Allen v. Walker & Gibson

• Decision Date: 17 August 1916
• Citation: 235 F. 230
• Court: U.S. District Court — Northern District of New York
• Parties: ALLEN v. WALKER & GIBSON.

235 F. 230

ALLEN v. WALKER & GIBSON.

United States District Court, N.D. New York.

August 17, 1916

[Copyrighted Material Omitted]

Martin & Jones, of Utica, N.Y., for complainant.

Rosendale Hessberg, Dugan & Haines, of Albany, N.Y. (Charles W. Hills of Chicago, Ill., and Albert Hessberg, of Albany, N.Y., of counsel), for defendant.

RAY District Judge.

In 1886 the complainant, George H. Allen, of Clinton, N.Y., began the business of manufacturing and selling a furniture polish at that place, and he placed on the bottles and containers a label with certain descriptive words and the trade-mark or name 'Cedarine.' So far as appears, he was the first to coin and use this word 'Cedarine.' He built up quite an extensive business, and became quite widely and extensively known as 'Cedarine Allen,' a name which he adopted and used in various ways in such business and in advertising, and in which he seems to take pride. June 7, 1887, on his application, there was registered and issued to said George H. Allen a trade-mark. In his statement and declaration he said:

'My trade-mark consists of the word 'Cedarine.' This has generally been arranged or inclosed within a diamond-shaped figure, which in turn is surrounded by a larger figure of similar shape; the sides of these figures being arranged parallel with each other.'

He also describes the use and placing of certain words between the lines of these figures, but says:

'These words are printed in small type, while the word 'Cedarine' is formed of large letters, to make it prominent.'

He makes other remarks, and says:

'The essential feature of which (trade-mark) is the arbitrary word 'Cedarine."

He also says therein:

'This trade-mark I have used continuously in my business since November 1, 1886. The class of merchandise to which this trade-mark is appropriated is polishes, and the particular description of goods comprised in said class on which I use it is furniture and piano polish. It is my practice to apply my trade-mark to the bottles, boxes, or packages containing the polish by means of suitable labels on which it is painted. The word and trade-mark are sometimes also blown into the bottles containing the polish.'

In 1891 Allen incorporated this business in the state of New York under the name 'Cedarine Manufacturing Company,' with an authorized capital stock of $25,000. Allen was manager of the business of this corporation until 1897, when a corporation was organized under the laws of the state of Michigan, at Hastings, in that state, under the name Cedarine Manufacturing Company, and this corporation took over a furniture manufacturing plant at that place, and this corporation took orders for furniture polish bearing the name 'Cedarine'; but the goods were manufactured and put up for market at Clinton, N.Y. At about this time all the stockholders of the New York corporation turned over their stock therein to complainant, and he in their behalf, as well as his own, assigned the furniture polish business at Clinton, N.Y., including the good will, to said Michigan corporation. March 28, 1898, the Michigan corporation transferred the said trade-mark, and also all the property at Clinton, N.Y., connected with the manufacture of Cedarine, to the complainant here.

In May or June, 1898, Allen returned to Clinton, N.Y., where until October of that year he conducted this furniture polish business, using the trade-mark name 'Cedarine.' At this time the business was again incorporated under the laws of the state of New York, but under the name 'Cedarine Allen Company.' When the Michigan corporation went out of business, March 28, 1898, a written transfer to George H. Allen of the business and this trade-mark was executed and signed by 'George H. Allen, Secy.' He was the secretary of that corporation, and while the defendant here vigorously attacks this transfer, I think it was sufficient under all the circumstances to transfer to Allen, not only the business, but the trade-mark, and that he again became its owner. It does not appear that there was any formal dissolution of this Michigan corporation, and defendant contends that it went out of business and abandoned to the public all its rights to this trade-mark; but I do not think this contention is sustained. These transactions were somewhat informal, but there is no evidence to question or dispute the statement of the complainant, or the plaintiff's exhibits, bearing on this question of the ownership of the trade-mark.

At the time of the incorporation in October, 1908, Allen transferred to his wife this registered trade-mark by an instrument in writing, but which does not in terms include the good will of the business. This certificate of incorporation stated:

'The object and nature of the business for which this corporation is to be formed is the manufacture and sale of Cedarine furniture polish, and other polishes, liquid glue, furniture, and advertising novelties.'

