276
It wiIlbe observed in this case that the complainant 'does not rest her demand for equitable relief solely upon the fact that Gillet, in his position as executor, wus forbidden to purchase her property for himself, for the bill makes certain charges and complaints in relation to the advice, acts, transactions, and promises of Gillet in managing the estate and in negotiating the loan, which show, aside from his being the executor of the estate, that he was, or may have been, connected with her, and with her said interest, and with the debt for which it was sold, in such a fiduciary or confidential way as to forbid him to purchase for himself. It will be seen that the rule we are considering, and the public policy which its enforcement is intended to conserve, is not limited to prohibiting an executor, trustee, or agent from combining the dual character of vendor and vendee, as Gillet would certainly have done if he had purchased the whole or any p.art of his testator's property at a sale, judicial or otherwise, made to pay Morgan's debts, or to effect a partition of the lands. To prohibit this combination of inconsistent characters in an agent, is clearly one of the essential purposes of the rule in equity, and of the policy of the law as laid down in Davolle v. Fanning, 2 Johns. Ch. 252, and in the cases reviewed by the learned judge in his examination of that noted case; but it goes further, and makes it inequitable, under the allegations of complainant's bill, for Gillet, not considering his capacity as executor, to hold the property berein involved otherwise than as a resulting trust for the beneficiai'Y now suing for equitable relief. Demurrer overruled.
GOODYEAR RUBBER
Co. v.
GOODYEAR'S RUBBER MFG.
Co. and others.
(Oirtmit Oourt, 8. D. New York. 1.
August 15,1884.)
TRADE-NAME-RIGRT OF CORPORATION TO ACQUIRE-INFRINGEMENT BY ANOTHER C O R ! ' O R A T I O N . · . .
A corporation may acquire a property right to the use of a name other than its original corporate name as a trade-mark, or as incidental to the good-will of a business, as well as a)l indi\ridual; and if it Qas acquired stich a right, it cannot be deprived thereof by the assumption of such name subsequently by another corporation, whether the latte. select!! its name by the act of .corporators who organize under the general laws of the state, or the name is.selected for it in a special act by a legislative body. · . 2. SAME-PRIORTY-EvIDENC:E-INJUNcTION-" GOODYEAR RUBBlcR' COMPANY"--
"GOODYEAR'a RUBBER MFG. CO."
Upon examination of the evidence in case at bar, heZd, that the" Goodyear Rubber Company" was entitled to an injunction reatraining the defendant from using the name, "Goodyear's Rubber Mfg. Co." :.. ' .
In Equity. W. W. MacFarland, for complainant.
GOODYEAR BUBBER,OO.,V. GOODYEA;a'II',:RUBBER JrfFG. 00.
277
F. H. Betts and Stephen P. Kellogg, for defendants. WALl,ACE, J. The complainant is a corporation organized under the laws of New York, in 1872, by its present corporate name. The defendant is a corporation organized under the laws of Connecticut, in 1847, by its present corporate name. Each corporation seeks to the other, the complainant by l}ill and the defendant by crossbill, from using the name "Goodyear's Rubber Mfg. Co." Both parties concede this name to be practically identical with complainant's name. The parties are competitors in the manufacture and sale of rubber goods, and have their principal places of business in the city of New York. Each insists that it has acquired the right to the use of the name in dispute, and that such name has become a valuable adjunct of its business; and each insists that the other bas endeavored and is now attempting, by a wrongful use and appropriation of the name, to divert the custom of the other. As each party concedes that the right to use the name for the purposes of its business is a valuable property right, and asserts that such use by the other, is vexatious, embarrassing, and necessarily tends to pecuniary injury, the controversy manifestly resolves itself mainly into a question of title to the name. It is incumbent upon one of the parties to estab· lish a lawful right to use the name as against the other, and the party which does this will be entitled to the relief prayed for. The name of a corporation haa been said to be the "knot of its combination," without which it cannot perform its corporate functions. Smith, Mere. Law, 133. It has neither the right nor the power to change the corporate name originally selected without recourse to such formal proceedings for the purpose as may be authorized by the laws under which it has been incorporated, or by the consent of the authority from which its charter is derived. Nevertheless, it may become known by another name by usage; and the courts have frequently treated acts done and contracts entered into by corporations under other name, as though done or entered into by it with the true name. Minot v. Curtis, 7 Mass. 441; South Sc!wol-dist. v. Blakeslee, 13 Conn. 227; Eastham v. Blackburn By. Co. 23 Law J. Exch. (N. S.) 199; Boisgerard v. N. Y. Banking Co. 2 Sandl. Ch. 23. There is no reason why a corporation may not acquire a property right to the use of another name as a trade-mark, or as incidental to the, good-will of a business, as well as an individual; and, if it has acquired such a right, it will of course be protected in its enjoyment to the same extent as an individual would be. It cannot be deprived of· the right by the assumption of the name subsequently byanothe.r corporation,and it is immaterial whether the latter selects its name by the act of corporators who organize under thegenerallawB of a state, or whether the name is selected for it in a special act by the legislative body. , Manifestly, if the defendant had no right to use the name by which the complainant was incorporated, or one practically idimtical with it, at the time of the, latter's incorporation, the is
978
.::FBDERAL REPORTB&.
