The Collins Co. v. Oliver Ames & Sons Corp.

• Decision Date: 03 July 1882
• Citation: 18 F. 561
• Parties: THE COLLINS CO. v. OLIVER AMES & SONS CORPORATION.
• Court: U.S. District Court — Southern District of New York

18 F. 561

THE COLLINS CO. v. OLIVER AMES & SONS CORPORATION.

United States Circuit Court, S.D. New York.

July 3, 1882

BLATCHFORD Justice.

Prior to May, 1834, Samuel W. Collins, David C. Collins, and John F. Wells, as copartners under the name of Collins & Co., had been carrying on, in the state of Connecticut, the business of making and selling axes and other edge-tools. They have been in the habit of using as a trade-mark the words 'Collins & Co.' stamped on the articles which they made. They failed in business. In May, 1834, the legislature of Connecticut created a corporation by the name of 'The Collins Manufacturing Company,' to be located in the town of Canton, in that state, 'for the purpose of manufacturing edge-tools. ' In October, 1834, the copartners in said firm assigned to said corporation 'the reputation and good-will of the business heretofore carried on by the said firm of Collins & Co., of manufacturing and vending axes and other edge-tools, also the right to stamp the name of Collins & Co. on the articles manufactured by the said corporation. ' From that time until April 3, 1835 the corporation had Samuel W. Collins and David C. Collins in its employ. On the latter date each of those persons executed an agreement with the corporation, whereby he agreed to continue in its employ for five years from September 27 1834, and it agreed to employ him for that time, and he assigned to the corporation 'the reputation and good-will of the business heretofore carried on by Collins & Co., of manufacturing and vending axes and other edge-tools, also the sole and exclusive right to stamp the name of Collins & Co. Hartford, on the articles manufactured by said corporation,' and he agreed not to sell any axes or other edge-tools having on them the name of Collins or Collins &amp Co., except such as should be made by said corporation, its successors or assigns. The consideration of each agreement was an annual salary, and certain shares of the capital stock of the corporation. In May, 1843, the legislature of Connecticut altered and enlarged the charter of the corporation, so that it should have 'power to manufacture iron and steel, and other metals, and any articles composed of said metals, or either of them,' and enacted that the name of the corporation should be 'The Collins Company,' instead of 'The Collins Manufacturing Company,' these provisions being conditioned on their acceptance by the corporation at a future meeting of the same, duly convened. In October, 1844, such a meeting was duly convened, and at it the stockholders accepted the said alterations of the charter. The capital of the corporation was originally $300,000. The legislature increased it in 1863 to $500,000, and in 1866 to $1,000,000.

The factories of the corporation have always been at Collinsville, in the town of Canton, in Hartford county, Connecticut, about 16 miles from Hartford. The manufacturing business of the old firm of Collins & Co. had been carried on at Collinsville. It had an office in Hartford. The charter of the corporation was obtained for the benefit of the creditors of the firm, and the property of the firm passed into the possession of the corporation, and became a part of its capital stock.

The complaint in this suit alleges that the plaintiff corporation has, from its organization, been engaged in making 'axes, hatchets, adzes, picks, and other agricultural and mechanical tools and implements;' that it has always used as its trade-mark the name of 'Collins & Co.,' but has placed and now places that name upon such goods only as have obtained a high standard of excellence; that said trade-mark name was intended to and did inform purchasers that the goods upon which it appeared were of the manufacture of the plaintiff exclusively; that its goods, made at Collinsville, have been and are almost exclusively sold on commission in the city of New York, by a firm there called Collins & Co., which has existed since 1849; that the goods of the plaintiff 'have been and are sold in large quantities in all parts of this country, in Mexico, in most countries of South America, and in the West India islands, in England, Germany, Russia, and other countries of Europe, and also in parts of Asia and Africa, and in Australia; that the plaintiff, for more than 30 years last past, has gradually increased and extended its manufacture from 'axes, hatchets, broad-axes, picks, mattocks, and other similar tools and implements, ' 'so as to include therein other mechanical and agricultural tools and implements, such as hoes of various descriptions, machetes, and other cane-cutting implements for use in the West Indies and South America, and also, about the year 1857, special implements and tools for digging Peruvian guano, and, soon afterwards, other implements and tools, such as spades and plows; ' that, for more than 10 years last past, it has made and sold shovels of various forms, patterns, and descriptions, and its trade, especially for export, in such shovels, has been and is now successful and profitable; and that the best qualities of the said tools and implements of the plaintiff's manufacture have been and are stamped or branded with the said name and words 'Collins & Co.,' and the shovels so made and sold by it have been and are now stamped or branded and labeled with the said name and words 'Collins & Co.'

