Reading Stove Works, Orr, Painter & Co. v. S.M. Howes Co.

• Citation: 201 Mass. 437,87 N.E. 751
• Parties: READING STOVE WORKS, ORR, PAINTER & CO. v. S. M. HOWES CO.
• Decision Date: 08 March 1909
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

201 Mass. 437

87 N.E. 751

READING STOVE WORKS, ORR, PAINTER & CO. v. S. M. HOWES CO.

Supreme Judicial Court of Massachusetts, Suffolk.

March 8, 1909

COUNSEL

Alfred Hemenway and J. W. Farley, for appellant.

Elder & Whitman, for appellee.

OPINION

BRALEY J.

By prior appropriation of the word 'Sunshine,' not as indicative merely of the quality of its goods, but as making plain their origin and its identity as the manufacturer of the stoves which under this name it has for many years made and sold in the market, the plaintiff was correctly held to have acquired a valid trade-mark which the law will protect from infringement. Regis v. Jaynes, 185 Mass. 458 459, 460, 70 N.E. 480, and cases cited; Lever Brothers v Pasfield (C. C.) 88 F. 484; Walter Baker Co. v Delapenha (C. C.) 160 F. 746. In their manufacture the plaintiff attached to the finished stoves a name plate bearing the word 'Sunshine,' with a descriptive adjective, and cast in connection with certain numerals either the full word, where the size of the casting permitted, or, if too small, the abreviation 'SS,' or 'S,' on the detachable parts. If these numerals designate the size of the covers, and dimensions of the oven, and indicate that the grate, or part which bears them, fitted, or was intended to fit, a 'Sunshine' stove with covers and oven of similar size, the office of the name or its abbreviation is not intended to describe the size, shape, or place of the grate or parts in the stove, or to distinguish one part from another as having a different function, but to denote the producer. While the finished stove when put upon the market is protected, the trade-mark embraces also the component parts from which it has been assembled. If an infringer who could not lawfully imitate and sell a complete 'Sunshine' stove, and represent it as having been made by the plaintiff, was permitted, instead, to make and vend to jobbers, and retail dealers, under such a representation, the various parts, including the frame, with the name, either in full or abbreviated, marked upon them by raised or impressed letters, upon the ground that, while the whole could not be pirated, the constituent parts might be, the protection and value of the plaintiff's trade-mark would be greatly impaired, if not wholly destroyed. Filley v. Fassett, 44 Mo. 168, 178, 100 Am. Dec. 275; Ford v. Foster, L. R. 7 Ch. 611, 623. Because of these distinctions the present case does not fall within Magee Furnace Co. v. Le Barron, 127 Mass. 115, and Deering Harvester Co. v. Whitman & Barnes Mfg. Co., 91 F. 376, 33 C. C. A. 558, on which the defendant relies.

It is conceded that some parts, especially the grates, wear out and have to be replaced frequently, and the making from original patterns of duplicates for such replacements comprises a very valuable portion of the plaintiff's business. The findings of the trial court state that at the date of filing the bill the defendant, as a manufacturing jobber, has 'been selling repair parts made by using originals as patterns, or as copies from which to make patterns, and it imitates those made by the plaintiff, including an exact imitation of the numbers, letters and adjective word.' It also is found to have sent out circulars or catalogues, representing that certain of the duplicates which it offered for sale were in fact made by the plaintiff, and the evidence shows, that on several occasions, the defendant filled orders for goods of the plaintiff's make with goods of its own manufacture. By the course pursued, the defendant infringed the trade-mark by representing and selling its goods as those of the plaintiff. Lawrence Mfg. Co. v. Lowell Hosiery Mills, 129 Mass. 325, 327, 37 Am. Rep. 362; Frank v. Sleeper, 150 Mass. 583, 23 N.E. 213; Regis v. Jaynes, 185 Mass. 458, 70 N.E. 480; Cohen v. Nagle, 190 Mass. 4, 76 N.E. 276, 2 L. R. A. (N. S.) 964; Flagg Mfg. Co. v. Holway, 178 Mass. 83, 59 N.E. 667; McLean v. Fleming, 96 U.S. 245, 24 L.Ed. 828; Perry v. Truefitt, 6 Beav. 66; Reddaway v. Banhan, [1896] A. C. 199, 204.

