Coats v. Merrick Thread Company

by Henry Billings Brown

United States Supreme Court

149 U.S. 562

Coats  v.  Merrick Thread Company

Statement by Mr. Justice BROWN:

This was a bill in equity by the firm of J. & P. Coats, of Paisley, Scotland, to enjoin the defendants, the Merrick Thread Company, a Massachusetts corporation, and Herbert F. Palmer, its managing agent in New York, from infringing plaintiffs' trade-mark, and unfairly competing with them, by simulating certain labels and symbols used by the plaintiffs upon the ends of wooden spools upon which sewing thread is wound.

The bill set forth, in substance, that plaintiffs had, since 1830, been engaged in the manufacture and sale of sewing threads on spools, and since the year 1840 the thread made by them had been, and still was, sold largely in the United States; that since about the year 1869 said firm had also been engaged in the manufacture of thread at Pawtucket, in the state of Rhode Island; that their business was very large and valuable, and their thread was well known to the trade as 'J. & P. Coats' thread;' that all the thread manufactured by plaintiffs, which is wound on spools of 200-yard lengths, had been and still was composed of six separate strands twisted together, known as 'Six-Cord Thread,' and was designated upon their labels and wrappers as 'Best Six Cord.' That about the year 1842 the name 'J. & P. Coats,' with the quantity reeled on each spool, and the words 'Best Six Cord,' with a designating number, were placed upon circular black and gilt label upon the end of every spool, and had always been one of the designating trade-marks of the plaintiffs in the United States; that in 1869 they adopted the idea of embossing upon the natural wood, and upon the outer edge of the heads of the spools, numerals corresponding with those upon the paper labels pasted upon the center of said spool heads, the object of such embossing being to show the number of the thread in case the paper label showing such number should be defaced or removed, and also to give a distinctive appearance to the plaintiffs' spools, and to indicate the origin and manufacture of the thread. The bill further averred that on the 9th of February, 1875, plaintiffs registered as a trade-mark at the patent office the central label of paper, and the peripheral band of natural wood, embossed with an ornamental design of crossed lines and central stars, with intermediate spaces, in which were embossed numerals corresponding to those in the center of the label.

The bill further charged the defendant the Merrick Thread Company with being the manufacturer of both the three-cord thread, a thread of inferior grade,-and also of six-cord thread, on spools in length of 200 yards; that for the three-cord thread the defendant used paper labels wholly unlike, in color or design, to any labels used by the plaintiffs, but that in selling, in competition with the plaintiffs, the six-cord thread, it used labels upon the spools made in colorable imitation of the plaintiffs', and intended as a counterfeit of their designs and trade-mark, the object being to so imitate the general appearance of plaintiffs' thread that the same may pass into the hands of tailors, illiterate men, and others buying at retail, and using sewing thread, as the genuine thread of plaintiffs.

In their answer the defendants denied the material allegations of the bill, and that the marks, embossment, and labels used by the Merrick Thread Company were a simulation or infringement upon the plaintiff's labels and trade-marks, but, upon the contrary, averred that they had endeavored to mark their goods so that no one could mistake their origin, and that their labels were so different from those of the plaintiffs and other manufacturers that they were plainly distingushable from them by ordinary purchasers. They further averred that the use of embossing the number of the spool thread on the wood of the spool head around the paper label was on April 5, 1870, patented as a design to one Hezekiah Conant, which patent had long since expired, and alleged that since such expiration the defendants had the free right to use such design, including any paper label which was not in and by itself an infringement of any lawful trade-mark of the plaintiffs.

On a hearing in the court below upon pleadings and proofs, the bill was dismissed (36 Fed. Rep. 324) on the ground that defendants were not shown to have made an unlawful use of the plaintiffs' labels. Plaintiffs thereupon appealed to this court.

Frederic H. Betts, for appellants.

W. C. Witter and W. H. Kenyon, for appellees.

Mr. Justice BROWN, after stating the facts in the following language, delivered the opinion of the court.

Notes