Kann v. Diamond Steel Co.

• Citation: 89 F. 706
• Decision Date: 17 October 1898
• Docket Number: 1,065.
• Parties: KANN et al. v. DIAMOND STEEL CO. et al. [1]
• Court: United States Courts of Appeals. United States Court of Appeals (8th Circuit)

89 F. 706

KANN et al. v. DIAMOND STEEL CO. et al. ^[1]

No. 1,065.

United States Court of Appeals, Eighth Circuit.

October 17, 1898

James A. Seddon (James L. Blair, on brief), for appellees.

Before SANBORN and THAYER, Circuit Judges, and SHIRAS, District Judge.

SANBORN Circuit Judge.

This is an appeal from a decree which dismissed a suit in equity that had been brought to restrain the appellees from imitating the trade-mark of the appellant, and from selling their goods marked with that trade-mark or any simulation of it. Every suit of this character is founded on the fact that the action, or the proposed action, of the defendant has deceived, or is calculated to deceive, ordinary purchasers buying with usual care, so that they have purchased, or will probably purchase, the goods of the defendant under the mistaken belief that they are those of the complainant, to the serious damage of the latter. The deceit, or probable deceit, of the ordinary purchaser to such an extent that he buys, or will probably buy, the property of one manufacturer or vendor, in the belief that they are those of another, is a sine qua non of the maintenance of such a suit, because every one has the undoubted right to sell his own goods, or goods of his own manufacture, as such, however much such sales may diminish or injure the business of his competitors. Mr Justice Duer, in the leading case of Manufacturing Co. v Spear, well stated this rule in these words: 'At present it is sufficient to say that, in all cases where a trade-mark is imitated, the essence of the wrong consists in the sale of the goods of one manufacturer or vendor as those of another and it is only when this false representation is directly or indirectly made, and only to the extent to which it is made, that the party who appeals to the justice of the court can have a title to relief. ' Manufacturing Co. v. Spear, 2 Sandf. 599, 606; Canal Co. v. Clark, 13 Wall. 311, 322; Gorham Co. v. White, 14 Wall. 511, 528; McLean v. Fleming, 96 U.S. 245, 255, 256; N. K. Fairbank Co. v. R. W. Bell Mfg. Co., 23 C.C.A. 554, 77 F. 869, 876.

Recognizing this principle, the bill in this case charged that the appellees commenced selling an abrasive material made from crushed steel by others than the appellant, with the name and picture of a diamond upon the packages containing it, and with the word 'Diamond' in the name of their company, after the appellant had manufactured and sold such an abradant with the symbol of a diamond branded upon its packages for so long a time that its product had become known to the trade as 'Diamond Steel Abrasive,' 'Diamond Crushed Steel,' and 'Diamond Steel,' and that, by this means, the appellees had deceived, and were likely to deceive, purchasers so that they would buy their abradant as that of the appellant. The answer denied this charge, and the proof established these facts: The appellant Pittsburgh Crushed-Steel Company, Limited, was a limited partnership, engaged in business in Pittsburgh, in the state of Pennsylvania. In 1889 it commenced to manufacture and sell an abradant made of fractured particles or granules of steel to be used in polishing and sawing stone and other substances of that character. It placed upon the packages which contained its product the symbol (diamond), and the name 'Crushed Steel' or 'Steel Emery,' and it sold large quantities of this material under these names in each year from 1889 until the commencement of this suit, in 1895. The appellant's product was ordered by its customers and known to the trade as 'Crushed Steel' and 'Steel Emery,' and not as diamond steel or diamond emery. Some time in 1894 one Robert J. Marx formed a partnership with his sister and a man named Bausch under the name of 'Diamantstahl-Werk B. Bausch & Co.,' and commenced to manufacture a similar abradant from a like material at Altchemnitz, in Saxony, Germany. In the same year Robert J. Marx commenced to sell this abrasive material in the United States under the name of Jacob Marx & Co., of London, England. In the latter part of that year the appellees, Edwin H. Sublett, Benjamin F. Marx, and Edmund J. Marx, formed the Diamond Steel Company, a co-partnership, and, under that name, began to sell this German product at St. Louis, Mo. In June, 1895, they organized the appellee the Diamond Steel Company, a corporation, which has since continued to sell this foreign product in the United States. The packages containing this German abradant were marked with the words 'Diamantstahl-Werk Altchemnitz,' and the picture of a radiant diamond. There is no perceptible difference in the value of the abrasive material made by the appellant and that made by B. Bausch & Co. and sold by the appellees. They are both made of fractured particles of steel, and are both sold and used for similar purposes. On April 23, 1895, the appellant registered its symbol of a conventional diamond as its trade-mark, and on July 30, 1895, the Diamantstahl-Werk registered the picture of a radiant diamond as its trade-mark. Robert J. Marx and the appellees knew the product of the appellant, and the symbol and words which marked the packages that contained it, before they commenced to sell the German product in the United States. With this knowledge, and with the intent to compete with the appellant for the trade in this abradant in this country, Robert J. Marx adopted the trade-mark of a radiant diamond, and the name 'Diamantstahl-Werk,' and the appellees formed the partnership and the corporation Diamond Steel Company, but the appellees and their salesmen generally offered the German product for sale at higher prices than those fixed by the appellant for its manufacture, and they claimed that it was superior to the American product. There is no evidence in the record that any purchaser was ever actually deceived so that he purchased the German product in the belief that it was the abradant made by the appellant. The words and symbols upon the various packages of these abradants sold by the appellant and the appellees, respectively, necessarily varied to some extent with the size and shape of the packages, but these are fair samples of those used in the trade by the parties to this suit:

(Image Omitted) There are other facts established by the proof, but none that are so material that they can affect the conclusions which those we have recited compel. In this state of the case the court below found that the appellees had not deceived by the use of the dress in which the German product was clothed, and probably would not deceive ordinary purchasers, so that they would buy that product under the belief that it was the article manufactured by the appellant, and accordingly dismissed its bill. Can any other inference be justly drawn from these facts?

The burden was on the appellant to show that the use of the symbol and words which marked the German product were calculated to deceive ordinary purchasers and to create confusion in the trade. It was open to it to do this by evidence that the use had actually done so, or by the ocular demonstration of a comparison of the symbols and words which marked the packages in which the two products were offered for sale. It produced no proof of actual deception, and thus left the question whether or not the dress in which the German product is clothed is calculated to deceive the ordinary purchaser to the arbitrament of the eyes. When they are turned upon the two trade-marks, either simultaneously or successively, the general impression is one of difference and dissimilarity. It is true that the one bears a diamond-shaped figure, and the other a picture of a radiant diamond, but, to the eyes, these present little likeness. It is not by the visual perception, but only through the mental suggestion that both pictures represent a diamond, and that things which are equal to another are equal to each other, that the hint of likeness is reached, and this...