Filley v. Fassett

• Court: Missouri Supreme Court
• Writing for the Court: CURRIER
• Citation: Filley v. Fassett, 44 Mo. 168 (Mo. 1869)
• Decision Date: 31 March 1869
• Parties: GILES F. FILLEY, Respondent, v. ALONZO D. FASSETT et al., Appellants.

44 Mo. 168

GILES F. FILLEY, Respondent,

v.ALONZO D. FASSETT et al., Appellants.

Supreme Court of Missouri.

March Term, 1869.

Appeal from St. Louis Circuit Court.

The facts are fully set out in the opinion of the court.

Chas. LeR. Moss, for appellants.

I. A silent acquiescence in use or imitation of a trade-mark, even for a short period, has been deemed sufficient ground for withholding equitable relief. (Flavel v. Harrison, 10 Hare, 467; Gillott v. Esterbrook, 47 Barb. 455.)

II. The respondent can have no exclusive abstract right to the use of the name “Charter Oak,” and he can have no property therein, because, before he used it in the combination which composes his trade-mark, it was a name in general use in language by the public. (Burnett v. Phalon, 9 Bosw. 192; Upton's Trade-Marks, 177, 210; Eddleston v. Vick, 23 Eng. Law & Eq. 53, 54; Collins Co. v. Cowen, 3 K. & J. 428; Carnham v. Jones, 2 Ves. & Beav. 218; Knott v. Morgan, 2 Keene, 213; Fettridge v. Wells, 13 How. Pr. 388; Perry v. Truefill, 6 Bea. 73; Gillott v. Esterbrook, 47 Barb. 462, 464; Clark v. Clark, 25 Barb. 675; Comstock v. White, 18 How. Pr. 421; Corwin v. Daley, 7 Bosw. 225; Wolfe v. Goulard, 18 How. Pr. 64; Stokes v. Landgraft, 17 Barb. 608; Amos. Man. Co. v. Spear, 2 Sandf., S. C., 606; Kendall v. Davis, 2 R. I. 566.)

III. The name “Charter Oak” does not indicate the origin or ownership of the article manufactured; (see Partridge v. Menck, 2 Barb. Ch. 103; Stokes v. Landgraft; Wolfe v. Goulard, 18 How. Pr. 64; Corwin v. Daley; Amos. Man. Co. v. Spear; Gillott v. Esterbrook; Upton's Trade-Marks, 136;) and it is only as such a name is effectual in performing the office of the name and address of the manufacturer that it contains the essentials necessary to such protection. (Upton's Trade-Marks, 99, 102, 178, 179.)

IV. Appellants having complied with the provisions of the statutory regulations (Gen. Stat. 1865, p. 912), are regulated thereby. (People v. Lomax, 6 Abb. 39; Wheeler v. City of Chicago, 24 Ill. 107; Walker's Am. Law, 51; Kent's Com. §§ 472-3, note; id. § 509; Moore v. Vance, 1 Ohio, 1; McVey v. University, 11 Ohio, 136; Commonwealth v. Cooley, 10 Pick. 37; Commonwealth v. Marshall, 11 Pick. 351; Lakin v. Lakin, 2 Allen, 46; Bartlett v. King, 12 Mass. 562; Ellis v. Payne, 1 Pick. 45; Commonwealth v. Chapin, 5 Pick. 243; Nichols v. Squire, id. 168; Upton's Trade-Marks, 68-9; Dennis on Stat. 523, 530, 531, 638; Smith v. Banker, 3 How. Pr. 142; Church v. Rhodes, 6 How. Pr. 281; Dean of Ely v. Bliss, 5 Beav. 582; Moore v. Westervelt, 3 Sandf. 765; Smith v. Lockwood, 13 Barb. 209; Dudley v. Mayhen, 3 N. Y. 9.)

S. S. Boyd, for respondent.

I. The recognition by courts of equity of the right of a party to his trade-mark and its consequent protection by injunction are now so firmly established by the highest authority, as a proper subject for the exercise of the restraining control of a court whenever violated, that it is no longer an open question. (Amoskeag Manufacturing Co. v. Spear, 2 Sandf., S. C., 606. But what is a trade-mark? It may be “either the name of the maker or symbolical.” (2 R. I. 569.) “All marks, forms, or symbols appropriated as designating the origin or ownership of the thing to which affixed” (2 Sandf., S. C., 606; 17 Barb., S. C., 609), or even a “name, when used as indicating the true origin or ownership of the article.” (13 How. Pr. 387; 18 How. Pr. 67; 4 Abb. Pr. 158; 17 Barb. 608; 47 Barb. 463, 466; Howard v. Henriques, 3 Sandf., S. C., 726; Marsh v. Billings, 7 Cush. 322; Burnett v. Phalon, 9 Bosw. 192; Howe v. Howe Machine Co., 50 Barb. 236; Newman v. Alvord, 49 Barb. 599; Gillott v. Esterbrook, 47 Barb. 471; Knott v. Morgan, 2 Kenne, 220; Sykes v. Sykes, 3 Barn. & Cress. 543; Clement v. Maddick, 22 Law Rep. 428; Remsen v. Bentall, 3 Law Jour., N. S., 161; Seixo v. Provezende, 1 Ch. App. Cas. 184; Barrows v. Knight, 6 R. I. 434; McAndrews v. Bassett, 10 Jur., N. S., 550; Pidding v. How, 8 Sim. 477; Goutt v. Aleplogliu, 6 Beav. 69; Croft v. Day, 7 Beav. 89; Messerole v. Tynberg, 4 Abb. Pr., N. S., 414; Ainsworth v. Walmsley, 1 Law Rep. 254; Farina v. Silverlock, 39 Eng. Law & Eq. 517; Williams v. Johnson, 2 Bosw. 1; Newman v. Alvord, 49 Barb. 592; 4 Abb. Pr. 158.) A fortiori, may a name, “Charter Oak,” which is as far removed as can be imagined from any actual representation of the article to which it is applied, be sustained as a trade-mark for a cooking stove, when, in addition, it is coupled with a device of oak leaves, which, of itself, can have no connection with or possible significance in relation to such article.

