
    Brill vs. Singer Manufacturing Company.
    1. Where a patented machine becomes known to the public by a distinctive name during the existence of the patent, any one at the expiration of the patent may make and vend such machines, and use such name; and no one, by incorporating such name into his trade-mark, can take away from the public the right of so using it.
    2. Where machines during the time they are protected by a patent become known and identified in the trade by their shape, external appearance or ornamentation, the patentee, after the expiration of the patent, cannot prevent others from using the same modes of identification, in machines of the same kind manufactured and sold by them.
    Error to the Superior Court of Cincinnati. Reserved in the District Court of Hamilton County.
    The original action was brought by the Singer Manufacturing Company, the defendant in error, against Andrew J. Brill, the plaintiff in error, in the superior court of Cincinnati. The petition alleges as follows, to wit:
    “ The plaintiff is a corporation duly organized and existing under the laws of the state of New Jersey, and is now, and for many years has been, engaged in the business of manufacturing and selling sewing machines in all parts of the United States and Great Britain and in other countries, as the successor of The Singer Manufacturing Company, a corporation of the state of New York, which corporation succeeded the firm of I. M. Singer & Co., by whom said business was established in the year A. D. 1850; and the plaintiff is the owner of the good will and trade-name and trade-marks of its said predecessors in said business, which business has been carried on successively by said parties as a continuous business from the time of its establishment. During all said period, the plaintiff and its predecessors have manufactured sewing machines of many different kinds and varieties, and from the first have called and advertised and sold such machines as ‘Singer’ sewing machines, and have spent hundreds of thousands of dollars in advertising them by that name; and sewing machines manufactured by the plaintiff or its predecessors have always been called, and are now, and for many years have been, universally known as ‘ Singer ’ sewing machines, and by that name have acquired a world-wide reputation for the excellence of their workmanship and other merits.
    “Said adoption and appropriation of said name was original with said I. M. Singer & Co., and they and their said successors have ever since used the same continually and exclusively as a designation for the sewing machines manufactured by them.
    “The defendant in violation of plaintiff’s said rights is, and for some time past has been, engaged in selling sewing machines not manufactured by plaintiff, but having the form, shape, outline, ornamentation and appearance of \machines of plaintiff’s manufacture, which he calls and advertises and sells as ‘ Singer ’ Sewing Machines, and as English Singer Sewing Machines, and by other colorable imitations of plaintiff’s said trade-name; and the defendant advertises said machines by means of cuts and prints which are imitations of plaintiff’s cuts and prints, and which are representations of machines of plaintiff’s manufacture, and the defendant in other ways gives out and represents that the sewing machines which he sells are manufactured by the plaintiff, whereas in truth they are not.
    “ Wherefore, the plaintiff praj^s that the defendant may be enjoined from in any manner advertising, invoicing or selling any sewing machines not manufactured by plaintiff, as Singer Machines or as English Singer Machines, or by any colorable variation upon or imitation of the name Singer, and from using in any manner the name Singer, either alone or combined with other words, as a designation of, or in connection with any sewing machine not manufactured by plaintiff, and from selling or advertising for sale in any manner any sewing machine having the form, shape, outline, ornamentation or appearance of the sewing machines manufactured by the plaintiff, and from representing in any manner that machines not of plaintiff’s manufacture are ‘Singer’ Sewing Machines, or that they are manufactured by plaintiff. And the plaintiff also prays for an account of profits and for all other relief to which it may be entitled, and its costs.”
    A demurrer to the petition having been overruled, the following answer thereto was filed, to wdt:
    “ The defendant for answer to the plaintiff’s petition states that he knows nothing of the truth of the averments concerning the business and property rights of I. M. Singer & Co., and of the Singer Manufacturing Company of New York, or of the plaintiff, or of the plaintiff’s rights of suecessorship or ownership therein, and to the good will, trade-names and trade-marks of its pretended predecessors, and doth therefore deny all' allegations of the petition touching the same.
    “ And for further answer the defendant denies that the plaintiff had any property right in the name ‘Singer,’ and denies that said word ‘Singer’ was its trade-name or trademark, but avers that said name ‘ Singer ’ was used by the plaintiff and understood by the trade and the public generally and in fact was intended, to describe sewing machines of certain particular combinations, and the principle or device used in their construction, and that such name was generally understood to designate and did designate not alone machines manufactured by the plaintiff, but machines constructed after and upon the principle of machines originally invented by one I. M. Singer, and his and others’' improvements • thereon, upon which said invention and improvements letters patent were granted to said I. M. Singer and others,' by the United States of America, and which said letters patent have long since expired; and further that said name did not and does not in-the estimate of the trade or of the public designate a machine made by plaintiffs or by their predecessors.
    “ Defendant for further answer denies that said plaintiff and its predecessors used said name ‘ Singer ’ continuously and exclusively as a designation of sewing machines manufactored by it and its predecessors, and avers that it and its predecessors made and sold other machines of totally different construction, and did not apply the name Singer thereto; that various other parties than plaintiff and its predecessors and defendant have manufactured and sold sewing machines made upon the Singer principle and plan, under the name, and the same were known to the trade and to the public by the name of ‘ Singer Sewing Machines.’
    “ Defendant denies that he ever advertised or otherwise represented that sewing machines sold by him were manufactured by the plaintiff or by its predecessors, but he has sold machines manufactured upon the plan and principle of the Singer patent, and has sold the same as machines manufactured upon said plan and principle, as he had a good right to do, and called the same by their proper name. Defendant avers that the plaintiff stamps or affixes its corporate name, in full size, upon the arm of machines of its manufacture, and that the plaintiff has affixed to machines manufactured by it, a trade-mark consisting of a brass oval, having thereon the words ‘ The Singer Mf’g. Co., N. Y., Trade-Mark ’ and also the stamp of a shuttle, and that defendant has not adopted or used said trade-mark, at any time, and plaintiff has not adopted or used any other or different trade-mark; and that the defendant has sold and does _ sell sewing machines made upon the said Singer principle of plan of construction, to wit: the same covered by said former patented rights and all improvements, on which the plaintiff’s machines are constructed, but defendant has not placed upon any of said machines sold by him the word £ Singer ’ either alone or in combination with any other words, but that the machines sold by the defendant have in all instances had affixed to each and every one of them the name and trademark of the manufacturers thereof, said trade-mark consisting of an oval on which was stamped said name, to wit: ‘Williams Mf’g. Co., Montreal, Trade-Mark’ and also a lion’s head.”
    The issues raised by the petition and answer were submitted to the court at special term, upon the evidence, and determined in favor of the plaintiff below, to which conclusions exceptions were taken. The defendant moved the court to set aside the findings, on the ground that they were against the law, and against the weight of the evidence, and for other reasons, and this motion having been overruled— to which exception was also taken — a final judgment was rendered in favor of the plaintiff below, awarding a perpetual injunction, and referring the case to a master to state an account of profits, and adjudging the costs of the action to the plaintiff below. A bill of exceptions containing all the evidence was tendered to the court, and duly allowed. The case was thereupon carried by petition in error to the district court, and there heard, and by an order of that court, on the motion of the defendant in error, the case was reserved to this court.
    
