DODGE MFG. CO. v. SEWALL & DAY CORDAGE CO.

(Circuit Court, D. Massachusetts. July 5, 1898.)

1. TRADE-MARKS-REGISTRATION.

No. 844.

The registration of a trade-mark by a rope manufacturer, consisting of a colored thread twisted in one of the strands of the rope, had no legal effect except to indicate that such manufacturer claimed the trade-mark set forth in its application at the time of the registration.

[Ed. Note. For cases in point, see vol. 46, Cent. Dig. Trade-Marks and Trade-Names, § 53.]

2. SAME-SCOPE OF TRADE-MARK.

Where a rope manufacturer adopted a blue thread twisted into one of the strands of its rope as a trade-mark, which was the only practicable way of marking rope, such manufacturer was not entitled to restrain another manufacturer from using a thread of a different color.

In Equity.

Samuel L. Powers and Charles P. Searle, for complainant.
Nichols & Cobb, for defendant.

LOWELL, District Judge. Since 1886, or thereabouts, the complainant has twisted a blue thread into one of the strands of the socalled "transmission rope" which it manufactures. In 1888 it registered as a trade-mark a colored thread so twisted. This registration had no legal effect except to indicate that the complainant then claimed the trade-mark set forth in its application. A colored thread of some sort twisted in the rope is, evidently, almost or quite the only possible way of marking or identifying the rope itself, and it is in evidence that a colored thread has been commonly used for many years for such a purpose, though seldom, if ever, has it been used as a mark of origin. The defendant at one time twisted a blue thread into each strand of the transmission rope which it manufactured, but, upon notification by the complainant that confusion might arise, it ceased to do so at once, and has since used red threads instead.

If the complainant has any trade-mark, it is plainly confined to a blue thread, for that is the only mark the complainant ever used. To allow the complainant the exclusive right of twisting into rope threads of any and all colors would give it a monopoly of the only practicable way of marking rope. Where a trade-mark is a figure or design, the owner's right may well cover that figure or design reproduced in any color, for the identity of figure may mislead the purchaser in spite of the difference of color. In this case the defendant's red thread will emphasize the difference between its rope and the complainant's blue thread rope, and cannot deceive anybody. It follows, therefore, that the defendant has the right to continue its present red thread manufacture. As it had ceased to use a blue thread some months before this bill was filed, and as the evidence indicates that it has acted in good faith, there is no occasion to enjoin it from using a blue thread, even if it has no right to use one. Whether it has this right or not, need not now be discussed.

Bill dismissed, with costs.

A. LESCHEN & SONS ROPE CO. v. MACOMBER & WHYTE ROPE CO.

(Circuit Court, N. D. Illinois, E. D. December 18, 1905.)

No. 27,001.

TRADE-MARKS-VALIDITY-COLORED STREAK IN WIRE ROPE.

A registered trade-mark, described as consisting of "a red or other distinctively colored streak applied to or woven in a wire rope," is invalid, not only because there can be no valid trade-mark in color alone, but for the further reason that it contains no distinctive design, but attempts to monopolize the right to use any streak of any color, however produced in or applied to a wire rope.

In Equity. Suit for infringement of trade-mark and for unfair competition.

J. C. Jones and Geo. H. Knight (Ashcraft & Ashcraft, of counsel), for complainant.

Dwight B. Cheever, for defendant.

KOHLSAAT, Circuit Judge. Complainant files this bill to restrain the use by defendant of complainant's registered trade-mark, No. 35,552, issued December 4, 1900, and to enjoin unfair competition in trade. Complainant and defendant both are manufacturers of wire rope. Complainant is a Missouri corporation. Defendant is a corporation organized under the laws of Illinois. Proofs have been taken and the cause is now before the court on final hearing.

There is doubt, in view of the opinion of the Supreme Court in the case of Warner v. Searle & Hereth Co., 191 U. S. 195, 24 Sup. Ct. 79, 48 L. Ed. 145, whether the allegations of the bill and the proof are sufficient to show jurisdiction in this court. Defendant makes no point of this, save as it affects the unfair competition feature of the case, and the matter is presented for consideration upon the merits.

Complainant's trade-mark as registered is described in its statement as follows:

"The trade-mark consists of a red or other distinctively colored streak applied to or woven in a wire rope. The color of the streak may be varied at will, so long as it is distinctive from the color of the body of the rope. The essential feature of the trade-mark is the streak of distinctive color produced in or applied to a wire rope. This mark is usually applied by painting one strand of the wire rope a distinctive color, usually red."

