The Frazer Lubricator Company v. Samuel Frazer et al.

I'll research this matter, noting at the outset that the metadata frames it as an 1880s Illinois equity suit — so I'll verify what was actually litigated (patents vs. trademark/contract) before drafting.

Case overview and background

Framing correction first. This is not a patent infringement action, and it should not be presented as one. The suit filed August 30, 1884 in the Superior Court of Cook County was a bill in equity for injunctive relief and an accounting, resting on (i) the 1870 contract by which Samuel Frazer sold his business, his rosin‑oil patent, and the exclusive right to the "Frazer" name, and (ii) trade‑name/unfair‑competition principles. The Illinois Supreme Court expressly said it did not matter whether "Frazer," "Frazer's Grease," or "Frazer's Axle Grease" was "strictly speaking, a trade‑mark," because it resolved the case "upon the contract itself." Frazer v. Frazer Lubricator Co., 121 Ill. 147, 13 N.E. 639, 641–44 (1887). No infringement count on US 219,455 was pleaded, tried, or adjudicated. The patent appears only as background in the findings and, separately, as the target of a federal cancellation bill (below).

Parties and accused product. Plaintiff The Frazer Lubricator Company was a Chicago operating manufacturer — not an NPE/PAE, not a university — incorporated April 29, 1870 (some sources say 1871) as successor to the firm Frazer, Swift & Co., with John A. Packard (who bought Frazer's interest for roughly $17,500) as its controlling figure and president; the Illinois Supreme Court described the business as "one of vast proportions, and highly remunerative to the stockholders." It made "Frazer's Axle Grease" (also sold as "Frazer's Grease" and "Frazer's Lubricator") from rosin oil, lime, sal soda, palm oil, and water. Defendants were Samuel Frazer, the original inventor (who began making the grease in Galena around 1856), and S. Frazer & Co., a Galena firm organized in November 1883 (president Jacob Fawcett; secretary/superintendent G. S. Avery; Frazer as works foreman) that in 1884 began selling "Superior Axle Grease." The accused conduct was the packaging: labels bearing the firm name "S. Frazer & Co." in "good‑sized capitals," plus wagon/horse label artwork and circulars closely resembling plaintiff's, which the Court found "well calculated to mislead dealers." 121 Ill. at 640–41; the parallel federal bill describes plaintiff's label in detail. Frazer Lubricator Co. v. Frazer, 23 F. 305, 305–06 (C.C.D. Minn. 1885). The grease itself was found substantially the same product.

Patents, posture, and venue. Three patents form the technical backdrop, none of them the pleaded cause of action: (1) US 28,663 (June 12, 1860), Frazer's process for distilling five fractions of rosin oil — the patent actually assigned in 1870, and the one the Court held covers only the rosin‑oil ingredient, not the grease (121 Ill. at 644); (2) US 219,455, the 1879 "improvement in axle‑grease" patent that Frazer claimed covered the new formula; and (3) a companion 1880 patent dated October 19, 1880. United States v. Frazer, 22 F. 106, 106 (N.D. Ill. 1884), identifies the 1879 patent as issued September 9, 1879 and the second as issued October 19, 1880, and records Frazer's own position that "the first was issued by mistake." Procedurally: bill filed Aug. 30, 1884 → decree for plaintiff in the Superior Court of Cook County (injunction plus profits/damages, treated as incidental to the equitable relief) → affirmed, 18 Ill. App. 450 (1st Dist. 1886) → affirmed, 121 Ill. 147 (May 12, 1887) (Mulkey, J.), counsel Sheean & McHugh for Frazer; McClellan & Cummins, M. W. Fuller, and L. L. Bond for the company. Venue mattered structurally: both sides were Illinois citizens, so there was no diversity route into federal court; and after Trade‑Mark Cases, 100 U.S. 82 (1879), there was no general federal trademark jurisdiction, making the Cook County equity court and the Illinois appellate chain the only realistic forum. Plaintiff's counsel worked around that limit in two other proceedings: a Minnesota circuit‑court trademark suit against St. Paul agents Yanz & Howes, where jurisdiction was sustained over a dismissal motion (Frazer Lubricator Co., 23 F. 305), and a bill in the name of the United States to cancel Frazer's 1879 and 1880 patents for fraudulent oath and two‑year public use, dismissed for want of equity because private parties had "obtained the use of the name of the United States for the purpose of conducting a suit of their own" (United States v. Frazer, 22 F. 106).

