate the different grades, classes, and qualities of goods made by them; that almost the entire alphabet is used in this waY,-some mills employing a great many different letter8,-so that it is understood generally in the cotton goods trade that letters are thus used to designate grade, class, or quality. It is also understood generally in the trade that "LL", as stamped',on the complainant's sheeting, means four-yard gl.'ods, or goods of the third class or grade; and that the words "Lawrence Mills," in connection with the bulZ's head, are used or employed to designate or indicate the maker or manufacturer. These goods are always invoiced by complainant to its selling agents and to the trade as "Lawrence"or'''Lawrence Mills" "LL," and they are thus generally kndwn in the trade,and are so, spoken of and distinguished, except in some instances,. Persons who have been more familiar with them, or have handled them exclusively, call them simply "LL's, " thereby ing the sheeting made by the Lawrence Company. But, generally, the complainant's said sheethigs are, known and described as "Lawrence LL", or "Lawrence Mills LLj" just as other brands of sheeting stamped with "LL" a;regenerally known in the trade and spoken of as "Beaver Dam LL," "Badger State LL,',"'Aurora LL," "Cumberland LL," etc. The signification of. the letters "LL," stamped upon cotton sheetings as :indicative :of grade. class, and quality, was generally understood in the trade when defendant commenced the use of 'said letters in 1885. The fact is clearly established that the Atlantic Mills, of Lawrence, Massachusetts, stamped" LL" upon brown cotton sheeting of its manufacture
781
in the years 1860, 1862, 1864, and 1865, and from 1872 down to the present time. There were cessations (or "interregnums," as the witness J. C. Bowker calls it) in the manufacture of said goods by the Atlantic Mills from time to time between 1860 and 1865. and between 1865 and 1872, none being thus stamped between the latter dates. The weight of the Atlantic goods, made in 1860. and stamped with the letters ",LL," was 4.19 yards to the pound. In 1862 the goods so stamped weighed 4.36 yards to the pound; and in 1863 and 1864-65 their weight was 4.56 yards to the pound. In 1872, when the Atlantic Mills again commenced placing the ,. LV' on its sheetings, they weighed and have since continued to weigh five yards to the pound. It further appears that said Atlantic Mills, in 1860. made a grade of brown sheeting which weighed 3.89 yards to the pound, and which it stamped with a single "L." The Atlantic Mills employed said letters to distinguish different grades of goods, and has continued to use letters for that purpose. It is fairly deducible from the evidence that the Atlantic" LV' cotton sheetings were in the market in 1867, when complainant first commenced using said letters on its third-class sheetings. Said Atlantic goods are and were of the same, general character and class as those upon which complainant stamps "LL." It is shown that the Atlantic goods manufactured since 1872, and stamped with said letters, are so near alike in appearance to the Lawrence "LL" sheeting that ordinary buyers, and even experts,' cannot, by looking at them, distinguish them from each other. On both of them the letters "LL" are solid block blue letters of nearly the same size. It appears that the Atlantic "LV' and the Lawrence "LL" sheetingsare both used for the same general purpose, such as shirting, underwear, etc., and that, while they are readily distinguishable from each other by brokers and jobbers, they compete with each other, with retail dealers, and the purchasers for consumption. Representative merchants, wholesale and retail, in several large cities,Chicago, St. Louis, Indianapolis, Nashville, New York, Boston,...,...-state that the Atlantic "LL" sheetings were known in the trade before the Lawrenee "LL's," or any other "LL" goods. It is shown that neither an pert, nor an ordinary purchaser, can tell, by mere inspection, whether a sh eeting will run four, four and a half, or five yards to the pound; .that, by looking only at the letters "LL," etc., Ule Lawrence "LV' and the Atlantic" LL" sheeting might be readily mistaken, the one for the other. The complainant's witness Lurie, of Chicago, with both sheetings folded so as to expose only the double "LL," could not tell one from the other. It is further shown that, looking only at the letters "LL," purchasers would as readily mistake the inferior Shawmut "LL" sheeting of compJainant for its "first" or regular Lawrence "LL" sheeting as they would the defendant's Cumberland "LL" goods. It appears that John V. Farwell & Co., of Chicago, have for the past 13ix or seven years been using a private brand for sheeting they sold, known in the trade as "Albany LL;" that in 1864, with full knowledge of this fact, the complainant stamped, for said Farwell & Co., 150 bales of four-yard sheetings with the label" Albany LL," the stamp being
782
FEDERAL .REPORTER.