clear, beoause it adopted the name formally, publioly, and legitimately, for all its corporate purposes. The defendant insists that it had acquired a prior right to the use of the name j that this right took its origin as early as 1862, and by a gradual process of development had ripened into a good title before complainant was incorporated. Neither party makes any claim of exclusive right to use the word "Goodyear" alone, that word having become a generic term of description applied to a la.rge class of India-rubber fabrics before either party became a corporation, or to the word "Goodyear" in combination with "rubber." There were trading concerns called the "Goodyear Metallic Shoe Co.," "The Goodyear Rubber Works," and the "Goodyear Rubber Emporium," before either party claimed the right to the name in controversy. The defendant's theory, as sustained by the proofs, is that, beginning in 1862, when it ceased to confine itself to the manufacture of gloves, and engaged in manufacturing and selling rubber goods generally, its customers occasionally addressed it in their correspondence by various abbreviated names, such as "Goodyear's Rubber Mfg. Co.," "Goodyear Rubber Co.," Goodyear's Co.," "Goodyear's 1. R. Company j" "Goodyear Company," and other abbreviations j that the use of such abbreviated addresses by its customers gradually increased, so that in 1871 the defendant received nearly 200 letters addressed to the Goodyear Rubber Company, and nearly 100 to the Goodyear Rubber Mfg. Co. On the other hand, the proofs show that during this time the defendant received many thousands of letters yearly; that the letters addressed to it by other names were comparatively a small number, averaging not over 500 a year, but embraced upwards of 70 varieties of names; and that its correct corporate name was usually adopted by its correspondents and patrons. It is not claimed that the officers or agents of the defendant were accustomed during any part of this period to use any other than its corporate name, or assumed the right to do so until after the complainant commenced business. To the contrary, they were solicitous and painstaking to correct the tendency of its customers to address it by any other than its corporate name; and it was their practice to send envelopes to customers with its correct name printed upon them, to preve:tlt the occurrence of such mistakes. Concisely stated. the questionwould seem to be, whether the defendant can appropriate to itself the various misnomers applied to it by the carelessness or inaccuracy of a comparatively small number of its customers during a period of 10 or 11 'years, notwithstanding the zealous and active measures of its managers to repress the practice, and their success in preventing it from ripening into a general usage. It would hardly be contended that an individual could found a claim of possessory right to any species of property upon the unauthorized conduct of other persons, or maintain that he had adopted a name symbolizing his products, or identifying his personalty with
GOODYEA.R RUBBER 00·. V. GOODYEAR'S. RUBBER 1dJ1'G. 00.
279
his business, by protesting against its use j and of course a corporation does not occupy a different position. The proofs show that there was no general recognition of the defendant among its customers by any other than its corporate name, and no adoption by the defendant of a different name, and it must be. held that the occasional or persistent use of the misnomer by a few of the defendant's customers gave no privilege to the defendant to a monopoly in the use of the name. n the proofs warranted the inference that the complainant assumed a name by which the defendant was known for the fraudulent purpose of deceiving the public, and of supplanting the defendant in the good-will of its business, the court would not only refuse to assist the complainant, but would intervene to protect the defendant. A careful reading of the proofs fails to disclose the existence of any such design, or of any intention to adopt a name with which the defendant had already become appreciably identified. The case is destitute of evidence to indicate that the complainant's corporators were aware or had reason to suppose that the defendant had become known to any extent by any other name than its corporatelname. So far as appears, they had no knowledge that defendant's customers ever addressed it by other names. Nor is there anything in the proofs to justify the insinuation that the complainant was organized for the purpose of annoying the defendant by illegitimate competition. It does appear that the persons who organized the complainant had been the managers and agents of another corporation, the Rubber Clothing Company,· which for many years had been a competitor of the defendant at the city of New York; that propositions for a consolidation of this company with the defendant had been somewhat discussed between their respective managers without result; and that shortly afterwards the complainant was organized. For a time its affairs were transacted at the offieeof the Rubber Clothing Company, and the two concerns maintained very intimate relations, as might be expected from the circumstance that the managers were the same persons in both. But the salient facts that the new corpqration started with a cash capital of $500,000 and engaged in new branches of trade while the old company continued in business, sufficiently refute any theory that complainant was not a bonafide concern. Hit should be conceded that the two concerns were practically one, and that the main object of the complainant's organization was to enable ·the Rubber Clothing Company to assume a new narne,-one which would represent a corporation dealing in rubber articles generally, instead of in clothing only,-there would be no occasion for censure be{Jause the new name was better adapted to describe the business of the corporation. The Rubber Clothing Company had long ceased to manufacture and sell clothing only, and had become engaged in selling rubber goods generally. It was undoubtedly intended by those who organized the new concern to engage in the general rubber trade
FEDERAL REPORTER.
