Cleveland Stone Co. v. Wallace

• Decision Date: 02 May 1892
• Docket Number: 3,289.
• Citation: 52 F. 431
• Parties: CLEVELAND STONE CO. v. WALLACE et al.
• Court: U.S. District Court — Eastern District of Michigan

52 F. 431

CLEVELAND STONE CO. v. WALLACE et al.

No. 3,289.

United States Circuit Court, E.D. Michigan.

May 2, 1892

John D Conely, for defendants.

SWAN District Judge.

This is a motion for an injunction to restrain the defendants from the selling and offering for sale scythestones under certain names and labels which are claimed by plaintiff as trade-marks. The plaintiff is a corporation organized in 1886 under the laws of Ohio, and since that date has been, and still is, engaged in the manufacture of scythestones whetstones, and grindstones. Its quarries and factories are situate at and near Grindstone City, Mich. Upon its organization in 1886 it purchased the quarries, factories and plant at Grindstone City, and the good will of Worthington & Sons, who had carried on business there for 15 years or more. On the 23d of January, 1890, plaintiff bought the quarries, plant, business, good will, and entire property of the Lake Huron Stone Company, at Grindstone City, where the latter company had been quarrying and manufacturing grind and scythe stones since 1869. The Lake Huron Stone Company and Worthington & Sons, up to the time of said sales to complainant, had for many years made, among other brands of scythe and whet stones, the 'Diamond,' 'Western Red Ends,' 'Quinnebog,' 'Star,' 'Clear grit,' and 'Lake Huron,' and others, which had taken well with the trade, and were widely known as the product of the Grindstone City quarries, which stood well in the esteem of the western trade. For some years plaintiff's vendors, the Lake Huron Stone Company and Worthington & Sons, had by agreement made and sold certain styles of scythe and whet stones under the same trade-mark or designation, except that the labels of each firm, which were in all other respects fac similes, truly stated the name of the manufacturer; as, for example, Worthington & Sons made and sold scythe and whet stones under the name 'Quinnebog,' but labeled as the manufacture of Worthington & Sons, instead of 'Lake Huron Stone Co.,' which was the originator and owner of that trade-mark. In like manner, the Lake Huron Stone Company labeled as 'Western Red Ends' certain patterns of their manufacturers, similar in size, form, and appearance to those of that name made by Worthington & Sons, designating themselves on the labels (which were otherwise identical) as the makers, instead of Worthington & Sons. It also appears that in 1870 these two firms formed a pool or association at Chicago, Ill., to supply the western markets, under the name of the 'Western Grindstone Company.' This association continued until 1886, when plaintiff, as stated, bought out Worthington & Sons. The Western Grindstone Company had its warehouses at Chicago, and there received the products of the quarries of its two constituent firms, and filled the orders of its customers equally from the stones supplies by each, and used as trade names on the scythe and whet stones the words 'Star,' 'Clear Grit,' 'Lake Huron,' 'Quinnebog,' and other marks or names peculiar to each subordinate concern, or common to both, though for a time varying the form and color of the labels from those employed by the makers. Later in its history the Western Grindstone Company adopted labels on these various styles and patterns, designating either Worthington & Sons or the Lake Huron Stone Company as makers, in addition to its own name. In January, 1883, the Lake Huron Stone Company, Worthington & Sons, J. J. McDermott & Co., of Ohio, and the Berea Stone Company, of Ohio, united to form a pool under the name of the Berea & Huron Stone Company, and under that name catalogued and offered for sale the various brands and patterns of scythe and whet stones claimed in the bill to be the trade-marks, brands, and patterns of complainant. This pool continued until 1886, when it was dissolved by the sale by Worthington & Sons to complainant. The affidavits also show that Cooper, Grevey & Co., the predecessors in business of Worthington & Sons, had, in 1870, made and sold scythestones of like patterns under similar labels and of the same names with these made by the Lake Huron Stone Company, without objection by the latter. Since 1886, however, no person, firm, or corporation other than complainant and the Lake Huron Stone Company claimed, used, or simulated the labels, names, or trade-marks here in controversy, and this is admitted by the answer. They preserved the general style and appearance of the label now in use by plaintiff, including the names applied to their various patterns of scythe and whet stones, and those names and labels, thus applied, have been known and associated to the trade for many years.

