Howe Scale Company of 1886 v. Benedict

This was a bill exhibited, in September, 1898, by Wyckoff, Seamans, & Benedict, a corporation of New York, in the circuit court of the United States for the district of Vermont, against the Howe Scale Company of 1886, a corporation of Vermont, alleging that complainant had been for many years engaged in the manufacture and sale of typewriting machines known in the markets and to the trade and public, and referred to, identified, offered for sale, and sold as the 'Remington typewriter,' and the 'Remington Standard typewriter,' and that the words 'Remington' and 'Remington Standard' had been registered in the Patent Office under the act of Congress; and charging defendant with fraud and unfair competition in making use of the corporate name 'Remington-Sholes Company' and the designations 'Remington-Sholes,' 'Rem-Sho' and 'Remington-Sholes Company,' in advertising for sale, offering for sale, and selling typewriting machines; and praying for an accounting, and for an injunction restraining defendant from advertising or offering for sale or selling typewriting machines manufactured by the 'Remington-Sholes Company,' bearing the name 'Remington' or 'Remington-Sholes' or 'Rem-Sho' or 'Remington-Sholes Company,' and from advertising or offering for sale or selling any such machines under said designation or under any designation of which the name 'Remington' was a part.

Defendant was the sales agent of the 'Remington-Sholes Company,' a corporation of Illinois, and was engaged in selling the typewriting machines called the 'Remington-Sholes' or 'Rem-Sho' typewriter, which were manufactured by the Illinois corporation at Chicago. The right to use those designations in the way they were used was asserted by the defense, of which the Remington-Sholes Company, and subsequently the Fay-Sholes Company, had charge. The word'Rem-Sho' was alleged to have been registered in the Patent Office as a trademark.

The circuit court found that defendant's use of the name 'Remington' was an unjustifiable invasion of complainant's right to the use of that name, and entered a decree, August 14, 1901, denying an account for gains and profits, without prejudice to the recovery thereof from the Remington-Sholes Company; and perpetually enjoining the use of the designation 'Remington,' or 'Rem-Sho,' as the name or part of the name of any typewriting machine whatsoever manufactured by the 'Remington-Sholes Company,' or by defendant, or any person or concern, and from selling, offering, or advertising for sale in any manner, typewriting machines so manufactured 'under the name of or as 'Remington-Sholes' or 'Rem-Sho,' or by any designation of which the word 'Remington' or the abbreviation 'Rem' shall constitute a part.' 110 Fed. 520.

The case was carried by appeal to the circuit court of appeals for the second circuit, and was there heard before Circuit Judges Wallace, Lacombe, and Coxe. April 20, 1903, the decree was reversed, without costs, and the cause remanded 'with instructions to decree in favor of complainant only as to the name 'Remington." Lacombe, J., delivered an opinion in support of that decree, Coxe, J., concurring in the conclusion because 'unable to distinguish this cause from R. W. Rogers Co. v. Wm. Rogers Mfg. Co. 17 C. C. A. 576, 35 U.S. App. 843, 70 Fed. 1017;' Wallace, J., dissented, holding that the decree of the circuit court should be reversed with instructions to dismiss the bill. 58 C. C. A. 510, 122 Fed. 348.