1905 U.S. LEXIS 1144
U.S.
1905
Mr. Chief Justice Fuller,

after making the foregoing statement, delivered the opinion of the court.

Referring to' the Remington-Sholes Company, it was unanimously held by the Circuit Court of Appeals: “We do not find in this voluminous record sufficient evidence that defendant has itself done anything to promote confusion in the minds of the public, except to use the name 'Remington’ on its machines and in its literature.”

Accepting that conclusion, it follows that complainant’s case must stand or fall on the possession of the exclusive right to the use of the name “Remington.”

But it is well settled that a personal name cannot be exclusively appropriated by any one as against others having a right to use it; and as the name “Remington” is an ordinary family surname, it was manifestly incapable of. exclusive appropriation as a valid trade-mark, and its registration as such could not in itself give it validity. Brown Chemical Company v. Meyer, 139 U. S. 540; Singer Manufacturing Company v. June Manufacturing Company, 163 U. S. 169; Elgin National Watch Company v. Illinois Watch Case Company, 179 U. S. 665.

The general rule and the restrictions upon it are thus stated in Brown Chemical Company v. Meyer. There plaintiff had adopted as a trade-mark for its medicine the words “Brown’s Iron Bitters,” and the defendants used upon their medicine the words “Brown’s Iron Tonic.” This court, after commenting upon the descriptive character of the words “Iron Tonic,” and confirming the defendants’ right to the use of these, said:

“It is hardly necessary to. say that an ordinary surname cannot be appropriated as a trade-mark by any one person as against others of the same name, who are using it for a legitimate purpose; although cases are not wanting, of injunctions to restrain the use even of one’s own name where a fraud upon another'is manifestly intended, or where he has assigned or parted with- his right to use it.”

And, after citing numerous authorities, Mr. Justice Brown, delivering the opinion, continued:

“These cases obviously apply only where the defendant adds to his own name imitation of the plaintiff’s labels; boxes or packages, and thereby induces the public to believe that his goods are those of the plaintiff. A man’s name is his own property, and he has the same right to its use and enjoyment as he has to that of any other species of property. If such use be a.reasonable, honest and fair exercise of such right, he is no more liable for the incidental damage he may do a rival in trade than he would be for an injury to his neighbor’s property by the smoke issuing from his chimney, or for the fall of his neighbor’s house by reason of necessary excavations upon his own lands. These and similar instances are cases of damnum absque injuria.”

In Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, the rule is thus laid down by Mr. Justice White:

“Although ‘every one has the absolute right to use his own name honestly in his own business, even though he may thereby incidentally interfere with and injure the business of another having the saíne name, in such case the inconvenience .or loss to which those having a common right are subjected is damnum absque injuria. But although he may thus use his name he cannot resort to any artifice, or do any act calculated to mislead the public as to the identity of the business firm or establishment, or of the article- produced by them, and thus produce injury to the other beyond that which results from the similarity of name.’ ” ‘

In the present case, the decree enjoined the use, “in any manner whatsoever,” “of the designation ‘Remington’ as. the. name, or part of the name, of any typewriting machine, what- ’ soever manufactured by the Remington-Sholes Company;- or by defendant or any person or concern, and 'front selling, offering, exposing or advertising for sale by means off signs, show: cards, catalogues, circulars, publications, advertisements or by word of mouth, or in any manner whatsoever, typewriting machines manufactured by said Remington-Sholes Company or by defendant, or any person or concern under the name of or as ‘Remington-Sholes,’ or by any designation of which the word Remington shall constitute a part.” This denies the right to use the personal name, rather than aims to correct an abuse of- that right, and involves the assertion of the proposition that- the use of a- family name by a corporation stands on a different footing from.its use by individuals or firms.. But if,, every man has the right' to use his name reasonably and honestly, in every way, we cannot -perceive any practical distinction between the use of the name in a firm and its use in a corporation. It is dishonesty in the use that is condemned, whether in a partnership'or corporate name, and not the use itself.

Goodyear’s India Rubber Glove Manufacturing Company v. Goodyear Rubber Company, 128 U. S. 598, was a suit by a corporation of New York against a corporation of Connecticut, to restrain,the use in business of the name “Goodyear’s Rubber Manufacturing Company,” or any equivalent name. It was held that “Goodyear Rubber” described well known classes of goods produced by. the process known as Goodyear’s invention; and that such descriptive names could not be exclusively appropriated. And Mr. Justice Field, delivering the opinion, said: “Names of such articles cannot be adopted as trade-, marks, and be thereby appropriated to the exclusive right of any one; nor will .the incorporation of á company in the name of an article of commerce, without other specification, create any exclusive right to the use of the name.”

The principle that one corporation is not entitled to restrain another from using in its corporate title a name to which others have a common right, is sustained by the discussion in Columbia Mill Company v. Alcorn, 150 U. S. 460, and is, we think, necessarily applicable to all names publici juris. American Cereal Company v. Eli Pettijohn Cereal Company, 72 Fed. Rep. 903; S. C., 76 Fed. Rep. 372; Hazelton Boiler Company v. Hazelton Tripod Boiler Company, 142 Illinois, 494; Monarch v. Rosenfeld, 39 S. W. Rep. 236.

It is said that the use of the word “Remington” in the name “ Remington-Sholes ” was unnecessary, as if necessity were the absolute test of the right to use. But a person is not.obliged to abandon the use of his name or to unreasonably restrict it. Th§ question is whether his use is reasonable and honest, or-is calculated to deceive.

