87 F. 203 | U.S. Circuit Court for the District of Northern Iowa | 1898
From the evidence submitted in this ease, it appears that in 1803 Fish & Bull began the manufacture of wagons at Racine, Wis.; and about a year later Bull retired from the firm, and Abner C. Fish became interested in the business with his brother Titus G., the firm name being changed to Fish Bros. In 1808 John O. Huggins and 10. B. Fish were admitted as partners, and the firm name was changed to Fish Bros. & Co. Shortly after this time the firm became embarrassed financially, and an arrangement was made with Jerome I. Case, under which the latter advanced a large amount of money in aid of the business, and received as security a transfer of the assets of the firm; the business being conducted in the name of Fish Bros. & Co., Agents. In 1880 Jerome I. Case brought a suit against the firm to settle the respective rights of the parties under the agreement above named. During the pendency of this suit, and in the year 1882, Abner C. Fish ceased to be a. member of the firm, a,nd D. J. Morey and S. S. Lyon were admitted thereto, without change in the firm name. On the 2d day of October, 1882, a declaration for a trade-mark was duly registered in the United /States patent office in the name of Fish Bros. & Co.; it being stated that (be firm was composed of T. G. Fish, E. B. Fish, D. J. Morey, and S. S. Lyon, and that the trade-mark had been used by the Fish Bros, since 1873 in connection with the manufacture of wagons. On October 16, 1883, J. I. Case was appointed receiver, iu the suit
It is clear that the rights of the parties in this case are based upon the construction to be given to the decision in the case decided in Wisconsin. That suit was brought by the complainant herein for the express purpose of having adjudicated the extent of the rights it had acquired, as against Titus G. Fish and Edwin B. Fish and their assigns, to Hie business built up at Racine, and in the trade-marks and trade-names connected therewith; and the conclusions therein reached must be held to be the measure of the rights of the parties to the present suit. As already stated, the complainant herein recites in the bill the bringing of the suit in the circuit court in Wisconsin, and the proceedings had therein; and the defendant, in the answer, sets forth the same at length, and avers that the rights if claims as the assignee of Titus G. Fish and Edwin B. Fish are those adjudged in that case; and hence the first question for consideration is the construction to he placed on the adjudication had in that suit. In the opinion of the supreme court of Wisconsin it is,
The rights of the parties having been thus adjudicated, the next question presented is whether the present defendant can rightfully claim to be a successor to the rights adjudged to be held by Titus G. and Edwin B. Fish; it being claimed on behalf of complainant that the rights reserved to them in the decision of the Wisconsin court are personal only, and not transferable. The ruling that sustained the validity of the transfer to the complainant of its rights in the premises sustains- the transfer from Fish Bros, to the defendant corporation, it being settled that trade marks and names are assignable. Richmond Nervine Co. v. Richmond, 159 U. S. 293, 16 Sup. Ct. 30.
It thus appears that the defendant company has the right to make the Fish wagon; has the right to advertise that its business is conducted under the supervision- of Titus G. and Edwin B. Fish, who were the originators of the Fish wagon; has the right, for these purposes, to use the trade-mark and trade-names heretofore associated
..Under the facts of the case, and the adjudication of the rights of the parties in the case in Wisconsin, it must be held that the complainant is not entitled to a decree and injunction as prayed for, restraining the defendant company from using the trade-marks and trade-names connected with the Fish wagon, or" from advertising that it is-engaged in the manufacture of the Fish wagon under the superintendence of the Fish Bros., who were the originators of that style oil wagon.- The utmost complainant can ask is a decree reciting that the.defendant company, in its use of the trade marks and names associated with the Fish wagon, is subject to the limitations found in the.decree entered in the circuit court of Milwaukee county, Wis., and enjoining the further use of the word “genuine” in the ways in which it appears to have been used in the stickers sent out by the defendant, and in some of the advertisements used by the agents of the defendant company.