M. E. Allen subscribed for 19,760 shares of stock in this Cedarine Allen corporation, and in consideration of $50,000 of the stock she assigned to such corporation this registered trade-mark No. 14,482. Allen himself subscribed for 20,000 shares of the stock and conveyed the business to the new corporation. The transfer from George H. Allen to M. E. Allen reads as follows:

'Whereas, I, George H. Allen, of Clinton, county of Oneida, and state of New York, did obtain letters patent of the United States for the registration of a certain trade-mark for furniture polish, which letters patent are No. 14,482, and bear date the 7th day of June, 1887; and

'Whereas, I, the said George H. Allen, am now the sole owner of said letters patent and of all rights under the same; and

'Whereas, M. E. Allen, of Clinton, county of Oneida, and state of New York, is desirous of acquiring the entire interest in the same:

'Now, therefore, to all whom it may concern, be it known that for and in consideration of the sum of one dollar to me in hand paid, the receipt of which is hereby acknowledged, and in consideration of natural love and affection, I, the said George H. Allen, have sold, assigned, and transferred, and by these presents do sell, assign, and transfer, unto the said M. E. Allen all my right, title, and interest in and to the said trade-mark for furniture polish, and in and to the letters patent therefor aforesaid, the same to be held and enjoyed by the said M. E. Allen for her own use and behoof, and for the use and behoof of her legal representatives, to the full end of the term for which said letters patent are granted, as fully and entirely as the same would have been held and enjoyed by me, had this assignment and sale not been made.

'In testimony whereof, I have hereunto set my hand and affixed my seal at

Clinton, in the county of Oneida, and state of New York, this 19th day of October, A.D. 1898. 'In the presence of

Geo. H. Allen. (L.S.)

'J. T. List.

'D. W. Allen.'

The transfer from M. E. Allen to the Cedarine Allen Company reads as follows:

'Whereas, George H. Allen, of Clinton, county of Oneida, and state of New York, did obtain letters patent of the United States for the registration of a certain trade-mark for furniture polish, which letters patent are numbered 14,482 and bear date the 7th day of June, 1887; and

'Whereas, the said George H. Allen, by a due and proper instrument in writing has sold and assigned his said patent, and his rights in, to, and under the same, unto Mary E. Allen, of Clinton, county of Oneida, and state of New York; and

'Whereas, I, the said Mary E. Allen, am now the sale owner of said patent and all rights under the same; and

'Whereas, the Cedarine Allen Company, of Clinton, county of Oneida, and state of New York, is desirous of acquiring the entire interest in the same:

'Now, therefore, to all to whom it may concern, be it known that for and in consideration of the sum of $50,000 to me in hand paid, the receipt of which is hereby acknowledged, I, the said Mary E. Allen, have sold, assigned, and transferred, and by these presents do sell, assign, and transfer, unto the said Cedarine Allen Company my entire right, title, and interest in and to the said trade-mark for furniture polish, and in and to the letters patent therefor aforesaid, the same to be held and enjoyed by the said Cedarine Allen Company for its own use and behoof, and for the use and behoof of its legal representatives, to the full end of the term for which said letters patent are granted, as fully and entirely as the same would have been held and enjoyed by me, had this assignment and sale not been made.

'In witness whereof, I have hereunto set my hand and affixed my seal at Clinton, in the county of Oneida, and state of New York, this 24th day of October, 1898. 'In the presence of

M. E. Allen. (L.S.)

'Katie Smyth.

'D. W. Allen.'

The transfer from George H. Allen to the Cedarine Allen Company reads as follows:

'Know all men by these presents, that I, George H. Allen, of Clinton, county of Oneida, and state of New York, in consideration of the sum of $7,385 to me in hand paid, the receipt whereof is hereby acknowledged, and in consideration of the assuming of obligations of the business of Cedarine Allen by the Cedarine Allen Company, have sold, transferred assigned, and set over, and hereby do sell, transfer, assign, and set over unto the Cedarine Allen Company, of Clinton, N.Y., all my right, title, and interest in, to, and under all the accounts appearing on my books to my credit as Cedarine Allen; also all stock furniture, and machinery now at my place of business in Clinton, N.Y., as specified in the schedule hereto annexed and made a part hereof; also the good will of the business...