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there cited, sustaining “Maizena," "Cocoaine," "Valvoline,” “Bromidia,” and “Bromo-Caffeine." The brand was at once put on the market, was extensively advertised and largely sold, and became well known to the trade. In 1891 the right to this trade-mark passed to a corporation known as the "Thurber-Whyland Co.” That corporation passed into the hands of receivers in 1893, and on June 30, 1894, the complainant duly obtained the trade-mark “Momaja” by purchase. From the time it was first adopted it has been in use, and sales of coffee under it have been made by the successive holders of the title.
The defendants, who are charged with infringement, are engaged in business as grocers in this city. Their western agent in Chicago, one Charles H. Smith, was for many years subsequent to the adoption of the “Momaja” trade
mark in the employ of Thurber, Whyland & Co., and of the corporation of the same name. Defendants make a blend of coffee, and wishing, as they say, to give their product a distinctive character, they devised a trade-mark about a year ago, under which they have since been offering their coffee for sale. The answer and affidavits submitted by defendants deny any intent to simulate or infringe complainant's trade-mark, “Momaja,” which was well known to defendants. On the contrary, the defendants' affidavits, with great unanimity, assert that, at the time they undertook to devise their trade-mark, coffee sold under complainant's mark had deteriorated, and had obtained less and less favor in the market; that complainant's brand had no value; that the title "Momaja” was rather a drawback and detriment, hindering, and not assisting, the sale of coffee; that because “Momaja” had become so unpopular and unsalable they intended to strictly differentiate in the selection of their own title, for, as the affidavits assert, “it would have been the poorest business policy, without considering the question of good morals or ethics, to have attempted to work up a new brand successfully upon the fading reputation of the 'Momaja.'” The great object sought to be secured in the selection of defendants' trade-mark, as suggested on the argument, was “to get away as far as possible from ‘Momaja.'” The result of defendants' efforts in that direction is somewhat startling. They selected the word "Mojava." Certainly they did not get very far away; in fact, from the point of view of a court of equity it looks much less like a departure than it does like an approach, and it may well be apprehended that if defendants continue to use the word "Mojava” they run considerable risk of confusion with the unpopular and unsalable brand from which they wanted “strictly to differentiate” their own title. In the light of decisions which find infringing resemblances between “Cottoleo” and “Cottolene," be. tween “Cellonite" and "Celluloid," between "Wamyesta" and "Wamsutta," between "Maizharina" and "Maizena," between “Saponite" and “Sapolio” (see citations in 64 Fed. 135), there is little difficulty in disposing of this case. In the period of rest and quiet which will be secured by a temporary injunction, possibly defend. ants may renew their strength sufficiently to be able to get further away from "Momaja" the next time they try "to strictly differ
entiate” their own goods. The case of Medicine Co. v. Wood, 108 U. S. 218, 2 Sup. Ct. 436, has no application to the facts of this
No misrepresentation as to who is the manufacturer of complainant's coffee, nor as to where it is manufactured, is shown. The letters of Thurber referred to in defendants' affidavits are immaterial. They were written after the title to the trade-mark passed from the concerns in which he was interested.
Motion for injunction pendente lite is granted.
CUERVO v. OWL CIGAR CO.
(Circuit Court, S. D. New York. May 23, 1895.) UNYAIR COMPETITION-SIMULATION OF LABELS.
When a defendant has been enjoined from using a label almost identical with that of complainant, he will also be enjoined from resorting to another label, differing in detail from complainant's, but so like it in general appearance as to deceive consumers, if not trade experts. This was a suit by G. Garcia Cuervo against the Owl Cigar Company and others to restrain the use of certain labels. A prelimi. nary injunction was granted at the commencement of the suit. Complainant now moves for leave to file a supplemental bill, and for a second preliminary injunction against the defendant company.
Jones & Govin, for plaintiff.
