Fish Bros. Wagon v. La Belle Wagon Works

16 L.R.A. 453, 52 N.W. 595, 82 Wis. 546, 1892 Wisc. LEXIS 172

• Court: Wisconsin Supreme Court
• Decided: June 15, 1892
• Status: Published

Opinion

Cassodat, J.

The plaintiff, Fish Bros. Wagon Company, was incorporated in January, 1887, and since that time has been engaged in the manufacture of wagons at Eacine, and selling the same throughout the country. The defendant La Belle Wagon Worhs and the other defendants have since June 17, 1890, been engaged in the manufacture of wagons at South Superior, and selling the same in different parts of the country. This suit was commenced in July last to restrain the defendants from using the words “ Fish Bros.,” “ Fish Bros. & Co.,” “ Fish Bros. Wagons,” and the picture of a fish as trade-marks on the wagons and in the advertisements of the defendants, on the ground that the plaintiff has the exclusive right to the same. The defendants, insisting upon the right to use such words, counterclaim an exclusivé right to the same, and ask for an injunction accordingly. The history of the use of those words by the firm of Fish Bros, and Fish Bros. & Co. as copartners at Eacine up to the time when Mr. Case became the ostensible owner or mortgagee, and from that time down to October 16, 1883, in connection with the word “Agents,” when he was appointed receiver of all the property and assets connected with that business, and from that time down to September 26, 1885, when he was superseded by Mr. Hall as such receiver, and from that time down to 1887, when all the property and assets connected with the business were sold by the receiver and the parties interested to the plaintiff company, is sufficiently set forth in the foregoing statement.

The first question presented is whether the plaintiff, bjr such purchase and subsequent use, acquired the right' to continue the use of such words and pictures on their wagons and in their advertisements, as trade-marks, as indicated. Two of the Fish brothers, Titus G. and Edwin B., and Huggins, of the firm of Fish Bros. & Co., remained in the business as managers under such receivers, not only down to such transfer of the property and assets to the plaintiff company, but for more than two years thereafter, acting as directors and officers of the plaintiff company. Such conduct on their part was a continued sanction of the use of such words and symbols as trade-marks on the plaintiff’s wagons sold during the time throughout the country, and adyertisements of the same. It is conceded that the office of a trade-mark is to point out the true source, origin, or ownership of the goods to which the mark is applied, or to point out and designate a dealer’s place of business, distinguishing it from the business locality of other dealers. Marshall v. Pinkham, 52 Wis. 578; Gassler v. Grieb, 80 Wis. 24. “ Such trade-mark usually includes the name of the manufacturer or dealer as the best designation of such source, origin, ownership, or place of business. Sometimes, however, it consists of some novel device, arbitrary character, or fancy word, applied without special meaning, and which, by use and reputation, comes to serve the same purpose.” Gassier v. Grieb, 80 Wis. 25, and cases there cited. From these several authorities it is obvious that a trademark may perform one or more of three several functions, depending upon what it is and its manner of use. One of these is to point out the true source or origin of the goods to which the mark is applied. Manifestly, the words “Fish Bros.” and “ Fish Bros. & Co.,” as used, pointed out Titus G. as the founder, and him and his brothers and other members of the firm as originators, of the particular make and style of wagon and vehicle -first manufactured by them, and afterwards by them as agents, and subsequently by receivers and the plaintiff, under their supervision or with their acquiescence, at Bacine. The mere fact that each and all of the Fishes withdrew from that business did not prevent the words mentioned from continuing to point to the old place of business and the old firm of Fish Bros, and Fish Bros. & Co., at Bacine, as the true source and origin of their particular make and style of wagon and vehicle to which the plaintiff company succeeded, and continued to manufacture, at Eacine.

It is true that one of the functions of a trade-mark is to point out the true ownership of the goods or articles to which it is applied, and that the words “ Eish Bros.” and “ Eish Bros. & Co.” partially ceased to perform that office when Mr. Case became the ostensible owner or mortgagee, and still more so when the legal title passed to the receivers, respectively, and finally became extinct when the property and assets became vested in the plaintiff; but such extinction did not prevent those words from performing the two other functions of a trade-mark mentioned. As indicated, one of these is to point out and designate the dealer’s place of business, distinguishing it from the business locality of other dealers. Such trade-mark is, in effect, an extension or perambulation of the dealer’s trade sign. It advertises the home business to all who may observe the article on sale or in use in other parts of the country. It attaches to every such article on sale or in use the reputation it has acquired with the trade, and informs all observers desiring a like article where the manufacturer or dealer may be found. The picture of a fish and the manner of its ■use, as well as the words mentioned, designated not only the plaintiff’s place of business at Eacine, but also the true .source and origin of the make and style of the wagons and vehicles so previously made by Eish Bros, and Eish Bros. & Co., as agents, and under the receivers at Eacine, and hence may fairly be- regarded as trade-marks for the plaintiff, even after all the Fishes had withdrawn from that business.

