R. W. ROGERS CO.
WH. ROGERS MANUF'G CO.
ing the two parts of the train, illustrated, described, and claimed by him. If, therefore, this combination of details of improved construction, in view of its utility, may be the subject of a valid patent, yet in no event can it be given such a broad construction as to embrace the plant of the defendant. Let a decree be entered dismissing the bill.
R. W. ROGERS CO. et at. v. WM. ROGERS MANUF'G CO.
(Circuit Court of Appeals, Second Circuit. December 17, 1895.)
TRADE-NAME-INJUNCTION AGAINST USE.
A corporation which, by arrangement with one R. W. R., takes his name and stamps it upon articles sold by it, with the purpose of inducing the publ¥: to think that in purchasing such articles they are purchasing the product of another "R." company of established reputation, will be restrained from using such stamp.
Appeal from the Cirt:luitCourt of the United States for the Southern District of New York. Chas. H. Duell, for appellants. Chas. E. Mitchell, John W: Alling, and Hiram R. Mills, for appellee. Before WALLACE and SHIPMAN, Circuit Judges. SHIPMAN, Circuit Judge. This is an appeal from an order of the circuit court for the Southern district of New York, which enjoined, pendente lite, the defendant corporation from the sale of silver-plated tableware stamped with the mark, "R. W. Rogers Co.," upon the ground that the defendant had selected the name of Rogers as a part of its corporate name for the purpose of misleading the public. 66 Fed. 56. About 40 years ago, three brothers, by the name of Rogers, composed a firm in Connecticut under the style of Rogers Bros. This firm first applied the art of electroplating to the manufacture of silver-plated ware in this country, and acquired by steadfast integrity a high reputation for the sterling quality of their ware, and the name of Rogers Bros. stamped upon the back of the goods also obtained a widely extended reputation. The· complainant, a corporation called the Wm. Rogers Manufacturing Company, is the sucC ssor of the business established in 1865 by William Rogers, one of brothers, and has been since 1872 engaged in manufacturing and selling silverplated ware, and has continued the trade-marks upon such goods which its predecessor adopted in 1866, viz. "1865, Wm. Rogers Mfg. Co.," and "Wm. Rogers & Son." It has also used since 1887 the following mark: (Anchor) Rogers (Anchor). Two other corporations acquired from one or more of these brothers the right to use the name Rogers also, and for a number of years last past the goods of these corporations, called in the speech of the public. Rogers goods, have maintained a high character and a well-known reputation. In 1879 or 1880 a corporation called the Rogers Silver-Plate Company was formed in New York City by Robert R. Rogers, one Brown, and Qne Boardman. Rogers had been a salesman of silver-plated ware,
FEDERAL REPORTER I
vol. 7O. '
'but was not a manufacturer. The corporation was formed so that an Albany'manufacturer by the name of Stt'ickland, and doing business as R.Stlickland & Co:, could use the name Rogerson his flat ware, and gain the adVantage of the reputation whichtheriame had in the market. For the use of his name Robert W. Rogers, was given a fourth interest in the corporation. Sdme time thereafter Strickland and Rogers disagreed, and Rogers became a salesman of the goods made by the complainant. In the spring of 1894, H. H. Williamson, W. a salesIllan of James Dawson's silver-plated holl()w ware, Rogers, and Frederick F. Spyer, who had been selling flat arid hollow silver-plated ware in Brooklyn for some years, and had been dealing mainly in cheap goods, formed a joint-stock company to sell silver-. plated goods. The company had no capital. Curtis-Crume Company, of Niagara Falls, is a large' corporation, which carries on the dePi'lrtriIent of its business pertaining to the manufactlire and sale of silver-plated ware under the name of the Niagara Sil""er Company. After with other manufaCturers, Rogers succeeded in inducing SamuelJ. Moore, the secretary 'of the Curtis-Cruine Company, and William A. Jameson, the manager of the Niagara Silver, Company, to form with the stockholders of the R., W. Rogers Company a neW corporation' under, the same name, and, an arrangement was entered into between the Curtis-Crume Company and the R. W. Rogers Company by which the former manufactured silver-plated flat ware for the latter company, which ware bore the name of the said Rogers Company. Notwithstanding the generalities of the affidavits of Jameson and Moore, it is evident that the scheme was a reproduction