Petrolia Mfg. Co. v. Bell & Bogart Soap Co.

• Citation: 97 F. 781
• Parties: PETROLIA MFG. CO. v. BELL & BOGART SOAP CO. et al.
• Decision Date: 30 August 1899
• Court: U.S. District Court — Southern District of New York

97 F. 781

PETROLIA MFG. CO. v. BELL & BOGART SOAP CO. et al.

United States Circuit Court, S.D. New York.

August 30, 1899

Francis M. Eppley, for defendants Bell & Bogart Soap Co., W. H. Bell and W. H. Bogart.

Ruford Franklin, for defendant J. H. Griffin.

TOWNSEND District Judge.

Demurrer to bill for infringement of the registered trade-mark 'Coal Oil Johnny's Petroleum Soap,' commonly known as 'Coal Oil Johnny's Soap.' Defendants' brief states 12 points in support of the demurrer, which will be stated and considered in their order.

Point 1:

'The plaintiff is not entitled to protection in this court, for the reason that the words 'Coal Oil,' 'Petroleum,' 'Nature's Petroleum Gift,' contained in the trade-mark, are generic terms or words in common use, and are employed by plaintiff to indicate and describe to the public the ingredients, characteristics and quality of the soap.'

The complainant is not entitled to claim, and does not claim, any exclusive right to the use of the adjective 'Petroleum' or 'Coal Oil,' standing alone but to the fictitious or fanciful name 'Coal Oil Johnny,' invented and adopted by its predecessor. That such arbitrary names, when so applied to distinguish one's manufacture from that of others, are valid as trade-marks, hqs been decided in several cases. Thus 'Roger Williams' has been applied to cotton cloth, 'Bismarck' to paper collars, and 'Falstaff' to tobacco. Browne, Trade-Marks, Sec. 216. That names suggestive of the nature or composition of articles may be valid trade-marks, if not actually descriptive, and may be thus adopted or appropriated, is settled. Thus, 'Cocoaine' was applied to coconut oil, 'Cottolene' to cottonseed oil, and 'Maizena' to cornstarch. N.K. Fairbank Co. v. Central Lard Co. (C.C.) 64 F. 133; Manufacturing Co. v. Myers (C.C.) 79 F. 87. The case of Caswell v. Davis, 58 N.Y. 234, cited and relied on by defendants' counsel, as distinguished and explained by the court of appeals in Keasby v. Chemical Works (N.Y. App.) 37 N.E. 476, affords no support to his contention.

Point 2:

'The plaintiff is not entitled to equity, for the reason that it is guilty of misrepresentation, and cannot come into court with clean hands.'

The principal statements in defendants' brief in support of this point are not found in the complaint. The demurrer admits the allegation of the bill that petroleum is one of the ingredients used in the manufacture of the soap. The trade-mark does not necessarily indicate that petroleum is the largest ingredient in said soap.

Point 3:

'The plaintiff has not an exclusive right to the matter alleged in the bill or such interest in the subject-matter of the action as to authorize it to bring this suit.' Defendants' main contention here is that as it is alleged that the Coal Oil Johnny Soap Company has not ceased to exist, and it necessarily has the right to manufacture soap and to use its own name in so doing, therefore complainant has not and cannot have exclusive right to use of said name. It appears from the bill that said company assigned to said receiver all right, title, and interest in said trade-mark, and that said right, title, and interest are now in complainant and said Griffin. It appears from the bill that the Coal Oil Johnny Soap Company has been enjoined from 'dealing in soap under the name, brand, or trade-mark of 'Coal Oil Johnny's Petroleum Soap."

Point 4:

'The transfer by Jenkins of the trade-mark to the Coal Oil Johnny Soap Company, by assignment, without including the good will or right to use the name of Maross Jenkins, or right to manufacture or sell the soap in question, or without a description of the product, formula, or transfer of the machinery, in conjunction with the assignment, carried no property rights with it.'

The bill alleges that Jenkins was the inventor of the trade-mark, and a producer of, and dealer in, said soap, or who had caused said soap to be manufactured or produced for him, and that he 'organized a corporation, under the laws of the state of New Jersey, named the 'Coal Oil Johnny Soap Company,' for the purpose of manufacturing and selling said soap,' and assigned said trade-mark to said company, subject to a certain condition subsequent. This is not a sale of a trade-mark, as distinct property separate from the article or the manufacturer, but a transfer by the producer of the right to use the trade-name in connection with the corporation and place of business which he has organized and established to manufacture and deal in the article. In Chemical Co. v. Meyer, 139 U.S. 547, 11 Sup.Ct. 628, the supreme court, reviewing Kidd v. Johnson, 100 U.S. 617, and Chadwick v. Covell, 151 Mass. 190, 23 N.E. 1068, cited by defendant, says:

'There are a few cases indicating that the mere right to use a name is not assignable, notably Chadwick v. Covell, 151 Mass. 190, 23 N.E. 1068, but none that it may not be assigned to an outgoing partner, or to a successor in business, as an incident to its good will.'

This case also answers the further claim under this point that the trade-mark is a personal one.

Point 5:

'The defendants are not charged in the bill with unfair business competition by palming off their goods as...