Magee Furnace Co. v. Le Barron

• Decision Date: 28 June 1879
• Citation: 127 Mass. 115
• Parties: Magee Furnace Company v. John H. Le Barron
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

127 Mass. 115

Magee Furnace Company v. John H. Le Barron

Supreme Court of Massachusetts

June 28, 1879

Argued November 21, 1878 [Syllabus Material] [Syllabus Material] [Syllabus Material]

Suffolk. Bill in equity, filed March 29, 1877, alleging that the plaintiff, a corporation established under the laws of this Commonwealth, had for many years been engaged in the business of manufacturing and selling furnaces, ranges and stoves, and parts of the same, and had during such time exclusively used upon each of the stoves one of the following names: "Magee Advance No. 7," "Magee Advance No. 8," "Chelsea Cook No. 7," "Chelsea Cook No. 8," "Champion Cook No. 7," "Champion Cook No. 8," "Magee No. 7," "Magee No. 8," "Standard Cook No. 7," "Standard Cook No. 8," "Success Cook No. 7," "Success Cook No. 8," and during the same time had used upon ranges, either the name "Magee Portable Range No. 7," or the name "Magee Portable Range No. 8;" that each of these names was used to designate the stove or range respectively as an article of a peculiar kind, character and quality, and as manufactured by the plaintiff, and as a trade-mark.

That certain parts of each of the stoves and ranges, which are peculiar in shape and suited only to such stove or range, such as are entitled grates, linings, beds, fronts, gas-burners and shakers, by reason of the great heat and hard usage to which they are necessarily subjected, are worn or burnt out, broken and otherwise rendered useless, from time to time, while the rest of the stove or range yet retains its utility; and on this account numbers of each of these parts must be made for each of said stoves and ranges, that new ones may replace those which are rendered useless from time to time; that the plaintiff, by great pains, expense and skill manufactures these parts of the stoves and ranges so that they fit the stoves and ranges with great exactness, and are of such material and workmanship as to endure the heat and usage to which they are subjected to an extraordinary extent, whereby they have acquired a high repute among the users of such stoves and ranges, for their durability and the facility with which the new ones may be made to replace those which are rendered useless; and the sale of them and of the stoves and ranges of which they form a part, by the plaintiff, has been much increased.

That not only has the aforesaid name of each of the stoves and ranges been used for and upon and connected with each of the parts of the stove or range in the sale and manufacture of each of such stoves and ranges as a whole, but the plaintiff has always made and sold the aforesaid parts, respectively, for the replacement of like parts which have become useless, under the name applied to the stove or range to which they belong, to designate the parts as articles of a peculiar kind, character and quality, and as manufactured by the plaintiff, and as a trade-mark; and has the right to use each of these names as a trade-mark for the parts of the stove or range for which it is used.

That, since the plaintiff has had the exclusive right to use these names or trade-marks as aforesaid, the defendant has been and now is manufacturing parts corresponding to the parts of the stoves and ranges made and sold by the plaintiff, and has been and now is, without the plaintiff's consent, using in the sale thereof the same names therefor as those used by the plaintiff, for the purpose of falsely representing them to be of the same kind, character and quality as those manufactured and sold by the plaintiff; whereas, in fact, they are not of the same kind, character and quality, and are ill-fitting and inferior in material and workmanship to those sold by the plaintiff, and tend greatly to injure the reputation of the stoves and ranges and the parts thereof made and sold by the plaintiff.

That the defendant, by his unlawful and wrongful acts aforesaid, has made and received great gains and profits, which ought to and would have, but for said unlawful and wrongful acts, been received by the plaintiff.

The prayer of the bill was for an answer under oath, for an account, for an injunction to restrain the defendant from the use of the plaintiff's trade-marks, and for further relief.

The answer admitted that the defendant had made castings of parts of stoves and ranges for dealers in various parts of the country, from patterns furnished to him by such dealers, which had on them letters and figures, such as a grate with "M. A. 7" upon it, which fitted a stove called "Magee Advance No. 7;" a grate with "R. 7" upon it, which fitted a range called "Magee Portable Range No. 7;" a gas-burner with "7 R. P." upon it, which fitted the same range; a grate with "P. R. 8" upon it, which fitted a range called "Magee Portable Range No. 8;" a gas-burner with "P. R. 8" upon it, which fitted the same range; and many others of a similar kind, which need not now be mentioned; but denied that such letters and figures constituted any trade-mark of the plaintiff; and averred that, in all cook-stoves and ranges, such letters and figures were solely for the purpose of showing the number of inches in diameter of the circular openings in the top of the stove or range; and also averred that the letters and figures on some of the other castings were intended simply to facilitate the laborers in extensive furnaces and warehouses in classifying such goods, and were not used as a trade-mark by the plaintiff.

