Prince Manuf'g Co. v. Prince S Metallic Paint Co.

• Decision Date: 04 October 1892
• Citation: 31 N.E. 990,135 N.Y. 24
• Parties: PRINCE MANUF'G CO. v. PRINCE S METALLIC PAINT CO.
• Court: New York Court of Appeals Court of Appeals

135 N.Y. 24

31 N.E. 990

PRINCE MANUF'G CO.

v.PRINCE S METALLIC PAINT CO.

Court of Appeals of New York.

Oct. 4, 1892.

Appeal from supreme court, general term, first department.

Action by the Prince Manufacturing Company against Prince's Metallic Paint Company to restrain the infringement of a trade-mark. From a judgment of the general term, (15 N. Y. Supp. 249,) reversing a judgment of the special term dismissing the complaint, defendant appeals. reversed.

Joseph H. Choate and John Frankenheimer, for appellant.

Frederic R. Coudert and John S. Davenport, for respondent.

ANDREWS, J.

It is undisputed that the title ‘Prince's Metallic Paint’ was first applied in the year 1858 by Robert Prince and Antoinette Price, his wife, to paint manufactured by them from iron ore obtained from a tract of land, comprising about 44 acres, owned by Antoinette Prince, situated in Carbon county, Pa., and upon which the mill and kilns in which the paint was manufactured was located. The product of the business was sold in packages, upon which a label was affixed, circular in form, and on the rim were printed the words, ‘Prince's Metallic Paint.’ It is also undisputed that in 1871, after the death of the original proprietors, the title to the 44 acres and to the business of manufacturing Prince's Metallic Paint, together with the right to use the label or trade-mark, was vested in one Bass, a son-in-law of Robert and Antoinette Prince, who in 1873 organized a company, under the name of ‘Prince's Metallic Paint Company,’ to carry on the business of manufacturing paint upon the premises, and that Bass and the company organized by him continued the business primarily carried on by Robert and Antoinette Prince until 1875, when the company was organized as a corporation, by the same name, under a general law of Pennsylvania, in which was vested the title which Bass had held to the ore bed and premises and to the business and trade-mark before referred to. The corporation conducted the business of manufacturing metallic paint on said land from ore obtained therefrom, and attached the label ‘Prince's Metallic Paint’ to the product, and sold the same under that name until 1879, when the corporation became insolvent. The corporation had meanwhile erected a new and larger mill than the original one, and on land several miles distant therefrom, in which up to the time of the insolvency of the corporation it had manufactured its paint, using, however, exclusively, ore taken from the Prince tract. In 1878 and 1879 all the real property of the corporation, viz., the 44 acres known as the ‘Prince Tract,’ and the land on which the new mill had been erected, was sold under foreclosure of mortgages thereon, and, through several mesne conveyances, title to one half of the Prince tract and to the new mill became, in 1879, vested in the plaintiff, the Prince Manufacturing Company, also a Pennsylvania corporation, organized in that year, and in which Abraham C. Prince and David Prince were, and ever since have been, the principal stockholders. The Prince Manufacturing Company, immediately upon its organization, entered upon the business of manufacturing metallic paint from ore taken from the Prince tract and from other lands in Carbon county, leased by the corporation, and sold the product under the label ‘Prince's Metallic Paint,’ except that paint which was manufactured in a mill on one of the leased tracts, in which a brand of paint known as ‘Poco Metallic Paint’ had been previously manufactured, was, when customers desired, and when orders were received therefor, branded by the plaintiff as ‘Poco Metallic Paint,’ instead of ‘Prince's Metallic Paint.’ The plaintiff continued to conduct the business and to use the ‘Prince’ lable, claiming the right so to do, without interference, from 1879 to 1888, when certain creditors of the Prince's Metallic Paint Company of 1875 caused a sale to be made of the franchises of that corporation upon execution under a statute of Pennsylvania, and became the purchasers, and proceeded to reorganize the corporation under the original name, pursuant to the authority given by the statute, and the new corporation claims to own the label or trade-mark ‘Prince's Metallic Paint’ as successor of the corporation of 1875, and, although it has not conducted the business of manufacturing paint, nevertheless permits Rutherford and Barclay, who are engaged in the business, to affix the label to their packages.

