These two cases involve the same questions, and were submitted together upon the same evidence. They differ in this, that the Premium Manufacturing Company manufacture the articles, and the Rice-Stix Dry Goods Company are the distributers or sellers of the articles.
The bills filed allege, in substance, the incorporation of complainant in the year 1891, its engaging in the manufacture of men’s drawers, the body of the drawers being usually manufactured of white cotton material, with a buff or salmon colored strip down each side and the back thereof, and being so conspicuous as to distinguish such drawers from all others. It is alleged that the buff strip was adopted arbitrarily and sold]'- for the purpose of identifying complainant’s product. The hills further allege that complainant adopted as distinguishing marks for said goods the arbitrary and fanciful name “Elastic Seam,” and certain peculiarly marked boxes, and a curved form of stamp, all of which were used in the manufacture and sale of said drawers. The bills also allege the expenditure of large sums of money by complainant in advertising and creating a market for its drawers, and allege that the term “Elastic Seam,” and the curved form of stamp, and said boxes, as applied to and used with men’s drawers, came to be recognized by the public and dealers as indicating and distinguishing the drawers of complainant. The bills allege the exclusive right of complainant to use said buff-colored strip, curved form of stamp, marked boxes, and the term “Elastic Seam.” The bills also charge the defendants with *641violating tlie rights of the complainant in that they are manufacturing and selling drawers, the body of which is of white material, with a buff or salmon colored strip down the sides, and are designating such drawers with the term “Elastic Seam,” and further charging that they are using boxes in the sale of.such drawers with markings similar to those upon complainant’s boxes, and marking said drawers with a curved form of stamp in the similitude of complainant’s. The prayer of the bills is in the usual form for an injunction and an accounting.
Defendants’ answers deny that the complainant is entitled to the exclusive use of said buff or salmon colored strip, and deny that it is entitled to tlie exclusive use of the words “elastic seam”; that the said words “elastic scam” and the buff-colored strip are descriptive of the drawers; deny that its stamp is in the similitude of complainant’s, and deny generally all the allegations of the hills. They further allege that on June 28, 1881, the United States issued to one C. A. Brown a patent covering the right to manufacture drawers with an elastic strip down the back and the sides of the legs, which patent was acquired by complainant; that complainant and its predecessors owning said patent manufactured its drawers under said patent; that said patent expired in June, 1898, and that since the expiration of said patent the right to manufacture drawers with such colored strips has been open to the public; that defendants did not engage in the manufacture or sale of such drawers until after the expiration of the patent.
A large amount of testimony was taken in support of the issues, and the Circuit Court entered a decree in each case in conformity with the prayer of the bill. Defendants have appealed.
From the pleadings and the evidence, three-questions are presented for our consideration: (1) Has complainant a trade-mark in, and exclusive right to use, such buff or salmon colored strip, as a distinguishing feature from the color of the body of the drawers? (2) lias the complainant a trade-mark in, and therefore an exclusive right to, the use of the words “elastic seam,” as applied to men’s drawers? (3) Has the defendants’ action in the manufacture and sale of men’s drawers been such as to violate the rights of complainant and constitute unfair trade?
It is shown by the evidence that on June 28, 1881, one Charles'A. Brown obtained letters patent from the United States for the combination in men’s drawers of the woven body fabric and knitted insertions at the points of the seams and knitted bands at the bottom of the legs, these knitted insertions being a narrow strip down the side of the garment at the point of the seam, and to be either knitted or sewed to the body fabric, the purpose being to give elasticity to the garment. This patent was assigned to J. A. Scriven, and a partnership of which he was a member manufactured men’s drawers under said patent until 1891, when the complainant corporation was organized by said Scriven, and it continued such manufacture during the life of the patent, which expired in 1898. During the life of the patent complainant and its predecessors enjoyed the full monopoly of the patent by being the sole and exclusive manufacturers of such drawers.
