Edward Douglass White

“ It is obvious that if the name dedicated to the public, either as a consequence of the monopoly or by the voluntary act of the party, has a two-fold significance, one generic and the other pointing to the origin of manufacture, and the name is availed of by another without clearly indicating that the machine upon which the name is marked is made by him, then the right to use the name because of its generic signification would imply a power to destroy any good will which belonged to the original maker. ”

“ Indeed, the enforcement of the right of the public to use a generic name, dedicated as the results of a monopoly, has always, where the facts of a monopoly, has always, where the necessary regulation to make it accord with the private property of others and the requirements of public policy. ”

“ That where, during the life of a monopoly created by a patent, a name, whether it be arbitrary or be that or the inventor, has become, by his consent, either express or tacit, the identifying and generic name of the thing patented, this name passes to the public with the cessation of the monopoly which the patent created. ”

“ The court said:
'Certainly, if the words 'Fairbanks Patent,' do not mean to assert the existence of a patent securing the scales, but only that they are made in conformity with, and embody the invention of, the expired Fairbanks patent, they are free to all the world. What is not free is to pretend that a scale is made by one person, which is, in fact, made by another.'
In Manufacturing Co. v. Larsen (1878) 8 Biss. 151, Fed. Cas. No. 12,902, it was sought to restrain the defendant from the use of the name 'Singer' in connection with machines manufactured or sold by him. ”

“ To say that various types of sewing machines were made by the Singer Manufacturing Company in no way meets the view, borne out by the testimony, that all machines by them constructed were in some particular so made as to cause them all to be embraced under the generic head of 'Singer,' and to be protected in some respects by the patents held by the company. From this fact it resulted that during the life of the patents none of the machines as a whole were open to public competition. ”

“ It seems to me that the name 'Wheeler & Wilson' machine has come to signify the thing manufactured according to the principle of that patent. That being so, I cannot restrain anybody, after the expiration of the patent, from representing his article as being the article which was so patented. A man cannot prolong his monopoly by saying 'I have got a trade-mark in the name of a thing which was the subject of the patent,' and, therefore, to that extent I think the plaintiffs are not entitled to the relief they ask.' In Cheavin v. ”

“ Does this mean that a mark composed of a name can never be lost? The courts, on the contrary, have decided that two elements which compose a name-that is, the surname of the individual or the firm upon the one side and its tracing or distinctive form' (in a trade-mark) -'are susceptible of falling into the public domain together or separately. In this last case the exclusive right to the trade-mark may survive the exclusive right to the name and vice versa. ”

“ The right to relief arising from the wrongful use by the defe dant of a specific trade-mark and from the illegal use of a trade-name, and also acts asserted to have been done by him which would justify the relief commonly accorded where unfair competition in business has been carried on, are commingled, and treated as one. ”

“ It follows, therefore, that the judgment below, which recognized the right of the defendant to make or vend sewing machines in the form in which they were made by him-that is, like unto the machines made upon the principles of the Singer system with the use of the word 'Singer,' without a plain and unequivocal indication of the origin of manufacture, was erroneous. ”

“ That the denomination under which a patented article is designated by the inventor falls into the public domain at the same time as the invention, at least when this denomination has been drawn from common language, and does not reproduce the name of the inventor himself ”

“ Thayer, J., saying (page 414) :
'It is unnecessary at this time to determine what form of relief should be administered if the allegations of the bill are proven on final hearing. It may be that some change in the form of defendants' circulars and advertisements will be all the relief that the circumstances of the case fairly warrant; or it may be that the proof will warrant an order that the defendants place a notice in their book that it is a reprint of the edition of 1847 of Webster's Dictionary, with such auditions as they may have made to it. ”

“ Unfair competition in business, resulting from the form in which the defendant makes its machines, and also from the employment by it of the word 'Singer' in connection with the marks and devices on the machines, and the use of the same name in circulars and advertisements. ”

“ This fact is ful y recognized by the well-settled doctrine which holds that, although 'every one has the absolute right to us his own name honestly in his own business, even though he may thereby incidentally interfere with and injure the business of another having the same name, in such case the inconvenience or loss to which those having a common right are subjected is damnum absque injuria. ”