      Tilden Sardacre, for plaintiff in error.
    1. The defendant in error had no property in the name “ Singer,” nor any exclusive right to affix it to the machines made by it. Singer Mf’g. Co. v. Loos, 48 L. T. R. N. S., 3; Singer Mf’g. Co. v. Larsen, 8 Biss. C. Ct., 151; Singer Mf’g. Co. v. Stanage, 6 Fed. Rep., 279; Singer Mf’g. Co. v. Riley, 11 Id., 706.
    2. The trial in the superior court proceeded not alone upon the claim before considered in this argument, namely, that the plaintiff below had an exclusive property in the trade-mark itself, but it was also further contended that the defendant had been and was in the habit of falsely representing, that the sewing machine, which was in fact manufactured by Williams & Co., of Montreal, Canada, was a machine manufactured by the Singer Manufacturing Company. This expresses exactly the terms of the issue upon this branch of the case, and the question is, whether that issue was maintained by the evidence. The distinction between these two claims was well expressed and defined by James, Lord Justice, in the case of Singer v. Wilson, 45 Law J. R. N. S. Eq., 490. Leather Cloth Co. v. Am. Leather Cloth Co., 11 H. of L. Ca., 535; Bradbury v. Beeton, 39 L. J. R. N. S., 57; Partridge v. Menck, 1 How. App. Cases, 548; 2 Barbour Ch., 101; McLean v. Fleming, 96 U. S., 245; Gorham v. White, 14 Wall., 511.
    A purchaser and other person in reading and inspecting a trade-mark or other representation must not be blind or careless, but must exercise his senses and a reasonable degree of care and diligence, and this- may be exacted even from the “unwary” for they have no right to be unwary.
    It is not enough to say, that the- public may possibly not sufficiently have understood the words of a trade-mark, or other representations. The question is, were the words intended and calculated to deceive, and would they deceive if read and examined intelligently, and with the exercise of ordinary and reasonable care and diligence.'
    In the present case the mere use of the words “Singer” “ Singer Sewing Machine ” was not a fraudulent representation, because if the plaintiff below had no property in them as a trade-mark, the defendant below had a right to use them in his trade-mark and in his representations in the sale of the “ Singer ” Sewing Machine in which he dealt.
    During the pendency of the patent. the name of the owner “ Singer ” used in the trade-mark, by legal construction related to and meant the 'machine and not the manufacturer, and that continued to be the name after the patent expired. Hall v. Barrows, 33 L. J. R. Ch., page 204; Berry v. Bradbury, 33 Id., page 465.
    An act which a party has a right to do cannot in a legal sense, be wrongful. Such an act is not and cannot be a fraudulent representation. Again the trade-mark, in order that it may become an instrument of fraud and pass to subsequent dealers, must be affixed to the article or thing itself. McAndrews v. Bassett, 33 L. J. R. Ch., 561; Candee v. Deere, 54 Ill., 439.
    It is not material that the plate or symbol of. the defendant’s trade-mark resembled in any degree that of the plaintiff in any particular of color, kind, shape or form, for these are elements in which no property can be acquired. Faber v. Faber, 49 Barb., 357; Moorman v. Hoge, 2 Sawy., 78.
    
