Guth v. Guth Chocolate Co.

• Decision Date: 04 May 1915
• Docket Number: 1327.
• Citation: 224 F. 932
• Parties: GUTH v. GUTH CHOCOLATE CO.
• Court: U.S. Court of Appeals — Fourth Circuit

224 F. 932

GUTH v. GUTH CHOCOLATE CO.

No. 1327.

United States Court of Appeals, Fourth Circuit.

May 4, 1915

George W. Lindsay and Richard B. Tippett, both of Baltimore, Md for appellant.

Laurence A. Janney, of New York City (Emery, Booth, Janney & Varney of New York City, on the brief), for appellee.

Before KNAPP, Circuit Judge, and WADDILL and CONNOR, District Judges.

KNAPP Circuit Judge.

We are satisfied with the disposition of this case by the court below and need only indicate our reasons for affirming the judgment.

1. It is well settled that a person who has adopted and used his surname as a trade-mark, or trade-name, may transfer the same with the good will of a business and thereby divest himself of the right to use his name in connection with such a business. In Russia Cement Co. v. Le Page, 147 Mass 206, 17 N.E. 304, 9 Am.St.Rep. 685, a case of marked similarity to the one at bar, the rule is stated as follows:

'One who has carried on a business under a trade-name, and sold a particular article in such a manner, by the use of his name as a trade-mark or a trade-name, as to cause the business or the article to become known or established in favor under such a name, may sell or assign such trade-name or trade-mark when he sells the business or manufacture, and by such sale or assignment conclude himself from the further use of it in a similar way. * * * A person may be enjoined, therefore, from using his own name as a description of an article of his own manufacture, and from selling the article under that particular name, when he has parted with the right thus to apply it. * * * It is not upon the ground of the invasion of the trade-name adopted by another, but by reason of the contract he has made, that he is deprived of the right himself to use his name as all others of the same name may use theirs.'

The kindred case of Le Page v. Russia Cement Co., 51 F. 943, 2 C.C.A. 557, 17 L.R.A. 354, dealing with substantially the same facts, states the proposition thus:

'It is equitable that a manufacturer or dealer, who has given reputation to any article, should have the privilege of realizing the fruits of his labors by transmitting his business and establishment, with the reputation which has attached to them, on his decease to his legatees or executors, or during his lifetime to purchasers; and it is also in accordance with the principles of law, and with justice to the community, that any trade-mark, including a surname, may be sold with the business or the establishment to which it is incident.'

These cases have been frequently cited with approval, as, for example, in Royal Baking Powder Co. v. Royal, 122 F. 337, 346, 58 C.C.A. 4998 508, where Judge Lurton, speaking for the Sixth Circuit Court of Appeals, says:

'Where one has used his own name as a trade-name, and then parted with it, he may, of course,

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