10 Mo. App. 45 | Mo. Ct. App. | 1881
delivered the opinion of the court.
This was a suit in equity to restrain an alleged piracy of certain trade-marks, and for an account. It appears that prior to May 17, 1869, Hiram S. Probasco and the defendant Peter Oakes were partners, in St. Louis, engaged in the manufacture and sale of candies. On that day they dissolved partnership, Oakes selling out to Probasco, by a contract of sale duly acknowledged and recorded, which conveyed to Probasco, his executors, administrators, and assigns, all of the Oakes interest in the partnership assets, and “ also the good-will of the business and name of the firm of Probasco & Oakes, and the exclusive right to make and sell Oakes’ candy, and to use the name thereof;” the contract further reciting, “ it being the intent hereof to convey to said Probasco all my interest in all the property and assets of said firm of Probasco & Oakes, and all the franchises thereof.”
This statement of the facts brings us to the point in the history of these transactions in which the rights of Probasco under the contract were determined in this court, in the suit of Probasco v. Bouyon, 1 Mo. App. 241. The rights there declared to exist in Probasco under this contract are the same rights claimed by the plaintiffs in this suit, derived, as is alleged, from Probasco, by two subsequent sales and transfers. It was there adjudged that by the above instrument of sale Probasco acquired the rights of the previous firm of Probasco & Oakes to the use of the name of * ‘ Oakes” in the manufacture and vending of the candies which Probasco & Oakes had previously manufactured and sold under that name. It was also held that Oakes could so sell his name as to deprive himself of the right to use it for his own manufacture, and give that right to another, under the circumstances of the case as shown in evidence. It was further held, that “ Oakes may make and sell candy, but not under the name, the use of which he has, for this purpose, sold. He may make and
We are not asked to review this decision, or to modify it; if we were, we could not do so consistently with well-settled rules of law, adherence to which is of the very highest importance. That decision, not having been reversed by a higher tribunal, is not only a rule of property generally, for the government of other like cases, should any arise, but it is in a peculiar sense the law of this particular case. It is a solemn adjudication of the rights of Probasco under the contract in question, on the faith of which the two sales under and by virtue of which the plaintiffs claim must be taken to have been made, for they were both made subsequently to its rendition. The books abound in cases which would support the conclusion reached by this court in that case, could it be reopened for controversy.
On the twenty-eighth day of May, 1877, after the rights of Probasco in the premises had thus been settled by this court, he sold out the business to W. J. Hammon, and executed to him a separate bill of sale, in which he undertook to convey to him, and, if the instrument is good, did convey to him, the trade-mark, name, good-will, and reputation connected with the manufacture, production, and sale of certain candies and confections, commonly known and called “Oakes’ Candies,” “Oakes’ Home-Made Candies,” and “ Oakes’ Pure Home-Made Candies,” reciting that such trade-mark, name, good-will, and reputation had been theretofore purchased by him from Peter Oakes, and concluding with the words, “I hereby sell and convey to said W. J. Hammon all the rights and privileges connected, as aforesaid, with said candies and confections, which I may have, or did at any time derive from said Peter Oakes.”
A question of more importance is presented in a fact which did not appear in the suit of Probasco v. Bouyon. On the same day (May 17, 1879) that Oakes executed and delivered to Probasco the bill of sale above quoted from, a further agreement was entered into, on a separate sheet of paper, between Oakes and Probasco, delivered to Oakes and retained by him, and never recorded, which provided that Oakes should work for Probasco for two years at manufacturing candy, at a stated salary, and which also contained this provision: “And the said Proibasco, on his part, covenants with the said Oakes, that should he, said Probasco, sell out his said business of candy making and.selling within said two years, or at any other time, then said Oakes shall be released from all obligations under this agreement, and the right and privilege of making and selling ‘ Oakes’ Candy ’ and of using said name ‘ Oakes,’ shall revert to said Oakes.”
