De Long Hook & Eye Co. v. Hump Hairpin Mfg. Co.

• Decision Date: 21 April 1921
• Docket Number: No. 13339.,13339.
• Citation: 130 N.E. 765,297 Ill. 359
• Court: Illinois Supreme Court
• Parties: DE LONG HOOK & EYE CO. v. HUMP HAIRPIN MFG. CO.

297 Ill. 359

130 N.E. 765

DE LONG HOOK & EYE CO.

v.HUMP HAIRPIN MFG. CO.

No. 13339.

Supreme Court of Illinois.

April 21, 1921.

Bill by the De Long Hook & Eye Company against the Hump Hairpin Manufacturing Company. From judgment of appellate court reversing decree of dismissal and remanding the cause with directions to enter decree for complainant, 216 Ill. App. 230, the defendant appeals.

Judgment of Appellate Court reversed and decree of circuit court affirmed.Appeal from First Branch Appellate Court, First District, on Appeal from Circuit Court, Cook County; Thomas G. Windes, Judge.

Judah, Willard, Wolf & Reichmann and Frank L. Belknap, all of Chicago, for appellant.

Rushmore, Bisbee & Stern, of New York City, and Moses, Rosenthal & Kennedy, of Chicago (Charles E. Rushmore and George N. Hamlin, both of New York City, of counsel), for appellee.

DUNN, J.

The De Long Hook & Eye Company filed a bill in the circuit court of Cook county against the Hump Hairpin Manufacturing Company to enjoin the latter from using the word ‘Hump’ in the marketing of its hairpins and in its corporate name, upon the ground that the use of such word in the manner the defendant was using it constituted unfair competition with the complainant. A hearing upon the pleadings and evidence resulted in a decree dismissing the bill for want of equity, which the Appellate Court reversed, remanding the cause, with directions to enter a decree in favor of the complainant in accordance with the views expressed in the opinion of the court. The defendant, having obtained a certificate of importance, has appealed from the judgment of the Appellate Court.

The claim of the appellee is based upon the adoption of the word ‘Hump’ and its continued use by it and its predecessors as a trade-mark since 1891, and the claim that this word has been so used and advertised in connection with all the products of the appellee, which included hairpins and other like articles of women's apparel known as notions, as to have acquired a special significance in the minds of retailers and of the purchasing public as a trade name, which, used in association with hairpins, indicates the appellee as the manufacturer thereof.

The appellee is a corporation organized under the laws of Pennsylvania, having its principal office in Philadelphia, and is engaged in the manufacture and sale of hooks and eyes, hairpins, buttons, safety pins, and toilet pins. In 1889 the partnership of Richardson & De Long Bros. was organized for the purpose of manufacturing and selling hooks and eyes under letters patent issued to Frank E. De Long for ‘an improvement in hooks or fasteners for garments, consisting of a hook proper and a shank formed of substantially parallel bars and a curved spring tongue having its free end forming a loop coincident with the bend of the hook, said tongue and loop being intermediate of said bars and having the central bar of the shank bent forward out of the plane of the other bars, acting as a spring to prevent accidental disengagement of the hook and eye members one from the other and permitting of easy engagement of the hook with the eye or of its disengagement therefrom by the wearer of the garment to which the hook and eye are attached.’ The partnership commenced the manufacture of hooks and eyes under the letters patent in March, 1890. In 1891 they gave to the bend and central shank the name ‘Hump,’ and adopted that word together with the expression, ‘See that Hump?’ which phrase was used in connection with a picture of the hook and eye and an indicating line running from the word ‘See’ to the hump, as a trade-mark for hooks and eyes, which they caused to be registered in the patent office on April 19, 1892, and on August 29, 1905, and on August 7, 1906. A corporation of the same name as the appellee was organized under the laws of West Virginia in 1890 which took over all the business of the partnership, and in 1907 the appellee was organized in the state of Pennsylvania and has succeeded to all the business, property, and rights of both the partnership and the West Virginia corporation. The appellee and its predecessors have been continuously engaged in the manufacture and sale of hooks and eyes of the character described in the De Long patent since 1890, though the patent expired in 1906, and since that time such hooks and eyes have been manufactured and sold by others as ‘Hump hooks and eyes.’ In 1894 the appellee's predecessor engaged also in the manufacture and sale of hairpins, making the ordinary hairpin with two prongs, and it and the appellee, its successor, have ever since continued in that business. These hairpins were never known or advertised or sold as ‘Hump hairpins.’ The trade-mark ‘Hump,’ or ‘See that Hump?’ was never attached to the packages in which they were sold. They were sold under separate names, as the ‘Cupid Hairpin’ and ‘Diana Hairpin’ and ‘De Long Hairpin.’

