Elgin National Watch Company v. Illinois Watch Case Company

• Decision Date: 07 January 1901
• Docket Number: No. 121,121
• Citation: 45 L.Ed. 365,21 S.Ct. 270,179 U.S. 665
• Parties: ELGIN NATIONAL WATCH COMPANY, Appt. , v. ILLINOIS WATCH CASE COMPANY, Thomas W. Duncan, and Myer Abraham
• Court: U.S. Supreme Court

179 U.S. 665

21 S.Ct. 270

45 L.Ed. 365

ELGIN NATIONAL WATCH COMPANY, Appt.,

v ILLINOIS WATCH CASE COMPANY, Thomas W. Duncan, and Myer Abraham.

No. 121.

Argued December 5, 6, 1900.

Decided January 7, 1901.

This was a bill filed in the circuit court of the United States for the northern district of Illinois by the Elgin National Watch Company, a corporation organized under the laws of the state of Illinois, having its principal place of business at Elgin and its office in Chicago in that state, against the Illinois Watch Case Company, also a corporation of Illinois, with its principal place of business at Elgin, and certain other defendants, citizens of Illinois.

The bill alleged:

'That prior to the 11th day of April, A. D. 1868, your orator was engaged in the business of manufacturing watches at Elgin, Illinois, which was then a small town containing no other manufactory of watches or watch cases; that your orator had built up at said town a very large business in the manufacture of watches and watch movements, and that said watches and watch movements so made by your orator, had become known all over the world, and had been largely sold and used, not only in this, but in foreign, countries.

'. . . That at and before said 11th day of April, A. D. 1868, your orator had adopted the word 'Elgin' as a trademark for its said watches and watch movements; that said trademark was marked upon the watches and watch movements made by your orator, both upon those which entered into commerce in this country and those which were exported to and sold in foreign countries; that your orator's watches became known all over the world as Elgin watches, and their origin and source, as a product of your orator's manufacture, were distinguished from those of all other watches manufactured in any part of the world by said distinguishing word or trademark, 'Elgin;' that from said 11th day of April, A. D. 1868, to the present time, your orator, both in the goods manufactured and sold by it in this country and those exported by it to and sold in foreign countries, has continued to use said trademark upon its watches and watch movements, and is still using it, and that said trademark has always served and still serves to distinguish your orator's product from that of all other manufacturers.

'. . . That at the time of its adoption of said trademark no other person, firm, or corporation engaged in the manufacture or sale of watches was using the word 'Elgin' as a trademark or as a designation to designate its goods from those of other manufacturers, and that your orator had the legal right to appropriate and use the said word as its lawful trademark for its watches and watch movements.

'. . . That the watches and watch movements made by your orator have achieved a very great reputation throughout the world, and that such reputation is of great commercial value to your orator in its business aforesaid.'

It was further averred 'that, on the 19th day of July, A. D. 1892, under the act of Congress relating to the registration of trademarks, your orator caused said trademark to be duly registered in the Patent Office of the United States according to law, as by the certificate of said registration, or a copy thereof, duly certified by the Commissioner of Patents, here in court to be produced, will more fully and at large appear.'

The bill charged that defendants had infringed the rights of complainant by engraving or otherwise affixing the word 'Elgin' to the watch cases made and sold by them; that such watch cases were adapted to receiving watch movements of different construction from those made by complainant; that inferior watch movements were liable to be and often were incased in them; and that when so incased the entire watch, including both movement and case, appeared upon the market with the owrd 'Elgin' upon it, thereby leading the public to believe that the watch as an entirety was made by the complainant, and enabling parties wrongfully using complainant's trademark to profit by the great reputation of complainant, to palm off other and inferior goods as goods made by complainant, to injure the reputation of complainant as a watchmaker, and to deprive it of a portion of the business and patronage which it would otherwise receive from the public, to the irreparable damage of complainant.

The prayer was for damages and for an injunction to restrain defendants 'from directly or indirectly making or selling any watch case or watch cases marked with your orator's said trademark, and from using your orator's said trademark in any way upon watches or watch cases or in the defendants' printed advertisements, circulars, labels, or the boxes or packages in which their said watch cases are put or exposed for sale.'

