Eskimo Pie Corporation v. National Ice Cream Co.
| Decision Date | 13 June 1928 |
| Docket Number | No. 4996.,4996. |
| Citation | 26 F.2d 901 |
| Parties | ESKIMO PIE CORPORATION v. NATIONAL ICE CREAM CO. |
| Court | U.S. Court of Appeals — Sixth Circuit |
Henry B. Floyd, of Chicago, Ill. (Edward P. Humphrey and Humphrey, Crawford & Middleton, all of Louisville, Ky., on the briefs), for appellant.
Joseph Dugan, of Washington, D. C. (Eugene R. Attkisson, of Louisville, Ky., on the brief), for appellee.
Before DENISON, MOORMAN, and KNAPPEN, Circuit Judges.
In an infringement suit brought by appellant in the court below for infringement of patent 1,404,539, issued January 24, 1922, to Nelson, for the confection which has received the trade-name "Eskimo Pie," the trial court denied a preliminary injunction, because the patent had not been adjudicated or complainant's rights otherwise sufficiently established. The only question presented by this appeal is whether the defendant, by having accepted a license under the patent, was estopped to question its validity.
The license was, in general, in customary form. Defendant conducted business under it for a brief period and then discontinued. For this default, and pursuant to the terms of the license, it was revoked by appellant. At a later period defendant began making a somewhat different form of product, and this suit was brought. By the familiar rule, the defendant, while operating under — or probably while retaining and claiming the right to operate under — the license, cannot be heard to deny the validity of the patent; but we do not understand it to be claimed that this estoppel by rule of law would persist after the license and all the licensee's rights thereunder were terminated. Appellant depends upon the express covenant found in the license that the licensee "will not test, contest, or deny the validity of the patent." Some other covenants in the license are expressly restricted to the term of the contract, but this one is not.
There is no occasion to doubt that a licensee may lawfully agree not to contest the patent at any time during its term, or that, even after such a license had been terminated by the licensor for the licensee's default, the rights which the licensee had acquired by the contract would have been a valid consideration for this unlimited agreement not to contest; but, to have that effect, the agreement should be in such express and clear words that the intent could not be doubtful. It is, of course, the usual rule that the mutual and reciprocal provisions of a contract...
To continue reading
Request your trial
-
De Cew v. Union Bag & Paper Corporation
...of Chicago v. Joseph, 7 Cir., 95 F.2d 444, 446, certiorari denied 304 U.S. 578, 58 S.Ct. 1049, 82 L.Ed. 1542; Eskimo Pie Corp. v. National Ice Cream Co., 6 Cir., 26 F.2d 901, 902. The ambiguity, if any, must be resolved against the party invoking the estoppel, especially where, as here, the......
-
Donald F. Duncan, Inc. v. Royal Tops Manufacturing Co.
...the validity of licensor's trademark expires with the license. Bucky et al. v. Sebo et al., 208 F.2d 304, 305; Eskimo Pie Corp. v. National Ice Cream Co., 6 Cir., 26 F.2d 901, 902. Plaintiff's contention relative to res judicata is based on the fallacious contention, as stated on brief, tha......
-
Professional Golfers Ass'n of America v. Bankers Life & Cas. Co.
...Donald F. Duncan, Inc. v. Royal Tops Manufacturing Co., supra; Bucky v. Sebo,208 F.2d 304 (2d Cir. 1953); Eskimo Pie Corp. v. National Ice Cream Co.,26 F.2d 901 (6th Cir. 1928); Amiesite Asphalt Co. v. Interstate Amiesite Co., 4 F.Supp. 504 (D.Del.1933). Others have refused to allow any sub......
-
Standard Register Co. v. American Sales Book Co., Equity No. 2078
...contest the patent during the term of the license. Steiner Sales Co. v. Schwartz Sales Co., 10 Cir., 98 F.2d 999; Eskimo Pie Corp. v. National Ice Cream Co. 6 Cir., 26 F.2d 901; United States v. Wayne Pump Co., D.C., 44 F.Supp. 949; United Shoe Machinery Co. v. Caunt, C.C., 134 F. 239; Phil......
-
The Public Policy Argument Against Trademark Licensee Estoppel and Naked Licensing.
...v. Royal Tops Mfg. Co., 343 F.2d 655 (7th Cir. 1965); Bucky v. Sebo, 208 F.2d 304 (2d Cir. 1953); Eskimo Pie Corp. v. Nat'l Ice Cream Co., 26 F.2d 901 (6th Cir. 1928)) as relates to no bar, (208.) Professional Golfers Assoc., 514 F.2d at 671. (209.) L.F.P.IP, Inc. v. Hustler Cincinnati, Inc......