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LAWRENCE MFG. CO. V. TENNESSEE MFG. CO., 138 U. S. 537 (1891)
U.S. Supreme Court
Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U.S. 537 (1891)
Lawrence Manufacturing Company v. Tennessee Manufacturing Company
Argued December 3, 1890
Decided March 2, 1891
138 U.S. 537
An exclusive right to the use of words, letters or symbols, to indicate merely the quality of the goods to which they are affixed cannot be acquired.
If the primary object of a trademark be to indicate origin or ownership, the mere fact that the article has obtained such a wide sale that it has also become indicative of quality is not of itself sufficient to make it the common property of the trade, and thus debar the owner from protection; but if the device or signal was not adopted for the purpose of indicating origin, manufacture or ownership, but was placed upon the article to denote class, grade, style or quality, it cannot be upheld as technically a trademark.
Unfair and fraudulent competition against the business of another, with intent on the part of the offender to avail himself of the reputation of the other in order to palm off his goods as the goods of the other, would in a proper case constitute ground for relief in equity, but the deceitful representation or perfidious dealing must be made out or be clearly inferable from the circumstances.
Canal Company v. Clark, 13 Wall. 311, quoted, approved and applied.
This was a bill of complaint filed by the Lawrence Manufacturing Company, a corporation of Massachusetts, against the Tennessee Manufacturing Company, a corporation of Tennessee, in the Circuit Court of the United States for the Middle District of Tennessee, alleging that plaintiff had been and was engaged in the manufacture and sale of sheetings; that in said trade, several standards or classes of goods were generally recognized, the first of which included sheetings of such weight that two and eighty-five one-hundredths yards thereof would weigh a pound, the second sheetings of such weight that three yards would weigh a pound, and the third sheetings of such weight that four yards would weigh a pound; that prior to the year 1870, the plaintiff
"adopted, and thereupon
became duly vested with the exclusive right to use, a label or trademark for all goods of its manufacture coming within said third class to distinguish sheetings of its manufacture from sheetings of the same general class manufactured by others, the substantive, distinctive, and chief feature of which label was and is an arbitrary sign or symbol, consisting of the capital letters 'LL' prominently and separately appearing upon such label or stamp; that said trademark, with certain environments, which have been changed from time to time, has been so used by complainant since said date of adoption, and, to-wit, for more than fifteen years, and has been imprinted upon each and every piece or bolt of such sheetings of said third general class made and sold by complainant during said period;"
that said trademark was so adopted by plaintiff for the purpose of distinguishing sheetings of its manufacture of the third general class from similar goods manufactured by others; that in connection with the trademark or substantive element of said label, under and in connection with which the trade reputation of plaintiff had been established, plaintiff had used the words "Lawrence Mills" and the word "sheetings" in different juxtapositions, and also at times a picture or representation of a bull's head, and at other times a picture or representation of a "bull rampant," and in connection therewith, and underneath the same, and in a separate position, has always used said capital letters "LL" as and for the purpose aforesaid; that plaintiff had earned and acquired a trade reputation of great value as manufacturers of sheetings under its trademark, with the result that sheetings of the third general class of plaintiff's manufacture had come to be universally known as "LL Sheetings,"
"and sheetings so known, named, and called for import the excellent raw material, the method and care of manufacture, and the general guarantee of excellence and lasting quality for which your orator has a long, valuable, and thoroughly established reputation as to all goods of its manufacture;"
that since plaintiff became vested with the exclusive right to the use of the trademark -- namely, from the 1st of January, 1884, to the present time -- the defendant had been manufacturing and selling large quantities
of sheetings of said third general class, upon which, and for the purpose of taking advantage of plaintiff's trade label, trademark, and trade reputation, defendant had placed a stamp or label in imitation of the stamp or label of plaintiff, and so in imitation thereof as to tend to deceive the public, and had upon its said stamp or label on its sheetings printed or stamped the capital letters "LL," prominently and separately from the other parts of its label; that the acts and doings of the defendant tended to deceive the public and to constitute a fraud upon them as well as upon the plaintiff, and that the appropriation and wrongful use of the letters "LL" was for the purpose and with the tendency and effect of appropriating a part at least, of the goodwill and trade reputation of the plaintiff, wherefore plaintiff prayed for an injunction, and for an account of all gains and profits realized by defendant, and for damages.
