Williams v. Mitchell

• Decision Date: 02 January 1901
• Docket Number: 658,659.
• Citation: 106 F. 168
• Parties: WILLIAMS et al. v. MITCHELL et al. MITCHELL et al. v. WILLIAMS et al.
• Court: U.S. Court of Appeals — Seventh Circuit

106 F. 168

WILLIAMS et al. v. MITCHELL et al.

MITCHELL et al. v. WILLIAMS et al.

Nos. 658, 659.

United States Court of Appeals, Seventh Circuit.

January 2, 1901

George P. Fisher, for appellant Edgar L. Williams and another.

John G Elliot, for appellee J. A. Mitchell and another.

These appeals are from the decree in a suit for injunction against infringement of trade-mark No. 29,775, brought by J. A Mitchell, C. E. Mitchell, and Henry L. Haskell, co-partners under the name of Ludington Novelty Works, against Edgar L Williams and Matilda J. Williams, husband and wife, and co-partners under the name of Archarena Company. The trade-mark, intended for application to 'games or game boards,' as set forth in the statement, 'consists of the arbitrarily selected word 'Carroms.' ' The court found and decreed as follows: '(1) That the word 'Carroms,' 'Carrom,' or 'Carom,' set forth as a trade-mark in certificate of registration of the United States No. 29,775, issued April 6, 1897, is descriptive, and that complainants are not entitled to exclusively monopolize the said word as a trade-mark for game boards; (2) that defendants have imitated the complainants' advertisements published with reference to the game and game board referred to in the certificate of registration, and said defendants have been guilty thereby of deceiving purchasers and the public into believing the game boards of defendants' make to be the game boards made by the complainants; (3) that said defendants, their agents, employes, servants, and representatives be, and they are hereby, perpetually enjoined from using the word 'Carroms,' or 'Carom,' or any equivalent thereto, in advertisements, illustrations, and representations in relation to game boards, without clearly and unmistakably stating in all said advertisements, illustrations, and representations that the game boards are made by the defendants, as distinguished from the game boards made by complainants, and the said defendants, their agents, officers, employes, servants, and representatives be, and they hereby are, particularly enjoined from publishing or causing to be published the cuts and advertisements comprising complainants' exhibit 'Page 624, McClurg's Catalogue,' the cut or representation of a game board shown in complainants' exhibit 'Defendants' Circular Letter,' and the cut or representation of a game board shown at the top of the first page of the rules in complainants' exhibit 'Defendants' Rules,' and all and any similitudes or imitations of the said cuts and advertisements, all of record herein, without distinguishing the same as aforesaid, and that such writ of injunction issue herein; (4) that complainants have and recover of the defendants the costs of this suit to be taxed; (5) that motion of complainants for a reference, to determine the damages sustained by them by reason of past unfair competition, is denied. ' This decree was entered on June 7, 1899, and on ensuing 15th, in response to the petition of the appellants for a construction thereof, the court ordered as follows: '(1) enjoin defendants, their agents, employes, servants, or representatives, from using the word 'Carroms,' 'Carrom,' or 'Carom,' or any equivalent thereto, so long as said words are used in a purely and properly descriptive manner. (2) The defendants may rightfully use the 'Exhibit Defendants' New Rules,' without change, and that defendants may rightfully use 'Defendants' Exhibit Defendants' New Illustration,' and the descriptive matter accompanying said illustration, after the word 'Carrom,' occurring upon the third line of said descriptive matter, has been erased therefrom.'

The assignment of errors in behalf of the principal appellants contains the following specifications: '(1) It was error to hold that defendants had been guilty of unfair trade competition by the use of advertisements and illustrations designated in said decree. (2) It was error to hold that defendants had been guilty of unfair trade competition by the use of any advertisements, descriptive matter, or illustrations by said defendants employed. (3) It was error to grant an injunction enjoining and restraining these defendants from publishing or causing to be published said advertisements, descriptive matter, to deny to defendants the right to use the descriptive matter accompanying 'Defendants' Exhibit Defendants' New Illustration' without first erasing from said descriptive matter the word 'Carrom,' occurring upon the third line thereof. (5) It was error to decree that complainants recover of defendants the costs, charges, and disbursements of this suit. (6) It was error not to dismiss the bill of complaint at complainants' cost.'

Before WOODS and JENKINS, Circuit Judges, and SEAMAN, District Judge.

PER CURIAM.

During the term at which a decree is rendered it is, of course competent for a party to ask a modification; but a construction of the decree in respect to matters outside the issues it is irregular to ask or to grant. The party however, who invokes such action may not question the result merely because of the irregularity of practice. In respect to the first and second specifications of error, which are directed to questions of fact only, it is enough to say that the evidence in the record, except as stated below, justifies the finding of the circuit court. The third specification is meaningless, because the second paragraph of the decree is a finding of fact only, and enjoins nothing. The third paragraph, to which the reference was probably intended, seems to be the logical result of the preceding findings; but, if any part of it was thought to be objectionable, that part should have been made the subject of a separate and specific assignment. As originally entered, however, the third paragraph did not remain in force. It was modified by the later order, and if, by asking the last action, the appellants did not waive all objection to the original decree, they certainly lost the right to object to it except as modified, and any assignment of error upon it should have included the modification. But one objection is urged to the modifying order, and, to the two decrees considered as one, that objection therefore seems to be the only...