SINGER MANUFACTURING COM- [169 PANY, Appt., v.

JUNE MANUFACTURING COMPANY.

(See S. C. Reporter’s ed. 169-201.)

Using name of patented article after expiration of the patent — protecting others — attempting to deceive the public.

article in every form passes to the public with the dedication resulting from the expiration of

Note.— As to when an injunction will be granted restraining the unauthorized use of trademarhs , see note to McLean v. Fleming, 24: 828.

As to trademark , right to; what may be; transfer

163 U. S.

Singer Manufacturing Co.

the patent, even if the name is the surname of the patentee or original manufacturer.

come the generic name of a patented article on which the patent has expired must adopt such precautions as will protect the property of others and prevent injury to the public interest, if by so doing no substantial restriction is imposed oil the right of freedom of use.

the sale of Singer sewing machines byinducing the belief that they were made by the Singer Manufacturing Company is shown where the shape, material, and place of position of the plate upon the machine, as well as the words upon it, were in imitation of the plate used by the Singer Company, while there was also a colorable imita¬ tion of the device cast in the legs of the machines, and the numbers used in the machines began in the millions to convey the impression that they were the result of a long-established manu¬ facture, and in addition to this a tension screw on the machine of the Singer Company, which was covered by a subsisting patent, was imitated by a dummy screw on the other machine, which served no mechanical purpose whatever.

[No. 6.]

Argued January 9, 10, 1894. Ordered for re argument January 15. 1894. Reargued Goto- her 16, 17, 1894. Decided May 18, 1896.

APPEAL from a decree of tbe Circuit Court of the United States for the Northern District of Illinois dismissing a suit in equity brought by the Singer Manufacturing Company, plain¬ tiff, against the June Manufacturing Company for an injunction to restrain the use by defend¬ ant in its business of the word “Singer” as a ■designation of sewing machines manufactured by it and for an accounting for the profits. Reversed and cause remanded, with direction to ■enter a decree in favor of plaintiff, and perpetu¬ ally enjoining the defendant, and for an account -of profits, etc.

See same case below, 41 Fed. Rep. 208.

Statement by Mr. Justice White:

The Singer Manufacturing Company, a ■corporation organized under the laws of the 170] state of New Jersey, filed its bill *in equity in the circuit court of the United States for the northern district of Illinois against the June Manufacturing Company, an Illinois corporation.

The bill alleged that the complainant was ■engaged in the manufacture of sewing ma¬ chines, and had an exclusive right to the word “Singer” as a tradename and “designa¬ tion” for such sewing machines; it averred that defendant, for the purpose of inducing the belief that sewing machines manufact¬ ured and sold by it were made by the com¬ plainant, was making and selling machines -of the exact size, shape, ornamentation, and general external appearance as the machines manufactured by complainant; that the de¬ fendant was imitating a described trademark which the complainant had for many years placed upon its machines; that it was imi-

v. June Manufacturing Co. 169-171

tating “devices” cast by complainant in the legs of the stands of the machines manufact¬ ured 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 prof¬ its received by defendant was prayed, as also an injunction to restrain the use by defend¬ ant 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 com¬ plainant’s “representation” and tradename, or that in anything done by it it had sought to induce the belief that the machines manu¬ factured and sold by it were manufactured by the complainant, and alleged that the form, size, shape, and appearance of its ma¬ chines were public property, and not tbe ex¬ clusive property of the complainant. It was averred that the defendant constructed its machines on the principlesof machines which had been protected by letters patent, held by the Singer Company, by license or other¬ wise, but which patents had long since ex¬ pired, and that the name “Singer” was the generic name of such machines. The defend¬ ant admitted that it affixed an oval plate to its machines, but claimed that the device placed by it thereon *was dissimilar to that [171 used by the complainant, and averred that the words11 Improved Singer, ’’stamped on such plate, was the correct name of the machine. It was also averred that while formerly an elabo¬ rate monogram was placed on said plate, com¬ posed of the letters “S. M. Co.,” being the initials of the “ Standard Manufacturing Com¬ pany” (a former corporate name of defendant) , that 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 com¬ plainant 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 manufact¬ ure of the machines.

It appeared from the evidence that the con¬ struction 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. con¬ tinued in the business of manufacturing sew¬ ing machines until June, 1863, when that firm transferred all its assets, property, pat¬ ents, and goodwill to the Singer Manufac¬ turing 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

of; infringement,— see note to Coats v. Merrick Thread Co. 37: 847.