Why it is notable. The decision is a leading American authority that a personal name used in trade may be sold as property, and that the seller — even the inventor himself, and even acting in good faith — may be enjoined from resuming it in the same line of business. It remains good law and is still cited (e.g., SSA Foods, Inc. v. Giannotti, 434 N.E.2d 460 (Ill. App. Ct. 1982); Hazelton Boiler Co. v. Hazelton Tripod Boiler Co.), and its reasoning that the covenant was a legitimate restraint on the use of a name rather than an unlawful restraint of trade is the template for modern name‑sale cases. It is also a useful early specimen of three things practitioners still litigate: founder‑versus‑successor company disputes, "buy the name, not just the mark" deal terms, and collateral attacks on patent validity through fraud‑on‑the‑Office theories where the patentee's own prior art and prior sale bar are the ammunition. The injunction proved narrow in practice — the Galena operation incorporated as the Galena Axle Grease Co. and kept making the grease, only without the Frazer name.

Sourcing caveats. The Cook County Superior Court docket number, the identity of the chancellor below, the exact decree terms, and whether any dollar amount was ever recovered are not in the reported opinions I could locate and should be confirmed against Cook County archives. I verified the 1879 issue date and the neighboring Sept. 9, 1879 patent‑number block, but did not retrieve the face of No. 219,455 from Google Patents, so the one‑line technical sketch of that patent above is drawn from the court's description rather than the specification itself; the number‑to‑date match is inference, not confirmation. Newspaper material on the Galena side comes from the Galena Daily Gazette via the Galena Historical Society/Galena Foundation reports and is useful context, not adjudicated fact. Citations are to the reporter texts on CourtListener, vLex, and the F. Cas./Fed. Rep. PDFs at law.resource.org.

I'll research this case. Note upfront: this is an 1884–87 Illinois state court trade-mark/contract action, not a modern federal patent case — so I'll verify what the record actually shows regarding the patent and correct the modern-litigation checklist where it doesn't apply.

Good — this is a state trade-mark/contract case, not a patent infringement suit. Let me verify the patent number, the lower-court chronology, and any parallel federal litigation.

Now let me pull the full opinions for procedural detail (decree date, pleadings, accounting) and check for post-1887 contempt/enforcement litigation.

Bottom line before the chronology

This was not a patent infringement action. The Frazer litigation was a state-court bill in equity for trade-name/trade-mark protection and breach of a 1870 contract, litigated entirely in Illinois state court, and it never adjudicated any patent claim. US 219,455 appears only as background: it is one of the two patents Samuel Frazer obtained after he had sold the business (and his name) to the Chicago company, and it is the patent Frazer himself told the Illinois Supreme Court had been "issued by mistake."

So most of the modern checklist items below (Markman, JMOL, IPR, stay pending IPR, § 285 fees) have no analog in this record. I've flagged each one explicitly rather than inventing an event. The one genuine patent-front proceeding was a federal bill in equity to cancel Frazer's patents, which is the closest 19th-century functional equivalent to a PTAB validity challenge — and it was dismissed on real-party-in-interest grounds.

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Chronological developments

1. Filing — 1884-08-30

The Frazer Lubricator Company "exhibited its bill in the superior court of Cook county" against Samuel Frazer, S. Frazer & Co., and associated defendants, "to enjoin" their use of the Frazer name in the axle-grease trade. Frazer v. Frazer Lubricator Co., 121 Ill. 147, 13 N.E. 639 (Ill. 1887) (Mulkey, J.) (full text).

