Newcomer & Lewis v. Scriven Co.

• Decision Date: 23 February 1909
• Docket Number: 1,847.
• Citation: 168 F. 621
• Parties: NEWCOMER & LEWIS v. SCRIVEN CO.
• Court: U.S. Court of Appeals — Sixth Circuit

168 F. 621

NEWCOMER & LEWIS v. SCRIVEN CO.

No. 1,847.

United States Court of Appeals, Sixth Circuit.

February 23, 1909

The bill avers that the complainant has since 1891 been engaged in the business of making and selling men's drawers, and 'that for the purpose of more clearly distinguishing the goods of its manufacture from those of other manufacturers it applied to the men's drawers made by it certain peculiar and distinguishing features, to wit a buff or yellow colored strip down each side and the back thereof, said buff of yellowish colored strip extending down from the waistband to the ankles, being so conspicuous as to readily distinguish such drawers from others sold by competitors in the market the remainder of said garment being of a color contrasting with that of said strip and usually white. * * * The use of the said buff or yellowish strip was particularly arbitrarily, and solely for the purpose of identifying your orator's product. * * * That complainant also applied to the said drawers and the boxes in which they were sold and in the advertisements of said drawers the further distinctive and distinguishing marks, appellations and symbols, to wit the words 'Elastic Seam,' or 'Scriven's Elastic Seam.' * * * That the said buff or yellowish colored strips and the said words 'Elastic Seam' and 'Scriven's Elastic Seam,' as applied to men's drawers, and used therewith, came to be recognized by dealers therein and the public generally as indicating and distinguishing the goods of the manufacture of your orator, which were known as 'Scriven's Drawers,' and that dealers and consumers relied upon the said buff or yellowish colored strips and upon the said words 'Elastic Seam,' or 'Scriven's Elastic Seam,' as indications that the goods were of the manufacture of your orator. ' It is then charged that the defendants are engaged in selling 'men's drawers not made by or for your orator, which have been made in fraudulent limitation of your orator's said product; * * * that is to say, the said defendants have made or caused to be made or procured, and caused to be offered for sale and sold, men's drawers having the body portion thereof white and down the sides and back a buff or yellowish strip of substantially the same length, width, and color of strip as the buff or yellowish colored strips made use of by your orator, and have advertised and sold, or caused to be advertised and sold, said imitation drawers as Scriven's Elastic Seam Drawers, * * * ' and 'have caused those to whom they sell the said drawers to believe that the said articles are Scriven's drawers, made by your orator, deceiving the public and securing to the said defendants the profits. * * * '

The answer puts in issue all the material facts upon which the complainant seeks relief. It asserts that the complainant originally made and sold the elastic seam drawers, described in the bill and the subject of this controversy, under a patent, being No. 243,498, issued January 28, 1881, to one C. A. Brown, for certain improvements in undergarments, which said patent has long expired. They admit that they deal in men's drawers, and that they buy and sell the drawers made by the complainant, as the Scriven's elastic drawers, at 75 cents per pair; that they also buy from jobbers a style of drawers having the elastic seam feature of the Brown patent and in a general way resembling the garment made and sold by the Scriven Company, but deny that they represent or sell them as or for garments made or sold by the complainant, but as drawers like the Scriven drawers in style and quality, asking for the same only 24 cents per garment, and that customers are enabled and offered a choice, without deception. The answer denies that the Scriven Company ever adopted the said 'buff or yellowish' strip for the purpose of indicating the origin, or that they adopted the color as a mark of origin; but, in fact, the color of the strip is the natural color of the unbleached cotton used in the fabric composing the strip. They deny that the term "Elastic Seam' was adopted as a term to indicate origin, but was adopted and used as words descriptive of the character and style of the drawers so marked and advertised.'

Upon the pleadings and evidence there was a decree in accordance with the prayer of the bill.

Before LURTON and SEVERENS, Circuit Judges, and KNAPPEN, District judge.

LURTON Circuit Judge (after stating the facts as above).

The characteristic feature of the men's drawers here in question is that a strip or seam of an elastic fabric is inserted down the sides and back. This is the feature covered by a patent to C. A. Brown, which expired in 1898. We insert below Figure 2 from that patent:

(Image Omitted)

The specifications of that patent say that the parts marked 'A' are made of woven fabric, while the parts marked 'B' are made of knitted fabric. The knitted fabric may be either sewed to 'or inserted within the garment, or may be loosely woven or worked in the formation of the drawers material. ' The first claim of the patent was for the combination in undergarments of the woven body fabric, A, and the knitted insertions, B, when constructed and arranged substantially as described. Down to 1898 only the Scriven Company, as assignees of this patent, could make men's drawers having such an elastic strip or seam down the sides or back. Since that time the monopoly has ceased, and the public are at liberty to use the method of the patent. Neither the color nor the material of this elastic seam was an element of the patent, nor does it appear from any competent evidence that this inserted strip or elastic fabric has always been of the same shade or color. There is evidence that for many years that strip has been made from the yarn of Egyptian cotton, and that the so-called 'buff or yellowish' color is the undyed, natural color of the grade of unbleached cotton from which the fabric is made. The averment of the bill that the makers of these elastic seam drawers adopted the use of said buff or yellowish colored strip 'particularly, arbitrarily, and solely for the purpose of identifying your orator's product' is not borne out by the evidence. There is some hearsay and some opinion evidence which tends to show this, but no sufficient evidence of any such distinct purpose or object. The long elastic Egyptian fiber was suitable for the elastic strip, but that the color of the commercial variety of such cotton was the cause of its adoption is not established.

Color except in connection with some definite, arbitrary design, such as when impressed upon a circle, star, cross, or other figure, or employed in definite association with some characteristics which serve to distinguish the article as made or sold by a particular person, is not the subject of monopoly as a trade-mark. Diamond Match Company v. Saginaw Match Company, 142 F. 727, 74 C.C.A. 59; Regensburg v. Portuondo Cigar Mfg. Company, 142 F. 160, 73 C.C.A. 378; Leschen Sons' Rope Company v. ...