32 N.Y.S. 203 | N.Y. Sup. Ct. | 1894
This action is brought to enjoin the defend- ' ant from using the name “ De Long ” in connection with the ■sale of hooks and eyes, and especially hooks and eyes in direct or colorable imitation of the plaintiffs’ hooks and eyes, upon the ground that the name “ De Long,” in connection with the words “ Hook and Eye,” constitutes á fraud upon the plaintiffs, and was adopted and continued in use for the purpose of enabling the defendant to avail itself of the established reputation of the plaintiffs’ hook? and eyes, which are known in the trade and to consumers as the “ De Long Hook and Eye.”
If these grounds áre supported, then the plaintiffs are certainly entitled to some form of relief; and while it is not my purpose to dwell at length upon the testimony, there are certain facts so clearly proved or admitted as to be placed beyond -controversy, and I shall endeavor as far as possible to confine myself to such.
It appears that some forty years ago there was a hook having the shank or bill composed of three wires, the center one being bent forward and backward to accomplish the purpose of a spring, terminating before reaching the bend forming the loop. This is in many respects like the hook manufactured by both plaintiffs and defendant, its particular resemblance being in what has been designated by the plaintiffs as the “ hump.” It does not seem to have been extensively used. Some twenty years ago another hook, called the u Eagle Talon,” with some of the features of the hook just described, appeared, and how extensive was its use is not evident, though it was shown that for more than ten years it has been neither manufactured nor sold on the market. Apart from these, the form of hooks and -eyes in common use were known as the “ Swan Bill,” of which there were a variety of patterns, all having the same general ¡structure of a straight bill or shank bent upwards in the form ■of a loop or hook. In the color of hooks and eyes, those used were principally black and white, and in the carding for •placing them upon the market there was little variety, the -color and manner in vogue having been practically continued for forty years prior to the advent' of the plaintiffs’ hooks and
From the outset the plaintiffs gave to their goods the title “ De Long,” and adopted and registered that word as a trade mark. It is insisted by the defendant that such registration was illegal, upon the ground that a name cannot be registered. But it is not necessary that I should go into that question, the fact appearing that the registration was accepted by the proper office and the name De Long adopted as a trade mark; and whether this was one secured by law or merely a common-law trade mark, acquired through use in connection with the article manufactured by the plaintiffs, the result of an unlawful appropriation of or interference therewith by the defendant would be practically the same so far as the legal rights of the parties are concerned.
While plaintiffs were so engaged in building up this business, one Oscar A. De Long was employed as a buyer in the notion department of a dry goods house in this city, and as such bought and sold hooks and eyes for his employers. Among others, he had purchased some of plaintiffs. On the occasion of one of such purchases, in an interview with one of the plaintiffs, the similarity in their names was discussed between them, as well as the merits of the hook, which Oscar A. De Long referred to as a valuable thing. And, no doubt attracted by the growth in the hook and eye business, Oscar A. De Long says that in the summer of 1892 he worked at improving the
There can be no question but that, at the time this company was formed with this title, Oscar A. De Long, who had become familiar with the plaintiffs’ goods, and knew that they were known on the market as the “ De Long Hook and Eye,” and who was impressed with the value of the name De Long as a trade mark, deliberately selected the title of the defendant company. That this was done with an intention to benefit the defendant and injure the plaintiffs is clearly inferable, not only from the adoption of the name of the defendant company, but by the course pursued in the management of its business and of the placing upon the market of its goods in competition with the plaintiffs. Thus the hook itself is very similar, and it is only upon a careful examination that one can discover the differences. So in respect to the way in which the hooks were put up, the variety in colors and the manner of carding, without being exactly alike, they are so very similar as to render the inference improbable that this was the work of chance and not the result of a design to simulate and follow the plaintiffs’ business devices, and, by such means, to enter upon an unfair competition by taking advantage with the public of the reputation acquired for the plaintiffs’ goods, with a view of increasing the sales of the defendant’s own goods. What was said in the case of Fischer v. Blank, 138 N. Y. 252,-is here applicable: “It niust be admitted that there is no single point of resemblance or imitation which would of itself be regarded as adequate grounds for the grant of equitable relief. Form- alone would not be sufficient, nor size nor color, nor the gen
So, in the case at bar, though none of the particular acts complained of, except one, if separately analyzed and considered, could be regarded as such an imitation or simulation of the plaintiffs’ methods as would entitle them to relief, yet, when taken together, they are potent factors, leading to the inference that the defendant intended to enter upon an unfair competition with the plaintiffs. Such inference, coupled with the fact of the selection of a name for the defendant corporation so similar to the one under which the plaintiffs’ goods were known and sold, entitles the plaintiffs to relief against the injury that could be thus inflicted upon their business and the deception that might thus be practiced upon the public.
