WARREN FEATHERBONE CO. v. AMERICAN FEATHERBONE CO. et al., 141 F. 513

JENKINS, Circuit Judge (after stating the facts). That Warren was the inventor of a new and useful

article may not be denied. The merit of his invention was recognized by the government and monopoly thereof granted to him by the patent of 1883. Warren then coined a new word, “Featherbone,” which in the specification to that patent was first employed as descriptive of, and as the name of the

article produced by his invention. In all subsequent patents, the name is so used, and it became generally known as the designation of the

article itself. Thus in the Century Dictionary, edition of May, 1889, we find the word and its meaning: “Featberbone. A substitute for whalebone, made from the quills of domestic fowls. The quills are split into strips, which are twisted, and the resulting cords are wrapped together and pressed.” In the Standard Dictionary, edition of 1894, we find: •Featherbone.

A substitute for whalebone prepared from the quills of feathers.” In Murray’s English Dictionary, edition of 1901, we find: “Featherbone. 1887, Chicago Advance, 17 Feb. 112, Featherbone—prepared from the quills of geese and turkeys, is largely taking the place of whalebone in the manufacture of whips.” In the Canadian tariff act of 1900, it is recognized as a known

article of commerce, and a duty is imposed upon its importation in these words: “Featherbone, plain or covered in coils, 20 per cent.” The term has thus become the name of the

article produced from the quills of feathers and used as a substitute for whalebone. Indeed, as abundantly appears from the specifications to the various patents, the term was coined by Warren as a generic designation of the product, and not as indicating the origin of the manufacture. It was the name that in the patents he gave to the product of his invention. Under these circumstances the question occurs whether the name of a patented

article at the expiration of the patent falls into the public domain with the patented article. We consider this question to be no longer an open one. It has been resolved by the ultimate tribunal (Goodyear Company v. Goodyear Rubber Company, 128 U. S. 598, 9 Sup. Ct. 766, 32 U Ed. 535; Singer Manufacturing Company v. June Manufacturing Company, 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118; Elgin National Watch Company v. Illinois Watch Case Company, 179 U. S. 665, 21 Sup. Ct. 270, 45 L. Ed. 365; Holzapfel’s Compositions Company v. Rahtjen’s American Composition Company, 183 U. S. 1, 22 Sup. Ct. 6, 46 L.

Ed. 49), and its ruling has been followed and applied by this court (Horlick’s Food Company v. Elgin Milkine Company, 56 C. C. A. 544, 120 Red. 264.) It was sought at the bar to distinguish the Singer Case from the one in hand, upon the ground that in the former case the three patents covering distinct parts of the Singer machine had expired, while here some of the patents for improvements upon the original method of preparing the

article have not expired, and it is said that all of these patents must expire before the public can take the name “Featherbone” for use in respect to the

article produced. We think this contention cannot be upheld. The fact was as stated in respect to the Singer Case; but as we read that decision it does not proceed and is not based upon that ground. The general principle is declared and stated. The fact that the several patents had expired was an incident not affecting the decision. Indeed the contention could not well be upheld; for there would then be given to every patentee a monopoly limited in point of time only by the ingenuity with which improvements could be devised and patented. Upon the expiration of the patent, the public had the right to make the

article named in the patent, and had the right to call it by the name which the patentee had given to the article. The point is well stated in Rinoleum Manufacturing Company v. Nairn, R. R. 7 Ch. Div. 834. The action there was to restrain the use of the word “Rinoleum” as applied to'floor cloth, the name being given to the

article by the patentee. It was a fanciful name and had not been previously used. RTpon the expiration of the patent the defendants proposed to make and sell linoleum floor cloth, calling.it by that name, and the court observed: “In the first place, the plaintiffs have alleged, and Mr. Walton has sworn, that, having invented a new substance, namely, the solidified or oxidized oil, he gave to it the name of ‘Linoleum,’ and it does not appear that any other name has ever been given to this substance. It appears that the defendants are now minded to make, as it is admitted they may make, that substance.

I want to know what they are to call it. That is a question I have asked, but I have received no answer; and, for this simple reason, that no answer could be given, except that they must invent a new name. I do not take that to be the law. I think that if ‘Linoleum’ means a substance which may be made by the defendants, the defendants may sell It by the name which that substance bears. But then it is said that although the substance bears this name, the name has always meant the manufacture of the plaintiffs. In a certain sense that is true.

Anybody who knew the substance, and knew that the plaintiffs were the only makers of this substance, would, in using the word, know he was speaking of a substance made by the plaintiff. But, nevertheless, the word directly or primarily means solidified oil.

It only secondarily means the manufacture of the plaintiffs, and has that meaning only so long as the plaintiffs are the sole manufacturers.” The court concludes: “That solidified or oxidized oil may be made by the defendants if they are minded to make it; and if they are minded to call it by the only name which it bears, I think they are at liberty so to do.” Upon the expiration of the first patent to Warren the public had the right to manufacture the

article described in the patent and to sell it by the name by which in the patent it was designated, to wit, “Feather-bone.” If the appellees so exercising that right have infringed upon any subsequent and existing patent, they may be called to account for an infringement of that patented right; but they have the right to designate the

article which they manufacture as described in the expired patents, and to call it by its legitimate name, “Featherbone”—a name given to the substance by the patentee. The second question involved concerns the subject of unfair trade. Notwithstanding the appelleees have a right to the use of the word “Featherbone,” they have no right to so disguise their goods that they may be mistaken by a purchaser exercising the ordinary care of purchasers, as and for the goods of the appellant.

We have given careful scrutiny to the oral evidence bearing upon this question, and to the exhibits, and find no ground of support for the contention that there has been any unfair competition in trade. There is no proof of actual mistake, and we find no imitation of marks or names, tending to a confusion of goods. While the packages of the appellees bear the name of the

article “Featherbone,” and rightfully so, as we consider, there is nothing upon them to indicate that they contain goods manufactured by the appellant. To the contrary, there is an entire absence of all the distinguishing marks which appeal to the eye, to be found upon the packages of the appellant, and the name of the manufacturer, “American Featherbone Company,” is plainly and unmistakably imposed thereon. In the one case, the covers of the boxes containing the product are covered with advertising matter relating to the article; in the other the cases are perfectly, plain.

We should not hesitate to restrain any attempt by the appellee to palm its goods upon the public as the goods manufactured by the appellant; but we fail to find in this record any evidence warranting the suggestion of such imposition. It may be that the goods themselves may not be distinguishable from the goods manufactured by the appellant. That arises from the character of the

article and that it is incapable of distinguishment, except as the name of the manufacturer is stamped upon it; but the marks upon'the packages which contain the goods and in which they are sold, bear no resemblance to each other, except in the use of the word “Featherbone.” The decree is affirmed.