Warren v. Warren Thread Company

• Decision Date: 28 February 1883
• Citation: 134 Mass. 247
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court
• Parties: Alfred D. Warren v. Warren Thread Company & another

134 Mass. 247

Alfred D. Warren v. Warren Thread Company & another

Supreme Court of Massachusetts

February 28, 1883

Argued October 9, 1882

Worcester.

Exceptions overruled.

F. A Gaskill, for the plaintiff.

B. L M. Tower, for the corporation.

M. F. Dickinson, Jr. & H. R. Bailey, for the assignee.

Morton, C. J. C. Allen, Colburn & Holmes, JJ., absent.

OPINION

Morton, C. J.

This bill in equity alleges that the plaintiff, in December 1879, took the benefit of the insolvent laws of this State; that before his insolvency he carried on the business of manufacturing thread in Ashland, and in his business used, and had the right to the exclusive use of, certain trade-marks, copies of which are annexed to the bill; that the assignee in insolvency, who is one of the defendants, claims that the right to use the trade-marks passed to him as a part of the plaintiff's property; that the other defendant is using the said trade-marks; and it seeks to restrain the defendants from selling or using said trade-marks.

The demurrer raises the question whether, notwithstanding the insolvency proceedings, the plaintiff retains the exclusive right to the use of the trade-marks. It is apparent upon inspection that these are not mere personal trade-marks, the use of which by any other person than the plaintiff would operate as a fraud upon the public. His name does not appear upon any of them except one, and in that it is a subordinate part of the trade-mark. They are all designs or symbols designating the place or the establishment at which the thread is manufactured, and not implying any peculiar personal skill in the plaintiff as the manufacturer, or importing necessarily that it is manufactured by him.

Whatever may be the law as to a trade-mark which is strictly personal, it is the settled law that the right to use a trade-mark in connection with the business in which it has been used is property which will be protected by the courts, and which may be sold and transferred. Emerson v. Badger, 101 Mass. 82 Gilman v. Hunnewell, 122 Mass. 139. In Sohier v. Johnson, 111 Mass. 238, the right to use such a trade-mark was recognized as property which would pass to an assignee, as an incident, under a transfer of the business and good will.

In Kidd v. Johnson, 100 U.S. 617, the court say: "When the trade-mark is affixed to articles manufactured at a particular establishment and acquires a special reputation in connection with the place of manufacture, and that establishment is transferred either by contract or operation of law to others, the right to the use of the...