      King, Thompson Maxwell, for defendant in error.
    When the public use the name “ Singer ” do they have in mind any particular kind of machine, or simply the Singer Company as manufacturer ? The point is well put by Lord Deas, in The Singer Manufacturing Company v. Kimball & Morton, 11 Court of Sessions, (3d Series), 274.
    When a patent has expired the protection has gone, but a maker’s name cannot be assumed by another without a deception and fraud. Amoskeag Mf'g. Co v. Spear, 2 Sand. S. C., 599.
    As to what class of persons may be deceived by the representations of plaintiff in error, see Singer Mfg. Co. v. Wilson, 3 App. Cas., 376.
    The plaintiffs in error had no right to represent that they were selling Singer machines. Singer Mfg. Co. v. Kimball & Morton, 11 Court of Sessions (3d Series), 270, 274; The French Kowe Case, Coddington, § 1209; Filley v. Fassett, 44 Mo., 173; Cox Am. Trade Mark Cases, 404, 530 ; Carroll v. Ertheiler, 9 Reporter, 737; 1 Fed. Rep., 688; Johnston v. Ewing, 7 App. Cas., 231; Braham v. Bustard, 1 Hem. & Mill., 447; Clement v. Maddick, 1 Gif., 98 ; S. C. 5 Jurist, N. S., 594; Coffeen v. Brunton, 4 McLean, 516 ; Newman v. Alvord, 49 Barb., 588; Kinshaw v. Bolton, 15 Irish Ch., 75; Coddington, § 698; Burke v. Cassin, 45 Cal., 468; Davis v. Kendall, 2 R. I., 566; Shrimpton v. Laight, 18 Beav., 164 ; Edelsten v. Edelsten, 1 De G. J. & S., 185; Franks v. Weaver, 10 Beav., 297; Bardon v. Sabaton, Brown’s Trade Mark, §§ 398, 399; Massam v. Thorley’s Cattle Food Co., 14 Ch. D., 748; 3 App. Cas., 389.
    The defendant in error was not only entitled to an injunction against plaintiff’s in error use of the name Singer, but also against his imitating the outline, form, general appearance and ornamentation of the New Family Singer Machine. Ludlow & Jenkins on Trade Marks, 49, and cases cited; Woollam v. Ratcliff, 1 Hem. & Mill., 259; Dolfus v. Lalle
      mand, (France) Coddington, § 1134; Lea v. Wolf, 13 Abbott Pr., N. S., 389 ; Cook v. Starkweather, Id., 392 ; Knott v. Morgan, 2 Keen, 213; Marsh v. Billings, 7 Cush., 322; Woodward v. Lazar, 21 Cal., 448; Sawyer v. Kellogg, 7 Fed. Rep., 720; Browne on Trade Marks, §§ 42, 44, 59.
   Dickman, J.

