Deering Harvester Co. v. Whitman & Barnes Mfg. Co.

• Decision Date: 19 December 1898
• Docket Number: 580.
• Citation: 91 F. 376
• Parties: DEERING HARVESTER CO. v. WHITMAN & BARNES MFG. CO.
• Court: U.S. Court of Appeals — Sixth Circuit

91 F. 376

DEERING HARVESTER CO. v. WHITMAN & BARNES MFG. CO.

No. 580.

United States Court of Appeals, Sixth Circuit.

December 19, 1898

This is a bill to restrain the defendants from using a multitude of alleged trade-marks first adopted and used by complainant. The defense was that the letters and numerals so adopted and used were not adopted or used as trademarks, and did not serve the purpose of trade-marks, but were definitions of things, and had no significance in designating the origin or manufacturer of the parts so identified. The defense, upon the pleadings and evidence, was sustained, and the bill dismissed. The evidence shows that complainants are manufacturers of reapers, mowers, and other harvesting machinery, and the separate parts thereof. Such machines are composed of many separate and detachable parts, all of which are subject to injury by use, and liable to breakage or loss. Many styles of the same machine are also made. These separate or severable parts thus liable to breakage or loss are known in the trade as 'extras' or 'repairs.' To enable the user of the machine to supply himself with such extras or repairs, a system of stamping upon the cast parts a letter designating the style of the machine, followed by a numeral designating the particular repair or part, has been adopted and used by complainant, as well as by other makers of like machinery. Thus, it appears that complainant is constantly changing the style of each of the machines made by it. Each style, as developed, is given a letter, and is catalogued as reaper or mower 'A,' or 'B,' or 'C,' as the case may be. The parts liable to loss or breakage, and capable of substitution by an extra, have stamped on them the letter indicating style of machine followed by a number, as 'F 13,' or 'B 401.' A user would have great difficulty in describing the precise size and part for which he wishes a substitute, and might be obliged, to avoid mistake, to send or take his machine or the broken part to a dealer or maker for the purpose of securing with certainty the particular piece he needed to supply. The very many styles of each machine, and the multitude of parts in each, would make the prompt and sure supply of an extra part most uncertain, if each user was left to his own ingenuity in prescribing the precise thing he needed. The same difficulty, though in less degree, was found to exist in the shop of the manufacturers, with the employes, and in the case of a constructor of machines who bought some of the parts from manufacturers. Some easy, simple, and sure way of indicating briefly the size, shape, and adaptation of the piece needed was necessary. The plan of doing this by letters followed by numerals cast on the part was fallen upon by manufacturers of such machines, and also by makers of other machinery where the frequent necessity of replacing broken or worn parts existed. The selection of a letter to indicate the style is, of course, arbitrary in the first instance inasmuch as one letter would as well serve to define the shape and size and pattern as another. But, when once selected, it is, of course, necessary that the same letter shall always be used to mark the same pattern. So with the numerals designating the particular part. The same number must always designate a particular part or piece in a machine of a particular style or pattern.

The appellee is a large manufacturer of machinery of many kinds and of the separate parts or pieces needed to supply repairs to machines made by itself or others. There was a time when the complainant or its predecessor did not make all the parts of the harvesting machinery constructed by them.

Many such parts were made by appellees on their order, and then there grew up a necessity for some arbitrary method of describing the particular part needed for the different machines and styles of machines made by appellant. This was met by the plan now and ever since used by appellant. Before the appellant began to make all the parts of its numerous and complicated structure, it was accustomed to send a pattern to defendants, or otherwise describe the thing needed, and direct that the cast parts should be designated in the manner now used. Subsequent orders would be made by the letter and numeral cast on the part. The appellee, as the proof shows, was accustomed then, as now, to supply all who needed such parts; they not being within the monopoly of any patent. The making and sale of such extras adapted for use in machines made by the appellant and others have been conducted openly, frankly, and under claim that such commerce was open and free. They advertise by catalogue that the parts so offered for sale are of their own manufacture, and evidently regard that fact as giving the goods a standing in the market superior to that held by like articles made by others. These repairs and extra parts are advertised and catalogued as parts made by them, adapted to be used in the Deering machines, and interchangeable with corresponding parts furnished by the original manufacturers of said machines.

Thomas & Ephraim Banning, for appellant.

Robert H. Parkinson, for appellee.

Before TAFT and LURTON, Circuit Judges, and CLARK, District Judge.

LURTON Circuit Judge, having made the foregoing statement of the facts, .

The evidence makes it clear that the system of using letters and numerals upon the parts composing the structures made and sold by the Deering Harvester Company and their predecessors in business was originally adopted and used with no other purpose than to conveniently designate the size, shape, and capacity of the article, and to distinguish it from other parts, sizes, shapes, and adaptability, and with no intention or expectation to thereby indicate its origin or manufacture. That such mark or symbol must be designed, as its primary object and purpose, to distinguish each of the articles to which it is affixed...