furnished by Farwell & Co., and returned to them with the goods, whioh were sold in the market as JohuV. Farwell & Co.'s" Albany LV' sheeting. The evidence shows that complainant has all the while known of the Atlantic Mills using the" LL" on its goods; that, for more than six years before the commencement of this suit, it has been aware of the fact that numerous other manufacturers were stamping said letters on their four-yard cotton sheeting; and that it never objected until about the time of bringing this suit and one of like character against the Aurora Cotton Mills at Chicago. It is not shown that the brand of defendant' has ever been mistaken for that of complainant. There is no direct evidence that complainant, when it commenced using the "LL" letters on its third-claSls goods, adopted them for the purpose of making them its trade-mark, or any substantial or material part thereof. It does not appear that the single" L" used prior to 1867, constituted, in whole or in part, its trade-mark. The Atlantic Mills were using the single" L" on one grade or class of its goods merely to indicate quality, from 1862 to 1868. Under these facts and circumstances the question is presented whether the complainant can successfully claim the exclusive right to use the capital letters" LL" on third-class cotton sheeting running four yards to the pound. In other words, has it established in and to said letters, for four-yard sheeting, a valid trade-mark, which has been defined to be the name, symbol, figure, Jetter; form, or device adopted and used by a manufacturer or merchant, in order to designate .the goods that he manufactures or sells, and to distinguish them from those manufactured or sold by others to the end that they may be known in the market as his, and thus enable him to secure such profits as result from a reputation for superior skill, industry, workmanship, or enterprise? It is not deemed necessary, in the view we take of the facts, and the law applicable to the same. to enter upon any extended review of the authorities on trade-mark law, or to consider the general abstract prop· osition whether letters and numerals can, in and of themselves, be the subject of appropriation so as to constitute a valid trade-mark, or form an essential and material element thereof,-a point discussed at the hearing by learned counsel for the complainant. It may be conceded that letters of the alphabet and figua'esare, in some forms and combinations, capable of such appropriation under the authority of Boardman v. Meriden, 35 Conn. '402; Gilwtt v. Esterbrook, 48 N. Y. 374; Lawrence 00. v. Lowell Mills. 129 Mass. 325; Shaw Stocking Co.v. Mack, 12 Fed. Rep. 707j Kinahanv. Bolton, 15 Jr. Ch. 75. In this last case the letters "LL" were sustained as a valid brand for a certain article of whisky. Still the vital question remains, do the capital letters" LL" in the present case constitute a substantial, material, or essential element in complainant's trade-mark, so as to give the Lawrence Company the exclusive right to use the same on cotton sheeting of the third class, weighing four yards to the pound? The general principles of law, which, nnder the facts and circumstances above stated, must control the determination of that question, are well settled by the decisions of the supreme
LAWRENCE MANUF'G CO. 'l1. TENNESSEE MANUF'G CO.
