Listman Mill Co. v. William Listman Milling Co.

88 Wis. 334 | Wis. | 1894

Newman, J.

Only such names, words, and devices as ¡may be held -to be adapted to point out the true source and origin of the goods upon which such marks are used can constitute valid trade-marks. Such words as are merely "descriptive of the kind, nature, character, or quality of the goods cannot be exclusively appropriated and protected as a trade-mark. But a valid trade-mark may consist of some novel device, arbitrary character, or fancy word, applied without special meaning, which by use and reputation comes to serve the same purpose. Such words and devices are held to indicate sufficiently the true source and origin of the goods, without particular addition of the name of the manufacturer or dealer. Dunbar v. Glenn, 42 Wis. 118; Marshall v. Pinkham, 52 Wis. 572; Gessler v. Grieb, 80 Wis. 21, and cases cited; Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 546. The word “Marvel,” used in the 'plaintiff’s flour brand, is such an arbitrary pr fancy word. It is not, in anyr true sense, descriptive of any characteristic or quality of the goods which it is used to designate, but rather indicates their origin or ownership. It is very much like the word “ Bethesda,” used to designate the water of a certain spring in Waukesha county, which was held to be a valid trade-mark in Dunbar v. Glenn, 42 Wis. 118. It is used by the plaintiff in a similar'way to designate the output of its mill. As was said in that case, the word seems to have been adopted to indicate origin or ownership, and to have a name by which the product of ithe mill could be distinguished when bought and sold in -the market. As was said in Filley v. Fassett, 44 Mo. 168, this word was the prominent, essential, and vital feature of the trade-mark. The goods were known by this word .itself. It constitutes a valid trade-mark, such as equity will protect.

Title to a trade-mark is acquired and retained by appropriation and .use. «While William Listman owned and eon-ducted the business, this word was a part of his trade-mark,— the distinguishing and essential feature; while the business was conducted by a copartnership, it was the trademark of the copartnership; and, when the same business-was done by a corporation, it was the trade-mark of the cor"poration. Through all these changes of ownership of the-, plant and business it continuously designated the output and product of the same mill. It did not cease to be the-trade-mark, to designate its" output of flour, when or because Listman sold his stock in the corporation and ceased to have an interest in the business. It had been appropriated and used to designate and give a name to the product of the same mill and business, by which it was known in, the market through all these successive proprietaries, and during all this time it had not been used to designate any article of which Listman himself was sole proprietor.

Listman seems to have owned virtually the entire plant and business at the time when he conveyed to the corporation. He says that it was not understood that the title to-the trade-mark passed by that conveyance. This seems to mean that nothing was said about it. There was no agreement that it should pass. Under such circumstances it is-a question of law whether it did pass. Listman was one of the promoters of the corporation. He conveyed to it the mill site, with the business and good will,— at least, all the title he had in it. Ordinarily the good will of a business passes by a conveyance of the place where the business has been carried on, without special mention. The purchaser who acquires such good will takes with it the exclusive right to the use of such trade-marks as have been up to that time in use in the business, without mention of them in the contract of sale. 17 Am. & Eng. Ency. of Law, 1187, and cases cited in the notes; Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 546, and cases cited on page 562; Shipwright v. Clements, 19 Wkly. Rep. 599; Brass & I. W. Co. v. Payne, 50 Ohio St. 115. Many of the cases are where one partner sells out to the other partners. It cannot be less clear when a mere stockholder in a corporation transfers his stock, for a mere stockholder has no title in the corporate property. So it seems right to hold that, whatever property Listman may have had in this trade-mark at some earlier date, none remained to him after he ceased to be a stockholder in the plaintiff corporation. .

The defendant has used this word “ Marvel ” as a part ,©f its flour brand or trade-mark against the plaintiff’s protest and objection. It has used it in combination with other words, so as to constitute a brand or trade-mark so similar in appearance to the plaintiff’s that the difference might easily pass without observation to casual observers. The plaintiff complains only of its use of the distinguishing •word “ Marvel.” In order to support the action the imitation of the trade-mark need not be exact or perfect. It may be-limited and partial. Nor is it requisite that the whole should be pirated. Nor is it necessary to show that any one has in fact been deceived. Nor is it necessary to prove intentional fraud. If the court sees that the plaintiff’s trade-marks are. simulated in such a manner as probably to deceive customers or patrons of its trade or business, the piracy should be checked at once by injunction. Filley v. Fassett, 44 Mo. 178, and cases cited. It is a proper case for the issuance of an injunction.

By the Court.— The order of the circuit court is affirmed.