143 Mass. 592 | Mass. | 1887
The first of these cases, in the order of'time, is the bill in equity brought by Hoxie against Chaney and Pegram, praying that they may be restrained from the use of the name and words “ A. N. Hoxie’s Mineral Soap,” and “ A. 1ST. Hoxie’s Pumice Soap, manufactured by A. N. Hoxie, agent,” which, as he alleges, constitute a trade-mark, and from the use of his name in their business. The decree was to the effect that the defendants have the sole and exclusive right to use the trademarks “ A. N. Hoxie’s Mineral Soap,” and “ A. 1ST. Hoxie’s Pumice Soap,” but have no right to use words importing that the soaps are made by Hoxie personally or as agent, and have no right to use the name of Hoxie in their business. From this decree Hoxie appealed to this court, but the defendants did not appeal, and therefore no question arises in this case except as to so much of the decree as was unfavorable to Hoxie, namely, that the defendants have the sole and exclusive right to use the trademarks.
It is conceded by both sides that these words, taken together, constituted a trade-mark; but Hoxie contends that the use of his name, in the connection in which it occurs, makes them both trade-marks which are personal to himself, and which cannot be assigned. There may no doubt be cases where the personal skill of an artist or artisan majr so far enter into the value of a product that a trade-mark bearing his name would, or at least might, imply that his personal work or supervision was employed in the manufacture; and, in such cases, it would be a fraud upon the public if the trade-mark should be used by other persons, and for this reason such a trade-mark would be held to be unassignable. It is in any case a question whether the use of the trademark would give to the public or to purchasers a false idea as to who made the article; and a court of equity would not lend any active aid to sustain a claim to a trade-mark which should contain a misrepresentation to the public. Connell v. Reed, 128 Mass. 477. Manhattan Medicine Co. v. Wood, 108 U. S. 218. But, on the other hand, the usages of trade may be such that no such inference would naturally be drawn from the use of a trademark which contains a person’s name, and that all that purchasers would reasonably understand is that goods bearing the trade-mark are of a certain standard kind or quality, or are made
These trade-marks became a part of the partnership property under the agreement entered into by Hoxie and Pegram, and passed to Pegram by the bill of sale executed by Hoxie to him. By the agreement, Hoxie in terms contributed the good-will of the business which he was carrying on, with the tools, implements, and fixtures. A continuation of his business was plainly contemplated; and, in point of fact, the trade-marks were used by the firm during the whole continuance of the partnership. The bill of sale is not controlled in its terms by any facts proved. There were negotiations looking to a retransfer to Hoxie of his interest in the partnership, at the close of the ensuing fishing season; but nothing was arrived at. Hoxie had violated the terms of the partnership agreement in several important particulars, which naturally led to Pegram’s insisting on a dissolution. Under these circumstances, the bill of sale was signed, with no agreement, either written or oral, to take Hoxie back as a member of the firm. By it Hoxie sold to Pegram “the following goods and chattels, namely: All my right, title, and interest in and to all and singular the partnership property belonging to the firm of A. N. Hoxie & Co. (consisting of A. N. Hoxie and Frank B. Pegram), meaning hereby to sell and convey to said Pegram all my interest in the entire assets of said firm, wherever the same may be situated.” These terms are broad, and, although the trade-marks and the good-will of the firm are not expressly mentioned, both are included within its meaning. Sohier v. Johnson, 111 Mass. 242, 243. 2 Lindl. Part. (4th ed.)
The decree of the court in this case is,
Affirmed.'
The second of these cases is the bill in equity brought by Chaney and Pegram against Hoxie, and it proceeds on the ground that the exclusive right to use the trade-marks had become of great value ; that, by the agreement of partnership with Hoxie, and the bill of sale from Hoxie, Pegram had become the owner of them, with the good-will of the business; that Hoxie has now opened a soap factory and is manufacturing the two kinds of soap, and is putting them up in wrappers bearing the trade-marks, and has issued circulars and cards using and availing himself of the trade-marks. The prayer is for an injunction to restrain Hoxie from making and selling said two kinds of soap, from using the wrappers bearing the trade-marks, and from doing other acts tending to injure and impair the good-will of the business. The decree, after affirming Chaney and Pegram’s ownership'of the trade-marks, was, in substance, that Hoxie ought not to interfere with or compete with them in the business of making or selling mineral or pumice soap in Boston, and ought to be enjoined from using the trade-marks, or any imitations thereof, and also from competing with and from endeavoring to disturb or interrupt the business of said Chaney and Pegram in the manufacture and sale of said soaps; and that injunctions should issue accordingly.
So far as the ownership and use of the trade-marks are concerned, the decree should be affirmed. But in reference to what is involved in the transfer of the good-will of the business it requires some modification. Neither the agreement of partnership between Hoxie and Pegram, nor the bill of sale from Hoxie to Pegram, contained any agreement that Hoxie, upon a dissolution of the firm, should not carry on a similar business, further than is implied by the transfer of the good-will, pure and simple. The general rule in this Commonwealth, as applicable to the sale of a stock in trade in a particular store, and of the good-will of the vendor’s trade and all the advantages connected with such place of business, is that such a sale does not import
It is proper to refer to the distinction which exists between Bassett v. Percival and several later cases. In Angier v. Webber, 14 Allen, 211, arising about four years later, in which the opinion of the court was delivered by Chief Justice Bigelow, who also delivered the opinion in Bassett v. Percival, the sale was of the good-will of a teatiling business in Boston and between Boston and Somerville, with a special 'agreement not in any manner to do anything which should in any wise impair or injure the good-will. This was a business which was done on the road, and all along the line between two cities. In Dwight v. Hamilton, 113 Mass. 175, the defendant’s “practice and goodwill as a physician” was sold, with the land and buildings where he lived, and, from the nature of the good-will and practice of a physician, the case was said to be clearly distinguishable from Bassett v. Percival, and to resemble Angier v. Webber. In Munsey v. Butterfield, 133 Mass. 492, the plaintiff agreed to sell certain articles of personal property used in the milk business,
In the circular headed “ Special Notice to the Wholesale and. Retail Trade,” Hoxie virtually represented himself as the successor to the business, the good-will of which he had sold, and also asserted a right to the trade-mark. This was in excess of what he could lawfully do. Churton v. Douglas, H. R. V. Johns. 174.
Inasmuch as there is nothing in the averments or proof which shows any undue or unlawful interference or competition, on the part of Hoxie, except in respect to the use of the trade-mark on wrappers and in circulars and otherwise, and the virtual representation of himself as the successor to the business of the old firm, the decree in the second case should be modified, by inserting a specification that he is not to interfere or compete with the business of Chaney and Pegram, “ by representing himself, either directly or by implication, as the successor of the late firm, or as doing the same business that was done by them; ” and the decree is affirmed in respect to the use of the trade-marks, and in other respects.
Decree accordingly.