McCurrach v. Cheney Bros.

• Decision Date: 19 November 1945
• Docket Number: No. 20.,20.
• Citation: 152 F.2d 365
• Parties: McCURRACH et al. v. CHENEY BROS.
• Court: U.S. Court of Appeals — Second Circuit

152 F.2d 365 (1945)

McCURRACH et al. v. CHENEY BROS.

No. 20.

Circuit Court of Appeals, Second Circuit.

November 19, 1945.

John B. Cuningham, of New York City, for plaintiff.

Thomas J. Byrne, of New York City, and Joseph K. Schofield, of Hartford, Conn., for defendant.

Before L. HAND, SWAN, and CLARK, Circuit Judges.

L. HAND, Circuit Judge.

Both parties appeal from a judgment which (1) held that the defendant had infringed both claims of the plaintiff's patent No. 2,178,893, granted to Mabel C. McCurrach on November 7, 1939; (2) which dismissed, though not upon the merits, a cause of action under § 66, Title 35 U.S.C.A., upon an alleged interference between the plaintiff's patent and Patent No. 2,291,531, granted to Cheney and Tedford on July 28, 1942, and owned by the defendant; and (3) which dismissed, also not upon the merits, a cause of action to declare that the plaintiff's product did not infringe the claims of the defendant's patent and that that patent was invalid. Both patents "related to neckties," but, in the view that we take it will not be necessary to describe the defendant's in detail. The plaintiff's patent is "to provide improved means * * * for producing a predetermined indentation or pleat-like drape formation in the front of the necktie just below the knot" (p. 1, lines 6-11). (This is commonly called a "dimple," and is meant to give the tie a more pleasing appearance.) The means employed is a "forming element" in the shape of an M in cross-section, separate from, and inside, the main fabric of the tie. Since most ties have an inner lining, the "forming element" is either attached to it, or is a part of it. When the tie is made up, the main fabric — silk or other — follows the middle fold, or "valley," of the M just below the knot. In one form the "forming element" is a separate "preformed pleated piece of any suitable material which is pliable and capable of retaining a fold or pleat. Preferably it consists of a textile fabric which may be relatively heavy" (p. 1, lines 26-30). It is "formed with two longitudinally extending parallel pleats, each affording an apex or fold line * * *. Intermediate of the pleats is another pleat or fold line, 15, which projects towards the rear" (p. 1, lines 31-37). (This is what we have called the "valley" of the M.) The "forming element" may be "stiffened by a suitable backing, or by being coated or impregnated" (p. 1, lines 53-54). The specification also disclosed a variant of the "forming element"; i. e., "an integral stiffened, pleated section, 23, which affords a conformation and arrangement" like the first form (p. 2, lines 14-16). The plaintiff made up some assortments of neckties according to the patent, and sold them to three dealers, who advertised them in 1939. They were marketed for about eighteen months, but production was discontinued, owing to the scarcity of materials during the war. The extent of the sales is not shown; and the possible success of the necktie in making any place for itself in the market remains to be determined; it cannot be said to have been a failure; nor can it be said to have been a success.

The plaintiff's patent was not the only effort to produce a "dimple" in a necktie. On March 17, 1936, Patent No. 2,034,652 was issued to Fallar & Fallar, for that purpose. There were two forms of this; in one the edges of the lining of the necktie were reinforced, the idea being that the reinforcement would bring the edges forward when the tie was made up, making a "valley" at each side, and forcing the center part of the material forward into a bulge. The second form was to produce a "dimple" like the patent in suit, either by a lining in two pieces stitched together in the center and at the sides, with vertical slits between the stitching; or by a single lining with two vertical slits near the margin. The notion as to this was that, when the tie was made up, the slits would cause the lining to bulge forward at the sides making a "dimple" in the center. On April 5, 1938, one, Kleinmann was granted Patent No. 2,113,113, whose object was "to provide a four-in-hand tie with a longitudinally creased reinforcement whereby the center longitudinal outer portion of the tie is shaped to produce a ridged appearance on the outer side" (p. 1, lines 7-11). A lining of the usual sort was to be slit along the center; or, if it was "quite flexible," it need only be folded. Over the cut or fold "a sheet of strong, fairly stiff fabric, 20, is folded along its longitudinal center, as in Fig. 6, and is secured by an adhesive, 21, to each side portion of the folded lining" (col. 1, line 51; col. 2, lines 1-4). The lining so reinforced pushes the material of the tie forward into a bulge: the desired "ridged appearance." Cloke, in Patent No. 1,990,167, granted on February 5, 1935, also disclosed a method of producing a "dimple" in the same place as McCurrach, though by quite different means, and so did Goldman, on April 19, 1938, in Patent No. 2,114,376.

It is conceivable, since the limitations upon manufacture imposed by the war have now ended, that the plaintiff's tie may in time have wider acceptance than any which it has had so far; and...