Dennison Mfg. Co. v. Scharf Tag, Label & Box Co.

• Decision Date: 07 February 1905
• Docket Number: 1,338.
• Citation: 135 F. 625
• Court: U.S. Court of Appeals — Sixth Circuit
• Parties: DENNISON MFG. CO. v. SCHARF TAG, LABEL & BOX CO.

135 F. 625

DENNISON MFG. CO. v. SCHARF TAG, LABEL & BOX CO.

No. 1,338.

Circuit Court, of Appeals Sixth Circuit.

February 7, 1905

This is a second appeal. The former was from a decree sustaining a plea of res adjudicata and dismissing the bill. That decree we reversed for reasons appearing in our opinion reported under same style in 121 Fed., at page 313 et seq., 57 C.C.A 9. When the case was remanded the defendant filed a demurrer. This was irregular after the former plea. But no objection was made below and no error assigned here.

Briefly the object of the bill is to restrain the defendant company from using a certain series of numbers in connection with the sale of a series of labels for jars and bottles, upon the ground that their use by the defendant constituted an infringement of complainant's exclusive right in said numbers in connection with the sale of such labels as valid common-law trade-marks, and also because, whether technical trade-marks or not, their use by the defendant in connection with labels like those made and sold by complainant constituted unfair competition. The demurrer interposed went upon the ground that no case was stated for relief upon either ground of the bill.

Both complainant and defendant are makers of labels and tags. One class of labels made by complainant are intended for use on jars and bottles. They are made in many styles and sizes. One such class has a red border and is made in seven sizes or shapes. These are designated by a series of numerals, namely 2,001, 2,002, 2,003, 2,004, 2,005, 2,006, and 2,007. Their size, shape and color are shown by a page from complainant's catalogue here set out. ^[1]

It is charged that defendants make and sell labels of a like kind and use the same series of numbers in connection with their sale. Touching the purpose for which complainants have used this series of numbers the bill avers 'that its said numbers, all and singular, have been used and availed of in the same way from the first, each number having been continuously and always employed in connection with a label having a red border and of a particular size and shape, and that each number has continuously and always, in addition to giving notice of and indicating the origin of the label

(Image Omitted)

(Image Omitted) as being your orator's manufacture, given notice of and indicated the color of border, size, and shape of the label.'

The double use thus averred is illustrated by the next paragraph of the bill, where it is averred: 'That in the purchase and sale of its said labels the different numbers aforesaid indicating origin, color of border, size, and shape have been and are used by consumers and the trade. For instance, a consumer desiring a 'Dennison' label having a red border and of particular size and shape will make use of the designation '2,001,' and a consumer desiring a 'Dennison' label having a red border and of another size and shape will ask for and use the expression '2,002,' and so on as to all the other numbers hereinbefore mentioned and referred to as your orator's numbers and trade-marks. And your orator further says that it is and has long been a custom, for many years observed, for each manufacturer of labels like those hereinbefore mentioned, as well as each manufacturer of steel pens pencils, buttons, ornamental nails, and other articles which are necessarily made in a great many different sizes, shapes, and styles, to prepare and use as his trade-marks or designations a series of numbers of marks in the way in which your orator's said numbers or marks have been by it used, as hereinbefore explained, which custom had its origin in the necessities of trade, and has been and is of essential and fundamental importance, and which has long been an established custom and observed in the trade to which the labels of your orator and those of the defendant appertain. ' Though not clearly stated, it is inferable that those numbers do not appear upon the labels themselves, but only upon the outside of packages containing them and in illustrated catalogues. That the seven numbers here involved do not comprise all of the numbers used and claimed as trade-marks is made evident by an averment that many other numbers are claimed to distinguish and identify other of its labels and tags in addition to those here in issue, and that its rights in respect of such other numbers is not waived by limiting its bill in this case to a particular set of numbers.

Archibald Cox, for appellant.

James Whittemore, for appellee.

Before LURTON, SEVERENS, and RICHARDS, Circuit Judges.

LURTON Circuit Judge, after making the foregoing statement of the case, .

Combined with a name, a word, or some other sign or symbol a numeral may well become a vital part of a valid trade-mark. This is as far as the cases cited by appellant actually go. Bordman v. Meriden Britannia Co., 35 Conn. 402, 95 Am.Dec. 270; Lawrence Mfg. Co. v. Lowell Hosiery Mills, 129 Mass. 325, 37 Am.Rep. 362; Shaw Stocking Co. v. Mack (C.C.) 12 F. 707, 712; Humphreys Specific Co. v. Wenz (C.C.) 14 F. 250; Gillott v. Esterbrook, 48 N.Y. 374, 8 Am.Rep. 553; Humphrey's Specific Co. v. Hilton (C.C.) 60 F. 756.

