A. B. Andrews Co. v. Puncture Proof Footwear Co.

• Decision Date: 26 March 1909
• Docket Number: 245.
• Citation: 168 F. 762
• Parties: A. B. ANDREWS CO. et al. v. PUNCTURE PROOF FOOTWEAR CO.
• Court: U.S. District Court — Eastern District of Pennsylvania

168 F. 762

A. B. ANDREWS CO. et al. v. PUNCTURE PROOF FOOTWEAR CO.

No. 245.

United States Circuit Court, E.D. Pennsylvania.

March 26, 1909

O Ellery Edwards, Jr., for complainants.

Sundheim & Fleisher, for respondent.

J. B McPHERSON, District Judge.

This is an action brought to redress unfair competition in the use of a trade-name-- 'Puncture Proof.' As the name has not been registered, Act March 3, 1881, c. 138, 21 Stat. 502, 1 Supp.Rev.St. 322 (U.S. comp. St. 1901, p. 3401), does not apply, and the jurisdiction of the Circuit Court is to be tested by the rules that govern in the ordinary suit at law or in equity. Moreover, even if the name were registered, the bill does not allege that it was used, or to be used, on goods intended to be transported to a foreign country or in commerce with the Indian tribes, and therefore the Circuit Court does not acquire jurisdiction under section 7 of the statute. Ryder v. Hold, 128 U.S. 525, 9 Sup.Ct. 145, 32 L.Ed. 529; Prince's Paint Co. v. Prince Mfg. Co. (C.C.) 53 F. 493. If the bill can be maintained, there must be diversity of citizenship, and the requisite amount must appear to be involved.

So far as the amount in controversy is concerned I shall assume that the averments of the bill are sufficient; but, when the element of diverse citizenship is sought for, it seems to be plain that the needful diversity does not appear. On the contrary, the bill sets forth affirmatively that one of the complainants is a citizen and resident of Pennsylvania, while the defendant is a Pennsylvania corporation. The complainants are the A. B. Andrews Company, a New York corporation, and the Humpty Dumpty Stocking Company, a partnership created under the laws of Tennessee and averred to be composed of two persons, Frank L. Chipman, a citizen of Pennsylvania, and a resident of Easton, in the county of Northampton, and Frank Weiss, a citizen and resident of Tennessee. Apparently to avoid the consequences of this averment, the bill goes on to declare in paragraph 3 that more than a year ago, and before the present controversy arose, by a certain contract in writing--

'the A. B. Andrews Company, one of the complainants herein assumed the entire right and interest, but not title, to all the trade-makrs of the Humpty Dumpty Company and the good will of the business, the title to said marks to remain in the Humpty Dumpty Stocking Company until certain royalties provided for in the contract equaled $4,000, at which time the titles of all trade-marks are to vest in the said A. B. Andrews Company.'

It is evidently supposed that because of this contract the Humpty Dumpty Stocking Company is a merely nominal party, and that the citizenship of the partners may therefore be disregarded. Wilson v. Oswego Township, 151 U.S. 64, 14 Sup.Ct. 259, 38 L.Ed. 70; Stewart v. B. & O.R.R. Co., 168 U.S. 449, 18 Sup.Ct. 105, 42 L.Ed. 537. I am unable to assent to this view. The contract between the A. B. Andrews Company and the Humpty Dumpty Stocking Company concerning the trade-name in question is appended to the bill, and provides, inter alia, as follows:

'Whereas, the Humpty Dumpty Stocking Company has been and now is engaged in the business of selling hosiery under the brand known to the trade as 'Humpty Dumpty' hosiery, which includes other names, such as * * * 'Puncture Proof.' * * * For the purposes of this contract all of the said trade-names are referred to under the one name of 'Humpty Dumpty.'

'And whereas, the said Frank A. Weiss and Frank L. Chipman are desirous of preserving the trade-marks, trade-names, and good will of their business for the A. B. Andrews Company, a corporation created by and existing under the laws of the state of New York: Now, therefore, * * * it is mutually agreed:

'First. That the parties of the first part assign the good will of the Humpty Dumpty Stocking Company to the party of the second part.

'Second. That when the sum of $4,000 has been paid to the parties of the first part by the party of the second part, as provided for under this agreement, they will transfer all their right, title, and interest in and to the registered trade-mark 'Humpty Dumpty' and to the rights in and to the trade-names as specified above, heretofore used by them, whether registered as trade-marks or not.

'Third. All plates, copyrights, post cards, booklets, and literature used in connection with or descriptive of hosiery sold by the Humpty Dumpty Stocking Company are to become the property of the party of the second part,

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