Complainant claims that it adopted the buff-colored strip in connection with the light-colored body of the garment as a distinguishing *642feature of its manufacture, and thus has a trade-mark in the buff color when used as a feature distinctive from the color of the body of the garment. The combination of a buff color with the elastic strip, as distinguished from the color of the body of the garment, did not of itself, during the life of the patent, distinguish the article from those of other manufacturers, for the simple reason that drawers with an elastic strip could only be made, and were only made, by complainant and its predecessors. We think from the evidence that the use of the buff-colored strip was not arbitrary and for the purpose of giving the drawers a distinguishing feature in this respect The evidence shows that a knitted cotton cloth known as “balbriggan,” made of Egyptian yarn,-the natural color of which was buff, possessed greater elasticity than similar cloth knit from American cotton, the natural color of which was between a white and buff, and for commercial use was either bleached white or dyed huff, the bleaching and coloring of which took from it some of its elastic properties. Eor this reason the Egyptian cotton was used. The right to use the elastic knitted strip in combination with the woven body of the garment became public property, open to the use of all, upon the expiration of the patent, and we do not think complainant thereafter could have the exclusive right to the use of the color. This question was fully considered in the case of this complainant, J. A. .Scriven Company v. Morris (C. C.) 154 Fed. 914, and it was held that complainant did not have, ■• ‘'ter the expiration of the patent, the exclusive right to the use of the combination of the light-colored body with the buff-colored strip. In the course of the opinion it was said:
“The complainant is now seeking to have the court rule that although, by the expiration of the patent, the use of the strip of insertion is free to all, the defendants are to lie enjoined from using it because they use it of the same color as complainant and the patentee did when they were operating under the patent. To so decide would be in many cases to extend indefinitely the monopoly of the patent.”
In this case the evidence does not show that the complainant was the first to use the buff color in combination with the light. The testimony affirmatively shows that prior to that use by complainant men's drawers we-re made of material -the body of which was white and the bands at the ankles of which were elastic, buff-colored balbriggan.
The above case in 154 Fed. 914, was affirmed by the Court of Appeals of the Fourth Circuit, in 158 Fed. 1020, 85 C. C. A. 571, in the following opinion:
“We have carefully considered the questions raised by the appellant in appeal in this case, and are of opinion that the same are without merit. The learned judge who tried the case below wrote a carefully considered opinion, reported in 154 Fed. 914, in which .we fully concur. The judgment of the lower, court is therefore aftirmed.”
The reasons given in the opinion in that case by the trial judge are to our minds not only forceful but conclusive. The buff-colored strip, in combination with the light-colored body, became clearly descriptive of tiie article, and because complainant alone, during the life of the patent, manufactured the same, the color alone did not indicate to the public that such drawers were of complainant’s make.
*643• Complainant aud its predecessor advertised said drawers as Scriven’s elastic seam drawers, and such drawers became generally known as “Elastic Seam.” For this reason complainant claims it is entitled to the trade-name “Elastic Seám,” as applied to drawers of such description, claiming that the term “elastic seam,” was not descriptive merely of the article, but was an arbitrary or fanciful term. The law, we think, well stated by the Court of Appeals in Bennett v. McKinley, 65 P'ed. 505, 13 C. C. A. 25, as follows:
“No principle oí the law of trade-mark is more familiar than that which doilies protection to any word or name which is descriptive of the qualities, ingredients, or characteristics of the article to which it is applied. An exclusive right to the use of such a word as a trade-mark, when applied to a particular article or class of articles, cannot be acquired by the prior appropriation of it, because alt persons who are entitled to produce and vend similar articles are entitled to describe them and to "employ any appropriate terms for that purpose. Whether a word claimed as a trade-mark is available because it is a fanciful or arbitrary name, or whether it is obnoxious to the objection of being descriptive, must depend upon the circumstances of each case. The word which would be fanciful or arbitrary when qpplied f:o one article may be descriptive when applied to another. Tf it is so apt and legitimately significant of some quality of the article to which it is sought to be applied that its exclusive concession to one person would tend to restrict others from properly describing their own similar articles, it cannot be the subject of a monopoly. On the other hand, if it is merely suggestive. or is figurative only ic may be a good trade-mark notwithstanding it is aiso indirectly or remotely descriptive.”
FVe think the term “elastic seam” descriptive merely. By the use of that term one world naturally conclude that at the seam there was something of an elastic character. The term “elastic seam,” we think, would, to a person of ordinary intelligence, indicate that at the point of the seam some material of an elastic nature was inserted, and hence that the term cannot be said to be an arbitrary or fanciful one. In Trinidad Asphalt Mfg. Co. v. Standard Paint Co. (decided by this court August 11, 1908) 163 Fed. 977, are collated many cases illustrative of descriptive terms, and supporting the, “settled rule that no one can appropriate as a trade-mark a generic name or one descriptive of an article of trade, its qualities, ingredients, or characteristics, or any sign, word, or symbol which, from the nature of the fact it is used to signify, others may employ with equal truth.” Had complainant not been protected by ics patent, and others, therefore, been entitled to manufacture such drawers, such others might with equal truth have described the drawers of their manufacture as “elastic seam.” After the expiration of the patent, defendants and all others had the right to manufacture men’s drawers with the elastic strip extending longitudinally along the drawer at the point of the seam, and were also entitled to describe them, and we are unable to perceive any more appropriate words or term for that purpose than the expression “elastic seam.”
In Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 199, 16 Sup. Ct. 1002, 1014, 41 L. Ed. 118, Justice White, after an analysis of many cases, says:
“The result, then, of the American, the English, and the French doctrine universally applied is this: That where, during the life of a monopoly created by a patent, a name, whether it be arbitrary or be that of the inventor, has become by his consent, either express or tacit, the identifying *644and generic name of the thing patented, this name passes to the public with the cessation of the monpoly which the patent created.”
This court, speaking by Justice Brewer, in Centaur v. Heinsfurter, 84 Fed. 955, 28 C. C. A. 581, said:
“The patent gave no right to any particular name, but simply to the exclusive manufacture and sale. All such rights expired in 1885, and from that time forth any party has had a right to manufacture and sell that particular compound, and also a right to manufacture and sell it under the name by which it has become generally known to the public; and if to the public the article has become generally known only by a single name, that name must be considered as descriptive of the thing manufactured, and not of the manufacturer. It is true that during the life of a patent the name of the thing may also be indicative of the manufacturer, because the thing can then be manufactured only by the single person; but when the right to manufacture and sell becomes universal, the right to the use of the name by which the thing is known becomes equally universal. It matters not that the inventor coined the word by which the thing has become known. It is enough that the public has accepted the word as the name of the thing, for thereby the word has become incorporated as a noun into the English language and the common property of all.”
In Sternberg Mfg. Co. v. Miller, Du Brul & Peters Mfg. Co. (C. C. A.) 161 Fed. 318, complainant claimed a trade-mark to the words “vertical top,” as applied to cigar‘molds. It was held by this court thaft the words “vertical top” became, during the life of the patent, associated with the manufactured article, as descriptive of its character and quality, and indicating the complainant’s best grade of mold for making cigars, and hence could not be regarded as a trade-mark. Referring to and construing the rule as announced in the cases of Singer Mfg. Co. v. June Mfg. Co., and Centaur v. Heinsfurter, supra, Judge Philips, writing the opinion of this court, says:
. “Counsel for complainant quite ingeniously attempts to differentiate the case at bar from the foregoing by the suggestion that the words ‘Singer’ and ‘Castoria’ describe the articles patented, and therefore necessarily became generic terms. But the essence of the ruling in the foregoing cases is that the patent conferred only the right of exclusion to manufacture and sell the article, and not the appropriation of any particular name, whether it was merely arbitrary or suggested by the thing itself, and that after the expiration of the patent, not only the right to manufacture and sell the patented article, but also to use the particular name by which the patentee had designated it, passed to the public.”
It is clear, we think, from the foregoing authorities, that, even if the words “elastic seam” could, at the outset of their use by Scriven, have been regarded as fanciful or arbitrary, before the expiration of the patent under which complainant manufactured its drawers the words “elastic seam” had been given to such drawers by complainant and its predecessors under the patent, and had, to the mind of the public and to the trade, become the generic name of the article; in other words, the descriptive name thereof. Such being the case, upon the expiration of the patent, the use of such words was open to all, and we think there can be no doubt from the evidence that the words “elastic seam,” as applied to drawers, came to be known and understood by the public to mean drawers having a strip of material at the place of the seam of an elastic nature. It "is also true that such garments were *645known as of complainant’s make because, during the life of the patent, complainant was the sole manufacturer. But those words having become also a term descriptive of the garment, complainant’s exclusive right, if any, to the same, expired with the exclusive right to manufacture. Wilcox Gibbs Sewing Machine Co. v. Gibbons Frame (C. C.) 17 Fed. 623; Coats v. Merrick Thread Co. (C. C.) 36 Fed. 324. 1 L. R. A. 616, affirmed in 149 U. S. 562, 13 Sup. Ct. 966, 37 L. Ed. 817; Greene, Tweed & Co. v. Mfg. Belt Hook Co. (C. C.) 158 Fed. 640; Featherbone v. Featherbone (C. C. A.) 111 Fed. 513; G. & C. Merriam Co. v. Ogilvic (C. C. A.) 159 Fed. 638. Also Sternberg Mfg. Co. v. Miller, Du Brul & Peters Mfg. Co., and Singer Mfg. Co. v. June Mfg. Co., and Centaur v. Heinsfurter, supra.
