Skinner v. Oakes
| Decision Date | 08 March 1881 |
| Citation | 10 Mo.App. 45 |
| Parties | H. H. SKINNER ET AL., Respondents, v. ANNIE OAKES ET AL., Appellants. |
| Court | Missouri Court of Appeals |
1. A conveyance good inter partes, made in fraud of creditors, can only be impeached by the creditors themselves.
2. Affidavits filed in support of a motion for a new trial will not, on appeal, be considered as evidence of anything affecting the merits of the case.
3. A man who voluntarily parts with the right to use his own name as a trademark cannot voluntarily recall it by marrying, and carrying on business in his wife's name; nor can she, by marrying him, acquire any higher right to use his name as a trade-mark than he himself had.
4. A trade-mark which consists of the name of a third person is not such a species of property as can be disconnected from the business with which such person was formerly connected and sold from man to man.
5. Where the assignee of the naked right to use a trade name claims the exclusive right to sell goods bearing this name he must show that the name was originally used to designate goods of a certain quality or description, and is being used by him to designate substantially goods of the same quality or description, and that the use of the name doesnot operate to deceive the public into the belief that the goods are made by the man whose name they bear.
6. Where goods are sold and delivered, but, owing to a secret contract, the right to a part of the thing sold is subject to be defeated, an innocent purchaser for value takes a title unaffected by the terms of the secret defeasance, of which owing to the laches of the original vendor, he had no notice.
APPEAL from the St. Louis Circuit Court, BOYLE, J
Reversed and remanded.
W. H. H. RUSSELL and DAVID MURPHY, for the appellants: The use of the word " " " " Oakes" wrongs the appellants and is a fraud upon the public, and its use should be enjoined.-- Fetridge v. Wells, 13 How. Pr. 387, 389, 394; Leather Cloth Co. v. American Leather Cloth Co., 11 H. L. Cas. 544, 546; Upton on Trade-Marks, 26-53; Carmichael v. Latimer, 11 R.I. 407-410; Little v. Page, 44 Mo. 412; Griffin v. Pugh, 44 Mo. 326. --Upton on Trade-Marks, 27; 2 Pars. on Con. (6th ed.), side p. 378, 379; Kidd v. Johnson, 10 Otto 620; Churton v. Douglas, 1 Johns. Eng. Ch. 176. A party is not entitled to use a proper name as a trade-mark, except in connection with some mark, symbol, or device, both of which must be in fact true; and even then there can be no infringement of a trade-mark in the use of it, except by affixing it to articles manufactured or prepared by another, or so simulating it as to cause purchasers to be misled and deceived.-- Seixo v. Provezende, L. R. 1 Ch. 192; Browne on Trade-Marks, sect. 361; Partridge v. Menck, Cox's Trade-Mark Cas. 80; Corwin v. Daly, Id. 265; Canal Co. v. Clark, 13 Wall. 323-326; 2 Pars. on Con. (6th ed.) 257; Meneely v. Meneely, 62 N.Y. 431 et seq.; Fleming v. McLean, 6 Otto 252. A person who, in connection with his business, sells the right to use the fac-simile of his autograph as a manufacturer's mark, to be affixed to his goods, may, in the absence of a covenant restraining him from again engaging in the same business, at once engage therein, and in the same street, and even the next door, and use his own name.-- Canal Co. v. Clark, 13 Wall. 323; Churton v. Douglas, 1 Johns. Eng. Ch. 176; Crutwell v. Lye, 17 Ves. 335; Hall v. Barrows, 10 Jur. (N. S.) 55; Williams on Pers. Prop. 258; Howe v. Searing, Cox's Trade-Mark Cas. 253. The agreement between Probasco and Oakes, either in its several parts or as an entire contract, shows the intent of the parties to be that the use of the name " Oakes' Candy" was limited to Probasco as a personal license or privilege only; that in consideration of the continuation of Oakes as the manufacturer, its use was lawful; but not after that connection ceased, or, at the farthest, after Probasco abandoned the business and the establishment ceased to have an existence. And it matters not whether this determination of the license or privilege was the result of the agreement or by operation of law.--Upton on Trade-Marks, 80; 2 Pars. on Con. (6th ed.), side p. 664; Curtis on Pat. 197; Kidd v. Johnson, 10 Otto 618; Howe v. Searing, Cox's Trade-Mark Cas. 244.