As to trademark; right to; what may he; infringe¬ ment; assignment; when protected; misrepresentation

163 U. S.

in; use of name; remedy in equity: injunction,— see note to Lawrence Mfg. Co. v. Tennessee Mfg. Co. 34: 997.

119

171-174

Supreme Court of the United States.

Oct. Term

Singer Manufacturing Company, was organ¬ ized under the laws of New Jersey, to which corporation the New York concern transferred its assets. The stockholders in both compa¬ nies 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

172] successor, the New York ^association, the domicil 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 con¬ structed 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 me¬ chanical principles employed, although all the machines were in certain particulars cov¬ ered by a few fundamental patents of which the corporations were owners or licensees. None of the machines, however, were pat¬ ented as a whole.

The patent to Elias Howe, granted Sep¬ tember 10, 1846, and which remained in force until 1807, 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 suc¬ cessors. 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 Bach¬ elder were not confined to the Singer ma¬ chines, but were employed under license by manufacturers of other sewing machines, where an automatic feed was employed.

Nearly one hundred other patents relating to sewing machine mechanism and attach¬ ments to sewing machines were owned or con¬ trolled 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 attach¬ ments,” etc. The use of some of these was early discontinued, and others have been and are still in general use by the Singer Com¬ pany on machines made by it, and some were used under license by other manufacturers.

173] *Whilst it is true that all the patented inventions owned or controlled by the Singer Company were not all used on e'very type of Singer machine, it is also true that all Singer sewing machines contained some features of some of these inventions which to that ex- 120

tent 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 machines, and were first sold in the spring or winter of 1856. The New Family machine was essentially different in form and appearance and in some of the me¬ chanical principles employed from machines of other manufacturers used for similar pur¬ poses, and formed a distinctive Singer ma¬ chine.

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 ma¬ chines 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 pe¬ riods, 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 ma¬ chines. 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 ma¬ chines, 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. Go. N. Y. ,” and underneath it were the words “Trail© Mark beneath- those words a wreath of flow¬ ers. This trademark was stamped on a brass *plateof oval shape, which plate was at-[ 174: tached 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 or 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 re¬ duced, and competitors sprang into exist¬ ence, who began to manufacture machines- which they called Singer sewing machines. Controversies arose between the Singer Man¬ ufacturing Company and such persons as to- the right of the latter to make machines in the form and appearance of those manufac¬ tured by the Singer Company, and their right to style such machines Singer machine^. 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

163 U. S*

Singer Manufacturing Co. y. June Manufacturing Co.

174-177

real Singer Machine is now being made with our trademark Cast iuto the Stand as in the above cut.

Buy No Machine Without it.

The trademark was registered in July,

As already stated, some of the machines made by the Singer Company before the ex¬ piration of the Bachelder and other patents were sporadically marked “ Singer”in addition to the name or initials of the firm or corpo¬ ration, and to the trademark. After the ex¬ piration 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 in so far as it appeared on the trademark. At all times, also, it was the custom of the Singer Compa¬ ny to mark on its machines the number there¬ of ; these numbers ran consecutively from the beginning, and therefore indicated with substantial accuracy the total number of ma- 175]chines made. In ^addition all the ma- chines.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, aDd the machines became widely known. In the development of the business the Singer Company constantly ad¬ vertised their machines as “Singers,” and they were referred to on the bill heads, cir¬ culars, 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 ; whilst in 1882 the sales aggregated 603,-

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 fur¬ nished by the Standard Company to one H. B. Goodrich of Chicago, a dealer in sewing machines. In 1880 sales were made to one

163 U. S.

or two other dealers, and still other customer were supplied in 1881. In the month of June, 1881, the name of the corporation was changed to the June Manufacturing Compa¬ ny. In the fall of 1881 that company [176 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 in¬ dicating the source of their manufacture, ex¬ cept 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 mon¬ ogram was “J. M. Co.,” and the words “J. Mfg. Co.” were placed beneath the mono¬ gram. In both of these plates the words “Improved Singer” were cast in prominent liues._ The June Company never attempted to register a trademark.