• Factual trigger: Frazer retired from the Chicago firm in Feb. 1870 under a written, sealed agreement by which he sold his interest and the rights to use his name ("Frazer's Axle Grease," "Frazer's Lubricator," "Frazer's Grease") for $17,500. The firm incorporated 1870-04-29 as the plaintiff company. Frazer then obtained patents in 1879 (US 219,455, dated 1879-09-09) and 1880 (dated 1880-10-19) and, with a new Galena firm (S. Frazer & Co., organized Nov. 1883), began selling "Superior Axle Grease" in packages bearing "S. Frazer & Co." in large capitals.
• Note on the asserted patent: the two Frazer patents' dates are confirmed in United States v. Frazer, 22 F. 106 (N.D. Ill. 1884) ("the first dated September 9, 1879, and the second dated October 19, 1880, both being issued to defendant for 'improvements in axle-grease'"). The mapping of US 219,455 to the 1879-09-09 patent is an inference from the issue-date/number range — I could not retrieve the patent document itself to confirm patentee and number. No infringement count on it was pleaded.

2. Answer / counterclaims — 1884–85 (not itemized in the reported opinions)

No answer, counterclaim, or cross-bill is described in either appellate opinion. What is recoverable are the defendants' litigated defenses, as recited in the opinions:

• a personal name cannot be exclusively appropriated as a trade-mark;
• any right to use "Frazer" terminated when the 1860 rosin-oil patent expired, since that patent was assigned under the same 1870 contract (18 Ill. App. 450);
• Frazer's later patents (principally the 1880 patent; he conceded the 1879 patent was issued "by mistake") covered a genuinely different, non-"gumming" grease;
• no public deception, and the restrictive covenant was an unenforceable restraint of trade.

No patent invalidity or non-infringement counterclaim was pleaded.

3. Parallel federal proceeding on the patents — 1884-10-20

United States v. Frazer, 22 F. 106 (N.D. Ill. 1884) (Blodgett, J.) (CourtListener). A bill to cancel the 1879-09-09 and 1880-10-19 patents, alleging Frazer falsely swore the improvements were novel when they had been publicly known and used more than two years earlier and were fully described in his expired 1860 patent.

• Blodgett, J. found the suit was orchestrated by the Frazer Lubricator Company, which had drafted the bill through patent counsel (E. A. West and R. S. Tuthill), induced the Attorney General to transmit it to the district attorney, and posted a bond indemnifying the United States against costs — i.e., private parties "obtained the use of the name of the United States for the purpose of conducting a suit of their own."
• Held: demurrer sustained; bill dismissed for want of equity. This is the functional ancestor of a § 315 real-party-in-interest dismissal — the patent claims were never reached on the merits, so the dismissal had no preclusive effect on the validity of US 219,455.
• Defendants' counsel: Coburn & Thacher.

4. Second parallel federal suit — April 1885 term

Frazer Lubricator Co. v. Frazer, 23 F. 305 (C.C.D. Minn. 1885) (Nelson, J.) (Federal Reporter text). A trade-mark (not patent) suit in Minnesota against S. Frazer & Co. and its St. Paul agents Yanz & Howes, targeting the "Superior Axle Grease" label and devices and advertisements of sole agency.

• Motion to dismiss for want of jurisdiction / collusive joinder denied. Nelson, J. held the Illinois citizenship of S. Frazer & Co. did not defeat jurisdiction, because the served Minnesota defendants could be enjoined in their own right and their disclaimer of agency in the answer was "not conclusive."
• Counsel: Horton & Morrison (complainant); John B. & W. H. Sanborn (defendants).

5. Trial court decree — on or before 1885-07-20

After a hearing, the Superior Court of Cook County "rendered a decree in substantial conformity with the prayer of the bill" (121 Ill. 147). The Galena press reported on 1885-07-20 that the Galena firm could continue making "Superior Axle Grease" but not under the Frazer name (Galena Daily Gazette, cited in Galena Foundation history), which fixes the decree at or before that date.

• The Supreme Court notes that written opinions were filed in both the Superior Court and the Appellate Court, and expressly adopted their reasoning. The Superior Court chancellor's name and the precise decree date are not stated in any source I could retrieve — that would require the Cook County Superior Court equity files or the Chicago Legal News for 1885.
• Relief as described in the opinions was injunctive (restraint on use of the name). I found no verified monetary award, accounting reference, or profits decree; treat any assumption that the plaintiff recovered an accounting as unsourced.