Upon the facts in this case, as found in the foregoing statement, and the law applicable, we are constrained to hold that the plaintiff acquired the good will of the business, including the right to use the picture and words mentioned as trade-marks, notwithstanding they were not specifically named in any of the transfers or conveyances to the plaintiff. Thus in Menendez v. Holt, 128 U. S. 514, it was in effect held that when a partner retires from a firm, assenting to or acquiescing in the retention by the other partners of the old place of business and the future conduct of the business by them under the old firm name, the good will of the business including the trade-marks remain with the latter, as of course. To the same effect, Merry v. Hoopes, 111 N. Y. 415; In re Wellcome's Trade-Mark, 32 Ch. Div. 213; Hoxie v. Chaney, 143 Mass. 592; Witthaus v. Mattfeldt, 44 Md. 303; Morgan v. Rogers, 19 Fed. Rep. 596.

In quoting from Lord Cranworth it was said in Marshall v. Pinkham, 52 Wis. 581, that “ difficulties, however, may arise where the trade-mark consists merely of the name of the manufacturer. When he dies, those who succeed him (grandchildren, or married daughters, for instance), though they may not bear the same name, yet ordinarily continue to use the original name as a' trade-mark, and they would be protected against any infringement of the exclusive right to that mark. They would be so protected, because, according to the ways of the trade, they would be understood as meaning no more, by the use of their grandfather’s or father’s name, them that they were carrying on the manufacture formerly carried on by him. Nor would the case be necessarily different if, instead of passing into other hands by devolution of law, the manu-factory were sold and assigned to a purchaser. The question in every such case must be whether the purchaser, in continuing the use of the original trade-mark, would, according to the ordinary usages of trade, be understood as saying-more than that he was carrying on the same business as had been formerly carried on by the person whose name constituted the trade-mark.” Leather Cloth Co. v. American Leather Cloth Co. 11 Jur. (N. S.), 513; Hazard v. Caswell, 93 N. Y. 259.

2. But the more serious question is whether such right is exclusive. Notwithstanding the good will of an established and successful business may be sold in connection with the property and assets, so as to entitle the purchaser thereof to a certain limited protection, yet such transfer will not of itself alone be -sufficient to preclude the seller from engaging in a separate andr independent business of the same kind, and to solicit the customers of the old business, even in the same city or village, much less in a city or village 200 miles or more distant. “ In order to preclude the seller from engaging in such separate and independent business, there must be an agreement to that effect, based upon a good and valuable .consideration, and not contrary to law or public policy.” Washburn v. Dosch, 68 Wis. 439, and cases there cited; Williams v. Farrand, 88 Mich. 413; Vernon v. Hallam, 34 Ch. Div. 748. True, the transfer of the good will to tlie plaintiff included the trademarks ; but it is to be remembered that a trade-mark gives no exclusive right to the device or article to which it is applied. It is in no sense a patent, and gives the proprietor thereof no exclusive right or monopoly of the thing manufactured and sold. The theory upon which actions for the infringement of trade-marks are maintained is that the law will not allow one person to sell his own goods as and for the goods of another. Marshall v. Pinkham, 52 Wis. 580. To the same effect is Lawrence Mfg. Co. v. Tenn. Mfg. Co. 138 U. S. 537; Jay v. Ladder, 40 Ch. Div. 649. It is only the dealer’s own trade and his own business which are thus to be protected by his own trade-mark. Gessler v. Grieb, 80 Wis. 25. It does not relate to the nature, quality, or mode of operation of the thing sold, but merely to the designation,, name, or mark by which it is sold. Such being the functions of a trademark, it is obvious that the plaintiff’s right to the marks in question would not be infringed by the manufacture and sale of wagons and vehicles of similar make and style by any person, even in Racine, much less by the Fish brothers themselves at South Superior.

