William Rogers Mfg. Co. v. Rogers & S. Mfg. Co.

• Decision Date: 22 April 1882
• Parties: WILLIAM ROGERS MANUF'G CO. v. ROGERS & SPURR MANUF'G CO.
• Court: U.S. District Court — District of Massachusetts

11 F. 495

WILLIAM ROGERS MANUF'G CO. v. ROGERS & SPURR MANUF'G CO.

United States Circuit Court, D. Massachusetts.

April 22, 1882

F Chamberlain and O. H. Platt, for complainants.

T. W Clark and B. S. Parker, for defendant.

LOWELL C.J.

The plaintiffs allege that one William Rogers, of Hartford, had been a skilful manufacturer of silver-plated ware long before 1865, and had acquired a high and valuable reputation; and in that year a copartnership was formed between one Birch and one Pierce, who agreed with William Rogers that the firm should be called the William Rogers Manufacturing Company and agreed with him and his son, William Rogers, Jr., that they might adopt and use as trade-marks, '(anchor) Wm Rogers & Son,' and '1865, Wm. Rogers Mfg. Co.,' and that they were so used until 1872, when the present corporation was formed, and bought all the stock, good-will, etc., of the firm; that the two companies, successively, have used these trade-marks, from 1865 to the time of filing the bill, by stamping them upon their goods, and have taken great pains with the manufacture of the plated spoons, forks, and knives which they have put upon the market, and thus their goods have become favorably and extensively known as the 'Rogers' and 'Rogers & Son' goods, and are inquired for by these names; that both these names are of great value and distinguishing appellations in the trade, and the spoons, forks, and knives so stamped have acquired and possess a special value; that on or about January 1, 1880, Lorenzo Spurr and George W. Spurr, associated as George W. Spurr & Co., manufacturers of silverware, at Greenfield, knowing the premises, combined and confederated with David C. Rogers and George E. Rogers, a son of said David, to cheat and defraud the complainants by stamping their spoons, forks, and knives with the names, 'Rogers' and 'Rogers & Son' and 'Rogers & Son (with an arrow,) Greenfield, Mass.;' and that in February, 1881, the said George W. Spurr, David C. Rogers, and George E. Rogers, with others, formed the defendant corporation, with the intent to make, and that said corporation has made and sold, spoons, forks, and knives stamped Rogers & Son, Greenfield, Mass., (with an arrow;) that those stamps are not distinguished by ordinary purchasers, using ordinary care, from the stamps of the plaintiff company; that they make and sell inferior goods; that they adopted their pretended trade-marks in order to deceive purchasers.

The prayer of the bill is for an account; an injunction against the use of the trade-marks set out in the bill, or any other stamp having the word 'Rogers' or 'Rogers & Son' as the whole or part thereof upon silver-plated forks, knives, and spoons; and for general relief.

The answer denies all the allegations of the bill as to the plaintiffs' title, and charges that the complainants deceived the public by pictures, advertisements, etc., representing their wares to be the veritable manufacture of William Rogers and William Rogers, Jr.; admits the use of the trade-mark Rogers & Son, (with an arrow,) but denies that it can deceive the public.

The evidence on both sides proves that there were three brothers Rogers in Connecticut, who were honest and skilful silver-platers,-- among the first, if not the first, in this country to adopt the electrotyping process; that they failed in business and afterwards severally gave the use of their name, for value, to two or three different companies in Connecticut, and assisted them in the manufacture for a longer or shorter time. These companies are now friendly, as I understand, and have long used trade-marks, three of which still survive, viz., 'Rogers Bros.,' 'Rogers & Bro.,' and 'Wm. Rogers & Son,' with an anchor, which are used by these several manufacturers respectively; the last by the plaintiffs only. The title of the Meriden Company to use one of them was established in Meriden Britannia Co. v. Parker, 39 Conn. 450.

The firm called the William Rogers Manufacturing Company, predecessors of the plaintiff corporation of the same name had an arrangement with William Rogers (one of the three brothers) and his son for the use of the name, and William Rogers was a silent partner and had charge of the plating. This connection, which was to have lasted for a long time, was terminated in two years, for reasons not necessary to be considered here. The father and son then advertised and wrote letters and circulars declaring themselves the sole owners to the trade-mark, 'Wm. Rogers & Son,' and were restrained by the court from continuing such publications and announcements; and the son having violated the injunction was punished. The whole record of this case is in evidence. A part of it is reported in William Rogers Manuf'g Co. v. Rogers, 38 Conn. 121. Since that time no one has disturbed the plaintiffs in the use of their trade-marks; and for this reason it is immaterial to enter into the merits of that controversy. The right to use a trade-mark is, above all other rights, one which depends upon use.

All those companies whose trade-marks were originally derived from the brothers Rogers have maintained a remarkably good standard of merit in their manufactures, so that all plated spoons, etc., marked 'Rogers,' or known as 'Rogers' goods, command a superior price. The plaintiffs' goods are not known as 'anchor,' but as 'Rogers' and 'Rogers & Son' goods.

There is no doubt that George W. Spurr, a silver plater of Greenfield, intended to obtain some of the value of the Rogers name, and that with this object he paid a royalty of five cents a dozen to D. C. Rogers & Son for the use of their trade-mark from August, 1880, to January, 1881; then he organized the defendant company, who agreed to pay D. C Rogers and E. C. Rogers at the rate of four cents a dozen for 25,000 dozen, for the use of the trade-mark, but would make no final agreement until this suit should be decided. The history of this trade-mark is that D. C. Rogers and George E. Rogers applied in February, 1879, to the patent-office to register under the act of congress a trade-mark consisting of the words 'Rogers & Son,' with an arrow. In the sworn application or 'statement and declaration' required by law they represented themselves as doing business at Greenfield, Massachusetts, under the firm name of Rogers & Son, and declared that they intended to use the trade-mark upon table cutlery, knives, forks, etc. Mr. Grinnell, of Greenfield, whom D. C. Rogers consulted upon the subject, asked him the pertinent question whether he intended to use this trade-mark himself or merely to trade upon; and he answered that he intended to use it in the manufacture of goods himself; and the application to the patent-office conforms to this answer. But what the father and son did was to trade...