A. Leschen & Sons Rope Co. v. Fuller

• Decision Date: 14 December 1914
• Docket Number: 4132.
• Citation: 218 F. 786
• Parties: A. LESCHEN & SONS ROPE CO. v. FULLER et al.
• Court: U.S. Court of Appeals — Eighth Circuit

218 F. 786

A. LESCHEN & SONS ROPE CO. v. FULLER et al.

No. 4132.

United States Court of Appeals, Eighth Circuit.

December 14, 1914

James A. Carr and Lon O. Hocker, both of St. Louis, Mo. (James C Jones, of St. Louis, Mo., on the brief), for appellant.

James P. Dawson, of St. Louis, Mo., and C. F. Howell, of Centerville, Iowa (William E. Garvin, of St. Louis, Mo., on the brief), for appellees.

Before SANBORN and SMITH, Circuit Judges, and TRIEBER, District Judge.

SANBORN Circuit Judge.

This suit is a continuation of the controversy between A. Leschen & Sons Rope Company and Broderick &amp Bascom Rope Company over the asserted right of the former which uses a red strand to mark wire rope of its manufacture to exclude the latter from the use of a yellow strand to mark wire rope which it makes-- a controversy which has received the consideration of the courts at various times since 1903. A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co. (C.C.) 123 F. 149; Id., 134 F. 571, 573, 67 C.C.A. 418, 420; Id., 201 U.S. 166, 170, 171, 26 Sup.Ct. 425, 50 L.Ed. 710; Same v. Macomber & Whyte Rope Co. (C.C.) 142 F. 289. By the decisions in the cases cited it has been determined that the registered trade-mark of the Leschen Company, consisting of a red or other distinctively colored streak applied to or woven in a wire rope, which was usually applied by painting one strand of the wire rope a distinctive color, usually red, was void, because it was too broad, in that the Leschen Company sought thereby to monopolize the use, not of one, but of all, colors to mark its rope, and too indefinite, in that the color claimed was not confined to or connected with any symbol or design which might be the subject of a trade-mark. 201 U.S. 170, 171, 26 Sup.Ct. 425, 50 L.Ed. 710; 134 F. 571, 67 C.C.A. 418.

The Leschen Company has been making and selling wire rope with one strand colored red since 1886, and the Broderick Company has been making and selling wire rope with one strand colored yellow since 1900. The defendants below, the respondents here, are partners as Hercules Manufacturing Company, and under that name have been making and selling the Hercules stump puller and the necessary equipment, including wire rope, for its operation ever since 1900. They are not and have not been engaged in the manufacture of wire rope, but they purchase such rope of the manufacturers to equip their stump pullers, and sell the latter with their requisite equipment, and also buy and sell wire rope. Since the year 1908 they have been buying of the Broderick Company their yellow strand wire rope to complete the equipment of their stump pullers, and have been selling the stump pullers with the necessary amounts of this wire rope as parts of their equipment. It was in 1906 that the Supreme Court finally affirmed the decree dismissing the suit of the Leschen Company against the Broderick Company for the alleged infringement of its registered trade-mark on the ground that it was void on account of its breadth and indefiniteness. Bowing to the decision in that case the Leschen Company has brought this suit against the defendants for the alleged infringement by their purchase and use of Broderick's yellow strand rope of (1) its common-law trade-mark, consisting of 'a helical stripe or band of uniform width and distinctive color, usually red, and produced by painting one of the strands of the rope,' called 'colored strand rope,' or 'colored strand cable,' or 'red strand rope,' or 'red strand cable'; and (2) its registered trade-mark, 'Hercules,' which it uses on its reels and on its tags upon its wire rope-- and also for unfair competition. The defendants answered that the plaintiff's alleged trade-marks were void, that, if valid, they have not infringed them, that they had not been guilty of unfair competition, and that the plaintiff was estopped by the adjudication in its suit against the Broderick Company, and by its words and acts from maintaining this suit. A large amount of evidence was gathered, a final hearing was had, the court below dismissed the suit, and the Leschen Company appealed. The plaintiff assigns eight errors.

The first and second specifications are that the court erred in failing to sustain the complaint and to grant the relief prayed therein. They are disregarded now, because they are so indefinite, and because those which follow specifically state the grounds of the appeal.

The third and fourth specifications are that the court erred in that it failed to hold 'upon the evidence that complainant's practice of painting red one of the strands of its wire rope created a trade-mark in favor of the complainant,' of which the sale by defendants of wire rope having one strand painted yellow was an infringement, in view of the complainant's long-continued practice 'of marketing its wire rope with one strand painted red under claim and notice of trade-mark therein. ' It is not very clear, from the pleadings, evidence, and brief, exactly what this strand trade-mark claimed by the plaintiff is; but it is reasonably certain that it is either (1) 'a helical stripe or band, of uniform width and distinctive color, this color being usually red, and produced by painting one of the strands of the rope,' as alleged in the complaint, or (2) a red helical stripe or band, of uniform width, produced by painting one of the strands of the wire rope red. If it is the former, it cannot be sustained, because such a stripe, without designation of its distinctive color, is not the subject of a trade-mark. If it were, one party might exclude all others from the use of every color on an article, although he used but one thereon himself. A colored strand, not restricted to any color, is not a valid trade-mark. A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 134 F. 571, 573, 67 C.C.A. 418, 420; Samson Cordage Works v. Puritan Cordage Mills, 211 F. 603, 604, 607, 128 C.C.A. 203. If it was the latter, and if that is a valid trade-mark, it is so because, and only because, it is limited to a red stripe or strand, and that limitation permits the use by others of wire ropes with strands of other colors, and the defendants do not infringe that trade-mark because they use a yellow strand.

The sixth specification is that the court ought to have held and decreed that the word 'Hercules' constituted a valid trade-mark of the complainants, and that the defendants had infringed it. About the year 1886 the Leschen Company commenced to use as its trade-mark the word 'Hercules' upon the reels containing its wire rope and on tags attached to the rope, and it has continued to do so ever since. It registered this word as its trade-mark of its wire rope under the acts of Congress on September 25 1888, and again on January 23, 1906. From about the year 1900 to the present time the firm name of the defendants has been...