Willys-Overland Co. v. Akron-Overland Tire Co., Inc.
| Decision Date | 02 August 1920 |
| Docket Number | 386. |
| Parties | WILLYS-OVERLAND CO. v. AKRON-OVERLAND TIRE CO., Inc. |
| Court | U.S. District Court — District of Delaware |
Andrew C. Gray, of Wilmington, Del., and Robert G. Thach, of New York City, for plaintiff.
John R Nicholson, of Wilmington, Del., and Nathan Vidaver, of New York City, for defendant.
The plaintiff, the Willys-Overland Company, an Ohio corporation by its bill of complaint charges the defendant Akron-Overland Tire Company, Inc., a Delaware corporation with a wrongful and unfair use of the word 'Overland,' and now moves for a preliminary injunction restraining and enjoining the defendant from using that word as the whole or as a part of its corporate name, from listing its capital stock upon the New York curb market, or any other association or exchange where listed stocks and securities are dealt in, under any name containing the word 'Overland,' and from designating its tires, or other automobile accessory made or sold by it, by the word 'Overland,' or by any combination of words containing that name.
The plaintiff obtained its charter in 1912. It thereupon acquired the entire business, assets, trade-mark, trade-name, and good will of Willys-Overland Company, a corporation, which in its turn had acquired the like rights and property of the Overland Automobile Company, an Indiana corporation. The last-named company manufactured and sold automobiles. It began business in 1907. During all of the intervening period of 13 years the plaintiff and its predecessors have sold their products under the name 'Overland' throughout the United States. This name was, in 1909, registered in the United States Patent Office as a trade-mark for automobiles by the Overland Automobile Company. The word 'Overland' appears upon the products of the plaintiff. Advertisements of the plaintiff appearing in newspapers, periodicals, and upon billboards and electric signs throughout the United States have given special prominence to 'Overland.' Companies affiliated with the plaintiff include that word in their corporate names, as do also, with the consent of the plaintiff, many companies dealing exclusively in the products of the plaintiff. The products of the plaintiff have long been widely and favorably known to the public by the name 'Overland.' Consequently a corporation other than the plaintiff, engaged in the manufacture or sale of automobiles, their parts or accessories, and using the word 'Overland' as a part of its name, or marking such articles 'Overland,' thereby suggests to the public that it is the plaintiff, or is connected therewith, and that its product is made by or for the plaintiff. Such deception would unquestionably enable the corporation engaging therein to pass off at least a portion of its product and capital stock as the product and capital stock of the plaintiff. The capital stock of the plaintiff is widely bought and sold by the general public. The plaintiff and its predecessors, operating under corporate names embodying the word by which their products were and are known, have built up and established for the plaintiff a reputation for financial responsibility and fair dealing, and have led the public to expect a certain standard of quality in its products.
The business of the defendant is that of rebuilding or retreading automobile tires and selling the same. It was organized in October, 1919, under the name of Akron Tire Company, Inc. In January, 1920, by amendment of its charter, it changed its name to Akron-Overland Tire Company, Inc. The circumstances surrounding the change of name are instructive. The Overland Tire Company, a New Jersey corporation, was engaged in the same business as the defendant. The plaintiff objected to the use of 'Overland' in the corporate name of that company, and requested that that word be eliminated therefrom. After conferences and correspondence between representatives of the two corporations, counsel for the Overland Tire Company agreed to recommend that the request of the plaintiff be complied with, upon condition that the plaintiff share pro rata in the expense thereof, to which condition the plaintiff assented. But the elimination was not made. On the contrary, another course was pursued. The plaintiff soon thereafter received from the attorney representing the Overland Tire Company a letter reading in part as follows:
The defendant acquired the business, property, and rights of the Overland Tire Company, and immediately changed the name of the former to Akron-Overland Tire Company, Inc., as above stated. Four of the seven directors of the defendant were directors of the Overland Tire Company; it having five directors. The president and secretary of the defendant were president and secretary, respectively, of the Overland Tire Company. The business of the defendant is not so unrelated to that of the plaintiff as to prevent injury to the latter if confusion results from the action of the former. That the name of the defendant is conducive to confusion there can be no doubt on the evidence. The Detroit Free Press published July 28, 1919, on its financial page, an item containing these statements:
A letter to John N. Willys says:
' * * * I was under the impression, when I had purchased tires from the Overland Tire Company, that that firm and yours was one.'
Indeed Burrill Ruskay, the treasurer and a director of the...
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