NATHAN MFG. CO.
H. A. ROGERS CO. ET AL.
Appeal from Special Term, New York County.
Action by the Nathan Manufacturing Company against the H. A. Rogers Company and another. From a judgment for plaintiff on the decision of the court without a jury, said named defendant appeals. Affirmed.
David Leventritt, for appellant.
Samuel Untermyer, for respondent.
Argued before PATTERSON, P. J., and McLAUGHLIN, SCOTT, LAUGHLIN, and HOUGHTON, JJ.
Since the year 1880 plaintiff and its predecessor have manufactured various styles of steam boiler injectors. In general construction these appliances were based on an injector which had been manufactured under a patent which had expired. From time to time plaintiff and its predecessors obtained letters patent respecting some particular part of various styles of injectors, none of which patents, however, were fundamental, and some of which after trial were abandoned. One style of nonlifting injector, known as " Class C," was never protected by any patent in any part, and another style never employed any of the patents appearing in the record. From the beginning of manufacture plaintiff and its predecessors adopted the word " Monitor," and applied that word to all the various styles of injectors which it put upon the market. The word " Monitor" had not been theretofore used by any manufacturer of boiler injectors, and plaintiff's output became known to the public and was sold as " Monitor" injectors, which word was cast upon them all.
[114 N.Y.S. 1034] After all of plaintiff's patents had expired, the Edna Smelting & Refining Company, an Ohio corporation, began the manufacture and sale to the trade of an exact reproduction of certain styles of plaintiff's injectors, and cast on them, in exact imitation, the word " Monitor," and issued a catalogue respecting styles, taken bodily from the catalogue issued by plaintiff. The injectors manufactured by the Ohio company were not only painted like those of plaintiff, but were numbered in the same way, and so closely resembled plaintiff's that one of the defendant's own witnesses could not tell the photograph of the one from the other. There was placed, however, on those manufactured by the Ohio corporation a plate containing its name and address.
The appellant, H. A. Rogers Company, acted as sales agent for the Ohio company, and this action was brought against it and that company to restrain the use of the word " Monitor," and has resulted in a judgment to that effect. The Ohio corporation was not served, although named in the summons, and on its appeal certain portions of the judgment affecting it have been stricken out by this court in a decision made herewith. 114 N.Y.Supp. 1037.
The appellant attempts to justify the use of the word " Monitor" on injectors of the exact counterpart of those manufactured by the plaintiff on the ground that the plaintiff applied that word to designate and describe its patented injector which it began to manufacture under what is known as the " Wohlers Patent," and that the word " Monitor" in no sense indicated the source of manufacture, and hence could not become a trade-mark or designation which outlived the patent. On the other hand, the plaintiff insists that it acquired a valid common-law trade-mark in the name " Monitor" as applied to injectors, because it manufactured for a long number of years under that style various kinds of injectors, some covered by patents and others not, and that the Wohlers patent was in no sense fundamental, because it was limited to a minor device; and that, even if it has no trade-mark, the defendant was properly restrained because it was guilty of unfair competition.
We are of the opinion that the judgment was right and should be affirmed. The word " Monitor" in no sense described the patented article nor the patentee. It is an arbitrary, fanciful word which the plaintiff selected and used to designate the injectors manufactured by them, and which they could obtain the right to use. Waterman v. Shipman, 130 N.Y. 301, 29 N.E. 111.
It does not seem to us that Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 16 Sup.Ct. 1002, 41 L.Ed. 118, or Ludlow Valve Mfg. Co. v. Pittsburgh Mfg. Co. (U. S. Cir. Ct. App., 3d Cir., decided Nov. 19, 1908) 166 F. 26, or Westcott Chuck Co. v. Oneida Nat. Chuck Co., 122 A.D. 260, 106 N.Y.Supp. 1016, compel any modification of the judgment. The distinctive feature of the Singer Case seems to be that the word " Singer" alone was not used when the manufacture of sewing machines was first begun. In the course of its opinion the court says:
" Irrespective of the patents and the designative significance of the word ‘ Singer’ which arose during their life, the proof also clearly establishes that the word ‘ Singer’ was adopted by I. M. Singer & Co., or the Singer Manufacturing Company, in their dealings with the general public, as designative [114 N.Y.S. 1035] of their distinctive style of machines rather than as solely indicating the origin of manufacture. This is demonstrated by the fact that at the inception of the manufacture of the machines the word ‘ Singer’ alone was not used on them."
In addition, the word " Singer" was not alone used until the patents were about expiring. In commenting on this fact, the court says:
" This coincidence between the expiration of the patents and the appearance of the trade-mark on the machines, and the use of the word ‘ Singer’ alone, tends to create a strong implication that the company, with the knowledge that the patents which covered their machines were about to expire, substituted the trade-mark for the plain designation of the source of manufacture theretofore continuously used, and added the word ‘ Singer,’ which had become the designation by which the public knew the machine, as a distinctive and ...