The answer admitted that in the trade of sheetings there were several recognized classes, based upon the difference in weight of the goods per yard, and among them four classes running 2.85, 3, 4, and 5 yards to the pound, and that the products of different manufacturers, though coinciding in the standard of weight, differed in texture and durability. Defendant denied that either prior to 1870 or at any other time plaintiff adopted and thereupon became duly vested with the exclusive right to use a label or trademark upon all goods of its manufacture coming within the third class having as its substantive, distinctive, and chief feature a symbol consisting of the capital letters "LL" prominently and separately appearing on such label or stamp, and denied that at the time alleged, or before or since, plaintiff adopted or had used such symbol for the purpose of distinguishing sheetings of its manufacture from similar goods manufactured by others. Defendant admitted that plaintiff had used the letters "LL" upon sheetings of the third class, and had also impressed upon the goods "Lawrence Mills" and the word "sheetings," and at times the representation of a bull rampant, but charged that the words "Lawrence Mills" were used to designate that the goods were made by plaintiff and
to distinguish its manufacture from sheetings of the third class made by others, and that the representation of the bull and the words "Lawrence Mills" constituted plaintiff's trademark, if it had any, and that the letters "LL" were used solely to denote the class or grade of sheetings upon which they were impressed. Defendant denied that sheetings of the third class of plaintiff's manufacture were universally known as "LL Sheetings," but asserted that it was generally understood in the trade and by consumers that the capital letters "LL" are placed on sheetings weighing one-fourth of a pound to the yard to designate those of that class, and that they are thus used in common by all manufacturers of sheetings of this weight; that plaintiff's sheetings thus stamped are known in the trade as "Lawrence LL Sheetings," and defendant's are known as "Cumberland LL Sheetings," and that the same class of goods of other well known makers in the United States are marked "LL," and recognized and distinguished according to their respective trademarks denoting origin, as "Aurora LL," "Buckeye LL," "Beaver Dam LL," and many others; that plaintiff manufactures, besides the Lawrence LL sheetings, sheetings of the same weight and class but of a different quality, and brands them "Shawmut," with the addition of the capital letters "LL," so that purchasers buying LL sheetings, made by plaintiff, are forced to designate the quality desired by ordering "Lawrence LL" or "Shawmut LL," as the case may be. Defendant admitted that since April, 1885, it had stamped upon its cotton goods weighing one-fourth of a pound to the yard the words "Cumberland" and "sheetings" in horizontal lines, with the figures "4-4" beneath them, and with the capital letters "LL" below the figures "4-4;" that the word "Cumberland," from the river near which its works are located, was used to designate its manufacture, and as a trademark, the word "sheetings," to signify the general character of the goods; that the letters "LL" were used to denote the class to which the letters belonged, and the figures "4-4" to indicate that the goods were one yard wide, but denied that for the purpose of taking advantage of plaintiff's trade, it had placed on the said goods a stamp or label
in imitation of plaintiff's stamp or label with intent to and with the effect of deceiving the public, and denied that its stamp or label bore any resemblance to that of the plaintiff, or that even the most casual observer would take the one for the other, and denied that it had sold with the stamp or label designated goods of less weight than it claims the said letters indicate, with the qualification that there may exist slight variations above or below the standard, mathematical exactness not being uniformly attainable by any manufacturer, and such variations existing in plaintiff's goods. Defendant averred that plaintiff could not lawfully set up any claim to the exclusive use of the capital letters "LL" as a trademark, for they did not indicate any ownership of the goods upon which they are impressed and did not have the characteristics for making them a lawful trademark, and, standing alone, conveyed no meaning, while the words "Lawrence Mills," used on plaintiff's labels, indicated the origin of said goods, and plainly advertised that they were made by plaintiff. Defendant further stated that before plaintiff used the letters "LL," they were stamped and used by the Atlantic Mills, in the United States, on a grade of sheetings manufactured by them, and said letters had never been by the trade and general public accepted as a trademark of plaintiff or as forming an element of the same, but their accepted signification was that they represented a class of goods, and not origin or ownership.