For many years the defendant in error, the Singer Manufacturing Company, a corporation under the laws of the state of New Jersey, has been extensively engaged in the business of making and vending sewing machines in this and in other countries. The machines made by the company have been called and known as “Singer” sewing machines — the term embracing several varieties, which differ among themselves more or less in principle of construction, mode of operation, and results produced. Among those varieties of machines, as known to the trade, are the “ Family Singer,” the “ Medium Singer,” the “ Oscillating Shuttle Singer,” and others of different designation. They all belong to the same denomination of Singer machines, and were in the- main protected by patents covering their distinctive features. The term Singer, eo nomine, has come to be suggestive not merely of the manufacturer, but of sewing machines of a certain mechanism, character or quality, distinct in construction and mode of operation from the “Home,” “Grover & Baker,” “Wheeler & Wilson,” or other machines known to the public. It would not be claimed that the name Singer is now associated with any machine for family use, or other work, that is constructed upon a different principle from that governing any of the various Singer machines, so called. ■

It is urged, however, that as the machines originally got their names because of the manufacturer, first, I. M. Singer & Co., and later the Singer Corporation, the defendant in error has acquired an exclusive property in the name — that the name has become a trade name to indicate machines of the company’s manufacture, and has been so recognized by the public. And it is further insisted, that there is no mechanical device, combination, or principle of construction common to the Singer machines, to which the name could refer, and thus become, as it were, generic in its character, and free to the use of all manufacturers and venders after the expiration of the Singer patents. But, granting that there may be several distinct species of the Singer machines, with no peculiar mechanism or principle of action common to them all, yet each species constitutes a distinctive type or class, with certain special characteristics of outward form and internal construction, and bearing the name Singer, to distinguish it from others of different make and properties. Singer Manuf’g Co. v. Loog, Lord Selborne, L. C., 8 Appeal Cases. H. L. (E.), 15.

Descriptive as the name Singer is of machines of a really distinctive character in their construction and principle of operation, when the patents protecting them expired, the right to use that name accompanied the right to make and sell the machines. It would be a poor return for the exclusive privilege which the public gives for a long period to the patentee, if after the expiration of his patent, he shall be allowed to virtually perpetuate his monopoly, in a measure, by preventing all others from using the name, which will describe and make known the invention that has become dedicated to the public.

In Singer Manuf’g Co. v. Stanage, 6 Fed. Rep., 279, it was held, that when a patented article is known in the market by any specific designation, whether of the name of the patentee or otherwise, every person, at the expiration of the patent, has a right to manufacture and vend the same, under the designation thereof by which it was known to the public. The original patentee or his assignees acquire no right to the exclusive use of such designation as a trade name. Their rights are under the patent, and expire with it. The specific designation falls into the public domain.

In Singer Manuf'g Co. v. Riley et al., 11 Fed. Rep., 706, the question arose, whether that company had an exclusive property or trade name in the word Singer. The language of the court commends itself to the legal judgment. “ It is the consideration now due to the public, when the patents have expired, that it shall have the unobstructed benefit of these inventions, and there is not the least foundation in principle or reason, for allowing the patentees to continue to enjoy as much of the monopoly, as they can save by the claim to use exclusively the trade names, by which they identified and secured to themselves the reputation of their inventions. These go along with the invention, as a dedication to the public for purposes of description and identification.”