II. Even if knowledge on the part of respondent of infringe ments were shown, yet there is here no waiver of any right, such implied consent being at any time revocable. (Gillott v. Esterbrook, 47 Barb. 471.) And the fact that all these parties have used this trade-mark can not avail these appellants. (Taylor v. Carpenter, 3 Sto. 462; 2 Wood & Min. 8; Coates v. Holbrook, 2 Sandf. Ch. 596.)

III. The statute concerning trade-marks (Gen. Stat. 1865, p. 912) is remedial, providing only a more efficient and summary remedy for the party aggrieved, and neither in terms nor by necessary implication depriving him of his old remedy at common law, and consequently is but cumulative, leaving the party to proceed either at common law or upon the statute, as he may elect. (Sedgw. on Stat. and Con. Law, 93; Clark v. Brown, 18 Wend. 220.) This statute is by its very terms limited in its application to goods “manufactured or prepared” in this State.

IV. There was an infringement on the part of the appellants in using the name ““Charter Oak,” even without the device of oak leaves. (Amoskeag Manufacturing Co. v. Spear, 2 Sandf., S. C., 607-9; Gillott v. Esterbrook, 47 Barb. 469; Clark v. Clark, 25 Barb. 76, 79; Eddleston v. Vick, 23 Eng. Law & Eq. 53-4; Sykes v. Sykes, 3 Barn. & Cress. 543; Coates v. Holbrook, 3 Sandf. Ch. 586; Seixo v. Provezende, 1 Ch. App. Cas. 194; Coates v. Holbrook, 2 Sandf. Ch. 597.) It is not necessary to prove intentional fraud on the part of the defendants to warrant equitable relief. (Coffeen v. Brunton, 4 McLean, 519; Dale v. Smithson, 12 Abb. Pr. 238; Partridge v. Menck, 2 Barb. Ch. 103.)

CURRIER, Judge, delivered the opinion of the court.

In 1851 the plaintiff employed N. S. Vedder, an extensive stove-pattern maker of Troy, New York, to design and construct for him a set or series of cooking stove patterns. The patterns were made as ordered, and in a form which resulted in the production of a cooking stove of a new and improved interior arrangement and construction, for which Vedder obtained letters patent, which he assigned to the plaintiff. The plaintiff originated and applied to the stove the name ““Charter Oak,” which was so formed upon the patterns as to produce the name upon the manufactured article, in combination with a sprig of oak leaves. The name and device was employed to distinguish and designate cooking stoves of the plaintiff's manufacture. The manufacture and sale commenced the following year, and has been followed up continuously ever since; the sales from 1852 to 1867, both years inclusive, amounting to 119,226. These stoves were distributed broadly through the western and southern country, and appear to have been highly popular and successful.

The testimony shows that stoves are usually known in the trade by their distinctive names and designations, such as “Excelsior,” “Climax,” ““Empire,” “Charter Oak,” etc.; and that they are advertised and bought and sold by such names and designations; that when a stove is favorably received, and acquires popularity in the market and with those who use it, the peculiar name by which it is known and distinguished becomes a matter of importance to the manufacturer, and of great value to him in the prosecution of his business. The extent of the plaintiff's sales of his “Charter Oak” cooking stove indicates its reputation and popularity, and the consequent value to him of the name by which it was known.

But the answer denies that the plaintiff first appropriated and used that name in such connection as indicating the source and origin of the article to which it was applied, and denies that his use of it has been either exclusive or uninterruptedly continuous, and avers that the contrary of all this is true. Upon these issues a large mass of testimony was taken, from which the following facts are deduced: 1. That the plaintiff's appropriation of the name “Charter Oak,” as already detailed, was prior in point of time to any similar use of that name by any other parties. The testimony is clear and entirely satisfactory on this point. 2. That notwithstanding such appropriation by the plaintiff, different manufacturers in Cincinnati, and in that region, at different times subsequently to 1852, applied the same name to cooking stoves of their manufacture, but without the consent of the plaintiff in any instance, and without his knowledge, except in two instances. The first of these two occurred in 1854, and was at once checked by the plaintiff, and abandoned by the Cincinnati manufacturer on being apprised of the plaintiff's rights. The other is that of the manufacture of the stoves, the sale of which, with the plaintiff's alleged trade-mark upon them, is sought to be enjoined by this suit; and the suit was commenced immediately after the facts came to the knowledge of the plaintiff. 3. That J. S. &. M. Peckham, of Utica, Oneida county, New York, manufactured in Utica a “Charter Oak” cooking stove, from 1852 to 1857, and then abandoned it, and never after resumed the manufacture of that particular stove. The Peckhams purchased their patterns for this stove of said N. S. Vedder, Filley consenting to the sale on condition that certain alterations were first made in the patterns. This transaction does not appear to have included specifically the right to use the plaintiff's trade-mark, nor does it appear that Filley was ever made aware...