Int'l Silver Co. v. Rogers

• Decision Date: 17 June 1907
• Citation: 67 A. 105,72 N.J.E. 933
• Parties: INTERNATIONAL SILVER CO. v. ROGERS.
• Court: New Jersey Supreme Court

67 A. 105

72 N.J.E. 933

INTERNATIONAL SILVER CO.

v. ROGERS.

Court of Errors and Appeals of New Jersey.

June 17, 1907.

Appeal from Court of Chancery.

Bill by the International Silver Company against William H. Rogers. Decree for defendant (63 Atl. 977), and complainant appeals. Reversed.

Edward A. & William T. Day, and John P. Bartlett, for appellant. Craig A. Marsh, for respondent

TRENCHARD, J. This is an appeal from a decree of the Court of Chancery. The suit is a continuation of the litigation heretofore carried on by the International Silver Company against the William H. Rogers Corporation, and reported in 66 N. J. Eq. 119, 57 Atl. 1037, and on appeal in 67 N. J. Eq. 646, 60 Atl. 187, 110 Am. St. Rep. 506. The decree in that case was directed against the William H. Rogers Corporation, and its officers and directors, and enjoined them from making and selling silver-plated flat ware under the corporate name of "Wm. H. Rogers Corporation," or under the name of "Wm. H. Rogers," or under any name of which the word "Rogers" is a part.

This suit has to do with occurrences since the rendition of that decree. After that decree, and on or about April 6, 1905, the Wm. H. Rogers Corporation changed its name to "Plainfield Silver Plate Company," and continued to carry on the business under its new name until May 25, 1905, when it went out of business. The defendant, who was in control of the stock of the company, and was its president, purchased from it all its unplated blanks, its machinery, tools, and fixtures of every kind, its lease on its office and factory, and proceeded to carry on the same business in which it had embarked, under his own name of W. H. Rogers. He now stamps his manufactured goods (his knives, forks, and spoons) with the words "W. H. Rogers, of Plainfield, N. J.," and marks his packages "not connected with any other Rogers." Upon this state of facts the complainant filed its bill of complaint, in the nature of a supplemental bill, against the defendant for an injunction, and the case came on before the Vice Chancellor on the bill, answer, and proofs taken in the cause and the record and testimony of the former case. The Vice Chancellor dismissed the bill. In its bill the complainant claims that the stamp which the defendant puts on his product, namely, the words "W. H. Rogers, of Plainfield, N. J.," tends to produce confusion in the trade to the injury of complainant's business, and to the wrong of the public, and the complainant asks that he be enjoined from the further prosecution of his business, unless he stamps his product in such a way as to make it plain that it is not manufactured by the original Wm. Rogers Company, to whose business the complainant was the successor.

The learned Vice Chancellor thought the injunction should not go, holding that the defendant was under no obligation to do anything more than use his own name fairly; that the evidence showed no fraud; and that the mere fact that a competitor is, or may be, injured, is not material. In that view we cannot concur. Assuming that every one has the absolute right to use his own name honestly in his own business, even though he may thereby incidentally interfere with and injure the business of another having the same name, he may not, in such use of his name, resort to any artifice, or do any act calculated to mislead the public as to the identity of the business firm or establishment, or of the article produced by them, and thus produce injury to the other beyond that which results from the similarity of name. Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118; Russia Cement Co. v. Le Page, 147 Mass. 206, 17 N. E. 304, 9 Am. St Rep. 685; Pillsbury v. Pillsbury, 24 U. S. App. 395, 64 Fed. 841, 12 C. C. A. 432; Croft v. Day, 7 Beav. 84; Holloway v. Holloway, 13 Beav. 209, Wotherspoon v. Currie, L. R. 5 H. L. 508; Howard v. Henriques, 3 Sandf. 725; Meneely v. Meneely, 62 N. Y. 427, 20 Am. Rep. 489; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537, 11 Sup. Ct. 396, 34 L. Ed. 997; Brown Chemical Co. v. Meyer, 139 U. S. 540, 11 Sup. Ct. 625, 35 L. Ed. 247; Coats v. Merrick Thread Co., 149 U. S. 562, 13 Sup. Ct. 966, 37 L. Ed. 847. The leading case is Singer Mfg. Co. v. June Mfg. Co., supra, in which Mr. Justice White, after affirming the doctrine above set forth, and citing the cases which support it, declared: "Where the name is one which has previously thereto come to indicate the source of manufacture of particular devices, the use of such name by another, unaccompanied with any precaution or indication, in itself amounts to an artifice calculated to produce the deception alluded to in the foregoing adjudications." That proposition finds support in the following cases: Howe Scale Company v. Wyckoff, Seamans & Benedict, 198 U. S. 118, 25 Sup. Ct. 609, 49 L. Ed. 972; Walter Baker & Co. v. Baker (C. C.) 87 Fed. 209; Centaur Co. v. Link, 62 N. J. Eq. 147, 49 Atl. 828; Chickering v. Chickering, 120 Fed. 69, 56 C. C. A. 475.

When this suit was originally before the court, the Vice Chancellor found that the name "Rogers" had acquired a secondary significance in connection with the manufacture of silverware. In his opinion, reported in 66 N. J. Eq. 120, 57 Atl. 1037, he uses this language: "The complainant is the successor of several companies which have been engaged for many years in the manufacture of silver-plated ware, and which all derive their title from three brothers of the name of Rogers, who were among the first, if not the first, to apply the art of electro-plating to its manufacture. They gained a reputation for their products, and the name 'Rogers' has acquired a secondary significance in connection therewith." That finding of fact is, in our judgment, fully warranted by the evidence. While a personal name may not constitute a technical trade-mark, yet, where an article has come to be known by that personal name, one may not use that name, even though it be his own, to palm off his goods as the goods of another who has first adopted it, and by which appellation the goods have come to be known, when the use of his own name for such purpose works a fraud. If he uses his own name, it must be so used as not to deprive others of their rights, or to deceive the public, and the name must be accompanied with such indications that the thing manufactured is the work of the one making it as would unmistakably inform the public of the...