In Singer Manuf'g Co. v. Larson, 8 Biss. C. Ct., 151, it was held, that if a sewing machine has acquired a name which designates a mechanism or a peculiar construction, parts of which are protected by patents, other persons, after the expiration of the patents, have the right to construct the machine and call it by that name, because the name expresses only the kind and quality of the machine. Indeed, it is an elementary principle, that every one has the right to make and vend any wares not protected by patents; and it is now well settled, that a manufacturer of a patented article, after the patent has expired, has the right to represent that it was made according to the patent, and to use the name of the patentee for that purpose. Wilcox & Gibbs Sewing Machine Co. v. Gibbons Frame, 17 Fed. Rep., 623.

The original petition in this case alleges, that Brill, the defendant therein, in violation of the rights of the Singer Manufacturing Company, the plaintiff, was then and for some time past had been engaged in selling sewing machines not manufactured by the plaintiff, but having the form, shape, outline, ornamentation and appearance of machines of the plaintiff’s manufacture, which he was then selling as “ Singer Sewing Machines,” and “ English Singer Sewing Machines,” and under other colorable imitations of the trade-name Singer. It is further alleged, that the defendant was then advertising such machines by means of cuts and prints which are imitations of plaintiff’s cuts and prints, and which are representations of machines of the plaintiff’s manufacture; .and that the defendant in other ways was then giving out and representing that the sewing machines which, he was selling were manufactured by the plaintiff, whereas in truth they were not.

The trade-mark adopted by the Singer Company and placed at the base of the arm of the “New Family Machine,” which it manufactures, consists of an oval brass plate, containing in its center the letter S, and in the center of that a shuttle, needles crossed, and two transverse lines, representing thread. Circling over this, at the top, were the words “ Singer Manufacturing Co., N. Y.,” and below, the words “ Trade-Mark,” and a circular wreath representing flowers or plants. It is sought by blending the name Singer with the trade-mark, to perpetuate an exclusive property in the name after the life of the Singer patents. But, a patentee or his assignee, by incorporating into his trademark the distinctive name by which a patented machine has become known to the public during the existence of the patent, cannot, after the expiration of the patent, take away from the public the right of using such name. The trade-mark cannot be made a guise for extending the monopoly, or preventing the name from becoming with the patent the property of the public. Singer Manufacturing Co. v. Riley, supra.

The Singer Manufacturing Company had become the proprietor of, or interested in several patents for improvements upon the machines manufactured and sold by it; but, the patents had expired a long time prior to the alleged acts which are subjects of complaint. An injunction, however, coextensive with the prayer in the plaintiff’s petition was granted, and the defendant was perpetually enjoined, not only from using the name Singer, but from selling sewing machines having the external appearance, shape, or ornamentation of the machines of plaintiff’s manufacture; and also from using a trade-mark, which imitates the trademark used by plaintiff, in size, color, shape and general-' appearance.

While there may be a similitude in form and finish between the machines made by the defendant in error, and the “ English Sewing Machine ” sold by Brill, as the general agent of the Williams Manufacturing Company of Montreal, we think, there should not have been an injunction granted against that company’s introducing their machines to the public, in the habiliments which they saw fit to adopt. Where machines during the time they are protected by a patent, become known and identified in the trade by their shape, external appearance or ornamentation, the patentee, after the expiration of the patent, cannot prevent others from using the same modes of identification in machines of the same kind, manufactured and sold by them. It is not claimed that the shape, ornamentation or external appearance of the machines made by the Singer Manufacturing Company were protected by any patent for a design, nor could these insignia find protection under any of the Singer patents which had expired. Of the patents which the Singer Manufacturing Company owned or became interested in, and of the external appearance, shape or ornamentation of its machines, it may be said, as was said by the court in Fairbanks v. Jacobus, 14 Blatchf., 337, “ Their patents, while they existed, protected them in the essential structure of their invention, but the exterior form, painted color, and such non-essentials were not, and could not be, the subject of the.patents, and the patents did not, and could not, secure these to the plaintiff. Much less could these be secured as a trade-mark, for, a trade-mark is always something indicative of origin or ownership, by adoption and repute, and is something different from the article itself which the mark designates. An invention of structure a patent for the invention secures; a design is secured by a patent for that. Apart from these, any one may make anything in any form, and may copy with exactness that which another has produced, without inflicting any legal injury, unless he attributes to that which he has- made a false origin, by claiming it to be the manufacture of another person.” At common law, the form, ornamentation or external appearance of the machines, would be open to all as modes of designation or identification. In the case at bar, they are accompaniments which serve to identify machines of a certain kind and quality, without reference to the manufacturer; and when the patents covering the machines expired, they should not, any more than the name Singer, be made the means of continuing the monoply under the cover of a quasi trade-mark or symbol.