Of the old scheme, in which Rogers was engaged in 1880, by which he sold his name as a decoy, or permitted his name to be used for hire, to deceive the public. There cannot be much controversy in regard to the aspect with which the law regards the state of facts disclosed in the affidavits. The fair' 'and honest use of a person's own name in his, ordinary and legitimate business, although to the detriment of another, will not be interfer with. A tricky, dishonest, and fraudulent use of a man's \d own name, for the purpose of deceiving the public, and of decoying it to a purchase of goods under a mistake or misapprehension of facts, will be prevented. Every case under this branch of the law of trademarks turns upon tbe question of 'false representation or fraud. In this case Rogers helped to establish a corporation which took his name for the purpose of inducing the public to think that they were buying the well-known Rogers gODds, and for the purpose of surreptitiously obtaining the advantage of the good reputation whicb other manufacturer,s had given to articles stamped with that name. The use by the defendant corporation of this name is not merely an injury to the complainant, but it is an intentional fraud upon the public. The difference in the result with which a court of equity follows an honest and a dishonest use of one's ()wn name, although each use injured the person who had honestly acquired a use of the name as a trade-name, is shown in the valuable cases of William Rogers Manuf'g Co. v. Rogers & Spurr Manuf'g Co., 11 Fed. 498, and Same '\'. Simpson, 54 Conn. 527, 9 Atl. 395, where, as well as in Rogers v. Rogers, 53 Conn. 121, 1 Atl. 807, and 5 Atl. 675, a large number of
ROGEltS V. WM. ROGERS MANUF'G CO.
the reported cases upon this portion of the law of trade-marks are collected. The order of the circuit court is sustained, with costs of this court. WALLACE, Circuit Judge. I place my concurrence in the judgment in this cause upon the broad ground that a body of associates who organize a corporation for manufacturing and selling a particular product are not lawfully entitled to employ as their corporate name in that business the name of one of their number when it appears that such name has been intentionally selected in order to compete with an established concern of the same name, engaged in similar business, and divert the latter's trade to themselves by confusing the identity of the products of both, and leading purchasers to buy those of one for those of the other. No person is permitted to use his own in such manner as to inflict an unnecessary injury upon another. The corporators chose the name unnecessarily, and, having done so for the purpose of unfair competition, be permitted to use it to the injury of the complainant. .
ROGERS v. WM. ROGERS MANUF'G CO. (CirCUit Court of Appeals, Second Circuit. December 18, 1895.)
TRADE- NAME-IN.JUNCTION AGAINST USE.
The mere fact that one knows that cheap goods sold by him to the trade, stamped with his name, can and will be sold by dishonest dealers under representations that are manufactured by a company of established reputation having a similar name, which manufactures a high class of goods, does not justify an injunction against the use of such stamp.
Appeal by the defendant from an order of the circuit court for the Eastern district of New York, which granted an injunction pendente lite against the defendant's causing to be manufactured or selling silver-plated ware stamped with the words "Wm. A. Rogers." The order was obtained upon the ground that by the use of this stamp upon the back of silver-plated ware the defendant was endeavoring to deceive the public into the belief that the goods were genuine Rogers goods, to the injury of the complainant. The history of the trade-name "Rogers," and the law upon the subject, have been briefly .given in R. W. Rogers Co. v. Wm. Rogers Manuf'g Co. (which was de cided at the present term) 70 Fed. 1017. Wm. C. Beecher, for appellant. Chas. E. Mitchell and Hiram R. Mills, for appellee. Before WALLACE and SHIPMAN, Circuit Judges. SHIPMAN, Circuit Judge. William A. Rogers has sold for a number of years, in the city of New York, small hardware and cheap spoons. In July, 1894, he engaged R. Wallace & Sons Manufacturing Company, a manufacturer of silver-plated ware, to make for him and prepare for market teaspoons, tablespoons, and forks plated upon steel. They were put up in boxes of the ordinary size and ilhape uf!ed for similar ware, which were labeled, "Wm. A. Rogers, N. Y.," and the stamp "Wm. A. Rogers" was upon the back of each