783
the following trade-mark caSes: Canal Co. v. Clark, 13 Wall. cotut 311; McLean v. Fleming, 96 U. S. 245; and Manufacturing 00. v.Trainer, 101 U. S. 51. These cases recognize the following propositions, well settled in the law of trade-marks: (1) That, in order to entitle a person to the exclusive use of a mark, device, or symbol, as a trade-mark, it must appear that the purpose at the time of adoption was to identify the maker or manufacturer with the vendible article to which it is attached; that is, such symbol or mark must point distinctively, either by itself or by as·sociation, to the origin, manufacture, or ownership of the article on which ·it is stamped. In other words, to constitute a valid trade-mark, itmust appear that the mark or symbol was originally designed, as its primary ·object and purpose, to indicate the producer of the commodity, and to distinguish it from like articles manufactnredby others. (2) Thatl if it appear that the device, mark, or symbol was adopted and placed upon the article for the purpose of indicating its class, grade, style, or quality, or tor any such purpose, other than a reference to or indication of its origin or ownership, it cannot be upheld as a trade-mark. This is but a neceSsary corollary of the first proposition. (3) That this exclusive · right to the use of the mark or device, constituting a trade-mark, being founded on priority of appropriation, iOt appear thatthe claimant was not the first to use or employ the mark on the same or like articles of production, ·he ,will not present such title to or right in the design all will entitle him to protection· .If,under the application of these rules to the facts of the case under 'Consideration, it can be held that complainant has established the existelice of a trade-mark in the letters "LL," or that said letters form 8<substantive, distinctive, and chief feature of its trade-mark, then the equitable jurisdiction of this court may be called intO exercise in its 'behalf, if it further appear (1) that the defendant has imitated or pirated:said mark; (2) that this imitation amounts to a false representation, express Dr implied, designed or accidental, which enahlesthe imitator to sell his 'goods as those of the complainant; and (3) that such imitation is made without license or acquiescence of complainant. Now, what was the object and design of the complainant in ad0pting . and stamping the letters "LL" on its sheetings? Was it to · indicate the origin of identify them with complain· ant's ownership or manufacture, and distinguish the same from those of a similar class and· character manufactured by others,-or was it' dohe as descriptive of the goods, or to indicate their grade, class, or quality, style, or weight? There can be little or no doubt as to the correcta.nswer that must, under the proof, be given to these essential questions of fact on which the rights of the parties heretO depend. It is perfectly <:lear from the account which complainant's agent, Smith, gives of the .change from the single "L" to the double "LL," made in 1867, that the purpose and design in adopting the latter was not to indicate origin or ownership, or to distinguish the sheetings on which said letters were stamped from similar goods manufactured by others, but that its prima17l
in
784
ob;ect was to denote its class. quality, or grade, and to represent it to the public as being diffe'tent goods in class and quality from. those primarily sold by complainant under the single "L" stamp. The double "LL" was adopted "because it was a time when cotton goods were depreciating. We [the Lawrence Company] had made considerable sales of the single' L,' but a party who had bought a large lot was underselling us, at a lower price than we could afford to meet, and I suggested that, in order to keep them [fouryard sheetings thereafter to be made and sold] out of this competition that the miUs should change' the fold of the single 'L' from a narrow to a wide fold! and to put on a double' LL. '" It is here clearly shown that the avowed object and purpose of the change from the single to the double (ILL" was not the adoption ot another trade-mark, or a new and substan.tive addition toits existing trade-mark; but the intention was simply to keep the sheetings thereafter to be sold out of competition with precisely the same goods previously sold and then on, the market. The change to the double "LL" was not made to distinguish complainant's four-yard sheeting from similar goods manufactured by others, but to prevent identification with its own goods of the same grade, class, -and quality previously , !lold, and which the purchaser was using in competition with it. The douhle "LL" was manifestly intended to convey to the public the impres!!lion that the goods on' which they were stamped differed from, or were iluperior to, those already sold. How else were they to be kept out of competition with those already in the market, and which were underoelling the complainant? How was that competition to be avoided by ouch a change, except by inducing the belief on the part of the future buyers'that the goods on which "LL" was stamped were different from or superior to those of the same quality sold under the single "L," stamp? It may well be doubted whether the claimant of a symbol or mark having its origin in such purpose can successfully invoke the aid of a court of equity in its protection. It is well settled by many authorities that a lack of truth debars a trade-mark from protection; that the tale told by the symbol must be sincere; and that the instant it ceases to be truthful, in spirit as well as letter, it becomes an instrument of fraud, and is not lawful. In Ford v. Foster, L. R. 7 Ch. 611, it was said: ..According to the rule ex turpi 'causa non oritu,r actio, if a trade-mark contain a false representation,-a representation calculated to mislead the public, . -a man cannot by using that which is itself afl'aud obtain an exclusive right, or indeed any right at all." 'In Manhattan Medicine 00. v. Wood, 108 U. S. 218, 2 Sup. Ct. Rep. 436, it was held that, as the object of a trade-mark was to indicate the origin of manufactured goods, a person who affixes to goods of his own manufacture a trade-mark which declares that they are goods of the manufacture of some other person thereby commits a fraud on the public which no court of equity will countenance. The same wholesome pl'inciple would seem to apply to the case of a party who, having sold large quantities of goods of his own manufacture under one brand, and 'thereafter, while such goods were still in the market, changeR his brand
LAWRENCE :MANUF'G CO. V. TENNESSEE MANUF'G CO.
