238 F. 159 | 2d Cir. | 1916
(after stating the facts as above). The plaintiff claims to be the owner of the trade-mark “President” in connection with the business of manufacturing and selling suspenders. It seeks an injunction restraining the defendant from an infringement of its trade-mark. The injunction was granted by the court below, and the defendant has brought the case here on appeal.
The defendant applied for the registration of the trade-mark “President” on January 10, 1899. This was issued to him in his own name on May 16, 1899. After the decision of this case in the court below, the Commissioner of Patents ordered the cancellation of its registration ; and an appeal from that order is now pending in the Court of Appeals for the District of Columbia. With that we are not in any way concerned.
The contract of October, 1898, granted to the plaintiff an exclusive license to make and sell to the end of the term of the patent the patented suspender, subject, however, to certain conditions which it is not necessary now to consider. It also transferred the good will of the business, as well as all the machinery, stock, tools, and other assets used by the defendant in the suspender business, and the latter wholly withdrew from the business of manufacturing and selling suspenders. The only real question in the case is whether the trade-mark “President” and the red, white, and blue escutcheon used with it passed from defendant to the plaintiff by virtue of the contract. The defendant answers the question in the negative. He says the trademark is not mentioned in the contract and has not passed.
But the doctrine of the Singer Case is inapplicable to the facts of this case for another reason. In the case at bar the name “President” antedated the patent. The defendant, in his application filed in the Patent Office on January 10, 1899, declared:
“The trade-mark [President] has been used continuously in business by me since January 1, 18&7.”
The declaration that it had been used by him continuously since January 1, 1897, is shown by the record to have been incorrect, in that he ceased to use it upon the making of the contract of October 1, 1898, and only resumed its use after the patent expired. There is, however, no evidence which contradicts the statement that he was using it in January, 1897. This was prior to the patent, which, as has been already stated, was granted on August 16, 1898. In Batcheller v. Thomson, 93 Fed. 660, 35 C. C. A. 532 (1899) the trade-mark antedated the patent by more than 2% years, and the name rather than the patent gave value to the article, and this court held that the doctrine of the S’inger Case was inapplicable. In the case at bar the name antedated the patent for 1 year and 7 months. We think the case is governed by the Batcheller Case, and not by the Singer Case.
The appellant’s counsel did not on the argument contend that the appellant’s right to use the trade-mark existed under the doctrine of the Singer Case, which was not referred to by him. We think it best,
The language the parties used in their contract of 1898 has, as we have pointed out elsewhere in this opinion, a settled legal construction, namely, that “good will” is inclusive of the trade-mark.
Decree affirmed.
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