At the hearing before Ames, J., it appeared that the plaintiff manufactured and sold the ranges and stoves mentioned in the bill, using as trade-marks the peculiar names mentioned in the bill, both by casting them on the stoves and ranges, and by designating them with said names in selling them; and also manufactured and sold grates, linings, beds, fronts, gas-burners and shakers, peculiarly fitted to each of such stoves and ranges, to replace the like parts thereof which became worn out or broken, using in the sale the trade-mark of each stove and range to designate the parts sold for its repair, and also casting on each of the parts the initial letters and number of the trade-mark of the stove or range for which such part was fitted, in the manner set forth in the answer. It also appeared, that the numbers applied to stoves and ranges, and their parts, made by the plaintiff and other manufacturers, always corresponded with the number of inches in diameter of the pot-holes; and that the parts above mentioned, made and sold by the plaintiff, had been made of the best material, and to fit with great exactness, and had acquired high repute thereby.

It appeared that the defendant, after the adoption by the plaintiff of the names mentioned in the bill, and before the filing of the bill, sold, in large numbers, parts of stoves and ranges corresponding to those named in the bill, to be used for the repair of the stoves and ranges made and sold by the plaintiff, and advertised the parts so sold by him, by issuing a catalogue entitled "Catalogue of Grates and Linings manufactured by J. B. Le Barron, Middleboro', Mass.," and containing in its list the following:

Advance

grates

No. 7 & 8.

"

beds

" "

"

fronts

" "

"

gas-burners

" "

Chelsea Cook (O.P.)

grates

No. 7 & 8.

" "

beds

" "

" "

fronts

" "

Chelsea Cook (N.P.)

grates

No. 7 & 8.

" "

beds

" "

" "

fronts

" "

Champion Cook

grates

No. 7 & 8.

" "

fronts

" "

" "

beds

" "

Magee Cook

grates

No. 7 & 8.

" "

beds

" "

" "

fronts

" "

" "

gas-burners

" "

" "

shakers

" "

Magee Range

grates

No. 7 & 8.

" "

fronts

" "

" "

beds

" "

" "

gas-burners

" "

Success Cook

grates

" "

These names and numbers were to designate the parts, made and sold by the defendant, to repair the stoves and ranges made and sold by the plaintiff; and the defendant sold such parts, when ordered, by these names.

It appeared that the defendant had cast these parts in moulds made from the parts sold by plaintiff as aforesaid, and had thereby cast on his parts the initial letters and numbers borne by the parts made by the plaintiff; but when the defendant had notice by the subpoena that this suit was commenced, he caused to be filed off from his patterns all letters, numbers, initials and marks whatsoever, and ever after cast the parts accordingly.

The defendant contended that neither the sale of the parts, with representation by his catalogue that the parts were of his manufacture, nor the sale of the parts without the letters and numbers on them, nor the sale of the parts with the letters and numbers on them, would violate any rights of the plaintiff, and that such letters and numbers did not constitute a trade-mark, and the use of them would not constitute a representation that the parts were made by the plaintiff, and that the several parts of the stoves and ranges were not protected by a trade-mark on the stoves and ranges, so as to prevent the making by the defendant of the several parts for repairs; that if he had made and sold either or all of the stoves and ranges described in the bill striking off all letters and figures or marks whatever which tended to represent them as made by the plaintiff, and more especially if the defendant represented them to have been made by himself, there would be no violation of a trade-mark, nor any trade-mark to be violated; and that the making or casting those parts of the stoves or ranges which require to be often renewed, such as grates, beds or grate-rests, fronts, gas-burners or shakers, either without any representation thereon indicating to the public that the same were cast by the plaintiff, or without any letters or marks whatever thereon, except what constituted the mere plain grate, grate-rest, front, gas-burner and shaker, would not...