785
on precisely similar goods in all respects, for the avowed purpose of relieving them from the competition of those already sold; the object to be accomplished being only attainable by a misleading representation to the public, to the effect that the goods with the new stamp are different from those previously made and sold, and that they are also superior, as indicated by the emplOyment of the double letters, which, according to the well known usages of the trade, signify progression in grade and quality. But, whether complainant is debarred from relief on the ground that its change to and employment of the double "LL" was designed to miswith that stamp were lead the public into believing that the different in grade and quality from those already sold, it is, however, :very clear that those letters were not adopted with any purpose of jicationof manufacture, or to indicate origin or owne-f8hip, but were intended as a new descriptive mark or symbol, to designate the class, grade, or quality of the sheetings on which it is stamped. The history of its adoption, taken in connection with the fact that the complainant then had in the "bull rampant," with the words "Lawrence Mills Sheeting," a distinct,substantive trade-mark, indicating origin, and identifying its goods, leave no rOOlll to doubt that the device or symbol "LV' was intended to represent the first quality of third-class sheeting, and not its otigin, manufacture, or ownership. The case, in all its material facts, is not near so strong in favor of the complainant's claim as existed in Manufacturing Co. v.Trainer, 101 U. S. 52,53. There it appeared that the Amoskeag Manufacturing Company, engaged in the manufacture of ticking, which. prior to 1834, was marked with a label consisting of a certain device, within which was printed the name ofthe company in red' colors, its place of manufacture, the words "Power Loom," and in the center the single letter "A" or "B" or "C" or "D," according to the grade of excellence of the goods. In 1834 the company made an improvement in its manv!acture, by which it produced a grade or quality of ticking superior to any which it had previously manufactured. For goods of this quality it used in its label, in place of the single letter" A," the three letters" ACA." The original device, with its colored border and printed words, indicating the company by which and the place where the goods were manufactured, was retained. The question was whether the said letters" ACA" constituted a valid trademark. The rest of the device was only a label, and the claim to the trade-mark rested alone upon said letters" ACA," adopted contemporaneously with the improvement made by the company in the grade or quality of its ticking. It was there contended for the complainant "that the combination was adopted and used, not merely to indicate the quality of the goods, but also their origin as of the manufacture of the Amoskeag Company." On the part of the defendant the contention was "that the letters were designed and are used to indicate the quality of the goods manufactured, and not their origin." After a review of the general principles of)awas to trade-marks, the court said: "It is clear from the history of the adoption of the letters' ACA,' as narrated by complainant, v.31F.no.13-50
'186
REPORTER.