“It is a question of evidence in each case whether there is false representation or not.” Burgess v. Burgess, 3 De G. M. & G. 896.

The Circuit Court of Appeals in the present case quotes with approval from the concurring opinion of Wallace, J., in R. W. Rogers Company v. William Rogers Mfg. Co., 70 Fed. Rep. 1017, 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. . . . The corporators chose the name unnecessarily, and,- having done so for the purpose of unfair competition, cannot be permitted to use it to'the injury of the complainant.”

This, of course,' assumes not only that the name selected was calculated to deceive, but that the selection was made for that purpose.

In Turton and Sons v. Turton and Sons, 42 Ch. Div. 128, plaintiffs had carried on the iron business as “Thomas Turton and Sons.” -Defendant began the same business as John Turton, then traded as John Turton and Co., and finally took in his sons and changed the firm name to “John Turton and' Sons.” -Some confusion had arisen, and plaintiffs contended that there was ño necessity for defendants to use their own names.

Lord Esher said: “Therefore the proposition goes to this length; that if a man is in business and has so carried on his. business-that his name has become a valúe in the market, another man must:not use his own name. If that other man-comes and carries on business he must discard his own name and take a false name. The proposition seems to me so monstrous that the statement of it carries its own refutation.”

And Lord Macnaghten said in Reddaway v. Banham, L. R. Appeal Cases, 1896, 199, 220: “I am quite at a loss to know why Turton v. Turton was ever reported. The plaintiff’s case there was extravagant and absurd.” And see Meneely v. Meneely, 62 N. Y. 427; Meriden Co. v. Parker, 39 Connecticut, 450.

In -our opinion the Remingtons and Sholes made a reasonable and fair use of their names in adopting the name “Rem-. ingtbn-Sholes” for their machine, and in giving that name, to the corporation formed for its manufacture and sale.

The formation of a corporation as an effective form of ,busi ness enterprise was not only reasonable in itself, but the usual means in the obtaining of needed capital. And as Wallace, J.,’ said': “It was natural that those who had invented the machine, and given all their time and means in introducing it to the" public, when they came to organize the corporation which was to represent the culmination of their hopes and efforts, should choose their own name as the corporate name. In doing so I think they were exercising only the common privilege that every man has to use his own name in his own business, provided it is not chosen as a cover for unfair competition. They did not choose the complainant’s name literally, or so closely that those using ordinary discrimination would confuse the identity of the two names, and that differentiation is sufficient to relieve them of any imputation of fraud.”

The name “Remington-Sholes Company” is not identical with, or an imitation of, “Remington Standard Typewriter Company,” or “Remington Typewriter Company,” or “E. Remington and Sons.” Defendant’s marks “Rem-Sho,” “Remington-Sholes Co., Mfrs., Chicago,” are not identical with,-or an imitation of, complainant’s marks “Remington;” Large .Red Seal; “Remington Standard Typewriter, manufactured by Wyckoff, Seamans and Benedict, Ilion, N. Y., U. S. A.”; “Remington Standard Typewriter.”

The use of two distinct surnames clearly differentiated the machines of defendant from those of complainant, and when defendant’s' cards, signs, catalogues, instructions- to agents, etc., are considered, it seems to us that the record discloses, to use the language of Mr. Justice Field' in the Goodyear case, a persistent’ effort on defendant’s part “ to call the attention of the public to its own manufactured goods, and thé places where they are to be had, and that it has no connection with the plaintiff.” Doubtless the Remingtons and Sholes, in using the name “Remington-Sholes,” desired to avail themselves of the general family reputation attached to the two names, but that does not in itself justify the assumption that their purpose was to confuse their machines with complainant’s; or that the use of that name was in itself calculated to deceive. Remington and Shbles were interested in the old company, and Remington continued .as general manager' of the new company. Neither of them was paid for the use of his name, and neither .of them had parted with the right to that use. Having the right to that use, courts will not interfere where the only confusion, if any, results from a similarity of the names and not from the manner of the use. The essence of the wrong in unfair competition consists in the sale of the goods of one manufacturer or vendor for those of another, and if defendant so conducts its businéss as not to palm off its goods as those of complainant, the action fails.

As observed by Mr. Justice Strong in the leading case of Canal Company v. Clark, 13 Wall. 311: “Purchasers may be mistaken, but they are not deceived by false representations, and equity will not enjoin against telling the truth.” And by Mr. Justice Clifford, in McLean v. Fleming, 96 U. S. 245: “A court-of equity will not interfere when ordinary attention- by the purchaser of the article would enable him át once to discriminate the one from‘the other.” And by Mr. Justice Jackson in Columbia Mills Company v. Alcorn, 150 U. S. 460: “Even in the case of a valid trade-mark, the similarity of brands must be such as to mislead the ordinary observer.” And see Coats v. Merrick Thread Company, 149 U. S. 562; Liggett & Myers Tobacco Company v. Finzer, 128 U. S. 182.

We. hold that, in the absence of contract, fraud or estoppel, any man may use his own name, in' all legitimate ways, and as the whole or a part of a corporate name. And, in our view, defendant’s name and trade-mark were not intended or likely to deceive, and there was nothing of substance shown in defendant’s conduct in their use constituting unfair competition, or calling for the imposition of restrictions lest actionable injury might result, as-may confessedly be done in a proper case.

Decree of Circuit Court of Appeals reversed; decree of Circuit Court also reversed, and cause remanded to that court with a direction to dismiss the bill.