(dissenting). The court below appears to have been of the opinion that the evidence in this case proved that about 1885 the predecessor in interest of the complainant commenced to make and to sell drawers which he called “elastic seam”' drawers, which were made of jean or other inflexible fabrics, down the legs of which were inserted strips of knit and flexible material of a buff color in the form of a parallelogram; that this predecessor and the complainant have ever since continued to make and sell such drawers with the buff color of the parallelograms therein; that these buff-colored parallelograms and the words “elastic seam” came, many years before the defendants commenced to use them, to signify the complainant’s make of drawers; that neither the buff-colored parallelograms in the drawers nor the words “elastic seam” ever signified, before Scriven selected and applied them to garments of his make, drawers with parallelograms or flexible materials inserted in inflexible bodies; that neither of these marks had ever been used before Scriven applied them ; that Scriven selected and used the form and the buff color of the flexible strips in the beginning for the sole purpose of marking the drawers as his manufacture; that he selected and applied to them the name. “Elastic Seam” for'the same purpose; that each of these marks was arbitrary and fanciful, and when Scriven first used them, and before he had taught the trade their meaning, neither described the drawers he made to persons of ordinary intelligence; that the complainant acquired the patent issued to C. A. Brown in 1881, No. 243,498, for gussets or gores of a knit fabric inserted in the arms and sides of shirts and in the legs of drawers the bodies of which were made of inflexible material, and that the complainant advertised its drawers as patented thereunder, but that the Brown patent secured no monopoly to any one, because it was anticipated by letters patent No. 179,661, is*649sued to Philo H. Lee in 1876, for the insertion in the sides and anus of shirts and m the legs of drawers made of the tanned skins of animals of strips oE a fabric suitable for clothing which were more flexible and porous Ilian the bodies of the garments; and that the defendants have used and are using the buff-colored strips and the term “elastic seam” to sell drawers manufactured by them or by one of them. A careful examination of the record has forced my mind to the conclusion that these facts were established by a fair preponderance of the evidence, and to an agreement with the learned judge below, so that I am regretfully constrained to dissent from the opinion of the majority of this court.
In Singer Mfg. Co. v. June Mfg. Co., 163 U S. 169, 178, 186, 189, 201, 204, 16 Sup. Ct. 1002, 41 L. Ed 118, Centaur Co. v. Heinsfurter, 81 Fed. 955, 956, 28 C. C. A. 581, and Sternberg Mfg. Co. v. Miller, Du Brul & Peters Mfg. Co. (C. C. A.) 161 Fed. 318, cited by the majority, the courts held that in a case in which, during the life of a patented monopoly, the owner had conferred an arbitrary or generic name upon the patented article by which alone it had come to be known during the term of the monopoly, such as “Singer” and “Castoria,” the right to use that name 'passed to the public upon the expiration of the monopoly Put this conclusion is an exception to the general rule that no one may lawfully use the trade-mark or trade-dress of another to sell goods of his own manufacture, and it is inapplicable to the cases at bar, because the Brown patent secured no monopoly of the manufacture or sale of the drawers made by the complainant, and hence under those decisions no right to use the complainant’s trade-mark passed to the public when the term of the void patent expired. The patent to Ece was issued about live years before the patent to Brown, and it clearly anticipated it and deprived it of all legal effect. The patent to Eee related to the same art as did the Brown patent, to the art of clothing by means of undergarments; it disclosed the use of strips of more flexible and porous materials along the sides of garments the bodies of which were mad,e of inflexible materials, and it left nothing of this subject-matter for Brown to either invent or secure.