In December, 1903, Sol. H. Goldberg obtained letters patent on a new three-pronged hairpin invented by him, the essential characteristic of which was a central third prong considerably shorter than the outer prongs, which was twisted and provided with a hump by bending the wire. In November, 1904, Goldberg caused to be registered in the patent office, as a trade-mark for hairpins, the words, ‘It locks the locks,’ and in April, 1907, as another trade-mark for hairpins, the words, ‘Hump hairpin locks the locks.’ These patents and trade-marks were assigned to the Hump Hairpin Company a corporation organized under the laws of the state of Illinois, and by it were assigned to the Hump Hairpin Company, a corporation of the state of Maine, and later were assigned to the appellant, the Hump Hairpin Manufacturing Company, a corporation of the state of West Virginia, which has succeeded to all the rights of Goldberg and the two preceding corporations in the patent and trade-marks.

In January, 1909, the Hump Hairpin Company of Maine applied for a trade-mark for hairpins, consisting of the words ‘The Hump’ printed above the likeness of a camel bearing a hairpin on its back. The De Long Hook & Eye Company filed its opposition in the patent office, where it was sustained, but on appeal to the Supreme Court of the District of Columbia the order was reversed and the trade-mark was ordered registered. The Maine corporation, the Hump Hairpin Company, in 1910 established a plant in Chicago for the manufacture of hairpins under the Goldberg letters patent, and in 1914 the appellant was organized and took over all the assets and the business of the Maine corporation. In January, 1916, it entered on a large scale upon the business of manufacturing and selling hairpins in the city of Chicago. Soon after, on April 26, 1916, the appellee filed the bill in this case.

From the time the words ‘Hump’ and ‘See that Hump?’ were adopted as a trade-mark for hooks and eyes the predecessor of the appellee began advertising its products very extensively, and this advertising has been continuous since that time. The advertising was carried on by publication in magazines, trade journals, newspapers, and circulars, on cards placed in street cars, on paper bags, fences, and signboards and was attended with many ingenious and novel devices. The most striking feature of the advertising was the trade-mark and the name of the De Long Hook & Eye Company. From time to time various other articles began to be manufactured and sold by the De Long Hook & Eye Company such as press buttons, safety pins, and toilet pins. These articles all belong to a class of merchandise known as ‘notions,’ and as the manufacture of each new article was begun it became a part of the advertising scheme, and its picture was a part of the presentation of the business of the company. In February, 1916, the scheme of advertising was changed, so that from the picture of each article grouped around the pictured hook and eye with the words, ‘See that Hump?’ a line was drawn to the hump. There is evidence that this change was determined upon in the latter part of 1915, and paper bags for the use of the trade in the sale of notions were distributed before Christmas, 1915, though they did not become a part of the advertising scheme until February, 1916.

The appellee's patent having expired, and the hooks and eyes manufactured by it under the patent having acquired the name of ‘Hump hooks and eyes,’ by which they are generally known, every person has the right to make and sell hump hooks and eyes under that name, provided he does nothing tending to deceive the public into believing that his hump hooks and eyes were manufactured by the appellee. At the expiration of the patent the public acquires the right to make the patented article and to use the name which it has acquired, even though the name is that of the patentee, subject to the requirement that in using the name such precaution shall be taken as will prevent deception of the public by furnishing unmistakable information as to the manufacturer. Singer Manf. Co. v. June Manf. Co., 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118.

Since appellee never attached the trade-mark ‘Hump,’ or ‘See that Hump?’ to the hairpins which it manufactured and sold, it acquired no right in those words as a trade-mark for hairpins. The mere adoption and use of words in advertisements, circulars and price lists and on signs and stationery give no exclusive right to their use. Hazelton Boiler Co. v. Hazelton Tripod Boiler Co., 142 Ill. 494, 30 N. E. 339;Bolander v. Peterson, 136 Ill. 215, 26 N. E. 603,11 L. R. A. 350;Candee Swan & Co. v. Deere & Co., 54 Ill. 439, 5 Am. Rep. 125.

Therefore the appellee does not base its claim for an injunction upon any application of the law of trade-marks, but only upon the claim of unfair competition. For the latter claim no trade-mark right or right to the exclusive use of the words, marks, or names by which the goods sold are called, is essential. In such a case the...