DRYDEN & DRYDEN, with HARRIS BALDWIN, for the respondents: It is competent for a person to so sell his name as to deprive himself of the right to use it in his own business, and to give that right to another.-- Probasco v. Bouyon, 1 Mo.App. 244; Stonebreaker v. Stonebreaker, 33 Md. 257, 268; Cox's Trade-Mark Cas. 596; Codd. Dig. of Trade-Marks, sect. 611; Ayer v. Hall, 3 Brews. 512, 513; Dixon Crucible Co. v. Guggenheim, 2 Brews. 330-332. Peter Oakes has not, nor have he and his co-defendants combined, the right to the name " Oakes" in the manufacture and sale of candy in this city, because he has bound himself by a valid agreement to abstain from its use in that connection.-- Probasco v. Bouyon, 1 Mo.App. 246; Crutwell v. Lye, 17 Ves. 346. If a substantial part of a trade-mark has been pirated, relief will be granted. Filley v. Fassett, 44 Mo. 178. If the trade-marks are simulated in such manner as will probably deceive customers or patrons, the piracy will be checked at once by injunction.-- Churton v. Douglas, 1 Johns. Eng. Ch. 184; Clark v. Clark, Cox's Trade-Mark Cas. 206; Brooklyn White-Lead Co. v. Masury, Id. 210; Bradley v. Norton, Id. 331.
This was a suit in equity to restrain an alleged piracy of certain trade-marks, and for an account. It appears that prior to May 17, 1869, Hiram S. Probasco and the defendant Peter Oakes were partners, in St. Louis, engaged in the manufacture and sale of candies. On that day they dissolved partnership, Oakes selling out to Probasco, by a contract of sale duly acknowledged and recorded, which conveyed to Probasco, his executors, administrators, and assigns, all of the Oakes interest in the partnership assets, and " also the good-will of the business and name of the firm of Probasco & Oakes, and the exclusive right to make and sell Oakes' candy, and to use the name thereof; " the contract further reciting, " it being the intent hereof to convey to said Probasco all my interest in all the property and assets of said firm of Probasco & Oakes, and all the franchises thereof."
This statement of the facts brings us to the point in the history of these transactions in which the rights of Probasco under the contract were determined in this court, in the suit of Probasco v. Bouyon, 1 Mo.App. 241. The rights there declared to exist in Probasco under this contract are the same rights claimed by the plaintiffs in this suit, derived, as is alleged, from Probasco, by two subsequent sales and transfers. It was there adjudged that by the above instrument of sale Probasco acquired the rights of the previous firm of Probasco & Oakes to the use of the name of " Oakes" in the manufacture and vending of the candies which Probasco & Oakes had previously manufactured and sold under that name. It was also held that Oakes could so sell his name as to deprive himself of the right to use it for his own manufacture, and give that right to another, under the circumstances of the case as shown in evidence. It was further held, that
We are not asked to review this decision, or to modify it; if we were, we could not do so consistently with well-settled rules of law, adherence to which is of the very highest importance. That decision, not having been reversed by a higher tribunal, is not only a rule of property generally, for the government of other like cases, should any arise, but it is in a peculiar sense the law of this particular case. It is a solemn adjudication of the rights of Probasco under the contract in question, on the faith of which the two sales under and by virtue of which the plaintiffs claim must be taken to have been made, for they were both made subsequently to its rendition. The books abound in cases which would support the conclusion reached by this court in that case, could it be reopened for controversy.
On the twenty-eighth day of May, 1877, after the rights of Probasco in the premises had thus been settled by this court, he sold out the business to W. J. Hammon, and executed to him a separate bill of sale, in which he undertook to convey to him, and, if the instrument is good, did convey to him, the trade-mark, name, good-will, and reputation connected with the manufacture, production, and sale of certain candies and confections, commonly known and called " Oakes' Candies," " Oakes' Home-Made Candies," and " Oakes' Pure Home-Made Candies," reciting that such trade-mark, name, good-will, and reputation had been theretofore purchased by him from Peter Oakes, and concluding with the words, " I hereby sell and convey to said W. J. Hammon all the rights and privileges connected, as aforesaid, with said candies and confections, which I may have, or did at any time derive from said Peter Oakes."
An attempt was made, under objection, to prove that this was not a bona fide sale, but merely a fraudulent conveyance, designed to hinder and delay the creditors of Probasco. This evidence should have been excluded;...
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