upon a more extensive scale than that of the old company. The name selected was an appropriate one, and those who adopted it had a perfect right to do so, provided they did not know or have reason to be. lieve that by doing so they would interfere with the business of the defendant. The fact seems to be that both the Rubber Clothing Company and the defendant were doing business under names that were somewhatmisleadiug to such persons as had not learned, by business intercoul'se with them, that they were manufacturers and dealers in rubber goods generally. It would have been entirely proper for either of them to adopt a new name. The complainant adopted a new name first, and if it was only the Rubber Clothing Company with a new name, the defendant had no right to complain so long as the name did not serve to engender unfair competition and deceive the trade. As has been said, however, it was a new concern with a large capital, and contemplating enlarged business operations, and the proofs do not show that its corporators were moved to select its name by any illicit motive towards the defendant. If the name selected was one calculated, by its similarity to defendant's name, to lead to confusion of bueiiness, and to confonnding the identity of the two corporations, it might well be urged that those who. adopted it should abide by the consequences, although they were innocent in their intentions, and not ask a court of equity to protect them against the inconveniences which might follow. But the defendant, not content that the consequences shall rest where they fall, insists upon ihe exclusive right to use the name, and since the complainant assumed it has issued notices and circulars to the trade, and put up a sign calling itself by the complainant's name. Upon the same theory it can also claim the exclusive right to use the multitude of misnomers applied to it from time to time by its careless customers. It has a distinctive name of its own, which it formally adopted, and which has been carefully preserved by its agents until the complainant selected one. It ought not to complain now because the latter was the first to avail itself of the choice of selection outof all unappropriated names. Certainly, it cannot be permitted to appropriate the complainant's name, or one substantially identical, and, by asserting itself as the Goodyear Rubber Company, mislead the public to the detriment of the complainant. A decree is ordered for complainant, and the cross-bill of the defendant is dismissed.
CONNECTICUT HpT. LIFE IN&. CO. V. ORAWFOBD.
281
IJUYTIES
and others
17. HOL'LENDEB
and others.
(Oircuit Oourt, S. D. Ne1JJ York. TRADE-MARKS-STATE LAWS.
August 9,1884.)
The rights and remedies concerning trade-marks generally depend upon the laws of the states, common or statutory, and not upon the laws of the United States. .
In Equity. Samuel T. Smith, for orators. Louis G. Raegener, for defendants. . WHEELER, J. r.ights and remedies pertaining to trade-marks generally depend upon the laws of the state, common and statutory, and not upon the laws of the United States. Trade-mark Oases, 100 U. S. 82. The laws of the United States now in force, under which this trade-mark was registered, relate only to trade-marks specially used in commerce with foreif;{n nations) or with the Indian tribes. Act of March 3, 1881, (21 St. at Large, c. 137, § 1.) They are particularly restricted so as not to give cognizance to any court of the United States in an action or suit between citizens of the same state, unless the trade-mark in controversy is used on goods intended to be transported to a foreign country, or in lawful commercial intercourse with an Indian tribe. Id. § 11. The f;{oods on which the trademark in question is used are not intended to be transported to any foreign country, nor for any Indian tribe, but are mineral waters sold for consumption in the city of New York; and the parties are. all citizens of the state of New York. As this case is now presented, the orators are not entitled to maintain it in this court, and this motion for a preliminary injunction must be denied.
CoNNEOTICUT MUTUAL LIFE
INs.
Co.
v.
CRAWFORD
(Oircuit Oourt, N · .D. IlUnoi,. 1.
August 8, 1884.)
MORTGAGE-MoRTGAGEE NON-RESIDENT- UNITED STATES CmCUIT COURTDECREE.
A mortgagee, resident In a state other than that of the mortgagor, may file his bill for foreclosure in the United Statljs circuit court, and obtain a decree, upon case shown. 2. . SAME-REDEMPTION BY JUDGMENT CREDITOR-RULES OF' COURT.
A judgment creditor may redeem premises from a sale under judgment or decree of a United States court by suing out execution upon his judgment in the ordinary manner, placing his execution in the hands of the proper officer to execute, and paying the money needed to redeem in the hands of the clerk of the United States court, together with the of the clerk for raceivingand paying the money.