Lawrence Manuf Co v. Tennessee Manuf Co

• Court: United States Supreme Court
• Writing for the Court: FULLER
• Citation: 138 U.S. 537,11 S.Ct. 396,34 L.Ed. 997
• Decision Date: 02 March 1891
• Parties: LAWRENCE MANUF'G CO. v. TENNESSEE MANUF'G CO

138 U.S. 537 11 S.Ct. 396 34 L.Ed. 997 LAWRENCE MANUF'G CO. v. TENNESSEE MANUF'G CO. March 2, 1891.

This was a bill of complaint filed by the Lawrence Manufacturing Company, a corporation of Massachusetts, against the Tennessee Manufacturing Company, a corporation of Tennessee, in the circuit court of the United States for the middle district of Tennessee, alleging that plaintiff had been and was engaged in the manufacture and sale of sheetings. That in said trade several standards or classes of goods were generally recognized, the first of which included sheetings of such weight that two and eighty-five one-hundredths yards thereof would weigh a pound; the second, sheetings of such weight that three yards would weigh a pound; and the third, sheetings of such weight that four yards would weigh a pound. That prior to the year 1870 the plaintiff 'adopted, and there-

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upon became duly vested with the exclusive right to use, a label or trade-mark for all goods of its manufacture coming within said third class to distinguish sheetings of its manufacture from sheetings of the same general class manufactured by others, the substantive, dictinctive, and chief feature of which label was and is an arbitrary sign or symbol, consisting of the capital letters 'LL' prominently and separately appearing upon such label or stamp. That said trade-mark, with certain environments, which have been changed from tim to time, has been so used by complainant since said date of adoption, and, to-wit, for more than fifteen years, and has been imprinted upon each and every piece or bolt of such sheetings of said third general class made and sold by complainant during said period.' That said trade-mark was so adopted by plaintiff for the purpose of distinguishing sheetings of its manufacture of the third general class from similar goods manufactured by others. That in connection with the trade-mark, or substantive element of said label, under and in connection with which the trade reputation of plaintiff had been established, plaintiff had used the words 'Lawrence Mills,' and the word 'Sheetings,' in different juxtapositions, and also at times a picture or representation of a bull's head, and at other times a picture or representation of a 'bull rampant,' and in connection therewith, and underneath the same, and in a separate position, has always used said capital letters 'LL' as and for the purpose aforesaid. That plaintiff had earned and acquired a trade reputation of great value as manufacturers of sheetings under its trade-mark, with the result that sheetings of the third general class of plaintiff's manufacture had come to be universally known as 'LL Sheetings,' 'and sheetings so known, named, and called for, import the excellent raw material, the method and care of manufacture, and the general guaranty of excellence and lasting quality for which your orator has a long, valuable, and thoroughly established reputation as to all goods of its manufacture.' That since plaintiff became vested with the exclusive right to the use of the trade-mark, namely, from the 1st of January, 1884, to the present time, the defendant had been manufacturing and selling large quantities

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of sheetings of said third general class, upon which, and for the purpose of taking advantage of plaintiff's trade label, trade-mark, and trade reputation, defendant had placed a stamp or label in imitation of the stamp or label of plaintiff, and so in imitation thereof as to tend to deceive the public, and had upon its said stamp or label on its sheetings printed or stamped the capital letters 'LL,' prominently and separately from the other parts of its label. That the acts and doings of the defendant tended to deceive the public and to constitute a fraud upon them as well as upon the plaintiff; and that the appropriation and wrongful use of the letters 'LL' was for the purpose and with the tendency and effect of appropriating a part, at least, of the good-will and trade reputation of the plaintiff; wherefore plaintiff prayed for an injunction, and for an account of all gains and profits realized by defendant, and for damages.

