A. Y. McDonald & Morrison Mfg. Co. v. H. Mueller Mfg. Co.

• Decision Date: 09 December 1910
• Docket Number: 2,994.
• Citation: 183 F. 972
• Parties: A. Y. McDONALD & MORRISON MFG. CO. v. H. MUELLER MFG. CO.
• Court: U.S. Court of Appeals — Eighth Circuit

183 F. 972

A. Y. McDONALD & MORRISON MFG. CO. v. H. MUELLER MFG. CO.

No. 2,994.

United States Court of Appeals, Eighth Circuit.

December 9, 1910

Thomas A. Banning (Hurd, Lenehan & Kiesel and Banning & Banning, on the brief), for appellant.

J. L Jackson (A. H. Adams, C. E. Pickard, and M. M. Cady, on the brief), for appellee.

Before HOOK and ADAMS, Circuit Judges, and McPHERSON, District Judge.

SMITH McPHERSON, District Judge.

This was a bill in equity brought by the appellee, as complainant against A. Y. McDonald & Morrison Manufacturing Company, to enjoin it from making its manufactured products in imitation of complainant's. On the application for a preliminary injunction, the same was denied. 132 F. 585. On final hearing (164 F. 1001), the decree was for the complainant.

The complainant and defendant are rival manufacturers of, and dealers in, plumbers' goods. The complainant had received letters patent for improvements of interchangeable right and left stop and waste cocks, and that was litigated and went to final decree on the same day and in the same court that rendered the decree in the case at bar, resulting in a decree that the patent was void. 164 F. 991.

Each of the parties adopted as their trade-mark the initials of the principal words or names comprising the corporate name of each; the complainant adopting the capital letters 'H.M.,' and the defendant the capital letters 'M.M.' Those letters were placed upon plates upon the appliances; the defendant's being a diamond shape, and the complainant's upon a plate somewhat similar to the diamond, but hexagonal in form. The defendant had used the diamond upon its goods for nearly half a century. The sign of a diamond was painted on its building, and which sign is still used. The evidence satisfactorily shows that defendant had used the diamond as a trade-mark for its products a long time antedating the use by complainant of the shield, so that there can be no well-founded complaint with reference to such a device as used by the defendant.

It was decided in Brown Chemical Company v. Meyer, 139 U.S 540, 11 Sup.Ct. 625, 35 L.Ed. 247, that the burden is upon complainant to establish by clear and satisfactory proof the fraudulent intent and purpose of the defendant in arranging and using the initials of its own name so as to mislead and deceive dealers in, and purchasers of, such goods. The contention of the complainant is that this rule has been fully complied with by the showing made, and that the arrangement of the letters 'M.M.' upon the diamond is calculated to, and in fact does, mislead and deceive dealers in, and consumers of, such goods; the letter 'M' being upon each of the designs, and the letter 'M' upon defendant's design being so much like the the letter 'H' upon complainant's design that the general public in dealing with such merchandise is deceived.

The well-known and leading case of Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 16 Sup.Ct. 1002, 41 L.Ed. 118 has long since settled the rule that, notwithstanding a person may have once enjoyed a monopoly under an expired patent, another person cannot afterwards so appropriate the generic name by which the patented article was known as to mislead the public into the belief that, when purchasing an article of merchandise made by the latter, they were in fact getting merchandise made by the former. This is because of the simple proposition that no man has the right to represent himself to be another and different person. He has no right by representations, nor by acts, to create the belief that his goods were manufactured by another.

The test is not whether, when goods are placed side by side, a difference can be recognized in the labels or marks; but the test is, when such goods are not placed side by side, would an ordinarily prudent purchaser be liable to purchase the one, believing that he was purchasing the other?

But one manufacturer cannot...