The right of the defendants to manufacture and sell similar wagons and vehicles being admitted, as it must, the question remains whether they also had the right to affix thereto the words “ Eish Bros.,” “ Eish Bros. & Co.,” and the picture of a fish. The picture of a fish, as used, must be regarded simply as another way of designating the surname “ Eish ” as the founder and originator of the particular make of wagons and vehicles thus manufactured and sold. In Burgess v. Burgess, 17 Eng. L. & Eq. 257, 17 Jur. 292, John Burgess and his son William R., as partners under the firm name of “John Burgess & Son,” sold “Burgess’ Essence of Anchovies ” at No. 107 Strand. The father died, and the son, William R, continued the same business, selling the same article at the same place, in the name of the old firm. William R. had a son William II., whom he employed in the business on a salary. Subsequently William H. left the employ of his father, and went into the same business for himself, selling the same article under the same name, but at a lower price, and advertised the same as “ Late of 107 Strand.” The father filed a bill in equity to restrain the son from conducting that business in that way, and in giving the opinion of the court ENight Beuob, L. j., said: “ All the queen’s subjects have a right, if they will, to manufacture and sell pickles and sauces, and not the less that their fathers have done so before them. All the queen’s - subjects have a right to sell them in their own name, and not the less so that they bear the same name as their fathers; and nothing else has been done in that which is the question before us. . . . He [the defendant] carries on business under his own name, and sells essence of anchovy as ‘ Burgess’ Essence of Anchovy,’ which it is. ... The only ground of complaint is the great celebrity, which, during many years, has been possessed by tbe elder Mr. Burgess’ essence of anchovy. That does not give him such exclusive right, such a monopoly, such a privilege, as to prevent any man from making essence of anchovy and selling it under his own name.” The court did, however, restrain the son from advertising as “ Late of 107 Strand.” See Marshall v. Pinkham, 52 Wis. 583-586, and other cases there cited. In Brown Chemical Co. v. Meyer, 139 U. S. 540, it was held that “ an ordinary surname cannot be appropriated as a trade-mark by any one person as against others of the same name who are using it for a legitimate purpose; although cases are not wanting of injunctions issued to restrain the use even of one’s own name, where a fraud upon another is manifestly intended, or where he has assigned or parted with his right to use it. The owner of a trade-mark, bearing his own name, which is affixed to articles manufactured át a particular establishment, may in selling the latter confer upon the purchaser exclusive authority to use the trademark.” In the case at bar there is no agreement giving such exclusive right to the plaintiff, and hence we must conclude that the defendants are at liberty in good faith to apply to the wagons and other vehicles manufactured by them the words “ Eish Bros.,” or “ Fish Bros. & Oo.,” or the picture of a fish, provided they do it in a way not calculated to induce persons to buy the same as and for those manufactured by the plaintiff at Racine.

3. The defendants ask to enjoin the plaintiff from the use of' those words and that device as a trade-mark in their business at Racine. In Thynne v. Shove, L. R. 45 Ch. Div. 577, the plaintiff, A. Thynne, sold his stock in trade and business of a baker, and the good-will thereof, including trade cards bearing the name of “ A. Thynne, Baker,” to the defendant. The deed and transfer contained an assignment of “ all the beneficial interest and good will of the said Arthur Thynne in the said trade or business,” but contained no express assignment of tbe right to use the plaintiff’s name. After the purchase the defendant used the trade cards bearing the plaintiff’s name until they were exhausted, and then printed further trade cards bearing the plaintiff’s name as before. In an action to restrain the defendant from printing or publishing any such cards, or otherwise trading in the name of the plaintiff, it was held that the defendant, “ by virtue of the assignment to him of the good will of the business, was entitled to use the name of the plaintiff for the purpose of showing that the business was that formerly canned on by the plaintiff, but must not so exercise that right as to expose the plaintiff to liability; and held that, under the circumstances, an injunction must be granted to restrain the defendant from using the plaintiff’s name in such a way as to expose him to any liability.” In the case at bar we discover nothing to indicate that the plaintiff is using the words “ Eish Bros.” or “ Eish Bros. & Co.” in a manner to expose any of the defendants to liability. In fact, no claim of that kind is made; and hence so long as the plaintiff uses those words honestly and truthfully, and for the legitimate purpose designed, the defendants have no ground for complaint. On the authorities cited, and others which might be cited, we are constrained to hold that the defendants are not entitled to an injunction against the plaintiff.

On the same theory the defendants have the lawfful right to honestly and truthfully state where they formerly resided, the experience they have respectively had, and the skill they respectively possess in the manufacture of wagons and other vehicles; but they have no right to represent their present business as the same which they formerly conducted at Eacine. The circular addressed “ To Our Old Customers and the Implement Trade,” issued by Fish Bros. & Co., and mentioned in the complaint and the foregoing statement, is, to a limited extent, objectionable on this ground; as, for instance, where it speaks of their “ change of location” and “firm name,’! Eish Bros., “formerly of Bacine, Wis.,” and for the “first time since 1883 we shall be able to furnish our patrons with the genuine Eish Bros. & Co. wagon, fully up to our old standard of that date.” But the defendants may truthfully and in good faith publish the good qualities and material of the wagons and vehicles' manufactured by them, and their superior facilities for the manufacture of the same at South Superior. In other words, their advertisements and marks must truthfully and in good faith refer to their own manufactures, trade, and business, and not to those of the plaintiff.

See note to this case in 16 L. R. A. 453.— Rep.

By the Court. — The order of the circuit court is reversed, and the cause is remanded for further proceedings according to law.

WiNslow, J.

I agree that the words “ Eish Bros. Wagon ” and the rebus of the fish were trade names or labels appertaining to the business transacted at the Bacine factory, and that the right to use such names or labels upon wagons was acquired by the plaintiff by its purchase of that business.

Such a right is, in its very nature, exclusive, and if the plaintiff owns it the defendants manifestly do not own it. In my judgment, the defendants have no right to mark their wagons with either the words or the rebus.

Probably they have the right to use the firm name “ Eish Bros. & Co.,” if they do not use it in such a way as to mislead the public, but this would not give them the right to use a trade name or label on their wagons which is the distinctive mark of the product of the Bacine factory, and the right to use which has passed from the defendants T. G. and F. JB. Fish to that concern.