Diamond Match Co. v. Saginaw Match Co.
| Decision Date | 20 January 1906 |
| Citation | 142 F. 727 |
| Parties | DIAMOND MATCH CO. v. SAGINAW MATCH CO. |
| Court | U.S. Court of Appeals — Sixth Circuit |
John R Nolan and Joshua Pusey, for appellant.
Parker & Burton, for appellee.
Before LURTON, SEVERENS, and RICHARDS, Circuit Judges.
This is an appeal from an interlocutory order, enjoining the appellant (defendant below) from 'selling or offering for sale, or exposing for sale, matches imitating those made by the complainant, and having heads containing the two colors employed by the complainant previous to the time of filing their (its) said bill of complaint, to wit, a partly red and partly blue head, and * * * from manufacturing and selling matches of like appearance or so similar in appearance as to be liable to deceive purchasers.'
Both the complainant and defendant are manufacturers of matches the defendant being probably the largest in the world. In the fall of 1904, the complainant began to manufacture and put upon the market a tipped match, having the head of an ordinary parlor match, tipped by a more readily ignitable material. The head proper was of the red color not unusual in the parlor match, the tip of the blue color commonly employed in the ordinary sulphur match. For an alleged improvement in the matches thus made and sold, letters patent, No. 782,284 were granted February 14, 1905, to Frank F. Sommers, Jr., who assigned to the complainant. Shortly after the complainant began the manufacture and sale of these tipped matches, the defendant began to make and sell them, putting them out with the head and tip of different colors, and, among others, some with the head partly red and partly blue, like those of the complainant.
Then came this suit, in which the complainant prayed for an injunction upon the grounds: First, that the letters patent mentioned were infringed; second, that the complainant's trade-mark on the packages was infringed; and, third, that the defendant was guilty of unfair competition in trade in making and selling imitations of the complainant's matches, namely, matches with composite heads in two colors and especially matches with heads partly red and partly blue, being the colors selected and used by the complainant. The court below refused an injunction on the first and second grounds, holding that the validity of the patent had not been established either by adjudication or acquiescence, and that no simulation of the complainant's packages or trade-name entitling it to an injunction had been shown; but, as we have stated, the court did grant an injunction pendente lite against the making and selling of matches having heads partly red and partly blue, like those of the complainant.
The question before us know is, therefore, was the defendant guilty of unfair competition in making and selling unpatented matches, having heads partly red and partly blue?
The defendant contends that Sommers was not the inventory of tipped matches, calling attention to patent No. 335,065, dated January 26, 1886, granted to Farnham for an improvement in friction matches; but it is hardly proper to consider now whether Sommers' patent is or is not valid. For the purposes of this hearing, we must assume that the complainant has no patent on its matches, and therefore this is the question, stated in another form, is the complainant, without a patent, entitled to maintain a monopoly of manufacturing and selling tipped matches, with heads partly red and partly blue, simply because it made and put them on the market first?
We think the answer to this question is plain. The head of two colors is in no proper sense a part of the dress of the match; it is a part of the match itself. In use the tip must be distinguished from the head, for the match should be struck on the tip and not on the head. The claimed improvement lies in thus striking and igniting it. Whoever therefore, has a right to make a tipped match, has a right to put on it a head of two colors, so as to distinguish the tip on which the match should be struck, from the head itself. The two colors, therefore, serve not only a useful purpose but an essential function, for...
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