A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co.

• Decision Date: 24 December 1904
• Docket Number: 2,055.
• Parties: A. LESCHEN & SONS ROPE CO. v. BRODERICK & BASCOM ROPE CO.
• Court: U.S. Court of Appeals — Eighth Circuit

134 F. 571

A. LESCHEN & SONS ROPE CO. v. BRODERICK & BASCOM ROPE CO.

No. 2,055.

United States Court of Appeals, Eighth Circuit.

December 24, 1904

George H. Knight and James C. Jones, for appellant.

James P. Dawson (Dawson & Garvin, on the brief), for appellee.

Before SANBORN and VAN DEVANTER, Circuit Judges, and AMIDON District judge.

AMIDON District Judge.

Both complainant and defendant are corporations organized under the laws of the state of Missouri, and are engaged in manufacturing wire rope in that state. The complainant has registered a trade-mark under the act of March 3, 1881, c 138, 21 Stat. 502 (U.S. Comp. St. 1901, p. 3401), which it claims the exclusive right to use, as indicative of its manufacture. In its statement filed with the Commissioner of Patents, it describes its trade-mark as follows:

'The trade-mark consists of a red or other distinctively colored streak applied to or woven in a wire rope. The color of the streak may be varied at will, so long as it is distinctive from the color of the body of the rope. The essential feature of the trade-mark is the streak of distinctive color produced in or applied to a wire rope. This mark is usually applied by painting one strand of the wire rope a distinctive color, usually red.'

The appellant, who was complainant below, filed its bill to restrain the defendant from infringing this trade-mark. The trial court sustained a demurrer and dismissed the bill.

Much is said in the brief of appellant to the effect that the defendant has been guilty of unfair trade competition by palming off on the public ropes of its manufacture as complainant's rope. This is a subject, however, over which the federal courts have no jurisdiction. Complainant and defendant are both citizens of the same state, and for this reason jurisdiction is confined to the trade-mark as registered. If that mark is invalid, the federal courts are without authority to grant any relief on the ground of unfair trade competition. Elgin National Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 Sup.Ct. 270, 45 L.Ed. 365.

Is, then, the trade-mark as registered a valid trade-mark? We do not think it is. Throughout their brief, counsel for appellant refer to its trade-mark as a 'strand of a wire rope of a distinctively different color from the other five strands of the rope. ' That is not, however, the trade-mark claimed in the statement as filed. The court has no power to make such a restriction. It is the registration, and not the manufacture, which controls the federal courts in determining the validity of a trade-mark when plaintiff and defendant are citizens of the same state. If the statement is so general as to render the mark described invalid as a trade-mark, the court cannot sustain a more restricted mark which the claimant actually uses in his manufacture. 'The plaintiffs have not restricted themselves to any particular description of goods comprised in such class. Their registration must stand or fall as a whole, for that to which they declare in their registration they intend to appropriate it. There is no provision in regard to trade-marks, such as there has been and is in regard to patents for inventions, that a suit may be maintained where the grant is valid as to a part, but not as to the whole. ' Smith v. Reynolds, 22 Fed.Cas. 638, No. 13,098 (Blatchford, J.).

Furthermore we do not think that a mark which consists simply in a colored strand in a wire rope, but is not...