Magee Furnace Co. v. Le Barron , 127 Mass. 115 ( 1879 )

Soule, J.

The defendant had the legal right to manufacture and sell parts of stoves suitable to replace worn-out parts of the stoves made by the plaintiff. He violated no right of the plaintiff by using parts made by it as patterns for casting like parts. As the plaintiff had no patents, it had no exclusive right to manufacture or sell. Recognizing this, it contends that the defendant violated its right to certain trade-marks by making parts of stoves with certain letters and numbers thereon, and by selling them under the several names which were the plaintiff’s trade-marks.

Looking solely at the use of the letters and numbers on the parts of stoves made by the defendant, we are of opinion that there was no violation of the plaintiff’s trade-mark. It appears that the numbers were used by the plaintiff and the defendant as they were used by stove manufacturers generally to indicate a size or measurement; they formed no part of the trade-mark. The- 'etters, in some instances a single letter, in other instances two letters, are in no case the trade-mark which the plaintiff describes in his bill, and cannot be regarded as likely, when considered by themselves, to mislead a purchaser into supposing that they were the trade-mark described in the bill. To illustrate; The plaintiff sets up as its trade-mark for a particular class oí ranges the words “ Magee Portable Range.” The parts manufactured by the defendant to repair this range were marked, some “R. 7,” others “P. R. 8,” others “7 R. P.,” others “P. R. 8.” In these marks there is no such similarity to the alleged trademark as to constitute an infringement.

It appears, however, that the stoves and ranges manufactured by the plaintiff, and which have acquired a reputation in market and are known by the several names which the plaintiff has attached to them respectively as trade-marks, have been by it sold so extensively that separate parts for replacing parts rapidly worn out by exposure to great heat have become a well-known article of merchandise; and that the plaintiff has established a business in the manufacture and sale of such parts, each part being sold and known by the same name and trade-mark which designates the stove or range which the part is intended to repair. The parts thus manufactured and sold by the plaintiff have a peculiar excellence of material, and fit the respective stoves and ranges with a peculiar nicety. This has given to the parts, known in market by names or trade-marks which they have acquired, a high reputation. The defendant, using these several parts as patterns, has cast like parts for repairing the stoves known as “ Magee Advance,” “ Chelsea Cook,” “ Champion Cook ” and “ Magee,” and the range known as “ Magee Portable Range,” the parts thus made necessarily having all the peculiarities of configuration, ornamentation, lettering and numbering which the originals from which they were imitated had. These parts the defendant has advertised for sale, as “ Advance ” grates, beds, &c., as “ Chelsea Cook” grates, beds, &c., and so on, using in his advertisement the names of the several classes of stoves, and of the range, which are attached to them by reason of the adoption by the plaintiff of those names as trade-marks. His advertisement of the goods has been by a catalogue which is entitled “ Catalogue of Grates and Linings manufactured by J. B. Le Barron, Middleboro’, Mass.” He has sold the goods, when ordered, by the names used in the catalogue. It is to be observed that he does not send his goods into market with the plaintiff’s trade-mark attached, and that he advertises them as manufactured by himself. If he sent them into market with the plaintiff’s trade-mark on them or affixed to them, he would not be protected by the fact that the purchaser from him knew that the goods were not made by the plaintiff, and was, therefore, not deceived by the trade-mark, because the counterfeited trademark might be, and probably would be, the means of deceiving subsequent purchasers as to the origin and quality of the goods. Wotherspoon v. Currie, L. R. 5 H. L. 508. But, as he publishes to the world the fact that he is the manufacturer of what he sells, and does not attach to his goods any label or mark apt to deceive subsequent purchasers from his vendees as to the origin of the goods, he cannot be regarded as infringing on the rights of the plaintiff. He states clearly and intelligibly to those who deal with him, that he, and not the plaintiff, makes the wares he sells. To subsequent buyers' he says nothing, directly or indirectly, as to the origin or quality of the goods; and if they are deceived as to what they are buying, it is not by means of him. . Singer Manuf. Co. v. Wilson, 2 Ch. D. 484.

The names used by the defendant in his catalogue are equally apt, whether he intended to deceive as to the origin of the goods sold by him, or merely to indicate the well-known classes of stoves which his grates, beds and other parts would fit; but as he has carefully stated, in the same catalogue, that he is the manufacturer, the fair conclusion is that he had no purpose to mislead, but used the names of the stoves as he did, to express the idea in a concise form, which would have been conveyed more unequivocally perhaps if he had said, “ Grates to fit Chelsea Cook, Nos. 7 & 8,” instead of saying, as he did, “ Chelsea Cook grates, No. 7 & 8; ” and such clearly must have been the understanding of all who read his catalogue. Bill dismissed.