Hughes v. Alfred H. Smith Co.

• Decision Date: 09 April 1913
• Citation: 205 F. 302
• Parties: HUGHES et al. v. ALFRED H. SMITH CO. ALFRED H. SMITH CO. v. HUGHES et al.
• Court: U.S. District Court — Southern District of New York

205 F. 302

HUGHES et al. v. ALFRED H. SMITH CO.

ALFRED H. SMITH CO. v. HUGHES et al.

United States District Court, S.D. New York.

April 9, 1913

James L. Steuart, of New York City (Sidney R. Perry and Francis X Brosnan, of counsel), for the Alfred H. Smith Co.

RAY District Judge.

On the 26th day of June, 1906, on application filed by Henry L Hughes June 26, 1905, the trade-mark 'Ideal' was registered; proprietor, Henry L. Hughes, No. 54,282. The statement, declaration, and trade-mark filed and registered are as follows:

'United States Patent Office.

'Henry L. Hughes, of Chicago, Illinois.

'Trade-Mark for Hair Brushes.

'No. 54,282. Statement and Declaration.

'Registered June 26, 1906.

'Application Filed June 26, 1905. Serial No. 9,048.

'Statement.

'To All Whom It may Concern:

'Be it known that I, Henry L. Hughes, a citizen of the United States, residing at Chicago, in the county of Cook, and state of Illinois, and doing business at No. 78 Monroe street, in said city, have adopted for my use a trade-mark, of which the following is a description:

'The trade-mark is shown in the accompanying drawing, wherein appears the word 'Ideal.'

'This trade-mark has been continuously used in my business since December 21, 1886.

'The class of merchandise to which this trade-mark is appropriated is brushes, and the particular description of goods comprising said class upon which I use said trade-mark is hair brushes.

'This trade-mark is usually displayed upon the handle of the brushes and

upon packages containing the goods by placing thereon a printed label on which the same is shown.

Henry L. Hughes.

'Witnesses:

'John M. Gallagher.

'Maurice Archer.'

'Declaration.

'State of Illinois, County of Cook-- ss.:

'Henry L. Hughes, being duly sworn, deposes and says: That he is the applicant named in the foregoing statement; that he believes the foregoing statement is true; that he believes himself to be the owner of the trade-mark sought to be registered; that no other person, firm, corporation, or association, to the best of his knowledge and belief, has the right to use said trade-mark, either in the identical form, or in any such near resemblance thereto as might be calculated to deceive; that said trade-mark is used by him in commerce among the several states of the United States, and particularly between Illinois and Indiana, Illinois and Ohio, and between the United States and foreign nations, or Indian tribes, and particularly between the United States and England, and that the description, drawing, and specimens presented truly represent the trade-mark sought to be registered.

'Henry L. Hughes.

'Sworn to and subscribed before me, a notary public, this 3d day of April, 1905.

'(L.S.)

John M. Gallagher.

'Trade-Mark.

'No. 54,282.

Registered June 26, 1906.

'Henry L. Hughes,

'Hair Brushes.

'Application filed June 26, 1905.

'(Ideal.)

'Witness:

'J. M. Fowler, Jr.

'W. A. Johnston.

Proprietor: Henry L. Hughes, By Owen H. Fowler, Attorney.'

In 1885, Mason Pearson, James Raper, and Frederick Gill invented and in England obtained a patent for a single bristle rubber cushion brush, and July 14, 1886, they applied for a patent thereon in the United States which was issued December 21, 1886. The distinctive features of this patented hair brush were the elastic domed or arched pad or sheet of elastic material supporting bristles 'arranged each separately isolated,' and which bristles were secured therein by cement and a backing sheet, and which domed elastic pad or sheet carrying the bristles was held to the wooden or metal back of the brush by an undercut groove around and near the inner edge of the back, so as to form a . . . air space between the back and such elastic pad or sheet carrying the bristles. By pressure on the bristles the air would be forced out of such air space through a passage.