6. Appeal — Appellate Court, First District (1886)

Affirmed, 18 Ill. App. 450 (1886) (CourtListener). Holding, on both independent grounds:

• Contract: the right to the trade name was not time-limited by the patent. "The right to distill rosin oils by the process covered by the patent would be free to all persons on the expiration of the patent, but the business of compounding axle grease, according to Frazer's formula, and selling it … under the name of 'Frazer's Axle Grease,' might continue as long as the parties engaged in it saw fit."
• Trade-mark/infringement: exact counterfeiting is unnecessary; a resemblance calculated to mislead ordinary purchasers suffices (McLean v. Fleming, 96 U.S. 2); Manhattan Med. Co. v. Wood, 108 U.S. 218,

I'll research this case, keeping in mind it predates PACER by roughly a century—so "docket sheets" here means historical Illinois state court reports and appellate opinions, not CM/ECF filings.

The Supreme Court opinion's syllabus lists appellee's counsel. Now let me identify those firms/attorneys individually.

Now the remaining two names. Let me verify "M. W. Fuller" and "McClellan & Cummins."

Sourcing note before the names

This case cannot be researched against PACER, a CM/ECF docket sheet, Law360, or Reuters Legal — the suit was filed in the Superior Court of Cook County on August 30, 1884, roughly a century before electronic filing. There is no docket sheet to pull, and I found no published trial-court record for the Superior Court proceeding; the lower-court opinions that Justice Mulkey refers to ("written opinions in the case, in the Superior as well as in the Appellate Court") were filed with the briefs but are not reproduced in the reporters.

The authoritative source for who appeared is therefore the counsel line in the reporter's syllabus of the Illinois Supreme Court decision: Frazer v. Frazer Lubricator Co., 121 Ill. 147, 13 N.E. 639 (May 12, 1887) (Mulkey, J.). It reads:

"McClellan & Cummins, M. W. Fuller, and L. L. Bond, for Frazer Lubricator Co., appellee."
— CourtListener / vLex

(By contrast, appellants Samuel Frazer and S. Frazer & Co. were represented by "D. & T. J. Sheean & McHugh.")

Counsel of record for the plaintiff / appellee

Individual notes

Lester Legrant Bond (L. L. Bond) — of counsel, West & Bond, Chicago. This is the best-documented figure. Bond began taking patent cases in 1859 and devoted himself to patent law from 1860; his firm (West & Bond, then Bond, Adams, Pickard & Jackson) practiced until 1891 and he was described contemporaneously as "the acknowledged leader at the Chicago bar" in patent, copyright and trademark law, and as ranking "number two in arguing reported cases in all the United States courts." He defended the Moline Plow Company and the Furst & Bradley Manufacturing Company, was involved in the Barbed Wire Fence cases, and appeared in "nearly all of the agricultural implement cases … tried in the seventh United States circuit." He also served as acting mayor of Chicago (Aug.–Dec. 1873) and in the Illinois House. Sources: Wikipedia; Bench and Bar of Illinois (Palmer) and History of the Republican Party (Wood, 1895) biographies. His presence on the brief is the strongest signal that the Frazer Company treated this as a trade-mark/patent-adjacent matter notwithstanding the contract framing.

M. W. Fuller — appellate counsel, Chicago. The Initials correspond to Melville Weston Fuller (b. 1833, Augusta, Maine; d. 1910), who practiced in Chicago from 1856 to 1888 and whose practice was overwhelmingly appellate — the Chicago History Museum's collection of his papers is described as including "briefs of all cases handled by Fuller as a practicing attorney before the Illinois Supreme Court." He argued roughly a hundred volumes' worth of Illinois reports, including the Bishop Cheney ecclesiastical-property case and the Lake Front case. He was appointed Chief Justice by Cleveland on April 30, 1888 and confirmed July 20, 1888 — i.e., about fourteen months after this decree was affirmed. I could not, however, locate a primary document tying "M. W. Fuller" in the Frazer syllabus to Melville W. Fuller specifically (see caveat 2). His relevant "patent" experience is general appellate and corporate, not a patent specialty — the patent/trademark depth on this team came from Bond.

