12 F. 707 (N.D.N.Y. 1882), Shaw Stocking Co. v. Mack

Citation:12 F. 707
Party Name:SHAW STOCKING CO. v. MACK and another.
Case Date:June 01, 1882
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit
 
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Page 707

12 F. 707 (N.D.N.Y. 1882)

SHAW STOCKING CO.

v.

MACK and another.

United States Circuit Court, N.D. New York.

June, 1882

Miller & Fincke, for complainant. John L. S. Roberts, of counsel.

Thomas Wilkinson, for defendants. E. Countryman, of counsel.

COXE, D.J.

The Shaw Stocking Company is alleged to be a corporation engaged in the manufacture and sale of hosiery at Lowell, Massachusetts. Its goods differ in some important respects from the productions of other manufacturers, and have by virtue of their inherent worth acquired a wide-spread reputation and popularity. The complainant, with perhaps a pardonable assurance, insists that these goods possess many excellent and novel qualities and characteristics hitherto unknown or unapplied. It is not disputed, however, that in some respects the assertion is well founded. The defendants apparently

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entertained a very high opinion of the complainant's hosiery, for as late as April 19, 1882, they wrote as follows: 'Now, since you have determined you will not give us further supplies, * * * we do not care to continue our hosiery trade at all. * * * We want the best make or none,' etc.

Upon the question of quality it is sufficient to say that no one of the affiants produced by the defendants alleges that there are goods in the market superior to the complainant's. Some are said to be equal, none superior. For a period of two years complainant's hosiery has been packed and sold in boxes, to which were attached labels in the following form:

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The central compartment of the label was the same in every instance, without reference to the contents of the boxes. The figures at either end differed according to the style and size of the hosiery, the numerals '830' having long been used by complainant to designate seamless half-hose of a mottled drab color manufactured by it. Half-hose of this particular variety had been advertised by these numerals, were known to the trade as '830's,' and as such had become popular as the wares of complainant.

In May, 1881, complainant commenced selling to the defendants' firm at Albany large quantities of its goods. At the request and solicitation of defendants, complainant sent them several thousand circulars or price-lists, signed by the Shaw Stocking Company, and containing the announcement that the wares manufactured by that company and described in the circular could be obtained of 'Mack & Co.,' who would supply them to buyers at the prices indicated. These circulars were sent by the defendants extensively to their customers throughout the state, it being generally understood that the 'Shawknit' goods could be obtained as favorably at Albany as at Lowell. The statements contained in the circular, emanating as it did directly from the company, taken in connection with the fact

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that the defendants advertised themselves on their bill-heads as 'manufacturers and manufacturers' agents,' caused it to be commonly supposed that Mack & Co. were the New York agents of the complainant, or at least conveyed information from which such an inference could reasonably and properly be drawn by the commercial world. In March, 1882, the defendants having maintained this connection with the complainant for nearly a year, and having a large quantity of its hosiery undisposed of, commenced putting up and selling, without previous notice, other goods, similar in color and texture, but inferior in many respects to its productions, as complainant insists, and lighter in weight and cheaper in price, as defendants admit. These goods were sold under labels like the following:

(Image Omitted)

The wares so labelled and sold were not manufactured by the defendants, but were purchased of stocking makers at Birmingham, Connecticut, the labels on the boxes being removed by the defendants and the above labels substituted, not only on the Birmingham, but also on the 'Shawknit' boxes.

Defendants' own account of their action in this regard, and of the motives which prompted it, is stated under date of April 11, 1882, in the following words:

'This state of affairs (viz., the alleged withdrawal of styles by the complainant) was the first incentive to using Birmingham hose, and our idea was to work the two makes together in such a way as to save us from loss on yours, which were the higher cost, and at the same time in such a manner that any variations from your regular prices would not reflect on you, or become detrimental to your interests in any manner, and, at the same time, enable us, on an average cost, to make something; and consequently we had our labels printed and our own bands, putting them on all,-- your make and Birmingham both,-- making no claim as to any particular or distinctive manufacture, only retaining in the label the number adopted by you to distinguish style,' etc.

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This letter was written after notice of complainant's grievance, and it is fair to assume that it contained as favorable a presentation of defendants' case, and their motives and intentions, as at that time suggested itself to the mind of the letter-writer.

The foregoing facts are in their essential features undisputed.

The complainant also produced affidavits tending to show that many dealers had been deceived by the defendants' labels; that 'Shawknit' goods had been ordered and paid for as such, and the Birmingham goods supplied by defendants in response to such orders; that defendants' agents sold by 'Shawknit' samples, but the orders were not filled with 'Shawknit' goods.

The defendants deny that they have been guilty of any attempt to deceive the public, and offer an explanation of the various occurrences relied on by the complainant to establish a fraudulent intent. They also produce a number of affidavits intended to establish two or three leading propositions, viz: That the Birmingham is not inferior to the 'Shawknit' hosiery; that the numerals used by complainant are intended simply and solely to designate the quality and style of its goods, and not for the purpose of indicating their origin or identifying their makers; that the two labels are so dissimilar that no one, exercising ordinary care, would be misled.

Defendants also produce an affidavit made by one of their agents, in which the affiant stated that on the first day of June, 1882, he visited the city of New York, and in five stores there, found seamless half-hose made by different manufacturers, the quality being distinguished by the numerals '830.' He fails, however, to give the name of any of the manufacturers, the date when the figures were first used, or any data upon which the complainant could base an investigation.

The question to which the attention of counsel was chiefly devoted on the argument was whether the complainant had an exclusive right to the number '830' to designate and distinguish its hose of a particular variety.

Broadly defined, a trade-mark is a mark by which the wares of the owner are known in trade. Its object is twofold: First, to protect the party using it from competition with inferior articles; and, second, to protect the public from imposition. There is hardly a limit to the devices that may be thus employed; the whole material universe is open to the enterprising merchant or manufacturer. Anything which can serve to distinguish one man's productions from

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those of another may be used. The trade-mark brands the goods as genuine, just as the signature to a letter stamps it as authentic. The trade-mark may consist of a token, letter, sign, or seal. Names, ciphers, monograms, pictures, and figures may be used. Why not numerals united? What consistency is there in allowing it in a combination of letters, but denying it in a combination of figures?

A careful examination of the...

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