sulting dedication. To say otherwise would without clearly indicating that the machine be to hold that, although the public had ac- upon which the name is marked is made by quired the device covered by the patent, yet him, then the right to use the name because the owner of the patent or the manufacturer of its generic signification would imply a of the patented thing had retained the desig-power to destroy any good-will which benated name which was essentially necessary longed to the original maker. It would imto vest the public with the full enjoyment port, not only this, but also the unrestrained of that which had become theirs by the dis- right to deceive and defraud the public by appearance of the monopoly. In other words, so using the name as to delude them into bethat the patentee or manufacturer could take lieving that the machine made by one person the benefit and advantage of the patent upon was made by another. the condition that at its termination the To say that a person who has manufactured monopoly should cease, and yet when the machines under a patented monopoly can 186jend was reached disregard the *public acquire no goodwill, by the excellence of dedication and practically perpetuate indefi- his work or the development of his businitely an exclusive right. ness during the patent, would be to seriously The public having the right on the ex-ignore rights of private property, and would piration of the patent to make the patented article and to use its generic name, to restrict this use, either by preventing its being placed upon the articles when manufactured, or by using it in advertisements or circulars, would be to admit the right and at the same time destroy it. It follows, then, that the right to use the name in every form passes to the public with the dedication resulting from the expiration of the patent.

be against public policy, since it would deprive the one enjoying the patent of all incentive to make a machine of a good quality, because at its termination all the reputation or goodwill resulting from meritorious work would be subject to appropriation by everyone. On the other hand, to compel the one who uses the name after the expiration of the patent to indicate that the articles are made by himself in no way impairs the right Nor is this right governed by different of use, but simply regulates and prevents principles where the name, which has become wrong to individuals and injury to the public. generic, instead of being an arbitrary one, This fact is fully recognized by the wellis the surname of the patentee or original settled doctrine which holds that although manufacturer. It is elementary that there" everyone has the absolute right to use his is a right of property in a name which the own name honestly in his own business, even courts will protect. But this right, like though he may thereby incidentally interfere the right to an arbitrary mark or any other, with and injure the business of another havmay become public property by dedication ing the same name. In such case the inconor abandonment. The latter is defined by venience or loss to which those having a comDe Maragy, in his International Dictionary mon right are subjected is damnum absque of Industrial Property, as follows: injuria. But although he may thus use his Abandonment in industrial property is name, he cannot resort to any artifice or to an act by which the public domain originally do any act calculated to mislead the public enters or re-enters into the possession of the as to the identity of the business firm or esthing (commercial name, mark, or sign), tablishment, or of the article produced by by the will of the legitimate owner. The them, and thus produce injury to the other essential condition to constitute abandonment beyond that which results from the similarity is that the one having a right should con- of name." Russia Cement Co. v. Le Page, sent to the dispossession. Outside of this 147 Mass. 206, 208; Pillsbury v. *Pills-[188 there can be no dedication of the right, be-bury, 24 U. S. App. 395, 404; Croft v. Day, 7 cause there cannot be abandonment in the juridical sense of the word.”

Beav. 84; Holloway v. Holloway, 13 Beav. 209; Wotherspoon v. Currie, L. R. 5 H. L. 408; Montgomery v. Thompson [1891] App. Cas. 217; Howard v. Henriques, 3 Sandf. 725; Meneely v. Meneely, 62 N. Y. 427, 20 Am. Rep. 489; Lawrence Mfg. Co. v. Tennessee Mfg. Co. 188 U. S. 537 [34: 998]; Brown Chemical Co. v. Meyer, 139 U. S. 540 [35: 247]; Coats v. Merrick Thead Co. 149 U. S. 562 [37: 847]. Where the name is one which has previously thereto come to indicate the source of manufacture of particular devices, the use of such name by another, unaccom panied with any precaution or indication, in itself amounts to an artifice calculated to produce the deception alluded to in the fore

But it does not follow, as a consequence of a dedication, that the general power, vested in the public, to make the machine and use the name imports that there is no duty imposed on the one using it to adopt such precautions as will protect the property of others and prevent injury to the public interest, if by doing so no substantial restriction is imposed on the right of freedom of use. This principle is elementary and applies to every form of right, and is generally expressed by the aphorism Sic utere tuo ut alienum non lædas. This qualification results from the same principle upon which the dedication rests, that is, a regard for the in-going adjudications. terest of the public and the rights of individuals.

187]* It is obvious that if the name dedicated to the public, either as a consequence of the monopoly or by the voluntary act of the party, has a two-fold significance, one generic and the other pointing to the origin of manufacture, and the name is availed of by another

Indeed, the enforcement of the right of the public to use a generic name, dedicated as the results of a monopoly, has always, where the facts required it, gone hand in hand with the necessary regulation to make it accord with the private property of others and the requirements of public policy. The courts have always in every such case, without ex

ception, treated the one as the co-relative or resultant of the other.