Replication having been filed, the cause came on for hearing April 28, 1887, before Judge Jackson upon the pleadings and voluminous depositions taken by the respective parties, and resulted in a decree dismissing the bill. The opinion of the circuit court will be found in 31 F. 776.
In a painstaking review of the evidence, the circuit court stated the facts to be that, prior to 1867, plaintiff branded its four-yard sheetings with a picture of a bull in a rampant position in connection with the words "Lawrence Mills," and the single capital letter "L;" that in 1867, plaintiff added another capital letter "L," at which time plaintiff was a well known manufacturing company, and had manufactured and sold large
quantities of four-yard goods; that in 1883 plaintiff substituted for the bull rampant the bull's head; that since 1867 plaintiff had put upon the market continuously a sheeting of the same weight as its third-class goods of first quality, but inferior to and of less value than the former, which it branded "Shawmut LL Sheetings," and that it made two other kinds of brown sheetings graded according to weight, one of which is stamped "XX" and the other "XXX," to denote distinction in grade; that plaintiff had for many years advertised its sheetings in a well known dry goods advertising periodical, heading its advertisement with the picture of a bull's head, the words "Lawrence Mills" and the letters "XX," "XXX" and "LL;" that plaintiff made flannels and denims on which it used the picture of a bull's head and the words "Lawrence Mills," as on the four-yard sheetings, but not the letters "LL;" that letters of the alphabet have for many years been employed by manufacturers to designate grades and qualities of goods, and almost the entire alphabet is so used, and it is understood generally in the cotton goods trade that letters are thus used to designate grade, class, or quality; that it was also generally understood in the trade that "LL," as stamped on plaintiff's sheetings, meant four-yard goods, and that the words "Lawrence Mills," in connection with the bull's head, were used to indicate the maker; that these goods were always invoiced by plaintiff as "Lawrence" or "Lawrence Mills" LL, and were thus generally known in the trade, except that in some instances persons who have been more familiar with them, or have handled them exclusively, called them simply "LL's," thereby meaning the sheetings made by the Lawrence company, but usually said sheetings were described as "Lawrence LL" or "Lawrence Mills LL," just as other sheetings stamped with "LL" were generally known in the trade and spoken of as "Beaver Dam LL," "Badger State LL," "Aurora LL," "Cumberland LL," etc.; that the signification of the letters "LL" stamped upon cotton sheeting, as indicative of grade, class, and quality, was generally understood in the trade when defendant commenced the use of said letters in 1885; that the Atlantic Mills of Lawrence, Massachusetts, stamped the letters
"LL" upon brown sheetings of its manufacture in the years 1860, 1862, 1864, and 1865, and from 1872 down to the present time; that there were cessations in the manufacture of said goods by the Atlantic Mills from time to time between 1860 and 1865, and between 1865 and 1872 none were thus stamped; that the weight of the Atlantic goods made in 1860 and stamped with the letters "LL" was 4.19 yards to the pound; that in 1862 the goods so stamped weighed 4.36 yards to the pound, and in 1863, 1864, and 1865 their weight was 4.56 yards to the pound; that in 1872, when the Atlantic Mills had again commenced placing the "LL" on its sheetings, they weighed, and ever since have weighed, five yards to the pound; that the Atlantic Mills, in 1860, made a grade of brown sheetings that weighed 3.89 yards to the pound, and which it stamped with the single "L;" that the Atlantic Mills employed said letters to distinguish between different grades of goods, and has continued to use letters for that purpose; that it is fairly deducible from the evidence that the Atlantic "LL" cotton sheetings were in the market in 1867; that the Atlantic goods were and are of the same general character and class as those upon which plaintiff stamps "LL," and they are so nearly alike to the "Lawrence LL" that ordinary buyers, and even experts, cannot by looking at them distinguish them from each other; that they are both used for the same general purpose, and