"But, further, no man can claim a trademark in a falsehood. It is a falsehood to represent that the patent is still subsisting."

And Kekewich, J., said In re Adams' Trademarks: 37 "The word 'patent' means not necessarily that there is now current a patent of protection, but that the article in question is one of those articles which had the merits of utility and novelty, and therefore received the protection of the crown by letters patent."

There are other decisions, however, not so clear as to facts, and apparently not in harmony with Cheavin v. Walker, supra. Five years after that case, Bacon, V. C., in a case where the plaintiffs had stamped the word "patent" on plowshares manufactured by them after their patent had expired, said: "(they) make their shares according to the invention in the expired patent, as everybody else may; but to suggest that they have in any manner claimed anything under or in respect to that patent, and that they have done this fraudulently and to deceive the public, is merely desperate, and opposed to the truth of the case. 38 Yet it does not appear in the report wherein this differed from the use of the word "patent" as criticized in Cheavin v. Walker. In another case39 Vice-Chancellor Wood said: "It does not follow because upon the expiration of the patent the article and its known description become known to all, that therefore all would become entitled to use the label by which the patentees had been accustomed to distinguish their goods." This he held in regard to a label used on packages of pins marked "Taylor & Co.'s Patent Solidheaded Pins;" the manufacturer continuing to use the label after the expiration of his patent. The conclusion of the learned Vice-Chancellor was that: "The public may have ac

37-9 R. P. C. 174; 66 L. T. 610; Cartmell, 43.

38-Ransome v. Graham, 51 L. J. Ch. 897; 47 L. T. 218; Cartmell, 279. Same rule in Stewart V. Smithson, 1 Hilt. 119; Cox, 175; Leather Cloth Co. v. Hirschfeld, 1 N. R. 551; Cox, Manual, Case No. 214. And even where no letters

patent have ever issued, but the exclusive right of manufacture of baskets has been secured by registration of their design. Cave v. Myers, Seton (5th ed.), 539; Cox, Manual, Case No. 304.

39-Edelsten v. Vick, 11 Hare, 78; 1 Eq. Rep. 413; 18 Jur. 7; Cox, Manual, Case No. 119.

quired confidence in that particular label, and the confidence may have given a value to it which the patentees may be entitled to have after the expiration of their patent."

In another case it was held that where plaintiffs labeled their thread "Patent Thread," they would not be denied relief against an infringer, because the word "patent" by long usage had come to denote the character of the thread, and did not imply the existence of any patent.40

Of course the holder of letters patent may describe himself as "patentee" and his goods as "patented" even where he doubts the validity of the patent, and its validity has been questioned by others.41 And it has been held in New York that one who applies for letters patent is not disentitled from relief against an infringer by reason of his describing the goods as "patented" after his application had been filed, but before the issuance of letters patent.42 Where the plaintiffs used their label bearing the words "specially registered trademark" after application, but before registration, the English Court of Appeals granted an interlocutory injunction against an infringer, but expressly said in their opinion that they refrained from finally deciding the question whether that misrepresentation prima facie destroyed plaintiff's right to protection. 43

It will be seen, therefore, that the cases discussed in this and the next preceding section are for the greater part English, and their reasoning is rather confused. The surest conclusion to be reached by an examination of the cases in this section is that of Lord Kingsdown, in Morgan v. McAdam: 44 "Of course it would be better, and those who are inclined to act with scrupulous honesty would take care, to put the date of their patent, which would obviate all difficulty, upon the articles which they designate as patented." Judge Kohlsaat, in denying a motion for preliminary injunction, based his decision upon the fact that the complainant, though not mark

40-Marshall v. Ross, L. R. 8 Eq. 651; 39 L. J. Ch. 225; 21 L. T. N. S. 260; 17 W. R. 1086; Cox, Manual, Case No. 316. 41-Blakey v. Latham, 85 L. T. (Journal), 47.

42-Lauferty V. Wheeler, 16 How. Pr. 488; 11 Daly, 194. 43-Read v. Richardson, 45 L. T. 54: Cartmell, 281.

44-36 L. J. Ch. 228; Cox, Manual, No. 267.

ing the article itself "patented," had issued circulars stating that it was patented, after the patent had expired.45

One who issues circulars or uses markings on merchandise falsely indicating the goods dealt in by him to have been made. under a particular patent will be enjoined at the instance of the owner of the patent.46 Where there has been a patent, he who has manufactured a trademarked article under the patent during its lifetime, although he has lost the exclusive right to the use of the trademark upon the expiration of the patent, may yet enjoin one from using the mark upon an article not made according to the expired patent.47 Where the complainant had falsely advertised that the method of applying its name to silk dealt in by it was patented, a preliminary injunction against an infringer was refused because of the misrepresentation. 48

§ 44. The effect of expiration of the patent upon the collocation of color used in the patented article.-As we have elsewhere demonstrated 49 color alone can not be appropriated as a trademark. It would seem clear, therefore, that the same principle which renders the trademark by which the patented article is known, public property upon the expiration of the patent, would also give to the public at the same time the right to reproduce the patented article with the same coloring which it had during the life of the patent. The trend of the decisions is in that direction.

"The right to an exclusive trademark can only be acquired by its adoption for the very purpose of pointing to the origin or ownership of the article to which it is attached, and must be designed to indicate the manufacturers or sellers, and to distinguish the article from like things made or sold by others. This elastic seam, having the natural color of the cotton yarn from which the fabric was made, was inserted in men's drawers made by the Scriven Company, because such an inserted piece

45-Preservaline Mfg. Co. v. Heller Chemical Co., 118 Fed. Rep. 103.