On the bed plate of each machine the de¬ fendant stamped or casta 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 num¬ ber of the machines manufactured. When the defendant began to make complete ma¬ chines, that is, including stands, it placed on the latter a device, cast in the legs there¬ of, in the same relative position as was the trademark device cast in the legs of the stand which had been adopted by the Singer Com¬ pany, as heretofore stated, in lieu of the plain style of stand used during the life of the patents. This device of the defendant consist¬ ed of *the word “ Singer” alone, in very[177 large letters ; the word “I. S. ” in monogram form above this word “Singer,” and the words “J. Mfg. Co.,” in small letters under¬ neath. 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 regulat¬ ing the tension, called a tension screw,

121

177-180

Supreme Court of the United States.

Oct. Term,

■which it placed upon the top of the face plate of its machines. This improvement contin¬ ued, however, to be protected by a patent. In precisely the same position upon its ma¬ chines, the June Company placed a “dum¬ my” screw.

The defendant advertised its machines ex¬ tensively, and also issued many circulars con¬ cerning them, and furnished with their ma¬ chines a printed warranty. Their machines were referred to as the “Improved Singer Sewing Machine,” “June Improved Singer Sewing Machine, ” “ Genuine Improved Sing¬ er, ” “The Improved Singer,” “High Grade Singer Sewing Machines, ” “ Improved Singer New Family Sewing Machine,” and “The New Greatly Improved Singer Sewing Ma¬ chine ;” but all the circulars offered in evi¬ dence contained substantially the statement that the machines referred to in them were manufactured by the June Manufacturing Company.

After hearing there was a decree dismiss¬ ing 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 there¬ fore no infringement of the rights of the complainant had resulted from its use ; sec¬ ond, 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 Fed. Rep. 208.

Messrs. Lawrence Maxwell, Jr., and Charles K. Offield for appellant.

Messrs. John G. Elliott and William Henry Browne for appellee.

Mr. Justice White delivered the opinion -of the court :

The facts recapitulated in the statement just made are undisputed. Those which are seri¬ ously 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 contradis¬ tinguished from a name indicating exclu¬ sively the source or origin of their manufact¬ ure ; second, irrespective of the question of patent, was the name “Singer, ”bv the consent and acquiescence of Singer himself and that of the Singer Company, voluntarily used as a generic designation of the class and char¬ acter of machines manufactured by I. M. Singer & Co. or the Singer Manufacturing Company, so that inconsequence of this vol¬ untary 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 <loing so we deem it well to say that on both 122

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 pos¬ sible weight, produces no affirmative result, since it is equally as strong by way of opin¬ ion on one side as it is upon the other. We shall therefore rest our conclusions on a consideration of the facts*themselves, [179 rather than upon the conflicting and irrecon¬ cilable opinions of witnesses.

First. It cannot be denied that the Singer machines were covered by patents, some of which were fundamental, some merely ac¬ cessory. 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 dif¬ ferent 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 argu¬ ment 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 re¬ spects 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” hasbeeD asserted, it has, almost without exception, been found that Singer machines, as a whole, were a distinctive class, preserving a general uniformity of na¬ ture however varying may have been the types by which their structure was mani¬ fested.

It may be assumed that the proof estab¬ lishes that for certain classes of the general type of Singer machines, that is, the species used only for particular and exceptional man¬ ufacturing purposes, an addition of some oth¬ er word or description to the generic name “Singer” was necessary to completely con- vey*a perfect indication of the machine[180 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

163 U. S.

180-182

Singer Manufacturing Co.

-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 esseutial 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,’’ in¬ tended for general domestic purposes, con¬ stituted the larger part of the enormous out¬ put of the Singer companies. It was of a uniform type and had no other possible des¬ ignation, in the mind of the general public, other than the word “Singer.” The foregoing views find conclusive support from the un¬ questioned fact that upon the expiration of the patents held by the Singer company the price of the machines made by that com¬ pany fell enormously in amount. Thus, to adopt the theory advanced by the com¬ plainant we should have to deny the inevi¬ table law of cause and effect.

Abundant corroborative proof that the word ’“Singer” became genetically descriptive of the machines manufactured by the Singer Company is afforded by the conduct of that •company. From the beginning every ma¬ chine 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 regu¬ larly supplanted by the word “Singer” alone. The trademark then adopted could not have been essential to desi gnate thesource of manu¬ facture, since from the inception the com¬ pany had subserved that purpose by marking the name of the firm or corporation plainly upon the machines. The omission of the name 181]*indicating the origin of manufacture and the substitution of the word “Singer,” just before the expiration of the patents, sug¬ gest a coincident relation of purpose which is not explained by any testimony in the record. This coincidence between the expi¬ ration 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 cov¬ ered their machines were about to expire, substituted the trademark for the plain desig¬ nation of the source of manufacture thereto¬ fore 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.