Pearson at once commenced manufacturing and selling the brush in England under the name 'Very.' In 1885, one Samuel Reid, a resident and citizen of the United States, visited England and remained until December 17, 1887. While there he became acquainted and quite intimate and friendly with Pearson. Just prior to leaving Reid was shown two of these brushes, made under the patent and bearing the mark 'Very Brush' and also the words 'London Patent.' Pearson requested Reid to take them to the United States and see if he could interest any one in them, and, if so, he would sell the patent, or else grant a license, so the brushes could be made in England and handled or sold in the United States. Reid took the brushes with him to Chicago, Ill., where he arrived January 10 or 12, 1888, and soon after he exhibited the brushes to some of his acquaintances, the Shorediche and Hurd families. Hurd and Shorediche took an interest and concluded to handle the brush, if Reid could make satisfactory arrangements with the patentees, Raper, Pearson, and Gill. In May, 1888, at a meeting in Chicago, Hurd suggested and it was agreed to use the name 'Ideal' on and in connection with the brush in case they made arrangements to handle it. Up to that time the name 'Ideal' had not been used in any manner in connection with that brush. There is some claim and contention on the part of the defendant that the name 'Ideal' had been used on these brushes prior to this time, and by Raper, Pearson, and Gill; but this contention is not supported by the evidence.

Reid communicated with the patentees and ascertained the terms on which the brushes could be purchased for sale in the United States. Reid, Shorediche, and Hurd thereupon had a die made in Chicago for stamping the brushes sold and shipped them for sale in the United States 'Ideal.' Reid, Shorediche, and Hurd had labels printed to put on the cardboard boxes containing the brushes when put on sale here, which labels bore a cut of the brush and the word 'Ideal.' All brushes were purchased of Raper, Pearson, and Gill absolutely and outright. There was no agency. In making in England the brushes to be sent Reid, pursuant to the understanding of the parties, the manufacturers stamped them: 'The Ideal Brush, London, Patented.' This was the die, or identical with the die, designed and made in Chicago. In 1888, and early 1889, Reid, Hurd, and Shorediche did business and sold these brushes under the firm name 'Anglo-American Novelty Company.' The firm advertised these brushes as 'Ideal' and had cuts made, etc. In 1889, Reid bought out his associates, and later took in one Drinkwater, who soon went out, leaving Reid alone; but in 1893, he was joined in business with Henry L. Hughes. On or about May 1, 1889, and after Hurd and Shorediche had withdrawn, Reid received a license agreement from Pearson and Gill, then owners, granting to Reid an exclusive transferable license to sell throughout the United States hair and other brushes made by Pearson and Gill under United States letters patent No. 354,583.

In 1892, it came to the notice of Reid that one Gibson had had shipped to him, Gibson, some of these patented hair brushes and was selling them, and also that his (Reid's) selling agent was meeting in the market these patented brushes sold under the name 'Perfect Penetrator' and 'The Very Brush.' Thereupon Reid caused to be printed and circulated a notice of his rights and warning all persons against infringing them. From October 13, 1893, Reid and Henry L. Hughes did business in the selling of 'Ideal' brushes only under the name 'The Ideal Hair Brush Company.' Later Reid sold his interest to his brother, James M. Reid. In 1894, Hughes bought out the interest of James M. Reid and conducted the business alone down to February, 1911, as 'The Ideal Hair Brush, H. L. Hughes. ' He sold this grade of brushes under the name 'Ideal' only. He had a cheaper grade sold as 'Hughes Brush,' and also a military brush made under the said patent, but not bearing the name 'Ideal.' The brushes were all purchased of Pearson and Gill. Similar brushes came into the market under the name 'Standard,' and Hughes made complaint to Pearson and Gill, who wrote:

'If you will take the proper and ordinary course open to you, viz., stop the sale of these goods by using the legal powers you possess, you will then find you will have no further trouble.'

Also March 5, 1896:

'We would suggest that your proper course is to take legal proceedings. * * * You may find that, as the patent stands in our name, it will be necessary, as a matter of legal form, to use our name in any legal process.'

In short, down to March 18, 1904, when Mason Pearson died and was succeeded by his son, Mason Pearson, Jr., and even later, the right of Hughes to the trade-mark 'Ideal' was not questioned, but plainly recognized. The American patent expired December 21, 1903, and Hughes applied for his trade-mark 'Ideal,' as stated, in June, 1905, for the purpose of protecting himself in his rights to this trade-mark 'Ideal' as applied to hair brushes. Hughes notified Pearson of this action on his part, and sent him a copy of the certificate of registration. He also sent notices of this registration to all ports of entry and to the trade, and sent a copy of such notice to Pearson.

After the registry of the trade-mark Hughes went to England and an agreement was entered into as follows:

'Messrs. Mason Pearson, Royal Victor Place, Old Ford Rd., London, E.

'August 4th, 1906.

'We the undersigned, manufacturers of brushes, parties of the first part, viz., Mrs. Mary Pearson and Mason Pearson, her son, joint owners of their factory, situated at Royal Victor Place, Old Ford Rd., and Henry L. Hughes, party of the second part, of the city of Chicago, Ill., U.S.A., party of the second part, do hereby...