In Fairbanks v. Jacobus, 14 Blatchf. 337 (1877), it was sought to restrain the defendant from making or selling an imitation of Fairbanks' scales and from casting the words Fairbanks' patent" upon scales so made in imitation of scales of the manufacture of the complainant, Johnson, J., held (p. 341) that, by reason of the expiration of the patents under which plaintiff manufactured his scales, there was not, in the acts complained of, any invasion of the plaintiff's rights. The court said:

"Certainly, if the words 'Fairbanks' patent' do not mean to assert the existence of a patent securing the scales, but only that they are made in conformity with, and embody the invention of, the expired Fairbanks' patent, they are free to all the world. What is not free is to pretend that a scale is made by one person which is, in fact, made by another.

to make and vend such machines. If the patentees or their assignees could assert suc cessfully an exclusive right to the name Singer' as a trademark, they would[190 practically extend the patent indefinitely. The court entered into no discussion of the limitations resting on a party in the use of a name or designation dedicated to public use because the facts rendered it unnecessary, the court saying (p. 282):

"Sixth. The distinctive names and devices of the plaintiff corporation were not used by the defendant, and no one of ordinary intelligence could suppose that the 'Stewart' manufacture was the manufacture of the plaintiff. Each had its distinctive and detailed names and devices, so that there was no probability that the machine made by one would be mistaken for the manufacture of the other."

In Singer Mfg. Co. v. Riley, 11 Fed. Rep. 706 (1882), where a suit was brought to restrain the use of the word "Singer" by the In Singer Mfg. Co. v. Larsen, 8 Biss. 151 defendant in connection with sewing ma(1878), it was sought to restrain the defendant chines, the preliminary injunction was re189]from the use of the name *"Singer" in fused, following the decision in the Stanage connection with machines manufactured or Case. The court called attention to the fact sold by him. Drummond, J., observed (p. 152) that the word "Singer" was not used on defend"On a machine called 'The Singer Sewing ant's machines. It made no ruling as to the Machine' there were various patents. These duty of the defendant to so use the name patents have all expired, and nothing can "Singer" as not to deceive, because it found therefore be claimed under them. Other that the defendant's devices were not calpersons cannot be prevented from manu-culated to mislead. facturing a machine like the Singer sewing In Brill v. Singer Mfg. Co. 41 Ohio St. machine, and which may be called, to dis- 127, 52 Am. Rep. 74 (1884), it was held tinguish it from other machines, Singer's (pp. 137 et seq.) that as Singer machines Sewing Machine.' If a sewing machine has had been protected by patents and during the acquired a name which designates a mechan-existence of such patents became known and ism or peculiar construction, parts of which are protected by patents, other persons, after the expiration of the patents, have the right to construct the machine and call it by that name, because that only expresses the kind and quality of the machine."

But in upholding the right a duty was also enjoined, the court adding:

identified in the trade by their shape, external appearance, or ornamentation, the patentee could not, after the expiration of the patent, prevent others from using the same modes of identification, in machines of the same kind, manufactured and sold by them. It was also held that Singer machines had become known to the public by a distinctive name during the existence of the patent, and that anyone at the expiration of the patent might make and vend such machines and use such name.

While I hold that the defendant is not prevented from constructing a 'Singer Sewing Machine,' still he cannot be permitted to do any act the necessary effect of which will be to intimate or to make anyone be- It would appear that the name "Singer" had lieve that the machine which he constructs not been, directly or indirectly, marked upon and sells is manufactured by the plaintiff. the machines. It might also be inferred from Neither has he the right to use any device the report of the case that the designation of which may be properly considered a trade- defendant's machine was accompanied by a mark, so as to induce the public to believe statement as to who was the manufac [191 that his machine has been manufactured by turer. At all events, the court did not discuss the plaintiff; and therefore I shall modify the obligation of the defendant to avoid misthe injunction in this case by simply requir-leading since, under the facts, the question ing the defendant to refrain from selling any did not arise. Singer sewing machines manufactured by any person or company other than the plaintiff, without indicating in some distinct manner that the said machines were not manufactured by the Singer Manufacturing Company."

In Singer Mfg. Co. v. Stanage, 6 Fed. Rep. 279 (1881), Treat, District Judge, said (p. 280): "The plaintiff and its predecessors had, in connection with others, through patents, a monopoly as to certain sewing machines known as the 'Singer machines.' When these patents expired every one had an equal right

In Gally v. Colt's Patent Fire-Arms Mfg. Co. 30 Fed. Rep. 122 (1887), it was held that the name "Universal," applied by a patentee to his patented printing press, upon the expiration of the patent, could not be appropri ated by the inventor as a trademark. Shipman, J., said (p. 122):

"Any manufacturer who uses the name now does so to show that he manufactures the Gally press, which he may rightfully do, and does not represent to the public that it is getting any skill or excellence of work

manship which Gally possessed, and does not | nounced by Mr. Justice Miller was made. induce it to believe that the presses are manufactured by the plaintiff."