To obtain injunctive relief the plaintiff was not required to prove that customers had actually been deceived, or had bought parts sold by the defendant under the belief that they were the plaintiff's manufacture. American Tin Plate Co. v. Licker Roller Mills Co. (C. C.) 158 F. 690. It is sufficient if the resemblance is such that they are likely upon comparison to mistake one for the other. Collinsplatt v. Finlayson (C. C.) 88 F. 693; Vulcan v. Myers, 139 N.Y. 368, 34 N.E. 904; Avery & Sons v. Meikle & Co., 81 Ky. 73, 91; Edelsten v. Edelsten, 1 De G., J. & S. 195; Orr v. Johnson, L. R. 13 Ch. Div. 434. Nor is it material, where such deception appears, that retail dealers or individual customers alike are indifferent whether they buy the plaintiff's or the defendant's castings. Williamson Corset & Brace Co. v. Western Corset Co., 70 Mo.App. 424; Lever v. Goodwin, 36 Ch. Div. 1. It is the attempt to dispose of its goods by representing them as made by the plaintiff which constitutes the wrong, and not the indifference of the purchaser as to whose product he is buying, or lack of appreciation of the superiority of the plaintiff's articles, Regis v. Jaynes, 185 Mass. 458, 462, 70 N.E. 480; New England Awl & Needle Co. v. Marlborough Awl & Needle Co., 168 Mass. 154, 155, 46 N.E. 386, 60 Am. St. Rep. 377; George G. Fox Co. v. Glynn, 191 Mass. 344, 349, 78 N.E. 89, 9 L. R. A. (N. S.) 1096, 114 Am. St. Rep. 619; Vulcan v. Myers, 139 N.Y. 368, 34 N.E. 904; McLean v. Fleming, 96 U.S. 245, 24 L.Ed. 828; Menendez v. Holt, 128 U.S. 514, 9 S.Ct. 143, 32 L.Ed. 526; Elgin Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 S.Ct. 270, 45 L.Ed. 365; Saxlehner v. Neilsen, 179 U.S. 43, 21 S.Ct. 16, 45 L.Ed. 77; Ford v. Foster, L. R. 7 Ch. 611, 623; Singer Machine Manufacturers v. Wilson, 3 App. Cas. 376; Cellular Clothing Co. v. Maxton, [1899] A. C. 326, 334. In Singer Manufacturers v. Wilson, 3 App. Cas. 376, 391, Lord Chancellor Cairns said: 'A man may take the trade-mark of another ignorantly, not knowing it was the trade-mark of the other, or he may take it in the belief, mistaken, but sincerely entertained, that in the manner in which he is taking it he is within the law, and doing nothing which the law forbids, or he may take it knowing it is the trade-mark of his neighbor, and intending and desiring to injure his neighbor by so doing. But in all the cases * * * the injury to the plaintiff is just the same.' The defendant by the course which it pursued could not have been ignorant of the probable consequences, for the retail dealers to whom it sold would put out the parts as having been made by the plaintiff, and the retail customer who bought a casting from the defendant to fit his 'Sunshine' stove would also be misled, even if ignorant of the deception. Lever v. Goodwin, 36 Ch. Div. 1.

The plaintiff, moreover, had the exclusive right to the use of its trade-mark, and an infringement having been proved, the suit can be maintained for an injunction, as the defendant would not be exonerated, even if it had acted innocently. New England Awl & Needle Co. v. Marlborough Awl & Needle Co., 168 Mass. 154, 46 N.E. 386, 60 Am. St. Rep. 377; Viano v. Baccigalupo, 183 Mass. 160, 164, 67 N.E. 641; McLean v. Fleming, 96 U.S. 245, 254, 24 L.Ed. 828; Regis v. Jaynes, 191 Mass. 245, 248, 77 N.E. 774; Elgin Watch Co. v. Illinois Watch Case Co., 179 U.S. 679, 21 S.Ct. 270, 45 L.Ed. 365; Saxlehner v. Siegel, Cooper Co., 179 U.S. 42, 21 S.Ct. 16, 45 L.Ed. 77; Beebe v. Tolerton & Stetson Co., 117 Iowa, 593, 91 N.W. 905; Saxlehner v. Appolinaris Co., [1897] 1 Ch. 983. But while an injunction should be granted the decree must be limited to restraining the defendant from putting out without the plaintiff's sanction stove parts under the name 'Sunshine,' whether the word is used in full, or abbreviated by the letters 'SS' or 'S,' but leaving it free to make and vend as its own product all the parts with the marks omitted. Magee Furnace Co. v. Le Barron, 127 Mass. 115; Edison Mfg. Co. v. Gladstone (N. J. Ch.) 58 A. 391; Tarrant & Co. v. Hoff, 76 F. 959, 22 C. C. A. 644; Baker v. Baker (C. C.) 87 F. 209, 211; Rushmore v. Manhattan Screw & Stamping Co. (C. C. A.) 163 F. 937, 938; Ford v. Foster, 7 Ch. 611, 634.

The plaintiff also asks for an accounting of profits, which were not gone into at the trial, as it was understood by counsel and the court that, if entitled to them, a master was to be appointed to state the account. In Regis v. Jaynes, 191 Mass. 245, 248, 77 N.E. 774, 776, it was said by Mr. Justice Sheldon: 'There is some conflict in the decisions, but we think the weight of modern authority is in favor of the rule that an account of profits will not be taken where the wrongful use of the...