Complainant gave in evidence a United States patent, issued to one Philo H. L,ee, dated July 11, 1876, for skin underwear, with pieces or strips of more porous material interposed where the seams of undergarments usually occur, and extending the entire length of the body of the undergarment. Said pieces or strips, being more porous, were for the purpose of admitting the passage of air outwardly through the garment, carrying off perspiration and other moisture and odors, and causing the garment to he more flexible. We need not consider the effect of the Fee patent upon the later Brown patent, because for the full life of the latter complainant and its predecessors industriously advertised that their elastic seam drawers were made under and protected by the Brown patent, and in that way they asserted a right to the monopoly apparently granted by that patent, secured the acquiescence of the public therein, and reaped the benefits thereof. In these circumstances the complainant will not now he permitted to say that the Brown patent was void as having been anticipated by the Lee patent, and hence that the huff-colored strip and words “elastic seam’’ became a valid trade-mark and were not dedicated to the public at the expiration of the Brown patent. Having derived, through the assertion of the validity of the Brown patent, all the advantages incident to the possession of a valid patent, it will not now be heard to assert the contrary, as a means of escaping consequences arising upon the termination of the monopoly secured through the patent. This is based upon the well-recognized rule that:
“Equity will refuse to aid a complainant in eases of this character, who is himself guilty of making material false statements in connection with the property he seeks to protect.” Hilson v. Foster (C. C.) 80 Fed. 896.
^ In Horlick’s Food Co. v. Elgin Milkiue Co., 56 C. C. A. 544, 120 Eed. 264, complainant sought the aid of the court to protect it against the claimed trade-mark of the term “malted milk.” Complainant had obtained a process patent upon a granulated food for infants. The article which he in fact manufactured was not in accordance with the process, but the packages in which the articles were sold were marked as patented, and it was claimed that, as the product was not manufactured under the patent the trade-name “malted milk” did not become public property on the expiration of the patent. The court said :
“It matters not, in our judgment, that the patent may not, have been in fact valid, nor that the product-malted milk — could not in fact hare been cover*646ed by the description of the patent. The point is that appellant chose to make its product as if it were a monopoly, thereby obtaining, measurably at least, tbe benefit of a monopoly; and gave to it a namo, that became the generic name of the supposed monopoly. The case is thus brought, in our judgment, wiihin the principle, if not the exact facts, of Singer Mfg. Co. v. June Mfg. Co.. 163 U. S. 169, 10 Sup. Ct. 1002, 41 L. Ed. 118, and must be ruled accordingly.”
In Leather Cloth Co. v. American Leather Cloth Co., 4 De Gex, J. & S. 137, 142, it is said:
“When the owner of a trade-mark applies for an injunction to restrain the defendant from injuring his property by making false representations to the public, it is essential that the plaintiff should not, in his trade-mark or in the business connected with it, be himself guilty of any false or misleading representations; for, if the plaintiff makes any material false statement in connection with the property lie seeks to protect, he loses, and vtsry justly, his right to claim the assistance of a court of equity.”
On appeal in the House of Lords, 11 H. L. Cas. 523, Lord Kingsdown said:
“Nobody doubts that' a trader may be guilty of such misrepresentations with respect to his goods as to amount to a fraud upon the public, and to disentitle him on that ground, as against a rival trader, to the relief of a court of equity which he might otherwise claim. * * * The general rule seems to be that the misstatement of any material fact calculated to deceive the public will be sufficient for that purpose. * * * If a trade-mark represents an article as protected by a patent when in fact it is not so protected, it seems to me that such a statement prima facie amounts to a misrepresentation of an important fact, which would disentitle the owner of the trade-marlc to relief in a court of equity against one who pirated it.”
