Henderson v. Peter Henderson & Co.

• Decision Date: 08 December 1925
• Docket Number: No. 3561.,3561.
• Citation: 9 F.2d 787
• Parties: HENDERSON v. PETER HENDERSON & CO.
• Court: U.S. Court of Appeals — Seventh Circuit

9 F.2d 787 (1925)

HENDERSON v. PETER HENDERSON & CO.

No. 3561.

Circuit Court of Appeals, Seventh Circuit.

December 8, 1925.

Luther Johns, of Chicago, Ill., for appellant.

Gifford & Scull and George F. Scull, all of New York City, and Edward S. Rogers and Allen M. Reed, all of Chicago, Ill., for appellee.

Before ALSCHULER, PAGE, and ANDERSON, Circuit Judges.

ALSCHULER, Circuit Judge (after stating the facts as above).

Appellant contends that the registration is void, asserting that the proofs submitted to procure it did not comply with the statute, first, in that the oath respecting exclusive use is on the knowledge and belief of the affiant. We do not see how in strictness it could be made otherwise, for technically no one could absolutely know that in some part of the United States there was not another, during the time in question, applying to his seeds the name "Henderson." It cannot be presumed that the statute was such that it was impossible to give it effect through requiring proof which in strictest truth the registrant could not make. The second objection is that the statement as to exclusive use was in the alternative, i. e., that the use was by applicant or his predecessors from whom title was derived, without statement as to who the successors were; facts which, if appearing, might show that during part of the time in question the use was not exclusive, but was used contemporaneously by more than one of the registrant's predecessors in title. The obvious reply would seem to be that the proof in this respect is made in the words of the statute, and, if the form employed admits of such construction, the statute also would admit of it, and would authorize registration under such circumstances. In other words, the required statutory exclusiveness would be exclusiveness respecting all of those, whether one or more, who used it within the statutory time, and whose title had passed to the registrant. The third contention is that, in stating the requirement of the time of use, the registrant gave 40 years as the time it was used in its business, whereas the corporate registrant had not so long existed, but part of the time the use was by the two preceding successive partnerships. We do not think a registration otherwise good should be defeated by so strained a construction of the statute; and, respecting all of the objections, it may be said that no evidence was offered to show existence of any of the supposed possibilities which it is contended the proof for registration did not negative, and no attempt was ever made to cancel the registration. Besides, section 16 of the act (Comp. St. § 9501) provides that registration under the act shall be prima facie evidence of ownership. We are satisfied that the prima facie force of this registration has not been overcome.

The trade-mark registration being effective, was it transgressed by appellant's use of it? We think it clear that under the circumstances the employment of the name "Henderson's Seed Store" was in no sense necessary to insure to appellant the full opportunity to make use of his name in connection with his seed business. On principle as well as authority it is plain that he may not make such unnecessary use of it as will interfere with the trade rights which another had theretofore lawfully secured. Without entering into prolonged discussion of the cases, we refer to Waterman Co. v. Modern Pen Co., 235 U. S. 88, 35 S. Ct. 91, 59 L. Ed. 142, and Thaddeus Davids Co. v. Davids Mfg. Co., 233 U. S. 461, 34 S. Ct. 648, 58 L. Ed. 1046, Ann. Cas. 1915B, 322, in the Supreme Court, and Chickering, etc., v. Chickering & Sons, 215 F. 490, 131 C. C. A. 538, in this court, as indicating what our conclusion must be on the broad proposition of appellant's liability.

It is stressed in appellant's brief...