But the contention here is not for a numeral in connection with a sign, symbol, or word, but for a bare numeral. Neither do the complainants limit their claim to one number as an arbitrary sign signifying origin, but for a multitude of numbers, where each number is used only in connection with a particular article of manufacture. A trade-mark must be designed and used to give notice of origin or ownership.

In Deering Harvester Co. v. Whitman & Barnes Co., 91 F. 376, 380, 33 C.C.A. 558, we said:

'The essential thing is that it shall be designed and used to indicate the origin of the article, and that all articles having the same mark come from a common source.'

It must, by its own intrinsic qualities or by association, point distinctly to the origin or maker of the thing to which it is applied, and if it does not do this it falls short of the purpose of such a short trade-name. 'The reason of this is,' said the court in Canal Co. v. Clark, 13 Wall. 311, 323, 20 L.Ed. 581, 'that unless it does neither can he who first adopted it be injured by any appropriation or imitation of it by others, nor can the public be deceived. ' Mfg. Co. v. Trainer, 101 U.S. 51, 54, 25 L.Ed. 993. See, also, Mill Co. v. Alcorn, 150 U.S. 460, 463, 14 Sup.Ct. 151, 37 L.Ed. 1144.

By long use numerals have come primarily to be signs of descriptions, and when designed to indicate origin they have, so far as the reported cases go, been used in connection with a name, or word, or some arbitrary or fanciful sign or symbol, or have been printed in some peculiar style or form distinguishing it from ordinary numerals. Humphreys Specific Co. v. Hilton (C.C.) 60 F. 756; Browne, Trade-Marks, Sec. 225. Thus, in Kinney v. Allen, 1 Hughes, 106; s.c., 14 Fed.Cas. 608-- the numeral symbol '1/2' printed in large, bold red characters, in a certain form and style, was held entitled to protection as a trade-mark when so printed, but that the same numeral printed in ordinary manner was not an infringement.

In Humphreys Specific Co. v. Wenz (C.C.) 14 F. 250; Boardman v. Meriden Britannia Co., 35 Conn. 402, 95 Am.Dec. 270; Lawrence Mfg. Co. v. Lowell Co., 129 Mass. 325, 37 Am.Rep. 362; and Shaw Stocking Co. v. Mack (C.C.) 12 F. 707-- the trade-mark protected was a number in combination with other words, signs, or symbols, the numeral being only a part of the general design.

Gillott v. Esterbrook et al., 48 N.Y. 374, 8 Am.Rep. 553, comes nearer supporting the contention that a bare number is capable of being a valid trade-mark than any other case to which we have been cited. Yet the case is far from going to such an extreme. The case belongs rather to the line of unfair competition cases than to the technical trade-mark cases. The numeral '303' stamped on Gillott's pens was, said the court, 'selected and used by the plaintiff as his trade-mark, to indicate, in connection with his name, the origin and ownership of the said pens so manufactured by him, and not to designate their quality merely, and that the defendants, by the adoption thereof have done it in fraud of his rights, and the plaintiff, upon all the facts found by the judge, was entitled to the injunction granted. ' Now, the facts found were that the Gillott pen was of peculiar style or pattern, on which was impressed the number 303, and the words 'Joseph Gillott, Extra Fine.' These pens were put up in black paper boxes holding one gross each, on the top of which was a label, in the center whereof is the plaintiff's name in larger letters than either prints thereon, and above the name if No. (meaning number), and below it in large and conspicuous type are the said numerals 303. The court found that the pen made by the defendant 'in size, shape, color, pattern, flexibility, and firmness of point so closely resembles the said pen of the plaintiffs as to require an expert to distinguish them in those respects. ' And that defendants had also 'impressed upon their pen the said numerals 303, and the name of the defendants' firm, Esterbrook & Co., and the same words, 'Extra Fine,' as upon the said pen of the plaintiff. It was also found that the defendants put their pens in boxes similar in design and print as that of the plaintiff, and that on the bottom of the box was the word 'Caution,' as upon the box of the plaintiff. Thus it is apparent that there was a close imitation of the pen, marking, package, and label of the plaintiff, the name of the defendant alone distinguishing the product. Upon this showing we can readily understand why the New York Commissioners of Appeals might agree that 'upon all of...