Second. 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 |

163 U. S.

v June Manufacturing Co.

of their distinctive style of machines rather than as solely indicating the origin of manu¬ facture. This i3 demonstrated by the fact that at the inception of the manufacture of the machines the word “Singer” alone was not used on them. Thegeneral method thenadopt- ed 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 gen¬ eral name of the machines made by it. There is no proof that the name thus adopted by the corporation did not subserve this con¬ templated purpose of designating all the ma¬ chines of whatever type, or that its inade¬ quacy 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 conduct *of the company in adopting the trade- [182 mark and first affixing the name at the time of the expiration of the patents, to which we have already adverted, is also of great sig¬ nificance in considering the question of the voluntary previous selection by the corpora¬ tion 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 af¬ firmative 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. Froctor was sworn for the com¬ plainant, and his relations with the Singer Company are shown by the following ex¬ cerpts from his testimony ;

Q. State in detail what connection you have had with the sewing machine business.

A. I have been connected with the manu¬ facture 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 ob¬ ject was the name “Singer” marked upon the machines of the complainant and its prede¬ cessors, and applied to them in advertising them?

Object! d to by defendant’s counsel as being merely accumulative and irrelevant to the is¬ sue.

A. To designate them and after the forma¬ tion of the company to gratify the desire of Mr. Singer to perpetuate his mime associated with the machine.

123

183-185

Supreme Court ok the United States.

Oct. Term,

Q. 78. State what you mean by designating them.

A. As a Singer machine.

Q. 74. State whether the name was con-

183] tinued by the ^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 testi¬ mony 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 manu¬ facturers a substantial monopoly ; that in consequence of the enjoyment of this mo¬ nopoly by the makers, the name “ Singer” came to indicate, in its primary sense, to the pub¬ lic, the class and type of machines made by the Singer Company or corporations, and thus this name constituted their generic de¬ scription ; 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 vol¬ untarily applied by the Singer firm or com¬ panies as a designation of the general type of machines made by them, with the inten¬ tion that such machines should be accepted by the public under tiiat name ; thus the course of the business and the purposes 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 descrip¬ tion of the machines, but also, in a subordi¬ nate sense, the indication of the source of manufacture.

The case as stated by the appellant in the pleadings and in the argument fails todis-

184] criminate between distinct and *differ- ent causes of action. The right to relief aris¬ ing 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 com¬ petition 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 un¬ fair competition in business, and the distinc¬ tion between them, it is sufficient to say that all the relief which complainant seeks is necessarily embraced in the following classi¬ fication :

1st. Unfair competition in business, re-

121

suiting from the form in which the defendant makes its machines, and also from the em¬ ployment by it of the word “Singer” in con¬ nection with the marks and devices on the machines, and the use of the same name in circulars and advertisements ; 2d, the alleged violation of the specific trademark of the complainant by the devices found on defend¬ ant’s machines and by the use of the word “Singer.” Wewill examine theseeontentions.

First. Unfair competition in business , result¬ ing 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 advertise¬ ments.

Tiiis question subdivides itself into two inquiries : 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 sec¬ ondary and relative sense indicates to the public the source of manufacture, has the manufacturer, on the cessation of the mo¬ nopoly, 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, and generally for such [185 purposes as his interest may suggest? If no right exist in the original manufacturer to prevent another, under the foregoing circum¬ stances, 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 with¬ out any resulting duty whatever, or is it ac¬ companied with the obligation of so exercis¬ ing 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 com¬ ment 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 ha9 arisen during the monopoly, in consequence of the designation 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 re-

168 U. S.

Singer Manufacturing Co. v. June Manufacturing Co.

185-188

suiting dedication. To say otherwise would be to hold that, although the public had ac¬ quired the device covered by the patent, yet the owner of the patent or the manufacturer of the patented thing had retained the desig¬ nated name which was essentially necessary to vest the public with the full enjoyment of that which had become theirs by the dis¬ appearance' 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 18G]end was reached disregard the ^public dedication and practically perpetuate indefi¬ nitely an exclusive right.

The public having the right on the ex¬ piration of the patent to make the patented article and to use its generic name, to re¬ strict 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.