To the same effect are the following cases: Consolidated Fruit Jar Co. v. Dorflinger, Fed. Cas. No. 3,129; Lorillard v. Pride (C. C.) 28 Fed. 434; Medicine Co. v. Wood, 108 U. S. 218, 2 Sup. Ct. 436, 27 L. Ed. 706; Prince’s Mfg. Co. v. Prince’s Metallic Paint Co., 135 N. Y. 24, 31 N. E. 990, 17 L. R. A. 129; Preservaline Mfg. Co. v. Heller Chemical Co. (C. C.) 118 Fed. 103; Halzapfel’s Co. v. Rahtjens Co., 183 U. S. 1, 22 Sup. Ct. 6, 46 L. Ed. 49.
It matters not that complainant may have supposed the Brown patent to have been a valid one, for, as said by the court in Dadirrian v. Yacubian, 39 C. C. A. 321, 98 Fed. 872-877;
“It is to be noted in this connection ifuvt the court is not bound to inquire whether or not the representations are false, in the obnoxious souse of the word, because it is sufficient that they are in their nature misleading, if they are also material, and do in fact mislead. Indeed, that the public are equally prejudiced by deceptive statements in a trade-mark, or in connection therewith, "whether "the purpose of its owner was fraudulent or not; that therefore the equity courts have no occasion to inquire into his secret intents; and that such courts will not protect a business built up as the result of deceptive representations, whatever were those secret intents — are such fundamental rules in the law of trade-marks that we have no occasion to elaborate them, or to cite authorities in reference to them.”
The question remains, have the defendants been guilty of unfair trade; in other words, attempted to palm off on the trade and public the drawers manufactured by the Premium Manufacturing Company as and for the drawers of complainant’s manufacture? The only evidence, we think, from which such conclusion can be drawn, is the *647markings upon the drawers and packages or cartons. Defendants had the right, as we have seen, to use the buff-colored strip and the words “elastic seam.” Those words and the buff-colored strip, however, during the life of the patent had become not only descriptive of the articles, but the public had come to know that they were manufactured by complainant. It then became and was the duty of defendants, in selling their drawers manu factored with the buff-colored strip, and described as “elastic seam” drawers, to indicate to the public that their articles were not those of complainant’s manufacture. For, as held in Singer Mfg. Co. v. June Mfg. Co. and G. & C. Merriam Co. v. Ogilvie, supra:
“Where another avails himself of the principle of public dedication, he must in good faith fully identify his production and clearly disassociate his woilc from the work of one who has given significance to the name, and sufficiently direct the mind of the trading public to the fact that though the thing is of the same name that it is something produced and put upon the market by himself.”
Complainant usually stamped upon the drawers of its manufacture words and figures in the following form:
On some of its drawers of more recent make, date of patents were given as February 28,1888, and April 12,1892, referring to subsequent patents not involved in this case, and on some of still more recent make no date of patent ivas given.
Defendants stamped upon their drawers the words and figures in form as follows :
As the numerals above given, 32 and 29 on complainant’s stamp, and 28 and 31 on defendants’, indicate the waist size and length of same, they are changed according to the respective sizes. The boxes or cartons of each in which the drawers are placed and displayed on the shelves of the retail dealer are of the same dimensions, but, as they are of the most convenient and appropriate size for the use to which they are applied, such fact alone does does not establish simulation. The boxes or cartons of each party are white in color. Those of complainant have a gilt strip along the top edge; those of defendants have not. On the top of complainant’s boxes are the words “Scriven’s .Patent Elastic Seam Drawers,” and a cut of a pair of drawers, showing the elastic strip at the side and elastic piece at the bottom. On the front or display end of complainant’s boxes are the same words and cut as upon the top, in addition the arbitrary number 50, and figures and words indicating the size of the waist and length of the seam; the words and figures being in blue ink.
*648■There are no markings on the top of defendant’s boxes, and on the front or display end are the words and figures:
985 WARRANTED FINEST QUALITY. % DOZ.
PREMIUM ELASTIC JEAN DRAWER.
trade-mark
UNION MADE. Waist...... Length......
—with the words indicating the size of waist and the length. The words and figures are in black ink, except that the word “Premium,” which is made quite conspicuous, is in red, and the words “trademark” under it are in white on red background.
Defendants manufactured and sold three classes of these drawers, viz., jean, nainsook, and canton. The markings of each were the same as above described, except the word “Nainsook” was used in the place of “Jean” on the markings of nainsook, and “Canton” in the place of “Jean” on the markings of the canton drawer's.
The difference in the markings are such as to disprove simulation, and clearly disassociate defendants’ drawers from those of complainant.
For these reasons, the decree rendered in each case is reversed, with directions to dismiss the bill.