Waterman Company v. Modern Pen Company No 54 Modern Pen Company v. Waterman Company No 72

• Citation: 35 S.Ct. 91,235 U.S. 88,59 L.Ed. 142
• Decision Date: 30 November 1914
• Docket Number: No. 54 and 72,54 and 72
• Parties: L. E. WATERMAN COMPANY, Appt., v. MODERN PEN COMPANY. NO 54. MODERN PEN COMPANY, Appt., v. L. E. WATERMAN COMPANY. NO 72
• Court: United States Supreme Court

235 U.S. 88

35 S.Ct. 91

59 L.Ed. 142

L. E. WATERMAN COMPANY, Appt.,

v MODERN PEN COMPANY.

NO 54.

MODERN PEN COMPANY, Appt.,

v. L. E. WATERMAN COMPANY.

NO 72.

No. 54 and 72.

Argued November 10, 1914.

Decided November 30, 1914.

Messrs. Walter B. Raymond, Oliver Mitchell, Victor C. Cormier, and Mortimer W. Byers for L. E. Waterman Company.

[Argument of Counsel from pages 89-91 intentionally omitted] Mr. Alexander S. Bacon for the Modern Pen Company.

[Argument of Counsel from pages 91-93 intentionally omitted] Mr. Justice Holmes delivered the opinion of the court:

This suit was brought by the L. E. Waterman Company to enjoin the Modern Pen Company from using in connection with the manufacture and sale of fountain pens, other than those of the plaintiff's make, the name 'A. A. Waterman' or any name containing the word 'Waterman' in any form, and for an account. The decision of the circuit court of appeals upon an order for a preliminary injunction is reported, 105 C. C. A. 408, 183 Fed. 118; that of the district court upon the merits, 193 Fed. 242; and that of the circuit court of appeals, 117 C. C. A. 30, 32, 197 Fed. 534, 536. The final decree, in the parts material here, restricted the defendant to using the name 'Arthur A. Waterman & Co.' instead of 'A. A. Waterman & Co.,' and required the words 'not connected with the L. E. Waterman Co.' to be juxtaposed in equally large and conspicuous letters when the permitted name was marked upon any part of the fountain pen sold by the defendant, or upon boxes containing such pens, and whenever the name was used by way of advertisement or otherwise to denote any fountain pens made or sold by the defendant, or to denote that it was the maker or seller of such pens. 105 C. C. A. 408, 183 Fed. 118, 193 Fed. 248; 117 C. C. A. 30, 32, 197 Fed. 535, 536. See further, L. E. Waterman Co. v. Standard Drug Co. 120 C. C. A. 455, 459, 202 Fed. 167, 171. The bill, besides alleging diversity of citizenship and unfair competition, seemingly relied upon the registration of 'Waterman's' and 'Waterman's Ideal Fountain Pen, N. Y.,' as trademarks under the act of Congress of March 3, 1881, chap. 138, 21 Stat. at L. 502, U. S. Comp. Stat. 1901, p. 3401, as a ground of juris- diction. Jascobs v. Beecham, 221 U. S. 263, 274, 55 L. ed. 729, 732, 31 Sup. Ct. Rep. 555. Both parties appeal.

The defendant's appeal is from the requirements that it use the name 'Arthur A. Waterman & Co.' instead of 'A. A. Waterman & Co.,' and that it juxtapose the words 'not connected with the L. E. Waterman Co.' After the finding of two courts and upon the evidence it must be assumed that the defendant had used the name Waterman in such a way as to mislead the public and to interfere with the plaintiff's rights unless the defendant had the right to use the name as matter of law, because it was the selling agent of a firm calling itself 'A. A. Waterman & Co.,' and deriving its name from a man who started in business long after the plaintiff had acquired whatever rights it has. In support of this proposition the defendant lays hold of language in Howe Scale Co. v. Wyckoff, Seamans & Benedict, 198 U. S. 118, 140, 49 L. ed. 972, 986, 25 Sup. Ct. Rep. 609, and in other books, to the effect that courts will not interfere with the use of a party's own name 'where the only confusion, if any, results from a similarity of the names, and not from the manner of the use.' But, whatever generality of expression there may have been in the earlier cases, it now is established that when the use of his own name upon his goods by a later competitor will and does lead the public to understand that those goods are the product of a concern already established and well known under that name, and when the profit of the confusion is known to, and, if that be material, is intended by, the later man, the law will require him to take reasonable precautions to prevent the mistake. Herring-Hall-Marvin Safe Co. v. Hall's Safe Co. 208 U. S. 554, 559, 52 L. ed. 616, 620, 28 Sup. Ct. Rep. 350. There is no distinction between corporations and natural persons in the principle, which is to prevent a fraud. Ibid.; Howe Scale Co. v. Wyckoff, Seamans & Benedict, 198 U. S. 118, 136, 49 L. ed. 972, 984, 25 Sup. Ct. Rep. 609; Donnell v. Herring-Hall-Marvin Safe Co. 208 U. S. 267, 273, 52 L. ed. 481, 487, 28 Sup. Ct. Rep. 288. In the Howe Scale Co. Case it was stated upon the same page with the passage quoted that 'defendant's name and trademark were not intended or likely to deceive.'

The only other ground for the defendant's appeal that needs a word after the findings below is a decree of the supreme court of New York in a suit by the plaintiff against Arthur A. Waterman and Edward L. Gibson, partners doing business as the A. A. Waterman Pen Company of New York and Boston. The defendant alleges that it has succeeded to A. A. Waterman's rights. The decision found in the strongest terms that the name was used with fraudulent intent, and the decree in some detail enjoined the defendant from using that or any corporate name containing the word 'Waterman,' and from using in connection with the business of making or selling fountain pens the word 'Waterman' alone or with others in such collocation with the word 'pen' as to indicate that such pens were a variety of Waterman's fountain pens. This rather damaging decree is thought to give some help because of a following sentence to the effect that the defendants were not prohibited from indicating that their pens were made or sold for or by Arthur A. Waterman & Co. or A. A. Waterman & Co. But that sentence was subject to the previous prohibition and consistent with it. The present defendant still not only may indicate the source of its pens in undeceptive ways, but may mark them 'Arthur A. Waterman & Co.' if only it add words that prevent the fraud that it insists upon the right to effect. It is unnecessary to go into other considerations presented by the record to show that the defendant's appeal cannot be maintained.

The plaintiff's appeal is from the failure of the decree to prohibit the use of the name 'Arthur A. Waterman & Co.' even with the suffix required by the court. The ground upon which it claims this broader relief is that the agreement with A. A. Waterman by which he...