Dr. A. Reed Cushion Shoe Co. v. Frew

• Decision Date: 06 January 1908
• Docket Number: 291.
• Citation: 158 F. 552
• Parties: DR. A. REED CUSHION SHOE CO., Limited, v. FREW et al.
• Court: U.S. District Court — Western District of New York

158 F. 552

DR. A. REED CUSHION SHOE CO., Limited, v. FREW et al.

No. 291.

United States Circuit Court, W.D. New York.

January 6, 1908

On Settlement of Decree, February 14, 1908.

The proofs show that the defendant's shoe is styled 'The Improved Easy Cushion Sole Shoe,' and upon the cards labels, shoe straps, and advertisements are printed the words 'Dr. A. Reed Patentee.' Upon the labels and boxes is printed the following:

'Do not confuse this shoe with the shoes made under the former set of patents taken out by Dr. Reed, and which have been called the 'Dr. Reed Cushion Shoe.' Our shoes are decidedly an improvement over those made under these old patents'--

and on the inside of some of the defendant's shoes appear the following:

'This shoe is m'f'd under my new improved patents. Do not confuse with my old patents. Dr. A. Reed, Patentee.'

No claim is made of similarity of labels or style of boxes or dress but complainant's position is that the fraudulent use by the defendants of Dr. Reed's name upon their shoes and advertising medium had the effect of simulating complainant's cushion shoes, and misleading the intending buyer. The defendants contend that they manufacture and vend an improved cushion shoe under a later patent issued to Dr. Reed, and under a registered trade-mark owned by the E-Z Shoe Company, of which Dr. Reed is the president and a stockholder, and that they have differentiated their shoes and advertisements, as above stated, to negative any deception or intention to palm off their goods for those of complainant. Evidence was given by the complainant to show, on the contrary, that the appropriation by the defendants of the trade-name confused the buyer, and misled him into buying the defendant's shoe, which sold for $3.50 per pair, when he in fact intended buying that of complainant's make. It was proven that not infrequently customers inquire at shoe stores for the Dr. Reed shoe or the Reed Cushion shoe without any other designation, intending to buy the genuine Reed shoe, and such name or designation either singly or in connection with the word 'patentee,' being visible upon defendant's labels, trade-mark, and shoe strap, sales were liable to be made, and in fact were made, of the spurious article.

In these circumstances, is the appropriation and use of the name 'Dr. A. Reed' or its equivalent designations by the defendants an invasion of the complainant's prior acquired right? It is quite true that an individual may use his name in a business conducted by him, though some other person or firm engaged in similar business has a prior right to such use, and this rule obtains even if confusion results from such dual use, provided it is not done in unfair competition. But an individual using his surname to carry on his business where a similar name has been appropriated by another engaged in the same business must do so in absolute good faith. He must use his name honestly, and without intending to deceive or induce the public to buy his goods for those of another. Concededly there can be no valid trade-mark of a personal name. Howe Scale Co. v. Wyckoff Seamans, etc., Co., 198 U.S. 118, 25 Sup.Ct. 609, 49 L.Ed. 972. But, unquestionably, a prior right to a trade-name under which a business is conducted and good will established, even if it be the name of an individual, will be protected against another of the same name who uses it to pass off a fraudulent imitation as the goods of the one first acquiring a right to its use. R. W. Rogers Co. v. Wm. Rogers Mfg. Co., 70 F. 1017, 17 C.C.A. 576. The case of Howe Scale Co., supra, upon which reliance is placed by the defendants, is thought distinguishable. There, the defendant Remington in good faith used his surname to promote the sale of a typewriter manufactured by the firm of which he was a member. He used it in connection with the name of Sholes, calling the machine the Remington-Sholes typewriter. He did nothing to create confusion or palm off his machine as that of the Remington manufacture, nor did an assignment by him of the right to use the trade-name 'Remington' enter into the case. The Supreme Court held there could be no exclusive appropriation by any one of a surname as against others having the right to use it. Such, however, is not this case. Dr. Reed has never been personally engaged in the manufacture and sale of his patented shoes. True, his name is used as an officer in connection with the business of the defendant, the E-Z Shoe Company, but I think in view of the evidence that the position of the defendants cannot be regarded in any other light than if Dr. Reed were totally unconnected with the defendant corporation. He cannot assign or transfer the use of a trade-name, which he had previously assigned to complainant, in connection with the manufacture and sale of cushion shoes, to enable the defendants to fraudulently divert the trade of the complainant. It is, however, insisted that they have marked their shoes to avoid the possibility of any one, buying with...