"and the device within which they are used, that they were only designed , to represeilt the highest qualityofticking which is manufactuI:ed by the .complainant, and not its .. 'The device previously used, and sub'sequently; stated the name of the manufacturer. alld no purpose could , ,have been ,subserved by any further declaration of that fact; and, besides, the letters themselves'do hot suggest anything, and require explanation before any meaning can be attached to thein. " That explanati()n, when made, is that they are placed in the device of the company when,it is affixed to the finest quality of its goods, while the single letters are used in the sarrie device when it is attached to 'goods of an inferior quality. They are never used by themselves,but merely as part 9f a d,evice, containing, in addition to the border in red, several printed 'terms: Alone 'the letters convey They are only significant .as part of the general device constituting the trade-mark. Used in that ,device to denote only qualitr; and so understood, they can be used by Qthers Jor a similar purpose equally with the words 'Superior' or 'Suother words or letters, or figures having a like signification." This hinguage applies in all its force to the case under consideration. Here the device above the letters "LL" contains, notoilly the complainant's name, Lawrence Mills," but the name of the goods, "Sheetings," and the picture oftha "bull rampant" or the "bull's constituted .a trade-mark, as distinguished, from. a ,label, giving. the intbrillation . required as to the ownership ot-origin of the goods; while the letters aJ,bne indicl:l.te thequaHty,M the sheetings.':' "" , , " " If the letters do not perform that function, then complainant, conto the well-established custom of the trade, and of all manufactur,el's of cPttongoQds, has its first quality of third-class sheetings on the market withoutaoy mark, symbol, or sign to irifQm1 the public of their quality. , WheI). asked for all explanation ofthe "LL," which in .and of thernselves convey no meahing,'we are told that they were adopted 'to distinguish its later production 'from sheetings of th'e same character, ,celass, grade, ahd, quality which the complainant had previMslysold, in quantities, and to keep ,them out of competition with such goods 'hi the hands of purchasers from complainant. Saidletters were intende.d not "only to indicate the quality of ;the sheetingson which they were 'stamped, but.also to represent an adrnitted untruth, that they were different goods from those previously sold. They. cannot, under the authori'iies" constitute a valid trade-mark, such as will give complainant the exchisive right to use the same on third-class sheeting, weighingone-fotirth a pound to the yard. ' ', ,J" J' It is insisted on behalf of complaiu/lnt that the letters" LV' indidate, .n?t grade, class, or quality of its sheeting; but also represent origin, manufacture, or ownership. Wheth.er letters by therpselves, '01' in combination, can be employed to represent both the grade or quality of the goods and theirQrigin, thus performing, at the same time, the "double office of trade-mark and description,or classification of the article to which they are affixed, is a' question not discussed in either of the supreme court "decisions above referred to. This theory that the letters
all
LAWRENCE MAmJF'G CO. 1). TENNESSEE MANUF'G CO.
787
/ILL"" signify or possess the!ltial meanIng contended for is unsupported in point of fact by the evidence. But, suppose it actually existed, it may be .well doubted whethell such double signification could stand under the law of trade-marks, so as to confer an exclusive right to the use of such a symbol. In case of such double meaning, if the two purposes could co-exist in one and the Ilame trade-mark, which is to control? Does the law allow to parties the privilege of thus blending public and private rights? It was conceded by counsel for complainant at the hearing (what was otherwise thoroughly established) that the letters "LL" on cotton shootings did indicate four-yard or third-class goodEl, but it was said that they had the further object, and performed the additional purpos'e, ,Of ·designating their'ownership or origin. Suppose the meanmg thus assigned to said letters should be expressed in words, it would stand as fOllows: '" LL,' meaning thereby third·class cotton sheeting as known in the trade, weighing four yards to the pound, 36 inches wide, 52 yards to the bolt, 56 by 60 threads to the square inch, first quality of said grade, and manufactured by the Manufacturing Company of Lowell, Massachusetts." This would express fully the two distinctmea.nings for the device. One would confer on the com;' pany the exclusive right to its use, while the other would be open to the public. Now, would the fact that one branch of such meaning referred to or ownership preclude the public from using the letters in their other meaning, as indicating or describing third-class sheeting? This would be a strange anomaly in the