Hazelton Boiler Co. v. Hazelton Tripod Boiler Co.

• Decision Date: 24 March 1892
• Citation: 30 N.E. 339,142 Ill. 494
• Parties: HAZELTON BOILER CO. v. HAZELTON TRIPOD BOILER CO. et al.
• Court: Illinois Supreme Court

142 Ill. 494

30 N.E. 339

HAZELTON BOILER CO.

v.HAZELTON TRIPOD BOILER CO. et al.¹

Supreme Court of Illinois.

March 24, 1892.

Appeal from appellate court, first district.

Bill by the Hazelton Boiler Company against the Hazelton Tripod Boiler Company, Charles B. Holmes, and others. Defendants obtained a decree, which was affirmed by the appellate court. Complainant appeals. Affirmed.Ephraim Banuing, Thomas A. Banning, and George S. Pavson, for appellant.

Bond & Adams, for appellees.

The other facts fully appear in the following statement by BAILEY, J.:

This was a bill in chancery, brought by the Hazelton Boiler Company, a corporation organized under the laws of New York, against the Hazelton Tripod Boiler Company, a corporation organized under the laws of Illinois, and Charles B. Holmes, Milton W. Hazelton, Charles B. Hallett, and W. E. Kirkpatrick, to restrain the defendants from using the name ‘Hazelton Tripod Boiler Company,’ the name ‘Hazelton Boiler,’ and the word ‘Hazelton’ in their business of manufacturing and selling steam-boilers.

The bill alleges that, in 1879 or 1880, Milton W. Hazelton represented to the parties now composing the complainant corporation that he had invented certain new and useful improvements in steam-boilers, which he intended to have covered by patents, and desired them, or some of them, to become interested with him in the development thereof; that after various negotiations an arrangement was made between him and Edward S. T. Kennedy, now one of the members of said corporation and the manager of its business, by which said Kennedy became interested with him in said inventions, and that, in pursuance of said arrangement, he (Kennedy) put in money, to the amount of several thousand dollars, to defray the expenses of procuring patents, conducting experiments, and otherwise bringing said inventions to such point of practical utility as would justify the establishment and building up of a business in the manufacture and sale thereof; that said experiments were carried on through a period of four years or more, and in their progress led to the making and adoption of various charges, so that in the end said boiler was very different from the one first presented, the improved boiler being of a particular and distinctive type, having a central stand-pipe or water cylinder, and tubes extending radially therefrom, which peculiarity suggested the general name of ‘Porcupine’ boiler, which was then given to it, and by which it has ever since, in a general way, been known; that, after experimenting as aforesaid, said Hazelton and Kennedy concluded to engage in the manufacture and sale of said Porcupine boilers, and to this end arranged between themselves and with others to organize a joint-stock company to take charge of and carry on said business; that after some consideration as to the name to be given said company, and particularly in view of the fact that said general form of boiler had been invented by Hazelton, and had become somewhat known as the ‘Hazelton Boiler,’ it was finally agreed that said company should be called ‘The Hazelton Boiler Company;’ that Hazelton fully consented to and acquiesced in the adoption of said name, and the appropriation thereof to said business; that, after said business had been started under this name, disagreements and misunderstandings arose, which prevented the corporation from being fully perfected; that said business, however, was started by Hazelton and Kennedy, and from March, 1884, to July of that year, was carried on by them under said name; that during this period the business was widely advertised under said name, and some boilers were sold under the name of ‘Hazelton Boilers,’ by means whereof said boilers became further known in the market as the ‘Hazelton Boiler;’ that in July, 1884, after said business had been started and had become established under said name, said Hazelton sold and transferred his entire interest in said business, and in the patents, trade-marks, trade names, good-will, and everything relating thereto, to John P. Kennedy, who is now another of the members of the complainant corporation, for $10,000; that it was distinctly understood and agreed, and formed a part of the consideration for which said $10,000 was paid, that the business should thereafter be conducted and carried on, and said boiler sold, under the same name, so that by reason of his acquiescence in the adoption and appropriation thereof in the first instance, and the subsequent sale of his interest in said business and everything connected therewith, Hazelton sold and assigned to John P. Kennedy the sole and exclusive right, so far as he was concerned, to the good-will of said business, and to the names, ‘The Hazelton Boiler Company’ and ‘Hazelton Boiler,’ and thereby became, and ever since has been, estopped from claiming or asserting any right to use the same in connection with the business of manufacturing and selling Porcupine boilers, or in any similar business; that, after Hazelton retired therefrom, said business was carried on by Edward S. T. Kennedy, John P. Kennedy, and William T. Kennedy, the last of whom became interested therein in September, 1884, but owing to various reasons the formal incorporation of the complainant was delayed until June 23, 1888, at which date the complainant became fully incorporated under the laws of the state of New York, the three Kennedys above mentioned joining in said incorporation, and being then, and having been ever since, the only stockholders therein; that they have formally transferred to the complainant said business and the good-will thereof, trade-marks, trade names, etc., but not including patents, the legal ownership of which, for convenience, was allowed to remain as before; that since said incorporation the complainant has continued to carry on said business under the same name and at the same place; that the complainant manufactures and keeps in stock different sizes of standard boilers, and also manufactures special sizes to fill special orders; that its boilers are now sold and in use in nearly every state and territory of the United States, and in some foreign countries, and are so well known that the complainant is constantly receiving orders for them from points all over the country; that the word ‘Hazelton’ is applied to and used on all such boilers manufactured by the complainant, being put upon the front doors thereof, and a name-plate attached to the outside brick-work, and it has been so applied and used on all such boilers manufactured by it and its predecessors since the business was started, in 1884; that, by virtue of its adoption and use, said word ‘Hazelton’ became and is a trade-mark for boilers of the complainant's manufacture, and has been and is so recognized manufacturers and dealers all over the country, who order boilers under by manufacturers and dealers all ‘Hazelton Boilers,’ without further description or designation, except as to size; that the word ‘Hazelton’ was thus adopted, appropriated, and used as a trade-mark, as well as a part of the general name under which said business was started, before said Hazelton sold out his interest and retired from said business, and all his right, title, and interest in said word as such trade-mark, and as a part of such general name, were included in and transferred by him by his sale to John P. Kennedy, and afterwards in the transfer from said Kennedy to the complainant; that the complainant is thereby entitled to the sole and exclusive use of said names, ‘Hazelton Boiler Company’ and ‘Hazelton Boiler,’ the one designating the general name in which it carries on its business, and the other the trademark or name for steam-boilers of its manufacture.

