70 F. 376 | U.S. Circuit Court for the Northern District of Illnois | 1895
Complainant is a. corporation organized under the laws of New York in April, 1873. Since said date said corporation has been continuously engaged in business as a manufacturer and vender of baking powder. Its home office and chief place of business is in New York, but its trade connections extend throughout the United States. The word “Royal” is marked by complainant on the cans or packages containing the baking powder made by complainant. Said product is called “Royal Baking Powder,” and the name of complainant corporation is Royal Baking Powder Company. These uses of the word “Royal” by complainant have been continuous, uninterrupted, and substantially exclusive since the date of incorporation above mentioned.
In 1866 a linn called Biddle & Hoagland commenced the compounding and selling of baking powder in connection with a business carried on at Ft. Wayne, Ind. This business, or the baking powder feature thereof, was afterwards transferred to New York, and was there carried on by C. N. and J. C. Hoagland, successors to the old firm, and under the name Royal Baking Powder Company, from 1868 down to 1873. The two Hoaglands became officers in complainant corporation at the time of its organization, and said corporation commenced the manufacture of baking powder, supplanting said firm, and thenceforward conducting said baking powder business on its own account, as already stated. Complainant insists that the word “Royal” was appropriated and used as a trade-mark for baking powder in July, 18(5(5, by said Biddle & Hoagland, and that said mark was continuously so used in said baking powder business down to April, 1873, when complainant corporation was organized as above mentioned. On behalf of defendant it is insisted that in 1865, or certainly as early as March, 1866, one C. A. King, in connection with a business carried on at 24 and 26 Peck Slip, in New York City, sold a baking powder marked “Royal London Baking Powder.” In the fall of 1866 one Decker became a partner with King. In the fall of 1867 Decker became sole owner by purchase from King. In August, 1868, the defendant bought the business from Decker, and con-linued to carry on the same at the old stand till the spring of 1870,
The following letter, written by defendant under his new letter head, is in evidence:
Established 1805. G. E. Raymond, Prop.
American Mills.
Manufacturers of Royal London Baking Powder.
190 Michigan Street.
Chicago, April 27tli, 1891.
Mess. Mason, Hhrman & Co., Portland, Ore. — Gentlemen: Enc’d please lind circular letter in re the Royal London Baking Powder. This old trade-mark lias been revived. It is the first Royal ever placed on the Eastern market, and made all the name and fame possessed by a Go. now called Royal in consequence of its purity. A party writing from Indiana this morning says, “Royal London takes the place of Royal every time without a rifile.” Your house was recommended to me by Mr. Foster, of Mess. Foster, Brydge & Co., of Union, Ore. We ship’cl them some time ago one barrel powder, Mrs. Roster having made biscuits from the powder before an order was made. You can make more money out of Royal London than the other Royal. We would be pleased io make you a ship’t, and give your house agency for Pacific coast. Will deliver goods in your city. Would bo pleased to receive trial order from you. Awaiting your favor, we are,
Respy., yours, American Mills Go.
Geo. E. Raymond.
Defendant testified that the baking powder made by him prior to 1871 was commonly known and spoken of as “The Royal” (not “Royal London”), and from the letter above it may be inferred that “Royal,” and not “Royal London,” is his colloquial designation of the product now made fey him. I may add here that, as shown by the evidence, complainant, since its incorporation, has expended some $5,000,000 in advertising its product as “Royal Baking Powder,” and its average of sales for many years lias been nearly 20,000,000 packages per an-num.
In March, 1894, complainant filed this bill to enjoin the use of the word “Royal” hy defendant as a designation of baking powder made by defendant, or as a mark on defendant’s goods, insisting that the said word is identified with the good will of complainant as a trademark on the baking powder made by complainant, as a uart of the name of the baking powder made by complainant, and as a part of the corporate name of complainant; and that the use of said word by defendant in conned ion with the baking powder made by him and on Ins labels is osseni hilly fraudulent and unfair, and a trespass on the complainant’s good will. Defendant insists that he himself, and not complainant, is owner of the word “Royal” as a mark for
A trade-mark is a mere notice, an arbitrary mark or sign put on an artificial product, whereby any person interested in the information may be assured as to the origin of said product. Such mark is a means for rendering more pronounced, distinctive, and valuable that species of property known as the “good will” of a business. A manufacturer, for instance, may use as a trade-mark a word arbitrarily selected. In so doing he acquires no property in the word as such. His right attaches to the peculiar and added function of the word in identification of his product by reason of his use. In so adopting the word he takes nothing from, and in ceasing to so use it he returns nothing to, any store of common or public property. His right to the mark will ordinarily pass, as incidental to the good will of his business, to a successor who takes the business; and, from the necessity of the case, such right becomes extinct when the business, including the good will thereof, becomes extinct.