The testimony is, that when Probasco sold to Hammon the rights in reference to “Oakes’ Candy” which he had acquired from Oakes under the contract of May 23,1877,
These cases are not authority for the position taken. They go no further than to hold that where personal property is sold and delivered upon an agreement that the title is not to pass until the purchase-money is paid, until that condition is performed, the vendor, if guilty of no laches, can recover it from an innocent purchaser of the vendee. This rule, it may be observed, was found so productive of fraud, so injurious to innocent purchasers, and of such a
It is seriously urged in the defendants’ supplemental brief, that it is shown by the affidavits of Oakes and Sickles in support of the defendants’ motion for a new trial that Hammon was personally served with a written notice of this agreement, in August, 1877, just after the sale of Probasco to Hammon. It is scarcely necessary to suggest that no ex parte affidavit filed in support of a motion for a new trial can be looked to as evidence of anything affecting the merits of the case. Parties must produce their testimony in such a manner as to afford the other side the right of cross-examination. Affidavits in support of a new trial, when they relate to matters which may have materially affected the rights of the party moving for the new trial, and which do not appear on the records of the court, and are unknown to the court itself, are admissible. That a party
A point is made in behalf of the defendant Annie Oakes, that before the plaintiffs acquired the alleged right to use the name of Oakes in the manufacture of candies, she, by marrying with Oakes, had acquired a right to use his name in the same connection, of which the plaintiffs cannot lawfully deprive her. There is nothing in this point except novelty. Peter Oakes could not confer upon Annie McLaughlin, by marrying her, any higher rights in the use of his own name than he himself had. A son cannot acquire from his father the right to use his father’s name as a trade-mark, if the father had parted with the right by contract (Filkins v. Blackman, 13 Blatchf. 440), and we do not see how a wife could stand in a better position as to the name of her husband.
There remain two questions in the case, either of which is of more serious import. There is nothing in the record to show that Hammon sold to Skinner any property whatever, except the naked right to use the trade-marks in question. The first question therefore is, whether a trade
1. The first question cannot be answered intelligibly without some consideration of the grounds upon which courts of equity proceed in protecting' trade-marks.
The principle on which all the cases on the subject of trade-marks unite is, that one man will not be permitted, by imitating the distinctive name or mark used by another person to designate articles of the latter’s manufacture, to impose article's of his own manufacture upon the public as the articles of the former. The cases so holding rest upon two considerations: First, that it would be a fraud on the rights of the former person thus to permit his trade-mark to be imitated; second, that it would also be a fraud on the public. See Gilman v. Hunnewell, 122 Mass. 139; McLean v. Fleming, 96 U. S. 245, 251; Colman v. Crump, 70 N Y. 573; Fairbanks v. Jacobus, 14 Blatchf. 337; Devlin v. Devlin, 67 Barb. 290; Amoskeag Man. Co. v. Garner, 54 How. Pr. 297; Curtis v. Bryan, 2 Daly, 312; s. c. 36 How. Pr. 33; Amoskeag Man. Co. v. Spear, 2 Duer, 607; Peterson v. Humphrey, 4 Abb. Pr. 394; Howe v. Howe Machine Co., 50 Barb. 236; Sykes v. Sykes, 3 Barn. & Cress. 541; Burgess v. Burgess, 3 De G. M. & G. 896, 904; Burke v. Cassin, 45 Cal. 467; Emerson v. Badger, 101 Mass. 82; Ellis v. Zeilin, 42 Ga. 91; Lord Kingsdown, in Leather Cloth Co. v. American Leather Cloth Co., 11 H. L. Cas. 538; Perry v. Truefitt, 6 Beav. 66; Walton v. Crowley, 3 Blatchf. 448; Dixon Crucible Co. v. Guggenheim, 1 Cox’s Trade-Mark Cas. 559.
The courts have proceeded upon the twofold principle, that the public have a right to know that goods which bear the sig
There are some gwasi-proprietary rights, such as the elective franchise, which are incapable of assignment. But it would be obviously unjust so to restrict the right to use a trade-mark. The advantages which accrue from the use of a particular trade-mark or advertising device are often
A trade-mark may, and often does, consist in the name of a person or partnership firm; and the exclusive use of such trade-mark is upheld, with this limitation, that another person of the same name is not to be prevented from using his name in the same way, provided there are no special circumstances which make it inequitable for him to do so. Meneely v. Meneely, 62 N. Y. 427; Wolfe v. Burke, 7 Lans. 151; Probasco v. Bouyon, 1 Mo. App. 241.
But where the trade-mark consists of a name, how far it is capable of assignment is a more difficult question. We think that the answer to this question depends upon the effect which the use of the name in each particular instance is shown to have upon the minds of the public. If it leads the public to believe that the particular goods are, in fact, made by the person whose name is thus stamped upon them.