It is, however, said that the complainant is estopped from denying that the Brown patent secured a monopoly to it, and lienee from sustaining its trade-mark, because i! advertised and sold its drawers as patented under this patent, and because it actually enjoyed a monopoly of the manufacture and sale of them until the term of the patent expired. The indispensable elements of an estoppel in pais, however, are: (1) Intentional or reckless misrepresentation of a known fact inconsistent with the subsequent claim of him who makes the misrepresentation ; (2) ignorance of the truth and absence of equal means of knowledge of it by the party who claims the estoppel; (3) ad ion by the latter induced by the misrepresentation; and (4) injury to the latter if the truth is permitted to he proved. Bigelow on Estoppel (4th Ed.) p. 679. The alleged estoppel in this case lacks, as it appears to me, at least three of these essential elements, viz., intentional or reckless misrepresentation by the complainant, absence of knowledge and of equal means of knowledge of the truth by the defendants, and possible injury to them by proof of the truth. It is not, in my opinion, such a *650false representation as will sustain an estoppel for the owner of a patent, void, but not yet adjudged void, because anticipated by another which is of record, to assert that his manufacture, which is covered by it, is patented thereby, and that was all the misrepresentation which the complainant made here. That statement lacks the moral turpitude or the reckless disregard of the rights of others essential to sustain an estoppel, because it is a true statement of the existence of the patent, and it leaves its legal effect for the consideration and determination of others who may be interested therein. A willful intent to deceive, or such gross negligence of the rights of others as is tantamount thereto, is an essential element of an estoppel in pais. There must be some moral turpitude or some breach of duty. Henshaw v. Bissell, 1 Wall. 255, 271, 21 L. Ed. 835; Bank v. Farwell, 7 C. C. A. 391, 394, 396, 58 Fed. 633, 636, 639 Again, the facts which disclosed the invalidity of the Brown patent were equally accessible to the defendants and to the plaintiff. They were exhibited by the Lee “patent, and the defendants had the same means of knowledge upon this subject as did the complainant. And in the third place no injury could be inflicted upon the defendants by proof of the truth. The only effect of such proof would be to deprive them henceforth of the use of the complainant’s trade-marks, and they would not have been entitled to use these trade-marks if the complainant had never represented that its drawers were patented under the Brown patent.
Nor does it seem tó me that a patentee who marks his product patented and advertises it as such while it is actually protected by a patent which is prima facie valid, although that patent subsequently turns out to be anticipated by another, is guilty of such iniquity as will repel him from a court of equity and deprive him of all relief at its hands against the continuing wrongful appropriation of his trade-marks by another. The acts of Congress declare that it shall be the duty of all patentees, and of their assigns, to mark any patented article,.or the package which,contains it, with the word “patented,” and they penalize the affixing of that or any similar word to an article which is not patented. Rev. St. §§ 4900 and 4901 (U. S. Comp. St. 1901, p. 3388). But neither the statutes, the laws, nor the decisions of the courts appear to me to impose any penalty upon one who discharges this duty because the patent under which he marks and advertises his product is subsequently found to be anticipated. The marking and the advertising were intended to constitute caveats, notices of the existence of the patents, to the end that all parties might examine and learn for themselves whether or not their prima facie validit)' would be their ultimate legal effect.
Courts of equity often refuse relief to one who has made false statements calculated to deceive, relevant and material to the subject of a controversy, in the enforcement of the maxim that “he who seeks equity must come with clean hands.” But the averment that the article is patented when the patent under which it is marked and advertised is anticipated by another of record is not a false statement, and does not render a petitioner’s hands unclean, because the fact is that the article is patented when a patent is issued upon it by the Patent Office, and the true and entire meaning of such a statement is not that in no *651future litigation or consideration will llic patent be found to be void, but it is simply that the patent has been issued and that it is prima facie valid.
Every relevant decision cited by the majority is sustained by a material false statement made by the complainant, while, as it seems to me, there was no false statement in the representation of the complainant that liis article was patented in the case at bar. The quotations from the opinions of the courts found in the opinion of the majority must he read with due reference to the facts the courts were there considering. In Hilson Co. v. Foster (C. C.) 80 Fed. 896, the false statement upon which the decision was founded was that only the best. <?rade of Havana tobacco was used in the cigars. In Horlick’s Food Co. v. Elgin Milkine Co., 120 Fed. 264, 56 C. C. A. 544, the false representation was that the malted milk of the complainant was made in accordance with the specifications of the process patent with which it was marked; that is to say, the proof was that the complainant had marked its product patented when it was not in fact covered by any patent. This false statement was material to sustain the decree, and the paragraph quoted from the opinion by the majority was unnecessary to the decision, of the case, and it fails to commend itself to my judgment. There was no question of the validity of the patent under which the product was marked in that case, and it seems to me that in such a case it is material and is the very essence of the issue whether the statement that the product is made in substantial accord with the patent — that is to say, whether it is pateuled — is false or true.
