Dennison Mfg. Co. v. Thomas Mfg. Co.

• Decision Date: 05 May 1899
• Docket Number: 204.
• Citation: 94 F. 651
• Parties: DENNISON MFG. CO. v. THOMAS MFG. CO.
• Court: U.S. District Court — District of Delaware

94 F. 651

DENNISON MFG. CO. v. THOMAS MFG. CO.

No. 204.

United States Circuit Court, D. Delaware.

May 5, 1899

Augustus T. Gurlitz and Lewis C. Vandegrift, for defendant.

BRADFORD District Judge.

The bill in this case charges infringement of certain alleged common law trade-marks and also unfair competition in trade and prays for an injunction and an account. The defendant has demurred to the bill, alleging that it is multifarious defective and insufficient. Both the complainant and defendant are engaged in the business of manufacturing and selling stationers' supplies. The bill charges numerous instances of infringement by the defendant of alleged trade-marks of the complainant as well as unfair competition in trade on the part of the defendant. Seventy causes of demurrer have been assigned, of which the first fifty five are confined to the charge of multifariousness. While the bill relates to various articles and details of the business conducted by the defendant, the relief prayed is of the same kind with respect to all those articles and details and is based on substantially similar considerations. No hardship or injustice is likely to result to the defendant from the inclusion in one suit of the various matters complained of. On the other hand, to require the filing of separate bills relating respectively to the several matters set forth in the present bill would involve great expense and annoyance to both parties. Such a course would not subserve the convenience of either the parties or the court. The objection of multifariousness is one which addresses itself to the sound discretion of the court, and under the circumstances should not be sustained here. Oliver v. Piatt, 3 How. 333, 412; U.S. v. American Bell Tel. Co., 128 U.S. 315, 352, 9 Sup.Ct. 90; Harrison v. Perea, 168 U.S. 311, 319, 18 Sup.Ct. 129; Sheldon v. Packet Co. 8 Fed. 769; Jaros Hygienic Underwear Co. v. Fleece Hygienic Underwear Co., 60 F. 622; Harper v. Holman, 84 F. 222; Weir v. Gas Co., 91 F. 940.

The first of the two main questions in the case is whether the bill together with the exhibits therein referred to and made part thereof shows infringement by the defendant of common law trade-marks of the complainant. The bill alleges, among other things, that the complainant is a corporation of the state of Massachusetts, created during or about 1878, and that it thereupon succeeded to the business of the firm of Dennison & Co., consisting of the manufacture and sale of numerous articles adapted to the use of jewelers, such as paper boxes, labels, tags, jewelers' cotton, and the like, and also of numerous articles commonly sold by stationers, and that the property which in connection with the business of that firm passed to the complainant embraced the 'real estate, plant and other property of every name and nature belonging to the said firm of Dennison & Co., together with the good-will of the business of said firm, and all rights of whatsoever nature thereto appertaining, including the trade-marks, trade-names, designations, labels and other indicia belonging and relating to said business. ' The bill further alleges:

'Thereafter said business, founded and carried on as aforesaid and made over to your orator, was, without interruption continuously by your orator conducted and carried on without change, except that the said business from time to time has been very greatly enlarged and extended by your orator, branch houses and agencies for the sale of its products throughout the United States and in foreign countries having been by your orator established and conducted, with the result that your orator's business of manufacturing tags, labels and numerous other articles commonly known as stationers' specialties and jewelers' findings is, and for a long period of years has been, the most important and extensive business of its kind existing in the United States, and, your orator believes, the largest and most important in the world. * * * And your orator further says that each of the numbers, designations or marks hereinafter enumerated as having been by it used, was arbitrarily selected and applied and originally and for the first time used in connection with its business, and has been, since the adoption thereof continuously, by your orator's predecessors and by your orator, without interruption, used and availed of in connection with the sale of the particular tag, label, check, seal or other article to which it has been appropriated. * * * And your orator avers that by reason of the premises aforesaid, and otherwise, it now has, as against this defendant and otherwise, the sole and exclusive right to use in the United States and elsewhere the said marks, numbers and designations, and each and all of them, as trade-marks in connection with the tags, labels, checks, seals, and other articles to which they have severally related and been applied.