46-Washburn & Moen Mfg. Co. v. Haish, Fed. Case No. 17217.

47-Singer Mfg. Co. v. Hipple, 109 Fed. Rep. 152.

V.

48-Stirling Silk Mfg. Co. Sterling Silk Co., 46 Atl. Rep. 199 59 N. J. Eq. 394.

49-Sce § 116, post.

constituted a structural difference constituting the invention covered by the monopoly of the patent. As assignees of the patent, no one else could insert such an elastic seam without infringement. But when the patent expired the public was free to use it. To give that inserted strip, with or without its inartificial color, the effect of a trademark thereafter would be, in effect, to extend the monopoly of the patent. That others may make and sell drawers constructed according to the design of the patent is not denied; the contention being that the elastic seam shall not be of the color used by Scriven. But, as that color is not an artificial color, Scriven has no monopoly. The color of the strip in the drawers sold by the defendants has not been artificially produced, but is shown to be the natural color of undyed and unbleached cotton yarn from which the strip is made. We may therefore dismiss the claim that the Scriven Company has established a trademark in the color of the inserted piece."' 50

§ 45. Names of patented articles.-The general rule as to the name applied to a patented article during the life of the patent, is that upon the expiration of the patent, the public acquires the right to make, use, and sell the patented article, and to distinguish it by the name which it bore during the life of the patent.51

51-Fairbanks v. Jacobus, Fed. Case No. 4608, 14 Blatchf. 337; Singer Mfg. Co. v. Stanage, 6 Fed. Rep. 279; Adee v. Peck Bros. & Co., 39 Fed. Rep. 209; Singer Mfg. Co. v. June, 163 U. S. 169; 41 L. Ed. 118; (reversing Singer Mfg. Co. v. June, 41 Fed. Rep. 208); Wilcox & Gibbs S. M. Co. v. The Gibbens Frame, 17 Fed. Rep. 623; Singer Mfg. Co. v. Bent, 163 U. S. 205; 41 L. Ed. 131; (reversing Singer Mfg. Co. v. Bent, 41 Fed. Rep. 214) Centaur Co. v. Killenberger, 87 Fed. Rep. 725; Singer Mfg. Co. v. Larsen, 8 Biss. 151, Fed. Case No. 12902; Burton v.

:

Stratton, 12 Fed. Rep. 696-700; Goodyear Rubber Co. v. Day, 22 Fed. Rep. 44; Singer Mfg. Co. v. Riley, 11 Fed. Rep. 706; Wheeler & Wilson Mfg. Co. v. Shakespear, 39 L. J. Ch. 36; Tucker Mfg. Co. V. Boyington, Fed. Cas. No. 14229; 9 Off. Gaz. 455; Filley v. Child, 16 Blatchf. 376; Fed. Case No. 4787; Ralph v. Taylor, L. R. 25 Ch. D. 194; Linoleum Mfg. Co. v. Nairn, 7 Ch. D. 834; Young v. Macrae, 9 Jur. N. S. 322; In re Palmer's Trademark, 24 Ch. D. 504; In re Leonard & Ellis' Trademark, 26 Ch. D. 288; Singer Mfg. Co. v. June, 41 Fed. Rep. 208; Brill v. Singer Mfg. Co., 41 Ohio St. 127; 52 Am. Rep. 74: Hiram Holt Co. v. Wadsworth, 41

Of course the name of a patented article during the life of the patent must be good as a trademark, to be protected as such. A patentee can not "give to his machine a word that is descriptive only, and thereby acquire a monopoly in the use of that word.” 52

In the leading case upon this subject, Mr. Justice White, speaking for the United States Supreme Court, explained the reason of the rule as follows: "It is self-evident that on the expiration of a patent the monopoly created by it ceases to exist, and the right to make the thing formerly covered by the patent becomes public property. It is upon this condition that the patent is granted. It follows, as a matter of course, that on the termination of the patent there passes to the public the right to make the machine in the form in which it was constructed during the patent. We may therefore dismiss without further comment the complaint, as to the form in which the defendant made his machines. It equally follows from the cessation of the monopoly and the falling of the patented device into the domain of things public, that along with the public ownership of the device there must also necessarily pass to the public the generic designation of the thing which has arisen during the monopoly, in consequence of the designation having been acquiesced in by the owner, either tacitly, by accepting the benefits of the monopoly, or expressly, by his having so connected the name

Fed. Rep. 34; Coats v. Merrick Thread Co., 36 Fed. Rep. 324; Centaur Co. v. Heinsfurter, 84 Fed. Rep. 955; 28 C. C. A. 581; Lorillard v. Pride, 28 Fed. Rep. 434; Gally v. Colt's Patent Fire Arms Mfg. Co., 30 Fed. Rep. 118; Dover Stamping Co. v. Fellows, 163 Mass. 191; 47 Am. St. Rep. 448; Centaur Co. v. Robinson, 91 Fed. Rep. 889; Centaur Co. v. Neathery, 91 Fed. Rep. 891; 34 C. C. A. 118; followed in Centaur Co. v. Reinecke, 34 C. C. A. 684; 91 Fed. Rep. 1001; Centaur Co. v. Hughes Bros. Mfg. Co., 91 Fed. Rep. 901; 34 C. C. A. 127; Centaur Co. v. Marshall, 97 Fed. Rep. 785; 38 C. C. A. 413; affirming Centaur Co. v. Marshall, 92 Fed. Rep. 605; Warren Featherbone Co. v. American Featherbone Co., 72 C. C. A. 571; 141 Fed. Rep. 513; B. B. Hill Co. v.

with the machine as to lend