Replogle v. Air-Way Co.
| Decision Date | 05 February 1923 |
| Docket Number | 1527. |
| Citation | 287 F. 765 |
| Parties | REPLOGLE v. AIR-WAY CO. |
| Court | U.S. Court of Appeals — District of Columbia Circuit |
Submitted January 8, 1923.
Rehearing Denied March 17, 1923.
D. B Replogle, of Berkeley, Cal., in pro. per.
C. W Owen, of Toledo, Ohio, for appellee.
Before SMYTH, Chief Justice, ROBB, Associate Justice, and SMITH Judge of the United States Court of Customs Appeals.
This is a trade-mark interference proceeding, in which the decision of the Patent Office was against Daniel B.
Replogle and in favor of the Air-Way Company. The contest relates to the use of the name 'Air-Way' on electric vacuum cleaners and parts thereof.
Replogle filed his application for registration of a composite mark, consisting of the words 'Pneumode' and 'Air-Way,' on November 15, 1918, alleging that he had commenced the use of the mark some time prior thereto. Just before the filing of his application Replogle was engaged in manufacturing and selling, under the name of Bright Circle Manufacturing Company, an electric vacuum cleaner and parts thereof invented by him and covered by certain patents to which he applied the mark just mentioned. The Air-Way Company sought registration of the name 'Air-Way' on December 26, 1919, having adopted it in the previous April.
In October, 1918, Replogle and another entered into an agreement with one Charles F. Bacon, of Toledo, Ohio, whereby Replogle agreed to deliver, at the request of Bacon, to a corporation to be formed, an exclusive license to manufacture and sell all of the products covered by the patents referred to, and applications for patents, belonging to Replogle, the license to last during the respective terms of the patents. Under this agreement Replogle was to receive a certain percentage of the gross sales as royalties, and $300 per month as a minimum royalty. The corporation was to proceed with reasonable diligence to manufacture at least 1,000 of the cleaners and put the same upon the market as soon as practicable. The contract further provided that Replogle should receive from the corporation an exclusive agency in the states of Oregon, Washington, and California for the sale of the articles manufactured under the license.
The corporation was formed, in accordance with the contract, and took the name of the Air-Way Company. It is this company which applies for registration of the mark 'Air-Way.' In due time the license provided for was delivered, at the request of Bacon, to the corporation, and the contract was in all respects carried out by the parties thereto. In addition to securing the license, the Air-Way Company purchased and took over all the business, good will, cleaner parts, tools, jigs, and property of every kind formerly used or employed by Replogle under the name of the Bright Circle Manufacturing Company.
It appears, then, that Replogle transferred the entire business of the Bright Circle Manufacturing Company to the corporation, and with it whatever rights he had to the mark 'Air-Way,' and from that time on the Air-Way Company had the right to use the mark on the goods which it manufactured under the license. In view of this it is not necessary to determine whether or not Replogle was the first to adopt and apply the mark to patented goods, for if he was the first he conveyed his right in connection with his business to the Air-Way Company.
We have said that, where the owner of a trade-mark grants the right to another, either by sale or license, to use the mark on the goods with which its use is connected, and abandons its use himself, he cannot afterwards either deprive his assignee of the right to its use or set up an adverse use. By use in connection with the business the assignee acquires the title abandoned by the assignor, and the title is of that exclusive character which is entitled to protection even against such assignor. Macwilliam v. President Suspender Co., 46 App.D.C. 45, and c...
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