The answer admitted that in the trade of sheetings there were several recognized classes, based upon the difference in weight of the goods per yard, and among them four classes running 2.85, 3, 4, and 5 yards to the pound; and that the products of different manufacturers, though coinciding in the standard of weight, differed in texture and durability. Defendant denied that either prior to 1870, or at any other time, plaintiff adopted and thereupon became duly vested with the exclusive right to use a label or trade-mark upon all goods of its manufacture coming within the third class, having as its substantive, distinctive, and chief feature a symbol consisting of the capital letters 'LL' prominently and separately appearing on such label or stamp; and denied that at the time alleged, or before or since, plaintiff adopted or had used such symbol for the purpose of distinguishing sheetings of its manufacture from similar goods manufactured by others. Defendant admitted that plaintiff had used the letters 'LL' upon sheetings of the third class, and had also impressed upon the goods 'Lawrence Mills' and the word 'Sheetings,' and at times the representation of a bull rampant, but charged that the words 'Lawrence Mills' were used to designate that the goods were made by plaintiff, and

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to distinguish its manufacture from sheetings of the third class mde by others, and that the representation of the bull and the words 'Lawrence Mills' constituted plaintiff's trade-mark, if it had any, and that the letters 'LL' were used solely to denote the class or grade of sheetings upon which they were impressed. Defendant denied that sheetings of the third class of plaintiff's manufacture were universally known as 'LL Sheetings,' but asserted that it was generally understood in the trade and by consumers that the capital letters 'LL' are placed on sheetings weighing one-fourth of a pound to the yard, to designate those of that class, and that they are thus used in common by all manufacturers of sheetings of this weight. That plaintiff's sheetings thus stamped are known in the trade as 'Lawrence LL Sheetings,' and defendant's are known as 'Cumberland LL Sheetings,' and that the same class of goods of other well-known makers in the United States are marked 'LL,' and recognized and distinguished according to their respective trade-marks denoting origin, as 'Aurora LL,' 'Buckeye LL,' 'Beaver Dam LL,' and many others. That plaintiff manufactures, besides the Lawrence LL sheetings, sheetings of the same weight and class, but of a different quality, and brands them 'Shawmut,' with the addition of the capital letters 'LL,' so that purchasers buying LL sheetings, made by plaintiff, are forced to designate the quality desired by ordering 'Lawrence LL' or 'Shawmut LL,' as the case may be Defendant admitted that since April, 1885, it had stamped upon its cotton goods weighing one-fourth of a pound to the yard the words 'Cumberland' and 'Sheetings;' in horizontal lines, with the figures '4-4' beneath them, and with the capital letters 'LL' below the figures '4-4.' That the word 'Cumberland,' from the river near which its works are located, was used to designate its manufacture, and as a trade-mark; the word, 'Sheetings,' to signify the general character of the goods. That the letters 'LL' were used to denote the class to which the letters belonged, and the figures '4-4' to indicate that the goods were one yard wide. But denied that for the purpose of taking advantage of plaintiff's trade it had placed on the said goods a stamp or label

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in imitation of plaintiff's stamp or label, with intent to and with the effect of deceiving the public; and denied that its stamp or label bore any resemblance to that of the plaintiff, or that even the most casual observer would take the one for the other; and denied that it had sold with the stamp or label designated goods of less weight than it claims the said letters indicate, with the qualification that there may exist slight variations above or below the standard, mathematical exactness not being uniformly attainable by any manufacturer, and such variations existing in plaintiff's goods. Defendant averred that plaintiff could not lawfully set up any claim to the exclusive use of the capital letters 'LL' as a trade-mark, for they did not indicate any ownership of the goods upon which they are impressed, and did not have the characteristics for making them a lawful trade-mark, and, standing alone, conveyed no meaning; while the words 'Lawrence Mills,' used on plaintiff's labels, indicated the origin of said goods, and plainly advertised that they were made by plaintiff. Defendant further stated that before plaintiff used the letters 'LL' they were stamped and used by the Atlantic Mills, in the United States, on a grade of sheetings manufactured by them, and said letters had never been by the trade and general public accepted as a trade-mark of plaintiff or as forming an element of the same, but their accepted signification was that they represented a class of goods and not origin or...