| Mass. | Nov 15, 1872
The plaintiffs and the defendant are joint executors and trustees under the will of William P. Winchester. The bill, filed February 10,1871, avers that the late firm of E, A. & W. Winchester for many years carried on the manufacture of soap in Cambridge; that they had adopted and used the name of the firm as a trade-mark, to designate and mark their soap; that the testator at the time of his death was the sole remaining member of said firm, and was the sole owner and possessor of said trade-mark; and that upon his death it became the property of and vested in the executors and trustees under his will. It further alleges that the plaintiffs have made an agreement with John Livermore to grant to him the exclusive right to use said trade-mark, and that the defendant refuses to join in said agreement, claiming the right to use the trade-mark himself. The prayer of the bill is to restrain the defendant from using the trade-mark and to order him to execute the agreement granting the exclusive right to it to Livermore.
Among the undisputed facts it appears that the firm of E. A. & W. Winchester established the manufactory of soap at Cambridge in the year 1821, the testator being one of the members of- the firm. They adopted the firm name, “ E. A. & W. Winchester,” as a trade-mark, which they stamped upon the bars of soap and upon the boxes in which the soap was packed. In 1847 the testator was the only surviving member of the firm. In that year he admitted the defendant into the firm, under articles of copartnership, the preamble of which recited that “ the only surviving partner, William P. Winchester, for the purpose of continuing the business in the same name and style of the late firm, hereby admits as a copartner Charles B. Johnson, of Roxbury, upon the following conditions.” It is necessary to refer particularly to only three of the articles. The first, third and sixth are as follows:
“ Article 8. Any and all additions, repairs, improvements or alterations, together with any and all expenses which may be incurred in, upon or about the premises known as the Provision and Soap and Candle Establishment at East Cambridge, which may be undertaken for the better conducting of the business of this copartnership, shall be paid from the joint funds of the firm and carried to profit and loss account, and the said Charles B. Johnson shall make no claim or allowance whatever for such expenditures, but the said William P. Winchester, in consideration thereof, shall make no charge of rent for his portion of said establishment, (of which he is owner of one moiety,) the rent for. the other moiety being fixed by the will of the late Stephen Winchester.”
“Article 6. Said William P. Winchester reserves the right to associate with him as partner or partners, either of his sons, nephews, relatives or other persons at such time as he may desire, and in the event of the decease of the said William P. Winchester, his sons and other relatives (not exceeding three in number) as alluded to in the will of said William P. Winchester, shall have the right to become partners of the firm, which is to be continued under the name of E. A. & W. Winchester, they to receive such equitable share of the profits as may under such circumstances be agreed upon.”
The firm thus formed continued without any change until the death, in 1850, of William P. Winchester, who left a will, of which the seventh article is as follows:
“Article 7. If it shall happen that I have at the time of my decease any interest or share in the capital or joint property in the partnership of E. A. & W. Winchester, now composed ot
After the death of William P. Winchester, the defendant continued the business alone until 1854, and after that with partners, using the firm name and trade-mark of “ E. A. & W. Winchester,” until 1867, when the firm became embarrassed and it was dissolved by the defendant. Since such dissolution the defendant has continued to manufacture soap and to use the trade-mark. In 1868, the executors and trustees under the will of William P. Winchester sold the manufactory at Cambridge with all the fixtures and utensils to Livermore.
Upon these facts it may be conceded that in 1847 Winchester had a valuable property in the trade-mark which he might dispose of in connection with the business. But it was property of a peculiar character, closely resembling that which he had in the good will of the business, and we think that by the articles of partnership between Winchester and the defendant, the good will and the right to use the trade-mark passed to the new firm. The trade-mark, being the name of the new firm and an incident of the business of the firm, would pass by implication, there being nothing in the articles showing a different intention. Bury v. Bedford, 4 De G., J. & S. 352. It is true that by the first article if Winchester had elected during his lifetime to dissolve the partnership, the property of the firm, including the trade-mark, would have reverted to him. But while the firm continued the title was vested in it. He did not so elect, and this article becomes inoperative by his death. The death of Winchester worked a dissolution of the firm, and it may be that, if there had been no provision for the continuance of the business, the good will and the right to use the trade-mark would have vested in his legal representatives. But the sixth article of the partnership agreement and the seventh article of the will make distinct provisions for the continuance of the business under the same firm name. Construing them together, it seems to us clear that both the good will of the business and the right to use the trade-mark, at the death of Winchester passed to the new firm. They both contemplated that a new firm was to be established with the right to con
Upon the whole case we are of opinion that the plaintiffs can* not maintain this bill. They are entitled to the relief prayed for, only upon the ground that the trustees, as the legal representatives of Winchester, have the exclusive right to use this trademark. For seventeen years after the death of their testator the firm of which the defendant was a member owned and enjoyed the exclusive use of the trade-mark. We know of no principle by which upon the dissolution of that firm it reverted to and became the property of the estate of the testator. Bowman v. Floyd, 3 Allen, 76.
We do not consider it necessary to decide whether this trademark is so far property that it could be sold, detached from the business in which it has been used, to a stranger, nor whether the defendant retained the right to use it after the dissolution of the firm in 1867. It is decisive of this case that the plaintiffs have no interest in it. Rogers v. Taintor, 97 Mass. 291" court="Mass." date_filed="1867-10-15" href="https://app.midpage.ai/document/rogers-v-taintor-6415045?utm_source=webapp" opinion_id="6415045">97 Mass. 291. Emerson v. Badger, 101 Mass. 82" court="Mass." date_filed="1869-01-15" href="https://app.midpage.ai/document/emerson-v-badger-6415605?utm_source=webapp" opinion_id="6415605">101 Mass. 82. Bill dismissed.