Dover Stamping Co. v. Fellows

• Decision Date: 01 March 1895
• Citation: 40 N.E. 105,163 Mass. 191
• Parties: DOVER STAMPING CO. v. FELLOWS et al.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

163 Mass. 191

40 N.E. 105

DOVER STAMPING CO. v. FELLOWS et al.

Supreme Judicial Court of Massachusetts, Suffolk.

March 1, 1895

COUNSEL

Thos. Wm. Clarke, for complainant.

Edward S. Beach, for defendants.

OPINION

ALLEN J.

This case comes up on a report of the evidence, without any findings of the facts. We have therefore, in the first place to determine and state the material facts shown by the evidence, and then to determine the rules of law applicable to the facts. In 1857 a partnership or company was established under the name of the Dover Stamping Company which in 1871 was organized as a corporation, under the laws of this commonwealth, having its usual place of business in Boston and its factory in Cambridge. This company, both before and after its organization as a corporation, may for convenience be called the "plaintiff." It manufactured and dealt in kitchen furnishing goods and tinware. On May 31, 1870, one Turner Williams obtained letters patent for an improved egg beater, the essential principle of which consisted in having two interworking or interlacing floats or beaters, revolving in opposite directions, on separate centers, and occupying the same working space. The plaintiff dealt in egg beaters of different kinds, and in 1870 obtained control of the Williams patent, and as early as 1872 became the owner of it. In 1870 the plaintiff contracted with the Lamb Knitting-Machine Manufacturing Company for the manufacture of egg beaters under the Williams patent, and also of other kinds of egg beaters. To the egg beaters under the Williams patent the plaintiff gave the name of "Dover," and on October 31, 1870, directed the Lamb Company to put on the wheel of the egg beaters the words and figures, "Dover Egg Beater. Patd. May 31st, 1870." This was done. On May 6, 1873, one Ethan Hadley obtained letters patent for an improvement in egg beaters. In his specification he said: "My invention relates to an improvement in what is known as the 'Dover egg beater';" and in his claim he spoke of his invention as "an improvement on the Dover egg beater." This invention was assigned to the plaintiff. The Lamb Company continued to be the exclusive manufacturer of the Dover egg beaters for the plaintiff under these patents until the expiration of the last patent, in 1890. These egg beaters were made in three sizes. The ordinary size, adapted for family use, constituted 99 per cent. of the whole manufacture. The largest size was sometimes called the "mammoth" or "hotel" size. Of these, perhaps 1,000 were made in all. The second largest size was called the "extra family size," and perhaps 10 times as many of these were made as of the hotel size. The whole number of Dover egg beaters of all sizes made for the plaintiff by the Lamb Company was about 4,000,000. These egg beaters were known by the trade and by the public as "Dover egg beaters." They were spoken of and bought and sold under that name; and they had no other name. The name "Dover" was used to signify and indicate this article; and there was no other usual short way in which to describe it. "Dover" was the name by which they were universally known. This name signified the above-mentioned combination of floats or beaters propelled by a wheel and handle. The improvement patented by Hadley and various unpatented improvements which were made from time to time were not essential features of the machine, but were rather changes and improvements in mechanical details, not affecting the principle or the general mode of construction. Some stress has been laid on these changes in the argument of the plaintiff, but they appear to us insufficient to show that the word "Dover" meant to dealers or to the public anything else than egg beaters of that general construction and appearance. From the outset, the general construction and appearance remained about the same; only there were some changes in mechanical details, which were not distinguishing characteristics of the article. Since 1875 various other articles manufactured or sold by the plaintiff have been named or called "Dover"; as for instance, Dover can spouts, Dover teakettles, Dover coal hods, etc. The plaintiff's machines were all marked "Dover Egg Beaters," with dates of patents, in which last particular there was some change after the Hadley patent was obtained. The defendants' machines which are complained of were marked simply "Dover," with dates of other patents. The defendants' mode of packing the goods had been in use before the Williams patent was obtained.