The proof shows that since 1886 complainant company has painted red in color one of the strands of a certain brand of its wire rope, called by complainant and known to the trade as "Hercules" rope. In June, 1903, defendant company put upon the market a brand of rope known as "Monarch" brand, one strand of which was painted white. and in September of that year defendant registered in the Patent Office as its trade-mark the representation of a lion's head surrounded by two circles of the rope, one strand in each circle being painted white, and with the word "Monarch" written in curved form on the circles of rope above the lion's head. Defendant uses on the side of its rope reels for this brand of wire rope, which is its best quality of rope, and on its stationery the said Monarch trade-mark, and below the trade-mark ap

142 F.-19

pear the words "Always one Whyte strand." To designate the brand of Hercules rope, for which great superiority is claimed, complainant uses in a similar way a pictorial representation of a section of wire rope, one strand of which is painted red.

The practical difficulty that confronts the manufacturer who desires to safeguard against the substitution of another, and perhaps inferior, article for his brand of wire rope, arises when the rope is sold in less than ree! lots. Any trade-mark which may be placed upon the rope reel then becomes of no value as a distinguishing mark. To overcome this difficulty, complainant has for years painted one of the strands, throughout the entire length of the rope, red. Defendant met the problem by painting a strand white. There is some controversy as to whether this is the only practical way of marking wire rope so that it can afterwards be identified, but it is not necessary here to consider that question. The record does not disclose anything further in support of the unfair competition feature of the bill than the marking of the strand aforesaid. The case rests, therefore, both as to the trademark infringement and as a case of alleged unfair competition, upon the validity of complainant's registered trade-mark and its right to a monopoly of a red or other colored strand or streak extending throughout wire rope.

Has complainant a valid registered trade-mark? The claim is for a red or other distinctively colored streak applied to or woven in a wire rope. The claim contravenes all the requisites of a valid trade-mark as announced in an unbroken line of adjudicated cases. That there can be a trade-mark right in mere color has been denied by the courts throughout the country. Hopkins on Trade-Marks (2d Ed.) p. 243, and cases there cited; Philadelphia Nov. Mfg. Co. v. Rouss (C. C.) 40 Fed. 587; Dodge Mfg. Co. v. Sewell & Day Cordage Co., 142 Fed. 288 (Judge Lowell, Circuit Court, District of Massachusetts). Here complainant in its statement has not confined itself to one color, but has claimed a red or other distinctively colored streak. There is lacking definiteness of form and color. The wording of the claim embraces, not alone the weaving into a wire rope of a strand of any color, but covers every conceivable manner in which a line of color can be applied to the rope. No character of streak or relation of the streak to the rope is described, and, if the trade-mark be valid, it would subject to prosecutions for infringement any manufacturer of wire rope who put upon his product any kind of streak at any angle on the rope. Complainant could run the gamut of color and form, and still be within the wording of its registered mark. The fundamental idea of a trade-mark is that it must be a distinctive design. This element of mutability strikes at the very foundations upon which the trade-mark rests in commerce and in law.

There is also much force in the suggestions that complainant's trademark as registered is invalid for the reason that it is broader than the use thereof by complainant, and for the further reason that the mark is descriptive of the character of the goods; but it is not necessary to discuss these questions. I am of the opinion, for the reasons above given, that the trade-mark as registered is invalid and that this suit must fail. The validity of complainant's trade-mark was considered by Judge

Adams in the Circuit Court of the United States for the Eastern District of Missouri in the case of Complainant v. Broderick & Bascom Rope Company, and the court found against the validity of the trademark. On appeal, this finding was sustained by the Circuit Court of Appeals for the Eighth Circuit. 134 Fed. 571, 67 C. C. A. 418.

Upon a proper showing, complainant would undoubtedly be protected against unfair competition in its use of a red strand, even though the registration was invalid. Elgin Nat. Watch Case Co. v. Ill. Watch Case Co., 179 U. S. 665, 21 Sup. Ct. 270, 45 L. Ed. 365. Upon the facts disclosed by this record, however, I cannot find that complainant's rights are invaded by the use of a white strand by defendant, and the bill is dismissed for want of equity.

In re SMITH LONGBOTTOM & SONS.

(District Court, E. D. Pennsylvania. December 13, 1905.)
No. 2,192.