LACOMBE, Circuit Judge. Defendant was enjoined, when this suit was begun, upon proof of the sale by it of cigars put up in boxes ornamented with labels so closely resembling those which mark complainant's goods that it was extremely difficult to find any variance between them. Subsequent to the granting of that injunction, defendant's officers appear to have searched the stock of certain lithographers who get up the ornamental dressing for cigar boxes, and, finding a set of labels which presented many points of difference when closely compared with complainant's labels, purchased the same, and now use them to dress up their own goods. Defendant's officers swear that in selecting these last labels they had no intention to infringe complainant's trade-mark, but, despite their affidavits, this court cannot escape the conviction that the present method of dressing up their goods was intended to deceive the purchasing consumer, and delude him into the belief that the cigars he purchases are those of the complainant. With an almost infinite variety of designs to choose from or to devise, it is remarkable that defendant should persist in one which, with differences of detail, still presents the same peculiar appearance of elaborate ornamental tracery work, combined with striking coloring, unless its object was to represent its goods as those of complainant,—to the consumer, if not to the trade expert. That this is the result. is abundantly shown by the moving affidavits. Had defendant shown that there had been on the market other genuine labels than the complainant's, resembling them even generally in the arrange: ment of ornamental tracery, the affidavits submitted on its behalf might have more weight; but, on the papers and exhibits now before the court, there is apparently an effort still to simulate complainant's distinguishing packages, and at the same time present a number of points of difference to argue upon when charged with infringement. It is apparently so easy for one who honestly seeks to sell his own goods as his own to dress them up in such a way that they may be recognized as his own, that, when he offers them to the public in a dress sufficiently like his neighbor's to deceive the average consumer, courts naturally suspect his motives to be such as his actions indicate.
Motions for preliminary injunction and for leave to file supplemental bill are granted.
AMERICAN BELL TEL. CO. et al. v. UNITED STATES.
(Circuit Court of Appeals, First Circuit. May 18, 1895.)
1. PATENTS-DELAY IN PATENT OFFICE-LACHES OF APPLICANT-MOTIVE.
If an applicant is under no legal obligation to prevent delays arising from the acts or omissions of the patent office officials, there is no rule of law by which it can be said that, because he may have received an incidental benefit therefrom in the prolongation of his monopoly, his purpose in not more vigorously pressing his application was unlawful. One's motives
will not make wrongful an act which is not in itself wrongful. 2. SAME-DUTY OF APPLICANT-DILIGENCE.
There is no rule of diligence requiring an applicant, on pain of forfeiting his rights, to do, in the interest of the public, all the things which he has a right to do, in his own interest, for the purpose of pressing his ap
plication to a speedy issue. 8. SAME-BILL TO CANCEL PATENT.
Upon a bill to cancel a patent on the ground that the patentee acquiesced in delays of the patent office whereby his monopoly was, in effect, prolonged, it is not for the court to say, under the circumstances of this case, that he was not entitled to use his own judgment in respect to what unofficial methods he might take, or the persistency of his representations
to the public officials for the purpose of speeding his application. 4. SAME-UNDERSTANDING WITH OFFICIALS OF PATENT OFFICE.
The existence of an understanding between the patent office officials and an applicant that further action should abide the result of certain litigation involving the applicant's rights is no ground for forfeiting a patent subsequently granted, though the delay in effect operated to prolong the patentee's monopoly, where the understanding was the result of the honest and independent judgment of both parties that this course was, on the whole, the best, and consisted in nothing more than a mere interchange
of these views. 5. SAME-ERROR OF JUDGMENT BY COMMISSIONER.
An error of judgment on the part of the commissioner in delaying action upon an application pending certain litigation which involved the applicant's rights, and the acquiescence of the applicant in such delay, is no
ground for forfeiting the patent subsequently issued. 6. SAME-BILL TO CANCEL PATENT-BURDEN OF PROOF.
Where a bill was brought by the United States to cancel a patent, on the ground of laches of the applicant in pressing his application to a final issue, and it was contended that, by reason of the special circumstances of the case, he was under an extraordinary duty to the public to exercise the greatest possible diligence to move the patent office officials to speedy action, held that, assuming the existence of such an obligation, the burden rested upon the United States of proving that under some practical method or methods, not resorted to by the patentee, the action of the patent office
would have been hastened. 7. SAME-CONSTRUCTIVE FRAUD.
A patent should not be canceled merely upon the ground of imputed or legal fraud arising from delay of the patent office, acquiesced in by the
applicant, where there was no deceit, collusion, or corruption. 8. SAME- AUTHORITY OF COMMISSIONER – Two PATENTS TO SAME PERSON FOR
The issuance of a second patent to the same person for the same invention, under such circumstances that it is not clearly manifest that the inventions are the same, and that there might be a reasonable difference of opinion on the question of identity, does not involve such an excess of power on the part of the commissioner as will justify a court of equity
in canceling the second patent, especially in view of Rev. St. 88 4893, 4911. 9. SAME-TELEPHONES.
The Berliner patent, No. 463,569, for a combined telegraph and telephone, held, in a suit to cancel the same, not void on the ground of fraud, mistake, or laches in pressing the application to final decision in the pat
ent office. 10. APPEAL-ALLOWANCE OF AMENDMENTS TO PLEADINGS.