Two exhibits made part of the bill relate to sealing wax and are marked 'Complainant's Wax' and 'Defendant's Wax,' being specimens of sealing wax with its trade dress sold by the parties respectively. The boxes containing the wax and respectively used by them are of practically the same size, form and color. On the left hand upper corner of the lid or cover of the complainant's box there is a circle containing a monogram and the words 'Trade Mark,' and on the right hand lower corner of the lid there is a circle of the same size as that containing the monogram in which appear the words 'Four Sticks.' The most prominent and controlling words on the lid are printed diagonally thereon, running from the lower left hand corner to the upper right hand corner, and are 'No. 2 American Express. The word 'Dennison's' appears on the upper portion of the lid immediately to the right of the circle containing the monogram, and the word 'Manufacture' on the lower portion of the lid immediately to the left of the circle containing the words 'Four Stocks.' On the left hand upper corner of the lid or cover of the defendant's box there is a circle of the same size as those on the lid of the complainant's box, and of the same color, containing the words 'Four Sticks,' and on the lower right hand corner of the lid is another circle, similar in color and size, also containing the words 'Four Sticks.' The most prominent and controlling words on the lid, running diagonally from the lower left hand corner to the upper right hand corner of the lid, are 'No. 2 American Express.' Each box contains four sticks of sealing wax of substantially the same form, size and color. On each of the complainant's sticks appear a monogram and the words 'No. 2 American Express,' beneath which are the words 'Dennison Mfg. Co.' On each of the defendant's sticks appear the words 'No. 2 American Express' in the place on the stick corresponding to that occupied on the complainant's sticks by the same words. On the end of the complainant's sticks appears a monogram somewhat difficult to decipher save through close observation. On the end of the defendant's sticks appears a crown. The difference between the marks on the ends of the sticks of the complainant and defendant respectively is not sufficient to attract the attention of an ordinary purchaser using the degree of care customarily employed by those purchasing such articles. The same may be said of both the sealing wax and the boxes in which it is contained. The words 'American Express' are not in themselves descriptive of the article, its size or quality, and are properly the subject of exclusive appropriation as a trade-mark for sealing wax, and must under the averments of the bill be held to constitute a valid trade-mark. The bill, in my opinion, shows an infringement by the defendant of the trade-mark of the complainant with respect not only to the sticks of sealing wax but to the boxes in which they are contained. In this particular the demurrer cannot be sustained.

The complainant contends that the bill and exhibits show an exclusive right on its part to the use of certain letters and numerals in connection with sundry articles of such kinds as are manufactured and sold by the defendant as well as by the complainant, and violations of that right by the defendant. This contention involves an assertion that such letters and numerals as applied to such articles are common law trade-marks of the complainant. Preliminarily it should be observed that a demurrer admits matters of fact well pleaded and all reasonable inferences to be drawn therefrom, but not mere arguments or conclusions of law as made or drawn by the pleader. U.S. v. Des Moines Nav. & R. Co., 142 U.S. 510, 544, 12 Sup.Ct. 308; Chicot Co. v. Sherwood, 148 U.S. 529, 13 Sup.Ct. 695. And 'a fact impossible in law cannot be admitted by a demurrer. ' Railroad Co. v. Palmes, 109 U.S. 244, 253, 3 Sup.Ct. 193. The bill further alleges:

'That since the time of its incorporation your orator has continued uninterruptedly to conduct and carry on the said business as the successor in business in all things of said Dennison & Co. and has been and is now in the full, undisturbed and complete possession and enjoyment of the rights and properties, all and singular, of every nature and description, belonging to its predecessors in business, all and singular, and the business by them carried on. And your orator says that for many years it had its predecessors have given much of their attention to the manufacture and sale of tags, labels, cards, tickets, wrappers, checks, seals, and the like, of many different sizes, shapes and styles. * * * And your orator says that the different styles and sizes of tags, labels, tickets and similar goods by it produced and sold have been very numerous, consisting in some instances of perhaps a hundred examples,

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