In Leather Cloth Company, Limited, v, American Leather Cloth Co., Limited, 4 De Gex, Jones & Smith’s Reports, 137, 147, 149, and Leather Cloth Co. v. American Leather Cloth Co., 11 H. L. Cas. 523, 531, the false statements which induced the decisions were that the complainant’s products were those of the Crockett International Leather Cloth Company when they were not, that they had been made by j. R. & C. P. Crockett & Co. when they had not been, that they were made of tanned leather in accordance with the specified patent upon, tanned leather when they' were made of untanned leather and were not made in accordance with the patent, and that they were made either in the United States of America or at West Ham in England when they were not made in either place. How radically different in character, in tendency to deceive, and in natural effect are these statements from the truthful statement of the defendant that its product was patented when a patent prima facie valid existed upon it. It was of these false statements that Lord Kiugsdowu spoke in the excerpt quoted by the majority. And his remark, that “Tf 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-mark to relief in a court, of equity against any one who pirated it,” related to the false statement that the leather company’s products were made of patented tanned leather when in fact they were made of leather that was neither tanned nor patented. The question whether a statement that a product was patented when it was so, but the patent was anticipated by another of record, is so misleading or *652deceptive as to bar from relief in equity, was not presented in that case, was not considered by any of the members of the court, was not decided, and the remarks of Lord Kingsdown had no reference to it. In Dadirrian v. Yacubian, 39 C. C. A. 321, 326, 98 Fed. 872, 877, the false and deceptive representations which inspired the excerpt quoted by the majority and sustained the decision were that the product, “Madzoon,” originated around Mt. Ararat, was used in Asia Minor largely as food and as medicine in every form of febrile diseases, and that the inhabitants of Asia Minor and Arabia during the season of intense heat resorted to it to allay their burning thirst and drank freely of it while enjojdng the luxury of the Turkish bath. In Manhattan Medicine Co. v. Wood, 108 U. S. 218, 2 Sup. Ct. 436, 27 L. Ed. 706, the misleading statement was that the medicine was made by the complainant in New York when it was made by another in Massachusetts. In Prince Mfg. Co. v. Prince’s Metallic Paint Company, 135 N. Y. 24, 31 N E. 990, 17 L. R. A. 129, the false statement was that the trade-mark covered an article to which it did not apply, and to this statement was added the misleading act of the sale of that article under that trade-mark.
• The decision in Lorillard v. Pride (C. C.) 28 Fed. 434, 438, wherein Judge Blodgett held that the term “Tin Tag,’ which was not adopted or applied as a trade-mark bjr the complainant, but came during the life of the patent to be the name of tobacco to which a tin tag was attached, and for which with this tag attached the complainant had procured a patent, passed to the public when the patent was adjudged void, and the decision in Holzapfel’s Co. v. Rahtjen’s Co., 183 U. S. 1, 8, -22 Sup. Ct. 6, 46 L. Ed. 49, wherein the Supreme Court held that the sale of an article as patented upon which no patent had issued would not establish a trade-mark of which the word “patent” was an essential part, do not seem to me to be relevant to the issue before us. And the decisions in Consolidated Fruit Jar Co. v. Dorflinger, Fed. Cas. No. 3,129 that the use of the designation “Mason’s Patent, Nov. 30th, 1858,” after the patent had been adjudged void, was misleading and fatal to relief against a pirate, and in Preservaline Mfg. Co. v. Heller Chemical Co. (C. C.) 118 Fed. 103, that the representation that an article is patented after the patent has expired is false, misleading, and fatal, fail to reach the question in this case, because here the patent was in existence, it had not been adjudged void, and the statement that it was patented was-true. The authorities cited by the majority have been reviewed for the purpose of showing, if possible, that while general expressions may be found in the opinions of the courts which, when read without the facts and issues then before the judges in mind, might seem broad enough to refer to it, yet in none of these cases where the question was at issue and necessarily decided has any court held that a patentee who has simply discharged his statutory duty to mark his product patented and has advertised it as such while the patent, which subsequently turns out to be anticipated by another, is ■prima facie valid, has thereby become guilty of such iniquity as renders his hands unclean, repels him from a court of equity, and bars him from all relief against those who boldly appropriate his trade-marks or his other property. Such a decision, it seems to me, must necessa*653rily bar from relief in tlie courts of equity a very large number of patentees who arc simply discharging their statutory duty and telling the truth bv stating and advertising the fact that tlieir products are patented, because it is common knowledge that many patents which are prima facie valid subsequently turn out to be anticipated by prior inventions which are described in the Patent Office. I am unwilling to place the ban of iniquity which closes the courts of equity upon patentees of this class. And because a statement that an article is covered by a patent when it is in fact patented, though it subsequently turns out that the patent is anticipated by another, is in fact true and neither deceptive nor misleading, because the facts regarding such a patent are spread upon the record of the Patent Office and alike open to all, because every one is presumed to know' the law and hence to know' whether or not the prior patent anticipates the later one, while in fact no one ever does know whether it anticipates or not until that question is adjudicated by some court, and until that time the law presumes the patent to be valid, and because it seems to me that it cannot be an iniquitous misrepresentation to state that to be true which the law presumes, I am of the opinion that such a statement and advertisement should not deprive this complainant of the equitable relief to which it is otherwise entitled. Sykes v. Sykes, 3 Barnewall & Cresswell’s Report, 541, 545; Edelstein v. Vick, 11 Hare, 86, 87; Morgan v. McAdam, 36 Law J. Ch. 229, 231.
