Burton v. Stratton

• Decision Date: 03 July 1882
• Citation: 12 F. 696
• Parties: BURTON v. STRATTON and others.
• Court: U.S. District Court — Eastern District of Michigan

12 F. 696

BURTON v. STRATTON and others.

United States Circuit Court, E.D. Michigan.

July 3, 1882

[Copyrighted Material Omitted]

Prayer That the defendants be enjoined from imitating the label, and from selling any yeast made by them, or any other person than the plaintiff, as and for the 'Twin Brothers' yeast and in using the name of Twin Brothers in any way, shape, or form in connection with the sale of yeast.

The defendants claimed an absolute right to use the words 'Twin Brothers Yeast,' in so far as they constituted the original trade-mark of Stratton Brothers, on the ground that Stratton never sold his interest in such trade-mark to complainant; that a court of equity will not protect plaintiff in the use of his trade-mark, although he bought it of Stratton, because in using it he represents to the public that he was the originator, and that it indicates an origin in himself, when such is not the truth; that Twin Brothers is a generic name of a compound made under Stratton's discovery; and that the defendants or any other person making the genuine article may sell it under its proper name. They deny the charge that the yeast made by them is a spurious article, and claim that it is the genuine original compound discovered by defendant Stratton, and substantially the same as made by the complainant.

C. F. Burton and Alfred Russell, for plaintiff.

H. C. Wisner, for defendant.

BROWN D.J.

We think there is a decided preponderance of testimony in favor of the plaintiff's theory that at the time his partnership with the defendant Stratton was dissolved he purchased not only his interest in the business, but also his moiety of the trade-mark. Indeed, the defendant seems to have had very little else of any value to sell. Plaintiff had put but a thousand dollars into the venture. Defendant had contributed nothing but his attention and skill. The partnership lasted but eight or nine months, and the business done was very limited. They would get a little meal and make a small quantity of yeast; then they would shut up the factory and go out and sell it, get a little more meal, and start again. After conducting the business in this way about six months the demands of their creditors became so urgent that plaintiff was obliged to advance $300 more to continue it. Soon after, an investigation of the books showed their affairs to be in such a precarious condition that defendant Stratton wanted to go out of the business, and the plaintiff bought his interest and paid him $4,000. At the time of the sale there appears to have been no stock on hand, and the factory had been shut down for some six weeks. Under these circumstances it seems to us quite improbable that they could have made ten or twelve thousand dollars in nine months, or that there could have been debts due the firm to the amount of $8,000. Add to this the testimony of several witnesses who swear that defendant stated to them repeatedly, and in a regretful manner, that he had sold his interest in the trade-mark, and had nothing else to sell to the plaintiff, and his subsequent conduct after he left plaintiff's employ in commencing to sell under the name of the 'Standard Yeast,' we can entertain but little doubt of the fact, notwithstanding the agreement was not in writing.

The principal question involved in this case is whether the words 'Twin Brothers' are a trade-mark of such a character as entitles the plaintiff to be protected in his monopoly of them. The point is certainly not free from difficulty. There are few classes of cases in the whole domain of the law so difficult to reconcile as those wherein the validity of a trade-mark is discussed. The following propositions, however, may be considered as settled:

1. That a court of equity will enjoin unlawful competition in trade by means of a simulated label, or of the appropriation of a name; as where the defendant appropriates the name of a hotel conducted by the plaintiff, or imitates his label upon preparations. Howard v. Henriques, 3 Sandf. 725, (Irving House Case;) Woodward v. Lazar, 21 Cal. 448, (What-Cheer House Case;) Howe v. Searing, 10 Abb.Pr. 264, (Howe's Bakery Case;) McCardel v. Peck, 28 How.Pr. 120, (McCardel House Case;) Williams v. Johnson, 2 Bosw. 1, Genuine Yankee Soap Case;) Day v. Croft, 2 Beav. 488, (Day & Martin Blacking Case;) Davis v. Kendall, 2 R.I. 566, (Pain-Killer Case;) Meriden Britannia Co. v. Parker, 39 Conn. 450. The ground of interference in this class of cases is fraud; that is, the attempt to palm off the goods of the defendant as the goods of the plaintiff.

2. A court of equity will not protect a person in the exclusive use of a word which expresses a falsehood; as, if the article bears the word 'patented' when in fact it is not patented, or exhibits an untruth as to the place of manufacture or composition of the article. Leather Cloth Co. v. American Leather Cloth Co. 11 H.of L. 531; Brown, Trade-Marks, Sec. 72; Flavel v. Harrison, 10 Hare, 467; Partridge v. Menck, 2 Barb.Ch. 101; Pidding v. How, 8 Simons, 477, (Howqua Mixture Case;) Palmer v. Harris, 60 Pa. 156, wherein the trade-mark indicated that certain cigars were made in Havana, when in fact they were made in New York; Fetridge v. Wells, 13 How.Pr. 385, (Balm of Thousand Flowers Case;) Phalon v. Wright, 5 Phila. 464, (Night-Blooming Cereus Case;) Cocks v. Chandler, L.R. 11 Eq. 446, (Reading Sauce Case;) Conwell v. Reed, 128 Mass. 477, (East Indian Remedy Case.)