The bill further alleges that the complainant and its predecessors have invested a large amount of money in perfecting said boiler, and overcoming mechanical defects therein, and in advertising it, and have established a complete manufacturingplant for building them on a large scale, said business not being yet on a paying basis, but promising to be profitable in the near future; that the complainant's predecessors had defendant Hallett in their employ for three years, whereby he became well acquainted with said business, and the markets in which said boiler was sold; that Hazelton, after selling his interest in said business, went to Chicago, and there engaged in the manufacture of Porcupine boilers, calling them by the same general name under which the complainant's predecessors had introduced them to the market,-that is, under the name of ‘Hazelton Tripod Boilers,’-and that the word ‘Hazelton’ is thus used by the defendants for the fraudulent purpose of confusing the public mind, and diverting the complainant's trade by misleading purchasers into the belief that, when buying a Hazelton Tripod boiler, they are buying a genuine Hazelton boiler, of the complainant's manufacture; that, in pursuance of this fraudulent intention, Hazelton afterwards associated said Hallett with him in said business, and that they have induced defendants Holmes and Kirkpatrick to become their associates, and that a company has been organized under the name of ‘The Hazelton Tripod Boiler Company,’ of which the defendants are members and officers; that said name was adopted, as the complainant verily believes, for the purpose of still further deceiving and imposing upon the public, and to enable said parties to trade upon the reputation and good-will of said Porcupine boilers manufactured by the complainant; that the word ‘Tripod,’ used in said name, is not sufficient to distinguish said company and its boilers from the complainant and the boilers manufactured by it; that the defendants, since the organization of said company, have been carrying on the business of manufacturing and selling boilers under the name of ‘Hazelton Boilers,’ and in many ways have been seeking to divert away the...