Daniel v. Electric Hose & Rubber Co.

BUFFINGTON, Circuit Judge. In the court below the Electric Hose & Rubber Company, a corporation and citizen of Delaware, filed this bill against Charles A. Daniel, who was trading as the Quaker City Rubber Company, a citizen of Pennsylvania, charging him with unfair competition and violating its trade-mark. The court, in its opinion as set forth above, sustained complainant’s contention and entered a decree: “That the use of external longitudinal corrugations in the sale of rubber hose * * * is a good and valid trade-mark to the plaintiff, and is the sole and exclusive property of the plaintiff,” and “that the defendant has occasioned unfair trade competition by manufacturing and selling rubber hose corrugated longitudinally.” From such decree defendant took this appeal. ¿stripped of incidental matters,' the underlying question in this case is whether the longitudinal corrugations on rubber hose can be made a trade-mark monopoly. The proofs show that on April 9, 1872, patent No. 125,596 was granted to Thomas J. Mayall for an improvement in vulcanized rubber tubings. In his specification Mayall stated that: “Tubing of this kind has never, so far as my knowledge extends, been hitherto made, owing, undoubtedly, to the difficulty, or rather impossibility, of preserving the external pattern or ornamental configuration during the several processes at present employed in order to vulcanize and finish hose or tubing.” He disclosed a method of making such hose or tubing, and a claim was allowed him, as follows: “As a new manufacture, vulcanized India rubber bose or tubing, made with fluting or other ornamental configuration in relief upon its exterior, substantially in the manner herein described.” Accompanying his specification, his corrugated hose was shown by the accompanying drawing: It goes without saying that at the expiration of Mayall’s patent, in 1889, the public acquired the right to make such fluted hose. The defendant has availed himself of that right, and has embodied Mayall ribs or longitudinal corrugations in hose he makes under patent No. 1,026,598, granted to Neff on May 14, 1912. The single claim of that patent is: “A hose comprising an outer covering of rubber having longitudinally extending closely spaced ribs forming corrugations extending longitudinally of [832] the hose, said ribs terminating in solid annular sections, equally spaced along said hose, the outer faces of said ribs and the outer faces of said annular sections being substantially in alinement.” The hose of Neff’s patent has, it will be observed, the longitudinal fluting of Mayall, and in addition certain spaced annular rings at cross-angles thereto. Its contour is shown in the accompanying illustrations taken from Neff’s patent: Under these facts, the burden is on the plaintiff to show by what means the defendant or any other hose manufacturer is to be deprived of the right to make corrugated hose, which right accrued to the public when Mayall’s patent expired. The pertinent facts on which the plaintiff bases its alleged right we extract from the opinion of the court below, as follows: “The plaintiff, Electric Hose & Rubber Company, is engaged in the business of the manufacture and sale of rubber hose as the successor of the Chicago Electric Wire Company, to which on August 3, 1897, letters patent No. 587,545 were issued as assignee of Henry B. Cobb, inventor of a method of manufacturing rubber hose' in long lengths, consisting in forming, about a tube of alternate layers of rubber and fabric, an inelastic mold within which the product was vulcanized and the mold then removed. The Chicago Electric Wire Company assigned all its right to the manufacture and sale of hose to the Chicago Electric Hose Company, which is the plaintiff herein, its name having been changed, by amendment to its charter, to Electric Hose & Rubber Company. To distinguish the hose invented by Cobb, the Chicago Electric Wire Company adopted a device consisting of external longitudinal corrugations, and that device, as a distinguishing mark of hose made under the Cobb invention, was continued down to the filing of the bill on December 2, 1913. The hose so marked by corrugations was known to the trade as ‘Electric’ hose, and from 1897 until some time in 1907 was exclusively made and sold by the plaintiff and its predecessors. * * K Marking the hose by longitudinal corrugations was not an element of the Cobb patent. It was recognized generally by the trade and public as an attractive feature in the appearance of the hose [833] and as a distinguishing mark of the so-called ‘Electric’ hose. The corrugated hose had obtained a wide popularity and was successfully sold to the trade and to the public. During the period from 1907 down to the filing of the bill, several competitors of the plaintiff produced hose with corrugated marking, but, upon demand by the plaintiff, adopted spiral or longitudinal bands or other distinguishing features with the manufacturer’s name at close intervals, in order that the hose might not be mistaken for that of the plaintiff. * * * After the Neff patent, No. 1,026,598, was issued Ma;y 14, 1912, the defendant began to manufacture a long-length hose by another method than that covered by the Cobb patent. This hose contained longitudinal corrugations and was made in close imitation of that sold by the plaintiff. At spaces of one foot, however, the longitudinal ribs, in accordance with the claim of the Neff patent, terminated