3. That no one can extend his monopoly of a patented trade-mark. By the expiration of the patent the public acquires the right not only to make and sell the article, but to make and sell it under the name used by the patentee. Singer Manuf'g Co. v. Stanage, 6 F. 279; In re Richardson, 3 O.G. 120; Tucker Manuf'g Co. v. Boyington, 9 O.G. 455.

4. A person cannot, by means of a trade-mark, monopolize the name of the place where the article is manufactured. Canal Co. v. Clark, 13 Wall. 311, (Lackawanna Coal Case;) Brooklyn White Lead Co. v. Masury, 25 Barb. 416. Nor the ordinary numerals or letters. Manuf'g Co. v. Trainer, 101 U.S. 51; A.C.A. Case; Am. Manuf'g Co. v. Spear, 2 Sandf. 599; Avery v. Meikle, 23 Alb.Law.J. 443. This proposition, however, has been disputed. See Gillott v. Estabrook, 48 N.Y., (The 303 Case;) Boardman v. Meriden Britannia Co. 35 Conn. 402. Nor can a person monopolize a name expressive of the character or composition of an article. Caswell v. Davis, 35 N.Y. 281, (Ferro-Phosphorated Elixir of Calisaya Bark Case.)

5. So where the words used are expressive only of the name or quality of the article, and have acquired that significance in the market. Am. Manuf'g Co. v. Spear, 2 Sandf. 599; Manuf'g Co. v. Trainer, 101 U.S. 51; Stokes v. Landgraff, 17 Barb. 608; Corwin v. Daly, 7 Bosw. 222, (Club House Gin Case;) Ferguson v. Davol Mills, 2 Brewster, 314; Choynski v. Cohen, 39 Cal. 501, (Antiquarian Book Store Case;) Phalon v. Wright, 5 Phila. 464; Singleton v. Bolton, 3 Doug. 293, (Case of Dr. Johnson's Yellow Ointment;) Thomson v. Winchester, 19 Pick. 214, (Thomsonian Medicine Case;) Benninger v. Wattles, 24 How.Pr. 204, (Old London Dock Gin Case;) Raggett v. Friedlater, L.R. 17 Eq. 29, (The Nourishing Stout Case.)

In order that mere words may be upheld as a trade-mark they must be merely arbitrary, or they must indicate the origin or ownership of the article or fabric to which they are affixed. Am. Manuf'g Co. v. Spear, 2 Sandf. 597; Canal Co. v. Clark, 13 Wall. 322; Falkinburg v. Lucy, 35 Cal. 52; Brown, Trade-Marks, Sec. 216; Durham Tobacco Case, 3 Hughes, 157; Wotherspoon v. Currie, L.R. 5 E. & I.App. 508, (The Glenfield Starch Case;) Ford v. Foster, L.R. 7 Ch.App. 611, (Eureka Shirt Case;) Hier v. Abrahams, 82 N.Y. 519, (Pride Tobacco Case;) McAndrew v. Bassett, 10 Jur. (N.S.) 550; S.C. 12 Week.R. 777, (Anatoleo Case;) Lee v. Haley, L.R. 5 Ch. 155, (Grimes Coal Co. Case;) Seixo v. Provezende, L.R. 1 Ch. 192, (Seixo Wine Case;) Braham v. Bustard, 1 Hem. & M. 447, (Excelsior Soap Case.)

There are cases which appear to differ from those above cited, but we think most if not all of them, can be distinguished from them.

The defendant takes the ground in this case that the words 'Twin Brothers Yeast' is a generic name, and indicates, not the origin or ownership of the article, but its specific quality, and that it has acquired in the market a reputation under that name. This defence appears to be somewhat of an after-thought, and it is doubtful whether it is properly before the court, since no allusion is made to it in the answer, and it was not until the case had been at issue a year and the proofs taken that defendant made an affidavit to the effect that 'Twin Brothers Yeast' was the generic name of a specific article of merchandise, and that he was the only person who ever was or ever could be able to manufacture it. The defence, too, seems to be somewhat inconsistent with the previous testimony. Upon being called as a witness Stratton swore that he made a discovery of a yeast compound, and that he did not get it patented because he considered it of more value to him as a secret than as a patent. He had imparted the secret to the employes of the plaintiff. He had also imparted it to the Judds, who manufactured 'Judd Bros.' yeast according to his formula; that he had also imparted the secret to one Hopper, who made the same yeast under the name of the 'National Yeast;' that while a member of the firm of A. G. Smith & Co. he manufactured and sold the same yeast under the name of the 'Standard' yeast; and that he manufactured the same yeast for a firm in Toledo, who sell it under the name of the 'Lion Brand.'

The difficulty is in distinguishing cases where the property has acquired a generic name, as indicating the quality of...