compete with each other; that, looking only at the letters "LL," purchasers would as readily mistake "Shawmut LL" for "Lawrence LL" sheetings as they would "Cumberland LL" sheetings; that John v. Farwell & Co. have for several years been using a private brand for sheetings known in the trade as "Albany LL," and in 1884, and with full knowledge of this fact, plaintiffs stamped for Farwell & Co. four-yard sheetings with the label "Albany LL," the stamp being furnished by Farwell & Co., and returned to them with the goods, which were sold in the market as John V. Farwell & Co.'s "Albany LL. sheetings;" that plaintiff had all the while known of the Atlantic Mills using the "LL" on its goods, and for more than six years before the commencement of this suit had been aware of the fact that numerous other
manufacturers had been stamping said letters on their four-yard cotton sheetings, and that it never objected until about the time of the bringing of this suit and one of a like character against the Aurora Cotton Mills at Chicago; that it did not appear that the brand of defendant had ever been mistaken for that of the plaintiff; that it was not shown that plaintiff, when it commenced using the letters "LL" on its third-class goods, adopted them for the purpose of making them its trademark or any substantial or material part thereof, nor that the single L, used prior to 1867, constituted in whole or in part its trademark; that the Atlantic Mills were using the single L on one grade or class of goods merely to indicate quality, from 1862 up to 1868; that under the proof it was clear that the purpose and design of the change from L to LL was not to indicate origin or ownership or to distinguish the sheetings on which said letters were stamped from similar goods manufactured by others, but that its primary object was to denote its class, quality, or grade, and to represent it to the public as being different goods, in class and quality, from those primarily sold by plaintiff under the single L stamp.
The circuit court quoted from the evidence of plaintiff's agent that the LL was adopted
"because it was a time when cotton goods were depreciating. We had made considerable sales of the single L, but a party who had bought a large lot was underselling us at a price lower than we could afford to meet, and I suggested that in order to keep them out of this competition, the mills should change the fold of the single L from a narrow to a wide fold, and put on a double L."
The court held that the letters were not only originally used by plaintiff to indicate the grade of the sheetings on which they were stamped, but to convey the impression that they were different goods from those it had previously sold, and that they could not constitute a valid trademark, such as would give plaintiff the exclusive right to use them on third-class sheetings weighing one-quarter of a pound to the yard; that it might well be doubted whether letters by themselves
or in combination could be employed to represent both the grade and quality of goods and their origin, thus performing at the same time the double office of a trademark and a description or classification of the article to which they were affixed, and be sustained as affording an exclusive right to the use of the device as a trademark, which would come into collision with the right of the public to use the letters in their other meaning. But that question was left undetermined, since the court concluded that the letters only indicated grade, class, or quality, and not origin, ownership, or manufacture. The court also held that the Atlantic company so used the letters before their adoption by plaintiff as to preclude the latter from acquiring a valid trademark therein, and that the putting upon the market of an inferior quality of cotton sheeting weighing four yards to the pound, and branded "Shawmut LL," equally warranted the use of the letters by the defendant and prevented plaintiff from claiming injury to its trade by such use. The court found further that the plaintiff was not entitled to relief on ground that its label, or a distinctive part thereof, was being simulated by defendant so as to impose its goods upon the public as those of the plaintiff, since defendant had been guilty of no fraudulent intent, and had in no way either deceived the public or defrauded the plaintiff.
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