It has been many times held that the courts will not enjoin persons from using their own name in their own business, even though by such use they may injure a business before that time carried on by one of the same name; and for the reasons given, and frequently quoted in the leading case of Meneely v. Meneely, 62 N. Y. 467. And though in that case it was
The right, however, of one to use his own name in his own business is something very different and distinct from the lending or giving of his name to a corporation for the purpose of engaging in a business which has been conducted by others under precisely the same name. A person comes naturally by his name from his parents, and it is a tiling personal to himself which in truth and justice he has the right to use, provided its use is not coupled with any acts or artifices calculated to produce deception or confusion in the public mind between him and some other person to the injury of the latter and the public. The name given to a corporation is an artificial and impersonal thing which can be selected from an entire vocabulary of names; and the difference between using a name so selected identical with that under which others do business, and the case of the use by one of his own name in his own business, seems to me clear and manifest. To say that one has the right to select his own name as the designation of a corporation is but another way of stating that he has a right to select any title from among the whole range of names; but it is not equivalent to a statement that he can give his own name to a corporation with a view to making it similar to that employed by other persons in the same business to their or the public’s injury.
The defendant refers to cases where the name given to a new corporation was that of a person whose name was similar to that of an existing company, such as Scott Stamp & Coin Co., Ld., v. J. W. Scott Co., Ld., 58 N. Y. Super. Ct. 379 ; Employers' Liability Assurance Corporation v. Employers’ Liability Ins. Co. of the United States, 24 Abb. N. C. 368 ;
This case, however, is readily distinguishable from those cited, in that here Oscar A. De Long had never been, up to the time of entering into this business, anything but a clerk, nor had he done aught to render the name of De Long, in connection with the hook and eye business, valuable as a trade mark. The probability of confusion in the public mind (an element always to be considered) in those cases and this was entirely different. There can be no question but that the use of the name “ De Long Hook & Eye Company ” in connection with the business conducted by the defendant is calculated, not only to deceive the public, but to result in confusing the identity of the two establishments. This is apparent, not only from the names used, but from the testimony in the case, and from none more clearly than that given by Oscar A. De Long, who testified that plaintiffs’ goods were known in the market as the De Long hook and eye, and that, although the name of the defendant company as makers of the hook invented by him was applied thereto, yet, to prevent confusion arising from such use, he changed such words upon the cards and packages of defendant’s goods, and substituted therefor a statement that the hooks and eyes of the defendant were “ Oscar A. De Long’s Improved.” It is not necessary to comment upon the fact that, as he had never made but one hook, it was not a
Though I have examined the very able argument presented by the counsel for the defendant, and their citation of cases, I have felt that it was unnecessary to comment upon all of them, because to do so would exceed the proper limits of this memorandum, and serve n'o useful purpose. • The general principle is well settled that the grounds upon which infringements of trade marks are enjoined are (1) injury to the public by leading them to buy something that they did not intend to buy, and (2) injury to the owner of the trade mark by diversion of his trade into other channels. Whether either of these
In that case one Joseph Thorley for many years manufactured and sold extensively an article called “ Thorley’s Food for Cattle,” made according to a receipt communicated to him and not known to the public, and down to his death he was the only person that made it. His executors continued the business. Shortly after his death a company was formed by other persons under the name of “ J. W. Thorley’s Cattle Food Company,” in which J. W. Thorley, a brother of Joseph Thorley, took a one shilling share. J. W. Thorley had been employed by Joseph Thorley, and knew the secret of manufacture, and was employed by the company to conduct it. The company sold the same article under the name of “ Thorley’s Food for Cattle.” Held, that the company were not at liberty to use the name “ Thorley’s Food for Cattle,” unless they took such precautions as would prevent purchasers from supposing that the article sold by them was manufactured at the original establishment of Joseph Thorley. In this the cases bearing upon the right and power of the court to enjoin a corporation are collated and discussed, and although the corporation itself was not enjoined, the manner of using its name so as to produce confusion of its identity with that of the plaintiff’s firm was restrained.
The enjoining of the defendant corporation from using its own name, particularly where, as in this case, it is a foreign corporation, always presents a serious question as to the power to suspend the functions of the corporation and to accomplish by injunction practically the same result as would ensue from
My conclusion, therefore, is that the defendant should be enjoined from in any way using in connection with placing upon the market or selling its goods the name of the “ De Long Hook and Eye Company.”
Judgment accordingly for plaintiffs, with costs and an allowance to be fixed.