1. BANKRUPTCY-ORDER TO BANKRUPT TO SURRENDER PROPERTY-FACTS JUSTI

FYING.

The fact that bankrupts improperly paid out money after the filing of the petition in bankruptcy, or otherwise expended it in good faith, is not ground for an order requiring them to pay it over to the trustee, where it is no longer in their possession or under their control.

2. SAME.

A bankrupt, who prior to the filing of the petition in bankruptcy had used in his business certain money in his hands as trustee, which he thereafter paid back to himself as trustee, must restore the same to his trustee to whom the title passed, where it is still subject to his control as receiver.

In Bankruptcy. On certificate from referee.

J. Wilson Bayard and John G. Johnson, for trustee.
V. Gilpin Robinson, for bankrupts.

J. B. MCPHERSON, District Judge. I regret to find myself unable to agree in full with the conclusions of the learned referee. He does not find as a fact that-with an exception to be stated in a moment--the bankrupts have in their possession or under their control the sums of money which they are respectively ordered to pay over; and, as I view the evidence, the proof is clear that the money has been paid over to others in settlement of asserted claims. Such payments may have been preferential, but this fact is not sufficient to support an order on a bankrupt to pay over money which he has already parted with in good faith to one of his creditors. The money received by J. H. Longbottom, one of the bankrupts, was paid to him in settlement of a claim against his father, and a claim against the bankrupt firm, and, although it is true that this payment ought not to have been made while the firm creditors were unpaid, I see nothing to impeach the bona fides of the transaction, and nothing to attack his testimony that the money is no longer in his possession, but had been used for living expenses and other purposes. As I regard it, the case is ruled by

American Trust Co. v. Wallis, 11 Am. Bankr. Rep. 360, 126 Fed. 464, 61 C. C. A. 342, a recent decision by the Circuit Court of Appeals of this circuit.

The exception to which I referred is the money paid by Smith Longbottom to himself as trustee of the Robertshaw Manufacturing Company. The circumstances under which this payment was made were briefly these. In December preceding the bankruptcy, he was the trustee of the Robertshaw Manufacturing Company, and in that capacity had money in his possession belonging to that company. Some of this money he used improperly in the partnership business of Smith Longbottom & Sons, and in the following March, after the present petition in bankruptcy had been filed, he paid to himself, as trustee of the Robertshaw Manufacturing Company, $1,000, which were the proceeds of personal property belonging to the firm of Smith Longbottom & Sons. Undoubtedly, this payment was unauthorized. The title to the money passed to the trustee of Smith Longbottom & Sons from the moment when the voluntary petition was filed, and Smith Longbottom had no authority to divert the money to other purposes. he has this money in his control, subject to his check, as trustee of the Robertshaw Manufacturing Company, it is clear that he must restore it to the fund from which it was wrongfully taken.

As

It is therefore ordered that Smith Longbottom, within five days. from this date, pay to the trustee of Smith Longbottom & Sons the sum of $1,000. In other respects the orders made by the referee are set aside.

In re JORDAN.

(District Court, E. 'D. Pennsylvania. December 16, 1905.)

No. 2,197.

BANKRUPTCY-DISCHARGE-FORMER DISCHARGE "WITHIN SIX YEARS."

In order that a former discharge in voluntary proceedings should be "within six years," so as to defeat the right to a second discharge in subsequent proceedings, under Bankr. Act. 1898, c. 541, § 14b (5), as amended in 1903 (Act Feb. 5, 1903, c. 487, § 4, 32 Stat. 797 [U. S. Comp. St Supp. 1905, p. 684]), it must have been granted within six years prior to the hearing on the application for the second discharge.

In Bankruptcy. On objections to discharge.

David J. Myers, for bankrupt.

Keator & Johnson, for objecting creditors.

J. B. MCPHERSON, District Judge. On March 23, 1899, the bankrupt filed a voluntary petition in a former proceeding in this court, and on June 20, 1899, he was granted a discharge. On March 13, 1905, he filed the present voluntary petition, and on September 21st he applied to be discharged. To this application objection has been taken, on the ground that the first discharge is "within six years”; and it is the scope of this phrase that is now in question. Bankr. Act July 1, 1898, c. 541, § 14, cl. "b" (Act Fed. 5, 1903, c. 487, § 4, 32 Stat. 797 [U. S. Comp. St. Supp. 1905, p. 684]), requires the judge to "dis