in an uncorrugated annular section about one-eighth of an inch in width. While the specification of the patent claims that the annular sections strengthen the hose against lateral strains, increase its life as to surface wear, and provide a visible indication for quickly determining definite lengths of the hose, the purpose of the defendant in causing the patent to be obtained by Neff was to produce a hose which he could manufacture and sell so closely imitating that of the plaintiff as to derive from, its production the advantage of the demand in the market for the plaintiff’s corrugated hose. The defendant has accordingly placed upon the market and sold a hose made under the Neff patent with his trade-name, ‘Quaker City Rubber Co.,’ and the words, ‘Ringmeter Reg. U. S. Pat. Off. Philadelphia, Pa. U. S. A.,’ placed upon it at irregular Intervals. * * * There is no evidence that Mayall, or any one deriving rights under him as licensee or assignee, used the process described in his invention, nor is there any evidence that any one put into use the external longitudinal corrugations upon hose prior to their adoption by the plaintiff in 1897. * * * The adoption of the corrugations by the plaintiff’s predecessor occurred in 1897, years subsequent to the expiration of the Mayall patent in 1889. Upon its expiration, the method and whatever incidents appertained thereto became open to the public, subject to appropriation • and user by any one. Unless the plaintiff’s predecessor adopted it to confuse its product with that of others, it was entitled, even though Mayall liad conceived fluting upon hose in 1872, to adopt longitudinal corrugation as indicating the origin of its hose.” The court further found that the corrugations of hose had no structural value, and held that: “There being no evidence of the use of corrugations under the Mayall patent, or of their appropriation and user as a trade-mark for rubber hose of others, prior to the appropriation and user by the plaintiff, the invention of Mayall in 1872 of a method by which hose may he fluted is not material as affecting the plaintiff’s right to its use as an indicium of its product.” In that regard we are of opinion the court erred. In the fihst place, the evidence clearly shows the corrugations of the hose are of structural value. In that regard the proof of several witnesses satisfied us that the corrugations enable the hose to be better made, to he made stronger, that such hose lasts longer and minimizes kinking. In the next .place, the patent of Mayall was not for a method of fluting a hose, but it was for the fluted hose or tubing as a new article of manufacture; the method disclosed being only the statutory requirement of illustrating how the new article could be made. The testimony being clear that the longitudinal corrugations on the tube are useful and functional, the authorities (Marvel v. Pearl, 133 Fed. 160, 66 C. C. A. 226; Diamond Match Co. v. Saginaw Match Co., 142 Fed. 727, 74 C. C. A. 59; Globe Co. v. Macey, 119 Fed. 996, 56 C. C. A. 304) are clear that such useful features are common property, may be made [834] by any manufacturer of such an article, and cannot be appropriated as a trade-mark. Where the article itself is one which any one of common right may malee, no person by making that article for any period of time—no matter for how long—can convert that article itself into a trade-mark and thereby acquire an exclusive right to make it in perpetuity. To allow this 'would be to destroy the 17-year limitation of the patent system. The purpose of a trade-mark is, as its name signifies, to provide a mark for an article in which one trades. It is the evidence of the article’s genuineness, but is not the article itself. Applying these principles to the case in hand, it is clear that plaintiff could never acquire ^an exclusive right to make longitudinally corrugated hose. That right became a public one on the expiration of Mayall’s patent, open alike to plaintiff and defendant. The plaintiff exercised that right, called its product electric hose, and has established a valuable trade. The defendant has also exercised its right to make longitudinally corrugated hose. These it has marked with its Own name and with the word “Ringmeter” as a registered trademark. There is no proof of any confusion of goods, no proof that defendant sold its hose to any one as the plaintiff’s hose, or that any one purchased it thinking he was buying the plaintiff’s goods. Indeed, in the last analysis the whole case of the plaintiff rests on the unwarranted assumption that, by being’ for some years the maker and vender of a patent-expired article, it thereby could acquire and had acquired an exclusive and perpetual right to make it. Were this the law, it would follow that if Mayall, after the expiration of his patent, had been the only maker of his hose for some years following, he could by his own act turn his patent, which the law limited to 17 years, into a perpetual patent. The decree below will be reversed, and the record remanded, with instructions to dismiss the bill. On Petition for Reargument. PER CURIAM. We have carefully considered the petition for re-argument, but see nothing to be gained by granting the motion. In our view there was no proof of any confusion of goods, or that any purchaser of the plaintiff’s goods had been, or was likely to be, led to buy the defendant’s under the belief he was getting plaintiff’s. The petition for reargument is therefore denied.