McClellan & Cummins — lead counsel, Chicago. Two cautions: (a) the firm name is rendered variously in 19th-century sources as McClellan, McCleland, and McClelland & Cummins, and I could not determine the given names of either partner from the sources I reached; (b) I found no verified patent or trademark case in which the firm appears. The only trace I located is a Chicago bar biography noting that a future lawyer "entered law office of McCleland & Cummins as student in fall of 1890" (i.e., the firm was still operating after this litigation), and a separate, apparently unrelated Chicago firm, McClellan & Hodges, in which Albert Baird Cummins studied in 1872. I did not establish that Albert Baird Cummins (later U.S. Senator from Iowa) was the "Cummins" here — he left Chicago for Des Moines in January 1878, six years before this bill was filed, which makes it unlikely. Treat the identity of both McClellan and Cummins as unconfirmed.

Parallel federal proceeding — different counsel, do not conflate

The Frazer Lubricator Company also sued Frazer and S. Frazer & Co. in the U.S. Circuit Court for the District of Minnesota (bill filed by an Illinois corporation against Illinois defendants plus Minnesota agents Yanz & Howes), Frazer Lubricator Co. v. Frazer, 23 F. 305 (C.C.D. Minn., Apr. 1885) (Nelson, J., denying motion to dismiss for want of jurisdiction). Counsel there were Horton & Morrison, for complainant, and John B. & W. H. Sanborn, for defendants — i.e., Minnesota counsel, presumably local counsel, in a separate docket. These attorneys are not counsel of record in the Cook County case and should not be listed as such. Sources: law.resource.org F.2d vol. 23; CourtListener.

What I could not verify — explicit flags

1. Individual identities of the McClellan & Cummins partners. Not established. I found no firm letterhead, brief, or directory entry naming them, and no evidence of patent-litigation experience for either.
2. "M. W. Fuller" = Melville Weston Fuller is a strong but unconfirmed inference. It rests on initials, city, era, and Fuller's documented heavy Illinois Supreme Court appellate practice. Anyone filing this should verify against the actual brief in the Illinois Supreme Court archives or the Fuller papers at the Chicago History Museum before asserting it.
3. Role designations are inferences, not recorded facts. 19th-century reporter syllabi list counsel without designating lead, of counsel, or local counsel. The ordering (firm first, then Fuller, then Bond) is consistent with McClellan & Cummins as lead solicitors; Fuller's likely role as appellate counsel and Bond's as the patent/trademark specialist are reasoned inferences from their respective practices.
4. No evidence of in-house counsel for the Frazer Lubricator Company appears in any source I reviewed.
5. Nothing is sealed in the modern sense — there simply is no electronic record. The Superior Court of Cook County files from 1884 would, if extant, be held by the Cook County Circuit Court Archives; I did not access them.

One final point bearing on your framing: consistent with the existing case summary, the reported opinions confirm this was pleaded and decided as a contract and trade-name/unfair-competition bill, not a patent infringement action. Frazer's 1879 and 1880 patents are recited in the facts and the Court notes he armed himself with them, but the decree rested on the 1870 sale-of-business agreement and on the name "Frazer" as a designation of origin — Justice Mulkey expressly said "we do not think it important whether the expression 'Frazer' … is, strictly speaking, a trade-mark or not." The presence of Bond, a patent specialist, is best explained by the patent assignments that formed the chain of title to the mark, which the Minnesota opinion describes as "derived from certain assignments of letters patent."

I'll research this case carefully. Note up front: this is an 1884–1887 Illinois state-court case, so PACER, Law360, and Reuters Legal won't have dockets — the sources will be historical reporters (Ill. App., Ill.) and archives. Let me search.

Key finding already: the Illinois Supreme Court opinion lists defendants' counsel. Let me dig into full names and the appellate-level listing.