law. and would lead to inextricable confusion. Where origin and ownership is otherwise indicated, as by the use of the manufacturer's name, then the symbol, mark, or device which is intended to designate grade, class, or quality cannot properly be also employed to denote'origin or manufacture, and thus confer exclusiverlght to its use. In Oa8wellv. DavUl, 58 N. Y. 223, it is said that "words or phrases in common use, and which indicate the character, kind, quality, and composition of an article of manufacture, cannot be appropriated by the manufacturer exclusively to his own use as a trade-mark; and this is so although the form of words or phrases adopted also indicate the origin and maker of the article, and were adopted by the manufacturer simply for that purpose. The combination of words DlUSt express only the latter to ll:uthorize protection as a trade-mark. A single symbol or mark ·cannot at the same time perform two such different offices, especially where origin and ownership is fully indicated or disclosed by other portions ofthe la.bel or device. . It being settled that a name, symbol, or mark, which is indicative of grade or quality, may be employed by any and all persons engaged in the manufacture of the same class or character of goods, it follows that, necessarily, a trade-mark cannot also serve that distinctive purpose. In G:znal G>. Clark. 13 Wall. 311, the supreme court say: "To aname or mark to equitablE.' protection as a trade-mark, the right to its use must be exclusive. and not one which others may employ with as much truth as those who use it; and this is so a.lthoughthe use by a sec-
788
ond producer, in truthfully describing his product, of a name or a. combination of words already in use by another, may have the effect of causing the public to mistake as to the origin or ownership of the product. Purchasers, though mistaken, are not in such case deceived by false representations, and equity will not enjoin againsttelling the truth.". But we need not dwell upon this question, as its correct solution is not essential to the proper determination of the present case; since, as already shown, the letters "LL," as used on complainant's first quality of cotton sheetings, in connection with the words "Lawrence Mills," and the device of the bull's head, indicate only grl;l,de, class, and quality, and not origin, ownership, or manufacture; and under this conclusion of fact the cases of Amoskeag Manuj'g 00. v. Trainer, 101 U. S. 51, and Amoskeag Manufg Co. v. Spear, 2 Sandf. 599, are decisive of this suit. In its material facts, and in:the legal principles applicable to the same, this case cannot be distinguished from that decided in 101 U. S. The other defenses relied on, and which will be only briefly noticed, are also conclusive against, the right of the complainant to the relief sought by its bill. When the' complainant adopted the letters "LL," it is established beyond all controversy that said letters had been previously and were then employed by the Atlantic Mills or Company of Lawrence, Massachusetts, to designate the same or like articles of sheeting. The brown sheeting which the Atlantic Mills produced at intervals between 1860 and 1872, and 011 which it stamped "LL" to indicate their gradE:l, quality, and weight, ranged in weight from 4.19 to 4.56 yards to the pound. These goods were well known in the trade, and portions of them were on the market in 1867. The goods being substantially of the same class and character as the sheeting on which complainant subsequently stamped "LL," as already shown, and it being well understood in the trade that Said letters indicated grade and quality, the complair-ant could not, under the authorities, make an appropriation of them so as to acquire the exclusive right to their use. Priority of use by the Atlantic Mills of said letters, either as a trade-mark, or as an indication of the character of the goods, would preclude the subsequent employment and adoption of them by complainant as a symbol to designate the origin of its goods or as a valid trade-mark. This is clearly settled by the authorities. After an interval or "interregnum" of non-production between 1865 and 1872, the Atlantic Mills resumed the stamping of its cotton sheeting with the "LL," and has contiilUouslj" used said letters since that time on goods which are substantially the same as complainant's, differing slightly in weight, but competing with them by purchasers for consumption. Under such circumstances, could complainant enjoin the Atlantic Company from using said letters on its cotton sheetings? It certainly could not without establishing beyond all by the Atlantic Mills controversy that 1Ihe interruption or in the production of its "LL" sheeting operated as an abandonment of its right to use said letters. This is asserted by counsel for complainant; but the proposition is unsupported in fact and law. The evidence estabAtlantic Mills. What is lishes no abandonment of said letters by
LAWRENCE MANDF'G CO. V. TENNESSEE MANUF'G CO.
