Russia Cement Co. v. Le Page

• Decision Date: 19 June 1888
• Citation: 147 Mass. 206,17 N.E. 304
• Parties: RUSSIA CEMENT CO. v. LE PAGE.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

147 Mass. 206

17 N.E. 304

RUSSIA CEMENT CO. v. LE PAGE.

Supreme Judicial Court of Massachusetts, Essex.

June 19, 1888

COUNSEL

E.R. Hoar and Causten Browne, for plaintiffs.

It was contended for the defendant that a man cannot make a trade-mark of his own name, so as either to control its use himself or to give others the right to control its use; also that a man has always the right to use his own name to designate his own goods. That a man's name may be his trade-mark or that of his associates in business, has never we believe, been doubted except by an American text writer. A reading of his discussion will not, we think, tend to inspire the court with the same doubt. Browne, Trade-Marks, §§ 195-206. See Ainsworth v. Walmsley, L.R. 1 Eq. 525; Chaney v. Hoxie, 143 Mass. 592, 10 N.E. 713; Bowman v. Floyd, 3 Allen, 76; Frese v Bachof, 13 Blatchf. 234; Moet v. Couston, 33 Beav. 578; Tonge v. Ward, 21 L.T. (N.S.) 480. At the same time it is well settled that a defendant cannot, because his name is his own, use his own name, being that of the plaintiff, in connection with his own goods, in any way that he pleases. He must not use it in such a way as will confound the business done by him under his name with the business done by the plaintiff under his like name. Holloway v Holloway, 13 Beav. 209; Burgess v. Burgess, 3 De Gex, M. & G. 896; McLean v. Fleming, 96 U.S. 245; Meneely v. Meneely, 62 N.Y. 427; Manufacturing Co. v. Manufacturing Co., 11 F. 495. See, also, Sebast. Trade-Marks, 18, 19. But the question of the right of the defendant to use his own name as a trade-mark, although it happen to be the same name as the plaintiff's, is wholly different from the question in the case at bar, viz., of the right of the same man, having appropriated his own name as the trade-mark of a business concern with which he was connected, to use it afterwards as his own personal trade-mark or trade name, in a like business, to the injury of that concern; that he has no such right, and may be enjoined from so doing, is clear. Holmes v. Manufacturing Co., 37 Conn. 278; Gilman v. Hunnewell, 122 Mass. 152; Manufacturing Co. v. Manufacturing Co., 18 F. 816. The recent case of Chaney v. Hoxie, 143 Mass. 592, 10 N.E. 713, is exactly in point for the complainant, and is of itself decisive of the present case. See Shaver v. Shaver, 6 N.W.Rep. 188; Probasco v. Bouyon, 1 Mo.App. 241; Oakes v. Tonsmierre, 4 Woods, 555; McLean v. Fleming, 96 U.S. 245; Frazer v. Lubricator Co., 18 Bradw. 462; Stonebraker v. Stonebraker, 33 Md. 252; Gillis v. Hall, 2 Brewst. 342; Ainsworth v. Walmsley, ubi supra; Manufacturing Co. v. Manufacturing Co., 32 F. 94. The plaintiff acquired the trade-mark by assignment from Brooks & Le Page. From the nature of a trade-mark, the right to use it is an exclusive right. Kidd v. Johnson, 100 U.S. 619. If the validity of the trade-mark or trade name is established, and its ownership by the plaintiff as assignee is established, there can be no question of the invasion of the plaintiff's right by the defendants. Manufacturies v. Wilson, 3 App.Cas. 389; Evans v. Von Laer, 32 F. 153; Frazer v. Lubricator Co., and Gillis v. Hall, ubi supra. The decree, if for the plaintiffs, should save its right to proceed for damages or profits since the filing of the bill.