The defendant is a corporation created by the state of Massachusetts, having its factories at North Easton, in that state, and largely engaged in making shovels, spades, scoops, and other similar implements and tools. The complaint alleges that, in the autumn of the year 1879, the plaintiff for the first time discovered that shovels had been and were being sold in the city of New York, having stamped or branded upon the iron the name and words 'Collins & Co.,' 'Cast Steel,' and that upon the handles thereof were pasted or fastened labels, which had the following words printed or engraved thereon: 'Best Cast Steel, Manufactured and Warranted by Collins & Co., North Easton, Mass., U.S.A.;' that the said shovels were in fact made and so stamped or branded and labeled by the defendant, and not by the plaintiff; and said shovels were sold by the defendant in the city of New York; that the statement and representation contained in and made by said stamps or brands and labels, that the said shovels were made by 'Collins & Co.,' is false; that no such firm as 'Collins & Co.' is or has been engaged in any such manufacture at North Easton, Massachusetts; that no firm in the country, in the same business, bears the name of 'Collins & Co.' other than that represented by the plaintiff, or its said commission house of Collins & Co. of New York; that the shovels made by the defendant, and so branded, stamped, and labeled 'Collins & Co.,' have been and are now being sold by it in the city and state of New York, and elsewhere in the country, and considerable quantities thereof have been exported to foreign countries, such as Australia, South Africa, and elsewhere; that the use of the name of 'Collins & Co.' on shovels or any other articles by the defendant is unauthorized; that said name has been taken and is so used by the defendant to induce purchasers to believe that said goods were and are made by the plaintiff; that the effect of such use and misrepresentation by the defendant is also to defraud the plaintiff in its trade, and to injure its reputation; that in December, 1879, the defendant was requested by the plaintiff to discontinue the use of the name of 'Collins & Co.' on shovels, tools, and implements made and to be made by the defendant, but it refused to do so; that the defendant makes and sells shovels with the name of 'Collins & Co.' thereon, and said shovels are of an inferior quality to those of the plaintiff, and also of an inferior quality to those of the defendant upon which it uses its own name, and the reputation and trade of the plaintiff are injured by the said acts of the defendant; and that the plaintiff has thereby sustained damages to a large amount. The prayer of the complaint is that the defendant be enjoined from stamping or branding the name or words 'Collins & Co.' or 'Collins' on any shovels or implements of its manufacture, and from placing any labels with the name or words 'Collins & Co.' or 'Collins' on any shovels or implements of its manufacture, and from selling or disposing of any shovels or implements with the name 'Collins & Co.' or 'Collins' thereon, and from using in any manner the name or words 'Collins & Co.' or 'Collins' as a trade-mark upon any shovels, implements, or other articles, and from using in any manner the plaintiff's trade-mark of 'Collins & Co.' or the name of 'Collins.' It also prays for an accounting and for $10,000 damages. This suit was brought in the supreme court of New York, and was removed into this court. The complaint was put in in the state court. The answer and the replication to it were put in in this court. The answer states that it treats the complaint as a bill of complaint.

The answer denies that the reputation of any goods of the plaintiff's manufacture has been injured or impaired by any imitation or infringement by the defendant, and that the defendant has imitated or infringed any of the goods or marks or trade-marks of the plaintiff. It avers that the defendant and its predecessors are, and have been for upwards of 75 years, largely engaged in the business of manufacturing shovels, spades, scoops, and similar implements and tools. It admits and avers that, in the autumn of 1879, as well as for upwards of 23 years before that time, shovels of the manufacture of the defendant and its predecessors were being and had been sold in the city of New York, having stamped or branded...