The plaintiff contends, in the first place, that the word "Dover," as applied to egg beaters, is a trade-mark, and that it is entitled to be protected in the exclusive use of that word. The defendants deny that the plaintiff could acquire a valid trade-mark in the word "Dover" under any circumstances. Mill Co. v. Alcorn, 150 U.S. 460, 14 Sup.Ct. 151; Seb. Trade-Marks, 82, and cases cited. But it is enough for us to inquire whether the plaintiff has done so under the particular circumstances of this case. A word which might become a valid trade-mark when applied to an unpatented article may not be so when applied to an article which has the protection of letters patent. In the latter case the letters patent indicate the ownership and origin of the article, and it is more readily to be inferred that the word is used as a name merely to indentify the article. Usually the protection given by a patent is far greater, though of less duration in time, than that obtained by the use of a trade-mark, because if an article is patented, nobody but the owner of the patent can without his consent make or sell anything embodying the same principles or elements, while a trade-mark only secures one in the use of the name or emblem adopted by him and applied to the article. Seb. Trade-Marks, 15. One may choose to rely on the name alone; and, if so, he may establish or create a trade-mark which will be permanent. But, if he seeks and obtains the protection afforded by a patent, he is bound to yield up his monopoly, with all that belongs to it, at the end of the term; and the right to the exclusive use of the name given to his goods, which might otherwise have become a trade-mark, will ordinarily fall with the patent itself. It is sometimes said that the granting of a patent is a contract with two sides to it; that the government grants an exclusive use for a term of years, and the patentee agrees to surrender that use fully and freely for the general benefit of the public at the end of that term; and that this contract is to be liberally construed in favor of the patentee during the term, and in like manner liberally construed in favor of the public after the term has expired. 1 Rob.Pat. §§ 40, 44. This, at any rate, describes with substantial accuracy the resulting rights of the parties. After the expiration of a patent, the public is entitled to make and use the patented article, free from restrictions; and this right carries with it whatever is necessary for its full enjoyment. In Cheavin v. Walker, 5 Ch.Div. 850, 862, it was said by Jessel, M.R.: "Protection only extends to the time allowed by the statute for the patent, and, if the court were afterwards to protect the use of the word as a trade-mark, it would be in fact extending the time for protection given by the statute. It is therefore impossible to allow a man who has once had the protection of a patent to obtain a further protection by using the name of his patent as a trade-mark." And, in the same case, James, L.J., said: "It is impossible to allow a man to prolong his monopoly by trying to turn a description of the article into a trade-mark. Whatever is mere description is open to all the world." In Re Palmer's Trade-Mark, 24 Ch.Div. 504, 521, Lindley, L.J., said: "I do not mean to say that a manufacturer of a patented article cannot have a trade-mark not descriptive of the patented article, so as to be entitled to the exclusive use of that mark after the patent has expired,--for instance, if he impressed on the patented articles a griffin or some other device; but, if his only trade-mark is a word or set of words descriptive of the patented article of which he is the only maker, it appears to me to be impossible for him ever to make out, as a matter of fact, that this mark denotes him as the maker, as distinguished from other makers." And in Re Leonard & Ellis' Trade-Mark, 26 Ch.Div. 288, 303, 304, after an elaborate exposition by Lord Chancellor Selborne, it was said by Cotton, L.J.: "If a man has a patent, and during the term of his patent is the only maker of an article to which he gives a particular name, which name, during the continuance of the patent, comes to be merely a description of the article, he cannot, in my opinion, after his patent is gone, and the making of the article is free and open to all the world, claim the name as his trade-mark."

In the present case it is not necessary for us to go so far as to say that where there is a patent there can be no trade-mark especially where some special device or symbol is added to the general name of the article manufactured. But where one who has a patented article gives to it and puts upon it a name, and calls it by that name, and by no other, and it becomes known to the trade and to the public exclusively by the name so given to it by the patentee or person controlling the patent, then certainly it may be said that, as a general rule, the right to the exclusive use of the name ceases with...