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

• Decision Date: 13 March 1903
• Docket Number: 1,139.
• Parties: DENNISON MFG. CO. v. SCHARF TAG, LABEL & BOX CO.
• Court: U.S. Court of Appeals — Sixth Circuit

121 F. 313

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

No. 1,139.

United States Court of Appeals, Sixth Circuit.

March 13, 1903

Archibald Cox and Charles H. MacDonald, for appellant.

Jas Whittemore, for appellee.

This is an appeal from a final decree sustaining a plea of res adjudicata interposed by the defendant to a bill in equity filed by complainant to restrain the infringement of an alleged trade-mark, and in the alternative to restrain the defendant from unfair trade. The complainant's bill among other things, alleges that it for many years has been engaged in the manufacture and sale of labels, tags, etc that among the labels so made and sold in large numbers have been certain labels adapted to use upon bottles and other receptacles, which have been designated 'bottle and jar labels,' one species or class of which have been rectangular in shape, with red borders, and which have been and continued to be of substantially the same size and shape. In respect of its trade-mark used in connection with said bottle and jar labels, the bill avers: 'That it manufactured its said bottle and jar labels in seven different sizes and shapes, arbitrarily devised or selected and that for the purpose of distinguishing and identifying its said labels, and to differentiate the same from labels manufactured or to be manufactured by others, and to denote the origin of the same as being your orator's manufacture, in advance of all others, your orator appropriated, applied, and used certain arbitrary numbers, hereinafter more particularly referred to and explained, each of which numbers was by your orator, in advance of all others, appropriated, applied, and used as a trade-mark, and each of which, long before the acts of the defendant hereinafter referred to, came to be and was well known in the trade and to consumers as your orator's trade-mark or designation by it employed to distinguish and identify a label of its manufacture, and to enable the identification and sale thereof as your orator's manufacture. And your orator further says that before and at the time of the acts of the defendant hereinafter complained of it was in the exclusive possession and enjoyment of all of the said numbers by it appropriated and used as aforesaid, and that each of said numbers was and had long been in use by consumers as a 'short trade phrase' between buyer and seller, availed of in distinguishing and identifying your orator's said labels and in purchasing and selling the same. And your orator further says that each of the said numbers thus by it appropriated, applied, and used was arbitrarily selected, and that in each instance the number had no relation whatsoever to any characteristic, and was in no way descriptive of the label in connection with which it was used. ' The bill then alleges that among other trade-marks or numbers so appropriated by it for its labels having red borders are a set or series of seven sets of four figures each, viz., 7001 to 7007 inclusive, and that each of said sets of figures is used to indicate a red-bordered bottle label of a particular size and shape of complainant's manufacture. In explanation of the mode of use 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 as being your orator's manufacture, given notice of and indicated the color of border, size and the shape of the label. And your orator further says that it is and has long been a custom, for many years observed, for 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 or 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. And your orator further says that the successful prosecution of the business of making and selling labels like those hereinbefore described is to a large extent dependent upon the observance of the said custom, and the use by each manufacturer, to the exclusion of others in the trade, of a series of marks or numbers substantially in the way in which your orator's said numbers have been by it used, as hereinbefore set forth. ' It is then charged that the defendant corporation is engaged in a like business, and knowing of the appropriation of the said set of numbers for the purpose aforesaid has unlawfully and fraudulently 'made use, in connection with the sale of and to denote and designate bottle and jar labels having red borders and not made by or for your orator, of each and all of your orator's numbers or trade-marks, and specifically in the same way that they have been used by your orator as hereinbefore set out. ' It is then distinctly averred that the defendant has made use of each of the said series of numbers as a designation of a red-bordered label, 'substantially the same in shape and size as your orator's label,' of the corresponding number used by your orator in connection with a like label. It is charged that these said alleged trade-marks are used upon the cartons containing such labels and in a catalogue descriptive of same used for advertising purposes. This, the bill charges, is done with the intent 'to deceive the purchasers and defraud the public and to injure your orator, and that 'purchasers and consumers have been and are deceived and misled in buying the labels thus sold by the defendant in the belief that they were and are of the manufacture of your orator. ' It is further charged 'that each of the said numbers thus by the defendant applied upon the outside of its packages is used as a designation or number by the trade and public in buying and selling the goods. ' The complainant seeks protection against the conduct of defendant, not only upon the contention that it has a valid trade-mark in the numbers so used as and for the purposes stated, but that if the same are not to be regarded as trade-marks that 'their use by the defendant as hereinbefore set out is fraudulent and inequitable, and constitutes an unfair competition in business, which equity will restrain. ' 'And your orator prays that it may have the relief in the premises to which it is entitled, whether the said numbers are held to be trade-marks or not. ' It is further stated that the complainant 'uses among other marks and numbers to distinguish and identify its labels and tags, other than 'bottle and jar labels,' hereinbefore referred to, and that it does not by this bill in any wise waive or relinquish any cause or causes of action whatsoever, at law or equity, which it may have against this defendant by reason of any use by the defendant of any one or more of its marks or numbers not used in connection with bottle and jar labels,' Relief in both aspects of the bill and an accounting is prayed.

To this bill the defendant interposed a plea setting out the record in a former cause between the same parties, in the same court, and the decree therein, as a bar to the entire relief claimed under this bill.

The former record and decree relied upon as a bar consisted of a bill filed by this complainant in which the general averments in respect of the business done and the trade-marks claimed by it were, in substance, much like the general averments of...