No. 175 | 2d Cir. | Nov 14, 1910
(after stating the facts as above). The complainant’s trade-mark “Ideal” is conceded to be valid. The defendant infringed it by the sale of the pens marked “Royal Ideal Pen.” Consequently the second paragraph of the injunction order was proper.
Assuming that the present copartnership of A. A. Waterman & Co. has the right under the agreement with Arthur A. Waterman to use that firm name, they have no right to use the name “Waterman” without the initials. The use of the name which they may have the right to employ concededly causes confusion, and they have no right to increase that confusion by employing any name less definite.
■ The defendant disclaims the use of the name “Waterman” alone. If so, an injunction against such use will do it no harm. But, as already stated, we think there was sufficient evidence of such use to warrant the first paragraph of the injunction.
The third paragraph of the injunction order is, in our opinion, erroneous. It is clear that the partnerships of which Arthur A. Waterman was a member had the right to use the name A. A. Waterman & Co. in connection with their business and to so mark their pens. The decision of the Supreme Court of the state of New York in which all parties acquiesced for many years was in accordance with principles now well established by decisions of the Supreme Court of the United States.
Similarly, said Waterman had the right to transfer to his former associates, in connection with the reorganization and sale of the business, the right to use his name. It is true that it became their duty, as it had been the duty of the previous firms, to do no act to increase the confusion necessarily arising from the use of a name similar to that of the complainant. But we find nothing in the record showing any such acts except those which we have seen to be covered by the first two paragraphs of the injunction.
The order of the Circuit Court is modified by striking out the last paragraph thereof (paragraph 3), together with the finding that the defendant has been guilty of unfair competition by using the name “A. A. Waterman & Co.,” and, as so modified, is affirmed. The costs of this court may be divided between the parties.