A demurrer having been overruled, defendants answered denying the legality of the registration of the alleged trademark, and any attempt on their part to deceive the public, or the doing of anything they did not have the legal right to do; and asserting that they had never manufactured or offered for sale watches or watch movements; that they manufactured at Elgin watch cases only; that complainant had never manufactured or sold watch cases with the word 'Elgin' on them; that the business of the two companines was separate and distinct; and that when ever the defendant company had used the word 'Elgin' it had usually, if not invariably, been done in connection with some other word, as 'Elgin Giant' or 'Elgin Commander' or Elgin Tiger,' or some other word in combination with the word 'Elgin;' that defendant company had never used the word 'Elgin' alone, or separately, as registered by complainant, upon goods exported to foreign nations or used in foreign commerce, but only in domestic commerce, and to inform the public of the place where watch cases of the defendant com- pany were manufactured; that such watches were sold upon a guaranty running for a number of years, so that it was necessary to indicate the name of the location where defendant company was carrying on its business, that purchasers might be able to find the company in case it became necessary to call upon it to make good its guaranties; 'and that owing to the distinct lines of business in which the complainant and the defendant company are engaged, no misunderstanding or confusion has arisen or can arise, as these defendants are informed and believe.'

It was further alleged 'that the word 'Elgin,' being a geographical name or word indicating the name of a prominent manufacturing city in which any manufacturer of watches, watch movements, or watch cases is at liberty to locate and carry on his business, is not appropriable by any single manufacturing person, firm, or corporation, but is open as of common right to the use of any person, firm, or corporation carrying on business at the city of Elgin.'

Replication was filed, proofs taken, and a hearing had. By leave of court complainant amended its bill, alleging that the watch cases so manufactured and marked by defendants in violation of complainant's rights were intended by defendants to be sold in foreign countries, and were in fact exported to and sold in foreign countries.

The circuit court decreed that the use of the word 'Elgin,' whether alone or in connection with other words, was a violation and infringement of complainant's exclusive rights in the premises, and that an injunction issue restraining the use of the word alone or in connection with other words or devices, upon watches, or watch cases, or packages containing watches or watch cases, going into commerce with foreign nations or with the Indian tribes, in such a way as to be liable to cause purchasers or others to mistake said watches or the watch movements incased in said watch cases for watches or watch movements manufactured by complainant. 89 Fed. Rep. 487. The case having been carried to the court of appeals, that court reversed the decree of the circuit court, and remanded the cause, with instructions to dismiss the bill. 35 C. C. A. 237, 94 Fed. Rep. 667.

Mr. Lysander Hill for appellant.

Messrs. Thomas A. Banning and Ephraim Banning for appellees.

Mr. Chief Justice Fuller delivered the opinion of the court:

The circuit court of appeals held that the bill must be dismissed for want of jurisdiction. The parties to the suit were all citizens of Illinois, and the court was of opinion that it could not be maintained under the act of March 3, 1881 (21 Stat. at L. 502, chap. 138).

In the Trademark Cases, 100 U. S. 82, sub nom. United States v. Steffens, 25 L. ed. 550, this court held that the act of July 8, 1870, carried forward into §§ 4937 to 4947 of the Revised Statutes, was void for want of constitutional authority, inasmuch as it was so framed that its provisions were applicable to that which was subject to the control of Congress. The cases involved certain indictments under the act of August 14, 1876, 'to punish the counterfeiting of trademark goods and the sale or dealing in of counterfeit trademark goods;' and the opinion treated chiefly of the act of 1870 and the civil remedy which that act provided, because, as Mr. Justice Miller observed, 'the criminal offenses described in the act of 1876 are, by their express terms, solely referable to frauds, counterfeits, and unlawful use of trademarks which were registered under the provisions of the former act. If that act is unconstitutional, so that the registration under it confers no lawful right, then the criminal enactment intended to protect that right falls with it.'

In its opinion the court, adhering to the settled rule to decide no more than is necessary to the case in hand, was careful to say that the question 'whether the trademark bears such a relation to commerce in general terms as to bring it within congressional control, when used or applied to the classes of commerce which fall within that control, is one which, in the present case, we propose to leave...