Another conclusion to which I am unable to assent is that, in the absence of the rule in the Singer Case and in the absence of the Brown patent, the buff color could not constitute a valid trade-mark, because it selection was not arbitrary and for that purpose, and because that color had been used with anklets upon white bodies. It is not the buff color that constitutes a trade-mark here, but the buff-colored strips in the definite form of narrow parallelograms inserted in the sides of drawers whose bodies are composed of materials of a white or other contrasting color. Mere color of any kind may not constitute a trade-mark. But in my opinion colored parts of garments or of other articles of definite specific forms in contrast with parts colored otherwise may constitute perfect trade-marks. “A trade-mark is always something indicative of origin or ownership by adoption and repute, and is something different from the article itself.” Fairbanks v. Jacobus, 14 Blatchf. 337, 339, Fed. Cas. No. 4,608. The buff color of the strips in the specific form of a parallelogram was not an essential part of the drawer;;. They would, have been equally flexible and useful if the strips had been of any other color. Scriveu and Stranahan testified, the court below found, and the entire evidence has led my mmd to the same conclusion, that Scrivcn arbitrarily selected the buff color of the strips in this case for the sole purpose of marking liis manufacture when he commenced it, and that his goods became known by that mark long before the defendant commenced to use it. The fact that buff-colored anklets were used with white bodies does not seem to me to affect the right of the complainant here.. His trademark is not tin1 buff color of one indefinite part attached to a white body; it is the buff color of the strips in the specific form of a parallelogram located along the sides of tlie legs of the drawers whose *654bodies are made of material of a white or other color. And, because the buff color of these strips is in no way material to give the drawers all the elasticity and other beneficial characteristics sought and secured by the complainant, because the strips which Scriven caused to be buff in color were definite and specific in form and location in garments whose bodies were of a contrasting color, because the evidence convinces me that this buff color was selected and applied to these strips of specific form and location by Scriven to distinguish his make of these drawers from those of all others, and because it had produced that result long before the defendant commenced to use it, it appears to me that it constituted a valid trade-mark, and that the decree which enjoined the defendants from using it was right.
The question whether or not the term “elastic seam” was so descriptive of the complainant’s drawers as to disqualify it for a trade-mark is not whether it described them when the defendants applied it to their manufactures subsequent to 1898, nor is it whether it so describes them now. The test of disqualification is, did it so clearly describe them, their qualities and characteristics, about 1885, when Scriven first adopted it, that men of ordinary experience in the trade would at that time have conceived the Scriven drawers upon hearing the term for the first time? Wellcome v. Thompson & Capper, 1 L. R. Ch. Div. 1904, pages 736, 742, 749, 750, 754; Keasbey v. Chemical Works, 142 N. Y. 467, 471, 474, 475, 476, 37 N. E. 476, 40 Am. St. Rep. 623. The proof is uncontradicted that no drawers with flexible strips inserted in them had ever been made before. The only elastic seam known at that time was one made by sewing machines by sewing materials together in a zigzag instead of' in a straight line, and the term “elastic seam” drawers could not have conveyed to the minds of men the idea of jean drawers with flexible strips of knit material inserted in the sides of the legs before Scriven taught them by his application of the term to the drawers and