bel of the complainant, who had succeeded to made by the plaintiffs, of course the case the rights of the original patentee. In the would be entirely different. court of appeals James, L. J., said (p. 863): It appears to me, therefore, that there has "It is clear that on the expiration of this been neither infringement of any essential patent it was open to all the world to manu- part of the plaintiffs' trademark nor any atfacture the article which had been patented; tempt on the part of the defendants to repthat is the consideration which the inventor resent the goods which they intended to sell gives for the patent. The invention becomes as goods made by the plaintiffs." (p. 838). then entirely publici juris. The plaintiff, and Nor is there anything in the Scotch case also the defendants, had a right to tell the of Singer Mfg. Co. v. Kimball, 11 Ct. Sess. world that they were making the article ac- | 3d ed. § 267, or the English cases of Singer cording to the expired patent, and both par- Mfg. Co. v. Wilson, L. R. App. Cas. ties have done this. It is impossible to allow 376, reversing L. R. 2 Ch. Div. 434, and a man to prolong his monopoly by trying to Singer Mfg. Co. v. Loog, L. R. 8 App. Cas. turn a description of the article into a trade- 15, L. R. 18 Ch. Div. 412, which in any way mark. Whatever is mere description is open contravenes the doctrines heretofore stated. to all the world. In the present case the In the Kimball Case the fact that there had plaintiff's label was nothing more than a been no patents in England was expressly description, and he cannot, therefore, have referred to, the court finding that for many protection for it as a trademark." years prior to 1870 machines like Singer machines had been *manufactured under [196 various names in England and Scotland by other parties than the Singer Company. It was upon these facts that the court based the right of the Singer Company to an exclusive trademark in the name. Indeed, Lord Ardmillon (p. 276) expressly declared that he regarded the facts, above stated, as distinguishing the case from Wheeler & Wilson Mfg. Co. v. Shakespear, 39 L. J. Ch. 36.

Bagalley, L. J., said (p. 865) :

"The vice chancellor thought that the words 'Cheavin's patent' were calculated to deceive the public. But 'Cheavin's patent' is a correct description of the principle according to which the article was made, and there follows a distinct statement that it was manufactured by Walker, Brightman, & Co. Therefore on this ground also the case made by the plaintiff's claim fails."

matter to state that his machines were constructed upon the Singer system or model.

The contention advanced by the complainant that his right to the exclusive use in the name "Singer, "after the expiration of the patents, although that name became the generic description of the machines during the monopoly, is in accord with the law of France, is without foundation. On the contrary, the French writers and courts recognize the doctrine to be substantially like that which is enforced in America and England. Braun, Marques de Fabrique, § 68, p. 232, says:

In Linoleum Mfg. Co. v. Nairn, L. R. 7 This distinction is also true of Singer Mfg. Ch. Div. 834 (1878), where the right to the Co. v. Wilson and Singer Mfg. Co. v. Loog, exclusive use of the word "linoleum" was supra. In neither was there a claim of a asserted, the substance to which the name generic description as a consequence of a was attached having been covered by patents monopoly, and it becomes, therefore, needwhich had expired, Fry, J., said (p. 836): less to review these cases at length. It may, "In the first place, the plaintiffs have al- however, be said that both these cases recogleged and Mr. Walton has sworn that, hav-nize the right of a party in his advertising ing 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 195] 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 lino leum' means a substance which may be made by the defendants, the defendants may sell it by the name which that substance bears. In my opinion it would be extremely difficult for a person who has been by right of some monopoly the sole manufacturer of a new article, and has given a new name to the new article, meaning that new article and nothing more, to claim that the name is to be attributed to his manufacture alone after his competitors are at liberty to make the same article."

As the article manufactured by the defendant was clearly marked with the source of manufacture, the case was not one requiring the enforcement of the duty to designate the origin of the manufacture, but the court also said (p. 837):

"If I found they were attempting to use that name in connection with other parts of the trademark, so as to make it appear that the oxidized oil made by the defendants was

"The question is not whether an inventor can attribute to his patented invention a particular designation which remains the exclusive property of the patentee by the same title and for as long a time as the invention itself. This is evident, for without this right existing in the patentee his patent would be in certain respects illusory. But at the expiration of the patent does the designation fall into the public domain with the patented invention? Does the patented thing lose the right to be solely individualized in favor of the inventor by the designation which up to that time has served as its mark. Three theories present themselves."

After fully stating these three different points of view the author adds:

"To resume, the three systems may be formulated as follows: 1st. The designation of the thing patented becomes public property on the expiration of the patent. 2d. The patentee retains in every case the

sole use to the designation, after the expira- | patented invention falling into the public tion of his monopoly, if he had deposited the domain can be advertised and sold by the name [as a legal trademark] before the ex- designation given to it by the inventor, even piration of the patent. 3d. The designation when the name of this last person figures continues to belong to the patentee in every therein. If by usage and by the act of the case but one, if the name given to the product inventor his name has become the necessary has become the only and necessary designa-element to designate the product, it is essention of the patented article. We think there tial, however, that the competitors of the incan be no hesitation in pronouncing in favor ventor avoid all confusion which can induce of the third proposition, except, however, the public into error as to the origin of that it requires to be completed by a second the products." Cassation, 31st of January exception, which is that the name is also (1860), Charpentier. public property if, in the interval which has elapsed between the expiration of the patent and the deposit of the trademark, the inventor has allowed the designation to become public property."