Baldwin Co. v. R. S. Howard Co.

Second Circuit

Baldwin Co. v. R. S. Howard Co.

238 F. 154, 151 C.C.A. 230, 1916 U.S. App. LEXIS 1325

CourtCourt of Appeals for the Second Circuit

DecidedNovember 14, 1916

DocketNo. 130

StatusPublished

Cited by9 cases

This text of 238 F. 154 (Baldwin Co. v. R. S. Howard Co.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Second Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook

Baldwin Co. v. R. S. Howard Co., 238 F. 154, 151 C.C.A. 230, 1916 U.S. App. LEXIS 1325 (2d Cir. 1916).

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Opinions

COXE, Circuit Judge.

[ 1 ] This is an action in equity upon the trademark “Howard” as applied to pianos. The custom of the trade is to stencil the name upon the front of the piano just above the keyboard and also upon the cases in which the pianos are shipped. The question here is whether the R. S. Howard Company, the defendant, has a right to use the word “Howard” as a trade-mark in connection with sales of pianos manufactured by it. That it may use its own náme, R. S-Howard Company, is not disputed, but the contention is that the complainant has a right to the use of the name “Howard” alone as applied to the fall-board of the pianos manufactured by it because of its long use and also because of the defendant’s acquiescence in that use. The Baldwin Company adopted the name “Howard” alone to designate [155]*155pianos sold by it in 1896 with the full knowledge of R. S. Howard and procured the trade-mark in that name with his acquiescence. It has/ built up a large and flourishing business in this manner, with the knowledge of R. S. Howard and it would now be most inequitable to permit him to destroy this business and reap the fruits thereof by transferring a large part thereof to himself. He has a perfect right to use his own name, R. S. Howard, in the piano business but he has not at this late day the right to appropriate the good will of the complainant’s business by the use of the trade-mark "Howard,” which has by long use come to mean the pianos sold by the complainant. i

The name “Howard” without prefix or suffix, when used in connection with pianos, indicated that they were the product of the Baldwin Company, the complainant herein. There can be no doubt as to the wide publicity given by the complainant to the “Howard” piano and the large sales made by it under that name. In other words, it was the enterprise, energy, capital and brains of the complainant company that established and maintained the reputation of the Howard piano and that company is entitled to have its rights protected. The facts necessary to understand the situation are fully set out in the opinion of Judge Hough and need not be repeated here.

[2] The appellant disputes the validity of the trade-mark registrations but it is contended that the validity of these registrations is not in issue in this case, at least so far as this court is concerned. The appellee’s brief contains the following:

“The appellant’s brief attacks the plaintiff’s right to its trade-mark registrations, but the validity of the registrations is not tú issue in the case. At ■the final hearing below, plaintiff did not claim infringement of its registrations and confined its charge of infringement solely to its common law rights in the name ‘Howard,’ and Judge Hough at the close of his opinion said:

“ T incline to ground that decree solely on. principles of unfair competition, and leave the trade-mark situation to take care of itself; but upon this point I am willing to hear further argument if the matter is pressed, as it was not much alluded to in argument.’

“The matter was not pressed by either side and therefore there is no finding about it in the decree. It was evidently the opinion of the court below that all questions concerning the validity of the registrations should be left to the cancellation proceedings instituted by the B. S. Howard Company in the Patent Office and now about to come to final hearing there.”

We are inclined to think that the court was not called upon to hear what were practically moot questions not essential to a decision and which, even if decided according to the appellant’s contention, would not affect the controlling question in the least.

The decree of the District Court is affirmed.

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COXE, Circuit Judge.

[ 1 ] This is an action in equity upon the trademark “Howard” as applied to pianos. The custom of the trade is to stencil the name upon the front of the piano just above the keyboard and also upon the cases in which the pianos are shipped. The question here is whether the R. S. Howard Company, the defendant, has a right to use the word “Howard” as a trade-mark in connection with sales of pianos manufactured by it. That it may use its own náme, R. S-Howard Company, is not disputed, but the contention is that the complainant has a right to the use of the name “Howard” alone as applied to the fall-board of the pianos manufactured by it because of its long use and also because of the defendant’s acquiescence in that use. The Baldwin Company adopted the name “Howard” alone to designate [155]*155pianos sold by it in 1896 with the full knowledge of R. S. Howard and procured the trade-mark in that name with his acquiescence. It has/ built up a large and flourishing business in this manner, with the knowledge of R. S. Howard and it would now be most inequitable to permit him to destroy this business and reap the fruits thereof by transferring a large part thereof to himself. He has a perfect right to use his own name, R. S. Howard, in the piano business but he has not at this late day the right to appropriate the good will of the complainant’s business by the use of the trade-mark "Howard,” which has by long use come to mean the pianos sold by the complainant. i

The name “Howard” without prefix or suffix, when used in connection with pianos, indicated that they were the product of the Baldwin Company, the complainant herein. There can be no doubt as to the wide publicity given by the complainant to the “Howard” piano and the large sales made by it under that name. In other words, it was the enterprise, energy, capital and brains of the complainant company that established and maintained the reputation of the Howard piano and that company is entitled to have its rights protected. The facts necessary to understand the situation are fully set out in the opinion of Judge Hough and need not be repeated here.

[2] The appellant disputes the validity of the trade-mark registrations but it is contended that the validity of these registrations is not in issue in this case, at least so far as this court is concerned. The appellee’s brief contains the following:

“The appellant’s brief attacks the plaintiff’s right to its trade-mark registrations, but the validity of the registrations is not tú issue in the case. At ■the final hearing below, plaintiff did not claim infringement of its registrations and confined its charge of infringement solely to its common law rights in the name ‘Howard,’ and Judge Hough at the close of his opinion said:

“ T incline to ground that decree solely on. principles of unfair competition, and leave the trade-mark situation to take care of itself; but upon this point I am willing to hear further argument if the matter is pressed, as it was not much alluded to in argument.’

“The matter was not pressed by either side and therefore there is no finding about it in the decree. It was evidently the opinion of the court below that all questions concerning the validity of the registrations should be left to the cancellation proceedings instituted by the B. S. Howard Company in the Patent Office and now about to come to final hearing there.”

We are inclined to think that the court was not called upon to hear what were practically moot questions not essential to a decision and which, even if decided according to the appellant’s contention, would not affect the controlling question in the least.

The decree of the District Court is affirmed.

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238 F. 154, 151 C.C.A. 230, 1916 U.S. App. LEXIS 1325, Counsel Stack Legal Research, https://law.counselstack.com/opinion/baldwin-co-v-r-s-howard-co-ca2-1916.

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