789
required to show abandoment in such cases is clearly laid down by Brown on Trade-Marks, §§ 680-682. ".A manufacturer or merchant may discontinue the stamping or branding his products for many years before discontinuing the sale of the goods marked by him, and may destroy the dies, branps, or stencil plates; for he may have laid up a large stock of his wares or prodUCts, or he may have launched them upon the ocean of commerce." "Mere lapse of time does not, per se, warrant the conclusion of abandonment." But suppose the Atlantic Company's 'private right, if it ever had or claimed any in the letters" LL," had been abandoned in 1867, said letters having already become well known in the trade, and generally understood to designate grade and quality of sheetings, how could complainant appropriate them to its exclusive use as a trade-mark,? It is suggested that, by complainant's long use of the letters, and a superior quality of its goods, the mark has ripened into an exclusive right, because many dealers now associate said letters with the products of the Lawrence Mariufacturing Company. This is plausible, but not sound. Such after-acquired reputation or association, where the primary import or design of the symbol or mark is expressive of grade or quality, will not constitute a trade-mark, or establish an exclusive right to the use of snch mark. Thus in Upton on Trade Marks, 137, it is said "that, although by long-continued use of certain words, letters, marks, or Symbols, which do not of themselves, and were not designed to, indicate the origin and ownership of the goods to which they were affixed, the goods 80 marked, and because so marked, have become known as those of the manufacturer who first used them, such fact cannot alter the original mpaning of the words or symbols, or the intent with which they first used as denoting the name of the thing, or its general or relative quality, or take from others the right to employ them in the same sense." This principle is clearly sustained in Arnoskeag Mamif'g Co. v. Spear, 2 Sandf. 599; Canal Co. v. Olark, 13 Wall. 311; and Arnoskeag Manuj'g Co. v. 101 U. S. 52. Shortly after the Atlantic Company resumed the use of "LL" upon its cotton sheeting, in 1872;other mills, in various portions of the country, commenced using said letters to indicate grade, quality, and class of their four-yard sheetings, and have continuously since used the same for the same purpose; the name of the producer or some other symbol being used along with them to indicate the origin or ownerohip of the goods. But it is said that the product of the Atlantic Mills before 1867 was so fortuitous or intermittent, and so insignificant,as compared with complainant's since that date, that the former's use of said letters should not preclUde the complainant's right to the same. Except during the year 1860 it is not shown what was the extent of the Atlantic Company's production of "LL" sheeting. But the right to the use of said letters as a trade-mark does not depend upon, nor is it to be tested by, the relative output of said mills, or of the Lawrence Mills, with those who hav6 subsequently stamped said .letters on their cotton sheetings. Our con. clusion is that the Atlantic Company's use of said letters before their
790
adoptionbYicomplainant preclqded the latter from acquiring a valid trade-mark therein. Again, iUs proved that complainant has not only. branded sheetings of the same grade and value as its Lawrence "LI," with the private brand of certain jobbers containing the letters /ILL," but has also, since about 1867,. put upon the market an inferior quality of cotton sheeting weighingfour yards to the pound, which it brands "Shawmut LL." If the presence of" LL" on the "Cumberland" cotton sheetings either actually deceives, or is calculated to deceive, the public or buyers of such goods, by inducing the belief that the goods are those of the Lawrence Company's first quality, whereby that company is injured in its trade, what is to be said of precisely the same symbol, "LL," placed by the Lawrence Company upon its own sheeting of an inferior quality and less value? If goods so stamped convey a guaranty of uniformity and excellence, and by means of which oomplainant's first quality of third-class sheethas met with public favor, upon what ground can complainant justify the use of said letters upon an inferior and less valuable article, that does not equally warrant their use by the defendant, or exonerate it from the of deceiving the public? "An exclusive privilege for deceiving the public is, assuredly, not one that a court of equity can be required to aid or sanction. To do so would be to forfeit its name and character." Medicine 00. v. Wood,108 U. S. 218, 2 Sup. Ct. Rep. 436. An ingenious effort is made to relieve complainant from the effects of its own act in discrediting its alleged .trade-mark, but when it claims that the meaning of "Shawmut" explains the matter it necessarily concedes that "Cumberland," the name adopted by the other mills, may do the s.ame. There is,' of course, no infringement by the defendant if there is no valid trade-mark in the letters "LL." It was, however, urged in argument that,in the absence of a legal trade-mark to be protected, still the complainant was entitled to relieton the ground that its label, or a dia-· tinctive part thereof, was being similated by defendant so as to impose its goods upon the public as those or that defendant's use of said letters amounted to unfair competition in trade; and that the· public was thereby imposed on, and the complainant defrauded out of its just and reasonable profits. It is well settled that a party may, under certain cirCulllstances, be restrained from using another's label, whichd(} not rise to the rank of trade-marks. No one' has a right to represent his goods as the goods manufactured by another. To do this by using an': other's labels is actionable. But the facts of this case warrant no such finding against the defendant, who has been guilty of no fraudulent in'-tent, and has in no way either deceived the public or defrauded the Com-· plainant. Upon the whole case the court is clearly of the opinion that complain... ant has no legal trade-mark in the letters "LL," that it is not entitled t(} the relief sought, by its bill, and that its said bill should be dismissed with costs. It is accordingly so ordered and decreed.