But there are matiy cases where the courts uphold the use of a name as a trade-mark, trade-name, or advertising engaged in the trade, and although in order to do so it is necessary to enjoin the person whose name is so used, from a similar use of the name. These cases, so far as I have been able to discover and classify them, are twofold: First, where the business is sold together with the good-will thereof, in which case, either by the usages of trade or by the express contract of the parties, the name passes with the business to the assignee. In such cases, in view of the courts, no deception is, in fact, practised upon the public ; since, in conformity with the usages of trade, the names used in the style of a business firm are not understood by the public as necessarily implying that persons of that name are. actually members of the firm. Such was the case of Churton v. Douglass, Johns. Eng. Ch. 174, where John Douglass, of the firm of John Douglass & Co., having sold out his interest in the property and good-will of the firm, was enjoiued from taking in other partners and setting up a similar business near the old place, under the same firm-name of John Douglass & Co. Such, also, was Dixon Cru
But it is obvious that it cannot in all cases be so restricted ; for there is a second class of cases, where the name is merely used as an adjective to identify goods of a particular description, or articles which embody a particular result in chemistry or manufacture. In these cases, the right to use the name may be sold in connection with what is called the right to manufacture and vend the goods. But since there can be no exclusive right in any one to manufacture or vend goods which are not patented, such a contract of sale amounts to nothing more than that the vendee may, if he chooses to make the same goods, call them by the name of the original inventor or maker, and that such inventor or maker will not in any manner obstruct him in so doing. To this class of cases belong those cases which uphold the exclusive right to make and vend a proprietary medicine which has become known by the name of the vendor. Fulton v. Sellers, 4 Brews. 42; Filkins v. Blackman, 13 Blatchf. 440; McLean v. Fleming, 96 U. S. 245, 251. In these cases, the name thus used is but an adjective of qual,ity or description, which is not understood by the public ;as a warranty that the person who bears the name is maker •of the article, but only that the article is made after the .same formula as when he made it. Upon the same principle, where a hotel or theatre bears the name of one who jhas owned or occupied it, and has been sold out or leased by him under that name, he cannot enjoin a subsequent
These distinctions have beeja clearly presented by the Supreme Court of Rhode Island in Carmichel v. Latimer, 11 R. I. 395, 401, where Potter, J., after examining many cases with a view of determining whether a trade-mark is assignable, says: “Upon this question there has been a great variety of decisions, and it is difficult to reconcile them. A proper classification of the cases would probably remove some of the difficulty. Where, from its being a peculiar invention, a secret process, or particular mode of manufacture not generally known to the public, the knowledge of the process might be communicated to others, and the public and the purchasers should be protected against imitations. This circumstance would give a value to the process, and assimilate it to the nature of property which might be disposed of. In some of the cases there has been a question between partners, or there has been a sale of the business, to be continued by the vendee, and more or less connected with the place and the goodwill of the business; and in many of these cases the sale of the trade-mark would be upheld. So where the name denotes the product of a particular property —e. g., ‘ Congress Spring,’ or wine made from a particular vineyard. In such cases there is no property in the words, but only as the means of designating a property. But where the reputation of the goods and of the name has grown out of the excellence of manufacture, depending on the honesty and skill of the maker, it is more difficult to hold that it can be sold to a stranger, or that it is generally assignable.”
So, in the case before us, if we could gather from the record that the plaintiffs are the successors in business of Probasco & Oakes; that they had become the assignees, not merely of the trade-marks and tokens, but also of the establishment and the business, so that they are really
Neither can they, under the circumstances in which they present themselves to the court, uphold the right to use the name of Oakes in the vending of candies, without making it clear thatJt-is-a-mere-adjeefci-ve-nf-deserH»tio-inJ.ndi eating to the public that the candies so marked or advertised are of a certain kind or quality, and that the use of such a name does not operate to deceive the public into the belief that they are, in fact, made by the man Oakes. We cannot gather from the record that they have made these facts to appear, and we must accordingly reverse the judgment and remand the cause.
We have given to this case long and anxious attention, and have considered attentively many decisions bearing upon the subject which we have not thought it necessary to cite. We have done this, not only because it involves important rules of property, but also because questions of public right and public policy enter into it, which courts of justice cannot ignore. We are disposed to uphold the assignability of trade-marks, trade-names, and the good-will of trading establishments, as far as authoritative courts have hitherto gone. But we cannot go to the wild length
Reversed and remanded.