The plaintiff and the defendant severally claim exclusive title to the label, and the right to use it upon packages of metallic paint. Each claim title under the Prince's Metallic Paint Company of 1875. The plaintiff claims title from several distinct sources: First. By reason of its ownership of the original mine and works of Robert and Antoinette Prince, derived under the foreclosure sales. Second. As transferee of the purchaser of the trademark on a sale under an execution against the Prince's Metallic Paint Company, issued in 1879, under which the trade-mark was sold eo nomine, and which sale is claimed to have been authorized by a statute of Pennsylvania. Third. Under an agreement made with Bass, the president of the corporation of 1875, and subsequently ratified by the corporation. The defendant denies the title of the plaintiff, and rests its right to the label and trade-mark exclusively upon the effect of the sale and purchase of the franchises of the corporation of 1875, made in 1888, before referred to, and the reorganization proceedings; the claim being that the trade-mark, with the right to manufacture Prince's Metallic Paint, passed to the purchasers of the franchises as incident thereto, together with the right to reorganize the corporation under the original name.

The judgment dismissing the complaint, rendered at special term, was placed by the learned judge upon the failure of the plaintiff to establish any exclusive right to the use of the trade-mark lable upon its goods. The order of the general term, reversing the judgment of the special term, proceeded upon the contrary view of the question of title, and the court held that the evidence established the title claimed by the plaintiff. We feel compelled to concur in the judgment of the special term dismissing the complaint, on the ground that, assuming that the plaintiff had the exclusive right to use the label ‘Prince's Metallic Paint,’ it has by its own conduct, in the misuse of the trade-mark of label, forfeited any right to apply to the court for protection against its wrongful appropriation by others. This defense was set up in the defendant's answer. Whatever contradiction may be found in the record as to other facts, there is one which admits of no dispute, and that is that from 1858, the year in which the manufacture of metallic paint was established by Robert and Antoinette Prince, until the incorporation of the plaintiff in 1879, the label ‘Prince's Metallic Paint’ had been exclusively applied-first, by the originators of the article, and subsequently, after their death, by their successors in the business-to paint made from ore taken from the so-called original ‘Prince Tract’ of 44 acres. The label, in its natural and primary signification, indicates the nature of the article to which it is attached and also the producer. The words ‘Metallic Paint,’ standing alone, could not be appropriated as a trade-mark, since they constitute the proper designation of the article by its appropriate name. But the word ‘Prince,’ indicating the manufacturer, identified the article to which the label was attached as that produced by him, and no person of a different name could stamp it upon a similar commodity. But the originators of the label, who seem also to have originated the manufacture of metallic paint from iron ore, began to claim that the superior quality of their product was owing to the peculiar quality and purity of the ore found in the mine on their tract of 44 acres, from which the paint was manufactured, and that it produced a much better quality of paint than could be produced from ore taken from any other part of the same vein. It was claimed that the paint manufactured by rival manufacturers from ore taken from other parts of the vein, known as ‘Lawrence Metallic Paint,’ ‘Poco Metallic Paint,’ and ‘Lehigh Metallic Paint,’ was inferior in color and quality to the ‘Prince's Metallic Paint’ by reason of the inferiority of the ore from which it was made. These claims were put forth to the trade, and the evidence leaves no room to doubt that at the time of the incorporation of the plaintiff in 1879, and its acquisition of the original Prince tract, the credit which the article ‘Prince's Metallic Paint’ had acquired in the market was owing in part to the belief of the trade that the ore from the Prince mine was superior to all other ore in Carbon county. The label or trademark came to have a broader meaning than it originally possessed, and, when attached to packages of paint, indicated not only that the paint was made by ‘Prince,’ or his successors in business, but also...