In Partridge v. Menck, 2 Barb. Ch. 103, Chancellor Walworth said:
“The court, in trade-mark cases, proceeds on the ground that the plaintiff has a valuable interest /in the good will of his trade or business, and that, having appropriated to himself a particular label, sign, or trade-mark indicating that the article is manufactured or sold by him under his authority, he is entitled to protection against any one who attempts to pirate upon the good will of his friends, customers, or patrons of trade by sailing under his flag without his authority.”
In Allan’s Law of Good Will (page 26), it is said that “a trademark cannot exist apart from a business.” It may be more accurate to say that a trade-mark cannot exist apart from the good will of a business, since what is known as the good will may persist for a time after such business has in fact ceased. A. manufacturing establishment, for instance, may, with all its machinery and appliances and its store of products, be destroyed by fire, and a year or two may pass before such manufactory is rebuilt, and the business started again; but, when started, the old customers, in part at least, will resume trade connections. Here the business stops for a time, but the good will involving the trade-marks remains a property more or less valuable during the interval of cessation. I can conceive such a stoppage of business by accident or design, even for a series of years, where the good will, including the trade-marks, may still be found extant; that is to say, valuable, upon resumption. But when it is not shown in some satisfactory way that the trade reputation of a suspended business continues to have value, — can be exchanged or sold, for instance, for a price, — a court cannot say that a good will remains; in other words, that there still attaches to the old proprietor any dominion over, or property right in, a mark which may once have had, but which no longer has, significance for him in the world of trade.
But the complainant’s relief here is opposed on divers grounds. It is said that there was no assignment oí the business by the Iloag-lands to complainant, since they undertook to transfer, so far as the showing' goes, only the trade-mark. The deed of assignment on this view would, so far as it concerns the wTord “Royal,” amount at least to a declaration of abandonment by them. Complainant’s right may be referred to a continuous and exclusive use by complainant of the mark in question from 1873 to the present time. Certainly no wrong was done to the Hoaglands or to their assignors, Biddle & Hoagland. There is no showing that any of these parties continued the baking powder business or the use of the mark after complainant commenced. It is clear that the complainant at its incorporation in fact took the business, and continued and developed it to its present dimensions; and it does not appear that in so doing complainant wronged the Hoaglands or their assignors. There is no want of clean hands on the part of complainant by reason of any wrong done by it as against its predecessors in business.
Again, it is said that complainant failed to show on its label tlie alleged assignment from its assignor. Tins omission, under the circumstances here shown, involved no fraud or false representation. Complainant made the baking powder in its cans, and its label contained no representation to the contrary. When one person buys from another, for instance, a patent medicine business, abandons the old place of manufacture, and proceeds himself to make the medicine at another place, but represents on his labels that it is made at the old place, and by the original compounder, be fails in a court of chancery against au alleged infringer. Nothing at all parallel to this is found here. There was, so far as I can make out, no false representation or imposition on the public in the labels of the complain
It is said, however, that from 1808 to 1871 the two Hoaglands, by their use of the word “Royal,” trespassed upon the right of this defendant. I do not understand that defendant in fact sustained any injury. There was really no distinct or active competition between the Hoaglands and this defendant. Assuming that he might have obtained an injunction against them by reason of possible or apprehended injury, they in fact contributed in no way to his failure in 1871. To say that this complainant may not defend its good will when attacked in 1894 — 23 years after said supposed trespass by the Hoaglands — on the ground that the business of the Hoaglands passed into the control of complainant in .1873, would be an exceptional application of the doctrine of clean hands.
But the record shows another matter pertinent upon the point last mentioned, as also upon the claim to the “better right” advanced in the answer. The label used by defendant and his predecessors at Peck Slip showed after the words, “Royal London Baking Powder,” the following: “Prepared only by Austin, Marshall, Hall & Co., Purveyors by Appointment to Her Majesty, 181 Tottenham Court Road, London, and Hew Cross, Surrey. Hone Genuine unless Signed, Austin, Marshall, Hall & Co.” The name of the London firm following the word “Signed” was in script. Along the left outer edge of this label appeared the following: “Geo. Barwood & Co., Printers, 407 Oxford Street.” This label was in fact prepared and printed by one Crump in Hew York, and the baking powder in the can was compounded by defendant in Hew York. Ho actual or substantial wrong may have resulted to any one from this misrepresentation. But the word “Royal” on the said label could not, in connection with said misrepresentation, perform the function of a trade-mark. Instead of identifying the origin of the goods, said mark was part of the instrumentality whereby such origin was concealed. For these reasons the use of the word by the Hoaglands could not have been a trespass on defendant, and hence fails not only his claim to the “better right,” but also the fundamental assumption on which the want of clean hands by complainant is predicated.
It is said that the word “Royal” is a descriptive word. A court takes notice, as a matter of law, of the meaning of words. But the question whether or not a trade-mark function has been added to a word is one of fact. The word “Royal” is not descriptive of baking powder. Hor, as conveying the idea of comparative excellence, does this word touch the commodity, baking powder, otherwise than through a metaphor which is in a high degree fanciful and remote. Said word is, in fact, used as a mark to indicate the origin of the
Au injunction may issue according to the prayer of the bill.