W. Gaston, Francis Forbes, and F.L. Washburn, for defendant.

The principle is too well settled to be controverted that a man can use his own name in any common form of speech to indicate goods of his own manufacture. Burgess v. Burgess, 3 De Gex. M. & G. 896; Holloway v. Holloway, 13 Beav. 209; Gilman v Hunnewell, 122 Mass. 139; Meneely v. Meneely, 62 N.Y. 427; Carmichel v. Latimer, 11 R.I. 395; McLean v. Fleming, 96 U.S. 245; Marshall v. Pinkham, 52 Wis. 572, 9 N.W. 615; Rogers v. Rogers, 53 Conn. 121, 1 Atl.Rep. 807, and 5 Atl.Rep. 675; Chemical Co. v. Meyer, 31 F. 453; Bassett v. Percival, 5 Allen, 345; Montgomery v. Pickering, 116 Mass. 227; Reed v. Reed, 114 Mass. 372; Music Hall v. Cory, 129 Mass. 435; Pearson v. Pearson, 27 Ch.Div. 145; Hoxie v. Chaney, 143 Mass. 592, 10 N.E. 713; Sebast. Trade-Marks, (2d Ed.) 236; Cottrell v. Manufacturing Co., 54 Conn. 122, 6 Atl.Rep. 791; Gilman v. Hunnewell, 122 Mass. 139; Wolfe v. Burke, 7 Lans. 151.

OPINION

DEVENS J.

The plaintiff and defendant are manufacturers of liquid glue, and the defendant, whose name is Le Page, uses the same name as that used by plaintiff to describe his glue, and by which to advertise it, except that he introduces therein the word "improved." The introduction of this word into the name of the article manufactured by him does not justify its use, if in other respects the plaintiff has just ground to object to it. Sebast. Trade-Marks, 52; Frazer v Lubricator Co., 18 Bradw. 462, 13 N.E. 639; Gillis v. Hall, 2 Brewst. 342. A person cannot make a trade-mark of his own name, and thus debar another having the same name from using it in his business, if he does so honestly, and without any intention to appropriate wrongfully the good-will of a business already established by others of the name. Every one has the absolute right to use his own name honestly in his own business for the purpose of advertising it. Even though he may thereby incidentally interfere with and injure the business of another having the same name. In such case the inconvenience or loss to which those having a common right to it are subjected is damnum absque injuria. But although he may thus use his name, he cannot resort to any artifice or do any act calculated to mislead the public as to the identity of the business firm or establishment or article produced by them, and thus produce injury to the other beyond that which results from the similarity of name. Holloway v. Holloway, 13 Beav. 209; Meneely v. Meneely, 62 N.Y. 427; Gilman v. Hunnewell, 122 Mass. 139; Rogers v. Rogers, 53 Conn., 121, 1 Atl.Rep. 807, and 5 Atl.Rep. 675. While this is the general rule, it is also true that one may so sell or part with the right to use his own name as a description or designation of a manufactured article as to deprive himself of the right to use it as such, and confer this right upon another. A name used as an adjective of description is not necessarily understood by the public as any assertion that the person whose name is used is the maker of the article. One who has carried on a business under a trade name, and sold a particular article in such a manner by the use of his name as a trade-mark or a trade name as to cause the business or the article to become known or established in favor under such name, may sell or assign such trade name or trade-mark when he sells the business or manufacture, and by such sale or assignment to conclude himself from the further use of it in a similar way. Manufacturing Co. v. Manufacturing Co., 18 F. 816; McLean v. Fleming, 96 U.S. 245; Crucible Co. v. Guggenheim, 2 Brewst. 321; Probasco v. Bouyon, 1 Mo.App. 241; Oakes v. Tonsmierre, 4 Woods, 555; Manufacturing Co. v. Manufacturing Co., 32 F. 94; Ainsworth v. Walmsley, L.R. 1 Eq. 524; Shaver v. Shaver, 6 N.W.Rep. 188; Frazer v. Lubricator Co., ubi supra. A person may be enjoined, therefore, from using his own name as a description of an article of his own manufacture, and from selling the article under that particular name when he has parted with the right thus to apply it. Gillis v. Hall, 2 Brewst. 342; Kidd v. Johnson, 100 U.S. 619. It is not upon the ground of the invasion of the trade name adopted by another, but by reason of the contract he has made, that he is deprived of the right himself to use his name as all others of the same name may use theirs. The recent case Hoxie v. Chaney, 143 Mass. 592, 10 N.E. 713, which has been decided since the decree originally made in the case at bar was rendered, is quite conclusive in regard to it. It was there held that "A.N. Hoxie's Mineral Soap," and "A.N. Hoxie's Pumice Soap" were trade-marks, and assignable as such, and that they did not necessarily mean that the soaps were made by A.N. Hoxie. Where one who had adopted these trade-marks, or, more...