129 Minn. 472 | Minn. | 1915
Both parties to this controversy are engaged in the business of manufacturing and selling tombstones, monuments and other marble and granite products in the city of Crookston. Plaintiff asserted in his complaint that he had the exclusive right to do business as the “Crookston Marble Works,” and demanded that defendants be enjoined from using that name. Defendants asserted in their an
For several years prior to 1901, defendants Eingdahl, Sundet and Hamel were engaged in the marble business at Crookston under the firm name and style of “Northwestern Marble Works,” and were the only concern engaged in that line of business in that vicinity. Much of their business was done by mail, and letters intended for them were sometimes addressed to “Crookston Marble Works” or “Marble Works.” In 1901, Flans E. Nesne and Charles E. Bourden formed a partnership and engaged in the marble business at Crookston under the firm name and style of “Crookston Marble Works.” In July, 1902, defendants Eingdahl, Sundet and Hamel and certain associates organized a corporation under the corporate name and style of “Crookston Marble Works,” and commenced doing business under that name. Nesne and Bourden, claiming the prior right to use the name “Crookston Marble Works” as a trade name, brought an action against defendants Eingdahl, Sundet and Hamel and the “Crookston Marble Works,” a corporation, which resulted in perpetually enjoining the defendants therein from doing business under the name “Crookston Marble Works.” See Nesne v. Sundet, 93 Minn. 299, 101 N. W. 490, 106 Am. St. 439, 3 Ann. Cas. 30. Thereafter the individual defendants organized another corporation under the name “Northwestern Marble Works”.and continued their business under that name. Nesne and his associates also organized a corporation under the name “Crookston Marble Works” and continued their business under that name as a corporation. In 1910 Nesne and his company removed their property, machinery and business from Crookston to Fargo, North Dakota, where they organized another corporation under the name “Dakota Monument Company,” to which they transferred their entire business, and thereafter it was conducted at Fargo under the name “Dakota Monu
The admitted facts are conceded by both parties to be ample to warrant the granting of an injunction against the party not entitled to use the coveted name, and we shall not stop to rehearse them further. The question presented is, which party has acquired rights,
Plaintiff claims that under his conveyance from the Nesne Co. he acquired the right, formerly possessed by that company, to the exclusive use of the name as against defendants. It is well settled that the transfer of a trade name can be made only when coupled with the transfer of some product or business with which it has become identified. One having the right to use a trade name cannot convey to another the naked right to the exclusive use of such name independent of any interest in the property or business to which it has been applied. Cigar-Makers’ Protective Union v. Conhaim, 40 Minn. 243, 41 N. W. 943, 3 L.R.A. 125, 12 Am. St. 726. Falk v. American West Indies Trading Co. 180 N. Y. 445, 73 N. E. 239, 105 Am. St. 778, 2 Ann. Cas. 216, and cases cited in note appended thereto; also cases cited in subdivision m, paragraph b, of note appended to same case in 1 L.R.A.(N.S.) 704. Where the bare right to use the name is all that is transferred, the name no longer serves to point out and protect the business with which it has become identified, nor to secure the public against deception, but tends to give to a different business the benefit of the reputation established by the business to which the name had previously been applied; and the courts are unanimous in holding that such transfers are of no effect. The transfer to plaintiff conveyed no property, and no part of, or interest in, the business of the Nesne concern; and hence gave no prior or paramount right to use the name “Crookston Marble Works.”
Defendants contend that, ever since the incorporation of defendant “Crookston Marble Works” in 1902, they have had the right, as against all the world except the Nesne concern, to do business under that name, and that such right is prior and paramount to any right acquired by plaintiff. They insist that the right of the corporation to do business in its corporate name was merely in abeyance while the injunction was in force; and that, after the injunction had been vacated, such right revived as of the date of the incorporation, and is prior in time to the time that plaintiff began business in 1911.
The question here involved is the right to 'use a trade name, and must be determined by the rules governing the use of such names.
In the present case defendants established a business under the trade name “Northwestern Marble Works”, but not only did not establish a business under the trade name “Crookston Marble Works,” but were prohibited from doing so. It follows that defendants had acquired no right to do business under the name “Crookston Marble Works,” and no right to use that name as a trade name at the time plaintiff began business as the “Crookston Marble and Monument Works,” and that no rights possessed by defendants were infringed by the use of such name by plaintiff.
The question remains whether the use of the name, “Crookston Marble Works,” by defendants in 1914, constituted unfair competition with plaintiff. Much of the business of both parties consists in 'manufacturing and furnishing monuments to fill orders
The word “Crookston” is the name of the city where both are^ doing business, and both have the right to use that name to indicate that they are doing business at that place. The words “Marble Works,” “Monument Works” and “Marble and Monument Works” are descriptive of the character of the business and also of the product offered to the public, and both parties have the right to- use, such descriptive words. But where one manufacturer or dealer has adopted and acquired the right to use, as a trade name, a combination of words which indicates his place of business and also is descriptive of his product, if another, although engaged in the same line of business in the same town, and having the right to use the same words to indicate his location and the nature of his business, thereafter combines such words into a trade name for himself, which is, in form, so nearly like that previously adopted by his competitor as to mislead the public,' it constitutes unfair competition. While his competitor cannot acquire the exclusive right to use the name of the town in which both do business, nor the exclusive right to use the descriptive words ordinarily used to indicate the nature of such business; yet, if the one second in point of time desires to incorporate such words in his own trade name, he .must use them in such form, or combine them with other words in such manner, that his trade name will be fairly distinguishable from that of his competitor. He is not permitted to simulate the prior trade name to such an extent that purchasers will be led to deal with him under the belief that they are dealing with his competitor. Rickard v. Caton College Co. 88 Minn. 242, 92 N. W. 958; Sheffield-King Milling Co. v. Sheffield Mill & Ele. Co. 105 Minn. 315, 117 N. W. 447, 127 Am. St. 574; Northwestern Knitting Co. v. Garon, 112 Minn. 321, 128 N. W. 288; Buzby v. Davis, 150 Fed. 275, 80 C. C. A. 163, 10 Ann. Cas. 68, and cases cited in note; Dyment v. Lewis,
The facts are fully set forth in the findings of the learned trial court and a new trial is unnecessary.
The judgment is reversed with directions to amend the conclusions of law to conform to the views hereinbefore expressed and to render judgment accordingly.
Schaller, J., took no part.