As to the complaint, that the agents of the Williams Manufacturing Company have been engaged in selling machines made by that company as and for machines manufactured by the Singer Manufacturing Company, it is the undoubted right of every man who is known to the public as the favorite manufacturer of any article, that another shall not make and vend the same article, and palm it off as the production of the first maker. As said by Lord Blackburn in Singer Manuf'g. Co. v. Loog, supra, “the original foundation of the whole law is this, that when one knowing that goods are not made by a particular trader, sells them as and for the goods of that trader, he does that which injures that trader.” If he sells wares of as good quality, he impairs the patronage of the trader under a false pretence; and if he sells wares of an inferior quality, he injures the good will and reputation of the trader’s business. But, upon a review of all the testimony, we have been unable to discover any deception practiced by means of any business card, advertisement, circular or other publication, by which the machines of the Williams Manufacturing Company have been put upon the market, as having been manufactured by the Singer Manufacturing Company. On one business card, Brill, the general agent, plainly publishes the “ English Singer Sewing Machine ” as manufactured in Montreal, Canada; and the factory of the “ Ger. man Singer Sewing Machine ” is, on another card, represented as located at Kaiserslautern, Germany; and Kaiser Brothers are held out as the manufacturers. No purchaser of ordinary intelligence would be likely to be deceived as to the manufacturer, or the place where manufactured. And the word Singer, though used in their cards, circulars and newspaper advertisements, nowhere appears upon the machines manufactured by the Williams Manufacturing Company.

It is said, however, that the trade-mark of' the Williams Manufacturing Company, is such an imitation of that adopted by the Singer Manufacturing Company, .as to be easily mistaken for it by purchasers. How far the similarity is likely to deceive, must be determined, not by the impression made upon a heedless and inobservant buyer, but upon one of at least ordinary intelligence and observation. To entitle a complainant to relief against a colorable imitation of a trade-mark, he must clearly show not only a property right in himself, but also that the resemblance between the original and the imitation is such as would mislead persons purchasing with ordinary caution. Robertson v. Berry, 50 Md., 591. We do not think that the trademark used by the Williams Manufacturing Company — being an oval metallic plate with a lion’s head in bold relief, surrounded by the words “ Williams M’f’g. Co., Montreal ” and “ Trade-Mark ” is of a character that would mislead purchasers of ordinary caution. In Singer Manuf'g. Co. v. Riley, supra, the court in passing upon an alleged violation of the trade-mark of the Singer Manufacturing Co. of New Jersey, held that the shuttle device, as a trade-mark, had not been violated by the device used on the Williams machine of Montreal — the alleged imitation not being calculated to .deceive a purchaser.

Whatever foundation there may be for an action in damages, we do not think, that an injunction was warranted against Brill, the plaintiff in error, by reason of the testimony of witnesses who had purchased machines from his agents, and who were called to prove the verbal representations of such agents, that the sewing machines sold by them were of the Singer Company’s manufacture. There is evidence, that those agents dealt not alone in the “ English Singer Sewing Machine,” but in the different varieties of sewing machines'known to the trade; but, whether they dealt in other machines or not, we find no evidence that the plaintiff in error authorized, any false representations, verbal or otherwise, to be made by his agents as to who were the manufacturers of the Williams machines.

The judgment of the superior court we think should be reversed. The injunction granted against the plaintiff in error should be dissolved, and the action of the Singer Manufacturing Company'dismissed.

Judgment accordingly.  