Is or 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 I)e 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 re-enters 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 con¬ sent to the dispossession. Outside of this there can be no dedication of the right, be¬ cause 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 im¬ posed on the one using it to adopt such precautions as will protect the property of others and prevent injury to the public in¬ terest, if by doing so no substantial restric¬ tion is imposed on the right of freedom of use. This principle is elementary and ap¬ plies to every form of right, and is generally •expressed by the aphorism Sic vlere tuo ut olienum non Icedas. This qualification results from the same principle upon which the dedication rests, that is, a regard for the in¬ terest of the public and the rights of indi¬ viduals.

187]* It is obvious that if the name dedi¬ cated to the public, either as a consequence of the monopoly or by the voluntary act of the party. has a two-foldsignificance. one generic and the other pointing to the origin of manu- | facture, and the name is availed of by another i

1(13 U. S.

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 auy good-will which be¬ longed to the original maker. It would im¬ port, not only this, but also the unrestrained right to deceive and defraud, the public by so using the name as to delude them into be¬ lieving 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 busi¬ ness during the patent, would be to seriously ignore rights of private property, and would be against public policy, since it would de¬ prive the one enjoying the patent of all in¬ centive 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 wav impairs the right of use, but simply regulates and prevents wrong to individuals and injurytothe public.

This fact is fully recognized by the well- settled doctrine which holds that although “everyone has the absolute right to use his own name honestly in his own business, even though he mav thereby incidentally interfere with and injure the business of another hav: ing the same name. ' In such case the incon¬ venience or loss to which those having a com¬ mon right are subjected is damnum absque injuries But although he may thus use his name, he cannot resort to any artifice or to do any act calculated to mislead the public as to the identity of the business firm or es¬ tablishment, 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 Co. v. Le Page, 147 Mass. 20(i, 208 ; Pillsbury v. *Pills-\ 188 bury, 24 U. S. App. 395, 404 ; Croft v. Day, 7 Beav. 84 ; Holloway v. Holloway, 13 Beav. 209 ; W other spoon v. Currie, L. R. 5 H. L. 408; Montgomery v. Thompson [1891] App. Cas. 217 ; Howard v. Henriqves, 3 Sandf. 725; Meneely v. Meneely, 62 N. Y. 427, 20 Am. Rep. 489 ; Lawrence Mfy. Co. v. Tennessee Mfg. Co. 138 U. S. 537 [34 : 998] ; Brown Chemical Co. v. Meyer, 139 U. S. 540 [35: 247] ; Goats v. Merrick Thead Co. 149 U. S. 562 [37 : 847], 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, unaccom¬ panied with any precaution or indication, in itself amounts to an artifice calculated to produce the deception alluded to in the fore¬ going adjudications.

Indeed, the enforcement of the right of the publ ic to use a generic name, dedicated as the results of a monopoly, has always, where the facts required it, gone hand in hand with 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 ex-

125

138-191

Supreme Court of the United States.

ception, treated the one as the co-relative or resultant of the other.

In Fairbanks v. Jacobus , 14 Blatchf. 337 (1877), it was sought to restrain the defend¬ ant 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 pat¬ ents 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’ pat¬ ent’ do not mean to assert the existence of a patent securing the scales, but only that they are made in conformity with, and em¬ body 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, 8 Biss. 151 (1878) , it was sought to restrain the defendant 189]from the use of the name *“ 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 manu¬ facturing a machine like the Singer sewing machine, and which may be called, to dis¬ tinguish it from other machines, ‘Singer’s Sewing Machine.’ If a sewing machine has acquired a name which designates a mechan¬ ism 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 Sew¬ ing Machine,’ still he cannot be permitted to do any act the necessary effect of which will be to intimate or to make anyone be¬ lieve 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 trade¬ mark, 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 requir¬ ing the defendant to refrain from selling any Singer sewing machines manufactured by any person or company other than the plaintiff, without indicating iD some distinct manner that the said machines were not manufactured by the Singer Manufacturing Company.”