BRADY 'lJ. STILLMAN.
791
BRADY 'lJ. STILLMAN; impleaded, etc.
(Oircuit Oourt, S. D. New York. August 10, 1887)
1.
PRINCIPAL AND AGENT-ACTION FOB CO!004lBSlON'-PLEADlNG-AVERMENT OF TITLE. , ,
A complaint in an action at law set out that the "represented to the plaintiff that they were the owners of Fort Brown reservation, in Texas;" that they duly authorized him to represent them in nell;otiations with the generalgovernment for the adjustment of theirclitims against the United States, atising out of the taking and use of the reservation by it, and in that connection to sell the property, if need be,-agreeing to pay him for his serviCes a commission on what was actually collected; that, through his ,exertions, a bill was introouced in congress, which was passed, appropriating money for the purchase of the reservation, upon a complete title, being made to the United States; and that the defendants had refused and neglected to abtain the money by their refusal to execute the necessary papers to convey a title, and that such refusal was owing to a private dispute among themselves, and that the non-collection of the wholly owing to their default. Held, on demurrer, that the complaint sufficiently sets out the present ability of the defendants to execute the necessary papers, their power to'Obtain the money, and their refusal to collect it. A positive averment that they had a good title is not also necessary.
B.
BAME-SEPARATE COUNTS.
The third count of same declaration was to the effect that, after the passage of the act authorizing the purchase of the reservation, the defendants employed ,the plaintiff to represent them in respect of cl;lrtajn adverse claims made by other, persons, 110 as ,to enable them to obtain the moneyappropriated, and agreed to pay him $12,000 out of the amount 8oappropria,tfd. snd that they had failed to make such payment, haVing ileglectedto conveys clear title, etc. 'Held, that the count was bad on demurrer; the statemen'tof the cause of action not being complete either by itself or by to any other count.
At Law. , On demurrer tocomplamt. John F. Dillon and H. M. Herman, for plaintiff. Thomas G. Shearman, for defendants. SHIPMAN, J.' This is a demurrer to the complaint in an action at law , which was originally brought to a state court, and was removed to this _court. The complaint alleges, in substance· "T,h&tthe defendants represented to the plaintiff t)lat they were the OWIlers of the Fort Brown reseJ;vation, in Texas, occupied for many years by the government of the United States, which had refused to pay anything for the use !lnd 'occupation thereof;, that they requested the plaintiff to render services in obtaining compensation from the United States fOr the premises, which they represented that they were willing to sell for a reasolilaple price; and that they: thereupon delivered to the plaintiff two powers of attorney, the substance of;which was that they authorized the plaintiff to represent them in negotiations with the U. S. government for the adjustment of their claims against the government, arising out of the taking and use of the Fort Brown reservation. That, at the request of the defendants, the negotiations with the secrevdry of war, and presented the, claim to a member of congress, who introduced into congress a bill authorizing a of the ,claim, ,which was referred to a committee, before which ,the plaintiff attenlled and which reported the bill favorably, and in consequence congress, In an act