On appeal by complainant from a decree rendered against him after final hearing in equity, the appellate court, on affirming, will not ordinarily reserve leave for an amendment of the bill which would require the taking of new evidence.
Appeal from the Circuit Court of the United States for the District of Massachusetts.
This was a bill by the United States against the American Bell Telephone Company and Emile Berliner to cancel patent No. 463,569, for combined telegraph and telephone. The circuit court entered a decree for the cancellation of the patent (65 Fed. 86), and the respondents appeal.
William G. Russell, James J. Storrow, and Frederick P. Fish (William W. Swan and William K. Richardson, on the brief), for appellants. Causten Browne and Robert S. Taylor, for the United States.
Before COLT and PUTNAM, Circuit Judges, and NELSON, District Judge.
PUTNAM, Circuit Judge. This is a bill in equity, filed February 9, 1893, signed in behalf of the United States by its attorney general, against the American Bell Telephone Company and Emile Berliner, containing a prayer in the alternative touching patent issued November 17, 1891, numbered 463,569, to the American Bell Telephone Company, as assignee of Berliner. The prayer is that the patent be in all things recalled, repealed, and decreed absolutely null, but that, if the patent is not deserving to be wholly repealed, but is repealable in part, a decree be made repealing only such parts as the court shall deem to be repealable. As to the latter part of this alternative prayer for relief the court has heard nothing, and there is no occasion to consider it.
The bill contains enough on its face and in its frame, and in its signature by the attorney general, to bring it within U. Š. v. American Bell Tel. Co., 128 U. S. 315, 9 Sup. Ct. 90. But in the development of the proofs all allegations of affirmative or positive fraud dropped out; so U. S. v. American Bell Tel. Co. fails to reach the merits of this cause.
Berliner's original application was filed June 4, 1877, and patent 463,569 was issued more than 14 years thereafter. This patent is sufficiently described for the purposes of this case by saying in a general way that it covers the microphone. In addition to this, the American Bell Telephone Company, as assignee of Berliner, holds, or held, a patent issued to Berliner, November 2, 1880, numbered 233,969. It is represented that the patent of November 2, 1880, was a divisional one, growing out of the same original application which supports patent 463,569. It is also represented that this patent covers the invention described and claimed in patent 463,569, under such circumstances that the latter comes within Miller v. Manufacturing Co., 151 U. S. 186, 14 Sup. Ct. 310.
The pith of the case, as stated briefly by the counsel for the United States, is (1) that patent 463,569 is void for illegal delay in its issue, and (2) that it is also void on the ground that the prior patent, 233,969, “was granted upon the same application to the same applicant for the same invention." Each proposition will be stated hereafter more fully, and in the precise form in which it came to the court. Berliner, having no interest, need not be further noticed by us.
As to the first ground of proceeding, the case is found in the following extracts from the bill:
“On June 4, 1877, said Emile Berliner * * * filed in the patent office of the United States an application, executed in due form, asking a grant of letters patent for certain improvements in combined telegraph and telephone.
* Upon said application such proceedings were held in the patent office that on November 17, 1891, a patent, numbered 463,569, was issued to the respondent the American Bell Telephone Company, as assignee of said Emile Berliner, * * * the title to which patent remains and is now in said American Bell Telephone Company, as owner of the entire interest therein. * * * And your orator alleges that said patent was unlawfully obtained by said respondent the American Bell Telephone Company, and unlawfully issued by the commissioner of patents, and is an illegal grant, and ought of right to be annulled, for reasons which are hereinafter set forth; and as an act of duty and justice towards the citizens of the United States, all whose rights and privileges are unlawfully and unjustly abridged by said patent, your orator brings this bill for the repeal thereof. * * * Your orator shows further on information and belief that after the filing of the application aforesaid by said Berliner, and at some time prior to October 23, 1878, said Berliner sold the invention described in said application and his right to a patent therefor to one of the predecessors and grantors of the respondent company aforesaid, viz. either to said Bell Telephone Company or said National Bell Telephone Company (corporations organized under the laws of Massachusetts), or both, the precise fact in this regard being unknown to your orator. * * And your orator avers further that the broad claims of said patent 463,569, cover in their scope every form of constant contact telephonic transmitter which it is possible to make. * * * And pointing out the circumstance * that from the time of acquiring title to the invention of said Berliner, as aforesaid, until the issue of said patent 463,569, said respondent company and its predecessor or predecessors had control of said application of said Berliner, and at the same time owned the inventions and patents of Blake, Berliner,