In Singer Mfg. Co. v.Stanage, 6 Fed. Rep. 279 (1881), Treat, District Judge, said(p. 280) :

“The plaintiff and its predecessors had, in connection with others, through patents, a monopoly as to certain sewihg machines known as the ‘Singer machines. ’ When these patents expired every one had an equal right 126

Oct. Term,.

to make and vend such machines. If the pat¬ entees or their assignees could assert suc¬ cessfully an exclusive right to the name ‘Singer’ as a trademark, they would[190 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 in¬ telligence could suppose that the ‘Stewart’ manufacture was the manufacture of the plaintiff. Each had its distinctive and de¬ tailed 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, 11 Fed. Rep. 706 (1882), where a suit was brought to re¬ strain the use of the word “Singer” by the defendant in connection with sewing ma¬ chines, the preliminary injunction was re¬ fused, following the decision in the Stanage Case. The court called attention to the fact that the word “ Singer” was not usedon defend- ant’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 cal¬ culated to mislead.

In Brill v. Singer Mfg. Co. 41 Ohio St. 127, 52 Am. Rep. 74 (1884), 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, ex¬ ternal appearance, or ornamentation, the pat¬ entee 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 SiDger machines had be¬ come 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 *who was the manufac- [191 turer. At all events, the court did not discuss the obligation of the defendant to avoid mis¬ leading since, under the facts, the question did not arise.

In Gaily v. Colt’s Patent Fire-Arms Mfg. Co. 30 Fed. Rep. 122 (1887), it was held that the name “Universal,” applied by a patentee to his patented printing press, upon the ex¬ piration of the patent, could not be appropri¬ ated by the inventor as a trademark. Sliip- man, J. , said (p. 122) :

“Any manufacturer who uses the name now does so to show that he manufactures the Gaily press, which he may rightfully do, and does not represent to the public that it is getting any skill or excellence of work-

163 U. S.

191-19*

Singer Manufacturing Co.

manship which Gaily possessed, and does not induce it to believe that the presses are manu¬ factured by the plaintiff. ”

The machines manufactured by the defend¬ ant, upon which was' stamped the name “Universal,” also bore the name of their maker.

Merrinm v. Holloway Pub. Co. 43 Fed. Rep. 450 (1890), involved the right of the defend¬ ants to use the words “ Webster’s Dictionary” in connection with a reprint of the 1847 edi¬ tion 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 es¬ tablish 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 copy¬ right 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 copy¬ right, 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 192]of the sale of his writings *for a defin¬ ite period, but the grant of a monopoly im¬ plies 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 Diction¬ ary’ is all nonsense, since the copyright has expired. What do they mean by the expres¬ sion ‘their book, ’ when they speak of Web¬ ster’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 Dic¬ tionary 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 togeth¬ er, there may be some evidence of a fraudu¬ lent intent on defendants’ part to get the benefit of the reputation of the edition of Webster’s Dictionary which the complain¬ ants 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 is 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 & C. Co. 47 Fed. Rep. 411, a ruling similar to that an-

163 U. S.

v. June Manufacturing Co.

nounced by Mr. Justice Miller was made. Bur, 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 proved on final hearing. It may be that some change in the form of defendant’s circulars and ad¬ vertisements will be all the relief that the circumstances of the case fairly want; or it may be that the proof will warrant an order that the defendant place a notice in their book that it is a reprint *of the edition[193 of 1847 of Webster’s Dictionary, with such additions 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 pub¬ lic are ascertained. It is sufficient to say at present that, on the showing made, the com¬ plainants are entitled to relief, and the de¬ murrer to the bill is accordingly overruled.”

The principles thus maintained by the American cases are also supported by the English decisions.

In Wheeler & Wilson Mfg. Co. v. Shakespear, 39 L. J. Ch. 36 (1869), Vice Chancellor James refused to enjoin the use of the name of Wheeler & Wilson as a designation in ad¬ vertisements of machines dealt in by the de¬ fendant. The advertisements of the defend¬ ant 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 de¬ scriptive 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 ma¬ chine, 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 expira¬ tion of the patent, from representing his ar¬ ticle as being the article which was so pat¬ ented. 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 pat¬ ent, ’ and therefore to that extent I think the plaintiffs are not entitled to the relief they ask. ”

*In Cheavin v. Walker, L. R. 5 Ch. [194: Div. 850 (1877), it was held that the trade¬ mark 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 la-

127

194-196 Supreme Court of

bel of the complainant, who had succeeded to the rights of the original patentee. In the court of appeals Janies, L. J., said (p. 863) :