There was at one time a stone known to the eastern trade as 'Quinnebaug,' made from a Connecticut quarry, which was exhausted some 30 years. The name consequently fell into disuse, and at the time of its adoption by the Lake Huron Stone Company, in 1869 or 1870, there had not been for many years a stone known to the trade by that name, though some four or five years later brands known as 'Premium Quinnebaug,' and 'Extra Quinnebaug,' made from stone of obviously different character, formation, and color, were introduced into the eastern markets. The eastern 'Quinnebaug' referred to were also marked by labels bearing no resemblance to those used by plaintiff and its predecessors. So far as appears from the affidavits read on the hearing of this motion, the Lake Huron Stone Company, and the Cleveland Stone Company, as the vendee of Worthington & Sons, have used the names 'Quinnebog,' 'Star,' 'Diamond,' 'Clear Grit,' 'Lake Huron,' and 'Western Red Ends' without interference by competitors in business, certainly since 1886, and the first-named company and Worthington & Sons were the only claimants of those trade-marks and labels for 15 years before that date.

The affidavit of Robert Wallace, submitted by defendants, clearly shows that the Lake Huron Stone Company made the 'Star,' 'Clear Grit,' and 'Lake Huron,' 'Quinnebog,' 'Tiger Crown,' and 'Harvest Queen' brands from 1868 to 1890, and for nearly as long a time the 'Western Red Ends,' though he disparages the exclusive right of the company to the names and labels as trade-marks, and denies that it ever claimed such right, or objected to their appropriation by others. The force of this denial is greatly impaired by the fact that the affiant is the father of the defendants; and, though he was a member of the partnership known as the Lake Huron Stone Company from the year 1868, and joined in the sale of its quarries, business, good will, and property to the plaintiff in January, 1890, and therefore much should be depreciate his grant, when he covenanted with the plaintiff, as one of the conditions of the sale, not to engage in the business in that vicinity for 20 years, militates most strongly against the credibility of his denials. His relationship to the defendants, and the tenor of his statements, are more persuasive that, while he nominally observes his covenant, and has not personally engaged in the business from which he agreed to abstain, his interest now lies in the direction of detracting from the value of the property which he sold, and for which he received his share of the purchase money.

The formation of the Huron Grindstone Company, under which name defendants are carrying on business and offering to the trade the various brands and patterns of scythe and whet stones under the same names and labeled in identically the same way, (excepting only the substitution of the name 'Huron Grindstone Co.' for 'Cleveland Stone Co.,') followed too closely on the heels of the sale by the Lake Huron Stone Company to plaintiff to entitle this affidavit to be regarded with favor, even if the facts were doubtful. The proof is undeniable that since the defendants have associated themselves in their present business they have aimed directly at the trade and customers of the plaintiff by the use of almost exact counterparts of its trade-mark, and thus sought to reap the fruits of the enterprise and outlay made by plaintiff and its predecessors. While fair and open competition is entirely proper, and of public benefit, it is not permitted to a tradesman or manufacturer to appropriate the labels, brands, and names adopted by his rivals, nor to announce to the trade his ability and readiness to supply the latter's customers with the very article, under the same name and label for which the energy and means of the owner of the trade-mark have made a market. Neither is it permitted that he should so closely simulate the brands and labels of his neighbor that the public should be misled into purchasing his goods in the belief that they are the product or manufacture of those who introduced and gave them reputation. The circular to the trade issued by defendants at the formation of their partnership announced that they were prepared to fill all orders for grindstone and scythestones, (indicating the well-known brands 'Quinnebog,' 'Star,' 'Clear Grit,' 'Western Red Ends. ') Not content with this, they have simulated the style, design, color, and exact phraseology of the printed matter of the labels used by plaintiff to designate those patterns, excepting only the manufacturer's name, for which they have substituted their own, 'Huron Grindstone Company.' The affidavits leave no doubt that by these means, and by cutting the plaintiff's prices on these wares, the defendants have made large inroads upon the business built up by plaintiff, and have, and still are, doing plaintiff great injury. So closely, indeed,...