his advertisement of them that this was the meaning which he gave to it. Words which are merely suggestive of the qualities, ingredients, or characteristics of the articles to which they are applied, but which do not so accurately describe them that men of ordinary intelligence would have recognized them upon seeing or hearing the words when first applied, constitute valid trade-marks. Such terms are “elastic” applied to bookcases (Globe-Wernicke Co. v. Brown [C. C.] 121 Fed. 185, 186); “Tabloid” (Wellcome v. Thompson & Capper, 1 L. R. Ch. Div. 1904, pp. 736, 744); “Bromo-Caffeine” (Keasbey v. Brooklyn Chemical Works, 142 N. Y. 467, 471, 474, 475, 476, 37 N. E. 476, 40 Am. St. Rep. 623); “Cottolene” (N. K. Fairbank Co. v. Central Lard Co. [C. C.] 64 Fed. 133, 134); “Cocoaine” (Burnett v Phalon, 9 Bosw. [N. Y.] 192); “Maizena” (Mfg. Co. v. Ludeling [C. C.] 22 Fed. 823); “Valvoline” (Leonard v. Lubricator [C. C.] 38 Fed. 922); “Bromidia” (Battle v. Finlay [C. C.] 45 Fed. 796); “German Sweet Chocolate” (Walter Baker & Co. v. Baker [C. C.] 77 Fed. 181, 187, 188); “Anti-Washboard” (O’Rourke v. Central City Soap Co. [C. C.] 26 Fed. 576, 578); “No-To-Bac” (Sterling Remedy Co. v. Eureka Chemical & Mfg. Co., 80 Fed. 105, 25 C. C. A. 314); “Swan Down,” applied to a complexion powder (Tetlow v. Tappan [C. C.] 85 Fed. 774); “Silicon” and “Electro*655Silicon,” applied to an article one'of whose component parts was “Silicon” (Electro-Silicon Co. v. Hazard, 29 Hun [N. Y.] 369); “Celery Compound” (Wells & Richardson Co. v. Siegel, Cooper & Co. [C. C.] 106 Fed. 77); “Cream” (Price Baking Powder Co. v. Fyfe [C. C.] 15 Fed. 799); “Lightning,” applied to hay-knives (Hiram Holt Co. v. Wadsworth [C. C.] 41 Fed. 34); “Maryland Club.” applied to whisky (Calm v. Gottschalk, 14 Daly, 542, 2 N. Y. Supp. 13); “Cough Cherries” (Stoughton v. Woodard [C. C.] 39 Fed. 902); “Sliced Animals,” “Sliced Birds,” “Sliced Objects,” applied to dissected puzzle pictures (Selchow v. Baker, 93 N. Y. 59, 45 Am. Rep. 169); “Saponifier” (Pennsylvania Salt Mfg. Co. v. Myers [C. C.] 79 Fed. 87); “Insurance Oil” (Ins. Oil Tank Co. v. Scott, 33 La. Ann. 946, 39 Am. Rep. 286); “Congress Water” and “Congress Spring” (Congress & Empire Spring Co. v. High Rock Congress Spring Co., 45 N. Y. 291, 6 Am. Rep. 82); “Magnetic Balm,” applied to a medicine (Smith v. Sixbury, 25 Hun [N. Y.] 232), and such a term, in my opinion, was “elastic seam” when applied to the drawers which the complainant made and sold under that name. As this term seems to me to consti-
tute a valid trade-mark and the defendants are using it to sell goods of their manufacture, 1 agree with the court below that the complainant was entitled to an injunction to restrain them from so doing, both upon that ground and also because in my opinion the defendants were guilty of unfair competition by their use of the huff-colored strips and the term “elastic seam” to sell the goods which they make as those made by the complainant, and this upon the authority of Thompson v. Montgomery, 41 Ch. Div. 35, 38, 47, 51; Montgomery v. Thompson, Appeal Cas. 217, 220; Lee v. Haley, 5 Ch. App. 155, 161; Wotherspoon v. Currie, L. R. 5 H. L. 508, 522, 523; Brewery Co. v. Powell (1897) App. Cas. 710, 716; American Waltham Watch Co. v. U. S. Watch Co., 173 Mass. 85, 53 N. E 141, 43 L. R. A. 826, 73 Am. St. Rep. 263; Flour Mills Co. v. Eagle, 86 Fed. 608, 628, 30 C. C. A. 386, 406, 11 L. R. A. 162; American Brewing Co. v. St. Louis Brewing Co., 47 Mo. App. 14, 20; Cady v. Schultz,, 19 R. I. 193, 32 Atl. 915, 29 L. R. A. 524, 61 Am. St. Rep. 763; Newman v. Alvord, -19 Barb. (N. Y.) 588; McLean v. Fleming, 96 U. S. 215, at pages 254, 255, 24 L. Ed. 838; Elgin Nat. Watch Co. v. Illinois Watch Case Co., 179 U. S. 665, 674, 21 Sup. Ct. 270, 45 L. Ed. 365; Reddaway v. Banham (1896) App. Cas. 199, 204, 211, 215 ; Buzby v. Davis, 80 C. C. A. 163, 165, 166, 150 Fed. 275, 277, 278; Shaver v. Heller & Merz Co., 48 C. C. A. 48, 59, 108 Fed. 821, 832, 65 L. R. A. 878.