“It is clear that on the expiration of this patent it was open to all the world to manu¬ facture 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 ac¬ cording to the expired patent, and both par¬ ties 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 trade¬ mark. 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 ‘Cheaviu’s patent’ is a correct description of the principle ac¬ cording 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 , L. B. 7 Oh. Div. 834 (1878), 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 al¬ leged and Mr. Walton has sworn that, hav¬ ing 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 195] this substance. It appears that *the 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 re¬ ceived no answer ; and for this simple reason that no answer could be given, except that they must invents new name. I do not take that to be the law. I think that if ‘lino¬ leum’ 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 dif¬ ficult 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 defend¬ ant 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 that name in connection with other parts of the trademark, so as to make it appear that the oxidized oil made by the defendants was 128

the United States. Oct. Term,

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 nrr any at¬ tempt on the part of the defendants to rep¬ resent 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 ed. § 267, or the English cases of Singer Mfg. Co. v. Wilson , L. R. 3 App. Cas. 376, reversing L. R. 2 Ch. Div. 434, and Singer Mfg. Co. v. Long, L. R. 8 App. Cas. 15, L. R. 18 Ch. Div. 412, which in anyway contravenes 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 ma¬ chines had been ^manufactured under [196 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 ex¬ clusive trademark in the name. Indeed, Lord Ardmillon (p. 276) expressly declared that he regarded the facts, above stated, as dis¬ tinguishing the case from Wheeler & Wilson Mfg. Co. v. Shakespear, 39 L. J. Ch. 36.

This distinction is also true of Singer Mfg. Co. v. Wilson and Singer Mfg. Co. v. Loog, supra. In neither was there a claim of a generic description as a consequence of a monopoly, and it becomes, therefore, need¬ less to review these cases at length. It may, however, be said that both these cases recog¬ nize the right of a party in his advertising matter to state that his machines were con¬ structed upon the Singer system or model.

The contention advanced bv the complain¬ ant that his right to the exclusive use in the name “ Singer, ’’after the expiration of the pat¬ ents, although that name became the generic description of the machines during the mo¬ nopoly, is in accord with the law of France, is without foundation. On the contrary, the French writers and courts recognize the doc¬ trine to be substantially like that which is enforced in America and England. Braun, Marques de Fabrique, § 68, p. 233, says:

“The question is not whether an inventor can attribute to his patented invention a par¬ ticular designation which remains the ex¬ clusive 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 bo in certain respects illusory. But at the ex¬ piration 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: 1st. The designa¬ tion of the thing patented becomes public property on the expiration of the patent. 2d. The patentee retains in every case the

163 U. S.

Singer Manufacturing Co. y. June Manufacturing Co.

197-1! 9

sole use to the designation, after the expira¬ tion of his monopoly, if he had deposited the name [as a legal trademark] before the ex¬ piration of the patent. 3d. The designation continues to belong to the patentee in eve^ case but one, if the name given to the product has become the only and necessary designa¬ tion 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’lnvention, 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 ha's 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 busi¬ ness [Concurrence De Loyal] against him. Without this, say Pecard & 01 in, the mo¬ nopoly would be indefinitely prolonged be¬ cause, 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 court should not allow third persons to employ the name of the inventor, but with extreme cau¬ tion and by taking the most rigorous meas¬ ures to prevent a confusion as to the origin •of the product, which it would be very easy to abuse. It has been adjudged con¬ formably 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 publ ic domain at 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 came denomination affixed to it by the in¬ ventor does not go to the extent of allowing its sale with the plates, or stamps, or metal¬ lic paper, or tickets, or the manner of secur¬ ing it, or the envelopes or form or color an¬ alogous to that used in such a way as to cause appearances of deception. Nancy, 7th of July (1854) 2 Verly, Sir. (1855), 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 instru¬ ment and selling it under the name which ■had been erven to it. Paris, 30th December (1859) ; Pattaille (1859), 414. 3d. That the

1G3 U. S. U. S., Book 40. !

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 essen¬ tial, however, that the competitors of the in¬ ventor 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 designa¬ tion of the thing patented, it belongs to every one, at the expiration of the patent, to make use of this designation.” Pouillet, Brevets d’lnvention, § 329, p. 280.