Sourcing caveat — read first

There is no PACER docket, no Law360/Reuters coverage, and no modern court file for this matter. It is an 1884–1887 Illinois state-court equity cause (Superior Court of Cook County → Appellate Court, First District → Supreme Court of Illinois). The only accessible record of appearances is the counsel line printed in the reported opinions, which reflects the Supreme Court appeal. I could not locate the Superior Court chancery appearance docket or the parties' briefs online, so the names below are those the reporters attributed as counsel for the defendants/appellants — not a docket-derived appearance list, and the reports do not designate "lead" versus "of counsel."

The governing opinions (note the caption reverses below/appellate, since Frazer lost below and appealed):

• Frazer v. Frazer Lubricator Co., 18 Ill. App. 450 (1st Dist. 1886)
• Frazer v. Frazer Lubricator Co., 121 Ill. 147, 13 N.E. 639 (1887) (Mulkey, J.) — https://case-law.vlex.com/vid/frazer-v-frazer-lubricator-894440983 ; https://www.courtlistener.com/opinion/[7059496](/patent/7059496)/frazer-v-frazer-lubricator-co/

The 1887 opinion's counsel line reads verbatim: "D. & T. J. Sheean & McHugh, for Samuel Frazer and others, appellants." (For contrast, plaintiff's side: "McClellan & Cummins, M. W. Fuller, and L. L. Bond.")

Defendants' counsel of record

What the record does and does not support

• Roles: Nineteenth-century Illinois reports list counsel collectively ("…for appellants") without the modern lead/of-counsel/local-counsel taxonomy. I have assigned roles functionally (senior partner / junior partner / Chicago association) and flagged which are inferences. No attorney in this case is documented as in-house — S. Frazer & Co. was a partnership, not a corporation, so it had no house counsel; the plaintiff corporation's work was likewise outsourced (McClellan & Cummins; M. W. Fuller; L. L. Bond).
• No patent specialists appear of record. Consistent with the case summary in this file: US 219,455 is recited in the facts, but the bill pleaded trade-mark infringement and breach of the 1870 withdrawal agreement, and neither the Appellate Court nor the Supreme Court opinion addresses patent validity, claim construction, or infringement. Frazer's 1879 and 1880 patents were used defensively as justification for re-entering the axle-grease business; the Appellate Court rejected the argument that the trade-name rights expired with the patent (18 Ill. App. at 450, passim). So defense counsel's actual work was unfair-competition, trade-name, and contract defense, plus accounting/profits — not patent practice.
• Sealed/absent filings: Nothing here is "sealed" in the modern sense; the deficiency is archival. The Superior Court of Cook County chancery file (bill filed Aug. 30, 1884) and the parties' briefs — which the Supreme Court described as "able and elaborate" and which included the written Superior and Appellate Court opinions — are not digitized. The Cook County Circuit Court Archives and the Illinois Regional Archives Depository (IRAD, Northeastern Illinois University) are the realistic places to confirm the trial-level appearance list, including whether McHugh appeared below or only on appeal.

Counsel in the parallel proceeding (distinct case, same parties)

For completeness, since it is often conflated with this suit: Frazer Lubricator Co. v. Frazer, 23 F. 305 (C.C.D. Minn., Apr. 1885) (Nelson, J.) — a separate federal trade-mark suit in Minnesota against S. Frazer & Co. and its St. Paul agents Yanz & Howes. There, defendants were represented by John B. & W. H. Sanborn of St. Paul (the only defendants to appear were Yanz & Howes), against Horton & Morrison for complainant. https://www.courtlistener.com/opinion/[8341850](/patent/8341850)/frazer-lubricator-co-v-frazer/ ; http://bulk.resource.org/courts.gov/c/F1/0023/0023.f1.0305.pdf. Those Sanborn appearances do not carry over to the Illinois case, and should not be listed as counsel of record here.

Bottom line

The documented defense team in this case is the Galena firm of David Sheean and Thomas J. Sheean, appearing jointly with a Chicago attorney surnamed McHugh, for Samuel Frazer and S. Frazer & Co., as appellants in the Illinois Supreme Court and (per the same representation) below. David Sheean is the identifiable senior figure and the one with a documented litigation career; Thomas J. Sheean's individual role and McHugh's full name and firm are the two gaps that only the Cook County archives, the Chicago Legal News, or the 1886 Appellate Court report's own counsel line are likely to close.