The French decision mainly relied on by the plaintiff in error is that relating to the use of the surname Bully in a toilet prepara¬ tion known as the “Vinegar of Bully,” but the facts upon which the case was decided are misapprehended. In that case the sole ques¬ tion was whether the surname “Bully” had been either expressly or tacitly dedicated by *hi m to the publ ic by connecting it wi th [ 1 99 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 lan¬ guage of the court of cassation as reported in the Dictionary of De Marafy, vol. 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 ex¬ ception, except in the case where, either by long usage or in consequence of a consent either expressly or tacitly given by the in¬ ventor, his surname having become the sole usual designation of his invention, it is em¬ ployed to indicate the mode or the system of manufacture and not the origin of the par¬ ticular 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., 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 pat¬ ents 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 of the in¬ ventor, has become, by his consent, either ex- I 129

199-202

Supreme Court op tiie United States.

Oct. 'T erm,

press or tacit, the identifying and generic name of the thing patented, this name passes to the public with the cessation of the mo¬ nopoly which the patent created. Where an¬ other avails himself of this public dedication to make the machine and use the generic desig-

200] nation, he *can do so in al 1 forms, with the fullest liberty, by affixing such name to the machines, by referring to it in advertise¬ ments, and by other means, subject, however, to the condition that the name must he 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 in¬ dications that the thing manufactured is the work of the one making it as will unmis¬ takably inform the public of that fact.

It remains only to apply these legal con¬ clusions 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 dis¬ pelled. This leaves only two questions: First, whether that name as used in the cir¬ culars and advertisements of the defendant is accompained 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 in¬ quiries, the proof shows that the circulars were so drawn as to adequately indicate to any one 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 there¬ fore dismiss the circulars from view. As to the advertisements, without going into de¬ tails, 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 Manu¬ facturing Company, as the agent or repre¬ sentative 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 SiDger 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 over-

201] whelming implication that*tlie failure to point to the origin of manufacture was in¬ tentional, and that the system of marking pur¬ sued by the defendant had the purpose of en¬ abling the machines to be sold to the general public as machines made by the Singer Com¬ pany.

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, unhccompanied by anything to indicate that the machines were manufactured by the June Company, except the words “J. M. Co.” and the mono- 130

gram “ 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 gi veu to the words “ Improved Singer, ’’all could have copveyed but one im¬ pression 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 words “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 Com¬ pany, 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, bring out in the plainest way the purpose of suppressing knowlcdgeof the actual manu¬ facturer 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 nonecessary connection with the right to make machines according to the Singer system *and to call and sell [202 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 signifi¬ cance. On the plate of the Singer machines there was plainly marked a number, which the proof shows had run with relatively ac¬ curate consecutiveness from the beginning. These numbers, as a result of the vast de¬ velopment 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 im¬ plication, 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 ma¬ chine 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 con¬ doned because others were guilty of similar attempts to deceive. There is another signifi¬ cant fact. On the machines made by the Singer Company there was a tension screw. This screw on the Singer machines served a

163 U. S_

Singer Manufacturing Co. v. Bent.

202-205

useful mechanical purpose, and did not pass in to the public domain with the expiration of the fundamental patents, because specially covered by a subsisting patent. The defend¬ ant in making his machines placed thereon a dummy screw, serving no mechanical pur¬ pose 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 icord “ Singer. ”

This question is necessarily involved in and

203] determined by *the foragoing considera¬ tions. 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 de¬ fendant’s machine would be a plain infringe¬ ment 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 word “ Singer”or a representation equivalent in the public mind to that word. It follows that the marks used by the defend¬ ant 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 com¬ posite words, some of which become dedi¬ cated to public use, others of which are not, Braun in his Traite des Marques de Fab- rique, No. 135, pp. 354, 355, says: “The sur¬ name, saysa 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 sur¬ vive the exclusive right to the name and vice versa. Thus one may keep the exclusive right to the use of the name, while the re¬ mainder of the mark will belong to every one.”

The right to use the word “Singer,” -which caused the imitative infringement in the de¬ vice, being lawful, it is plain that the in¬ fringement only resulted from the failure to plainly state, along with the use of that word, the source of manufacture, and there¬ fore this branch of the question is covered by the same legal principle by which we have determined the other.

204] *It follows, therefore, that the judgment below, which recognized the right of thede-

163 U. S.

fendant 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 en¬ ter 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 equiv¬ alent thereto, in advertisements in relation to sewing machines, without clearly and unmistakably stating in all said advertise¬ ments that the machines are made by the defendant, as distinguished from the sew¬ ing machines made by the Singer Manufact¬ uring 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 Com¬ pany. 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.

And it is so ordered.