Mr. Justice Gridley
delivered the opinion of the court.
Among the findings of the court in the decree appealed from are that “the tubular ice skates manufactured by the complainant and its predecessor Nestor Johnson had, prior to the year 1917, come to be, and were then, known to skaters and the trade in general as ‘Johnson skates,’ ” and that “the word ‘Johnson’ had ceased to be only the name of the manufacturer and had gained a secondary meaning describing and indicating the particular make of tubular ice skates of Nestor Johnson Manufacturing Company, the complainant.” And the court perpetually enjoined the Skate Company, first from using, in the advertising, distribution or sale upon any skate, box, letterhead, etc., “the word ‘Johnson’ in its secondary sense as hereinbefore defined,” in the description or partial description of, or as the name or part of the name of, a tubular ice skate, and, second, from using, in the advertising, distribution or sale upon any skate, box, letterhead, etc., “the name ‘Alfred Johnson Skate Company’ in print, script or writing in any form without the four words of said name set forth in equal prominence,” etc., “and without adding thereto in type,” etc., “the words ‘Not connected with the original Nestor Johnson Manufacturing Company. ’ ”
The name “Johnson” is a well-recognized family surname. It is the law 'that a personal name cannot be exclusively appropriated by any one as against another having a right to use it in his business. (38 Cyc. 807; Meneely v. Meneely, 62 N. Y. 427, 431; Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 187; Howe Scale Co. v. Wyckoff, 198 U. S. 118, 134.) And it makes no difference- whether that other’s name is used in a firm or an incorporated company, provided there is no dishonesty in its use. (38 Cyc. 817; Howe Scale Co. v. Wyckoff, 198 U. S. 118, 136.) In the case last cited it is said (p. 140): “Having the right to that use, courts will not interfere where the only confusion, if any, results from a similarity of the names and not from the manner of the use. The essence of the wrong in unfair competition consists in the sale of the goods of one manufacturer or vendor for those of another, and if defendant so conducts its business as not to palm off its goods as those of complainant, the action fails. * * * We hold that, in the absence of contract, fraud or estoppel, any man may use his own name, in all legitimate ways, and as the whole or a part of a corporate name. ’ ’ Hence, it would seem to follow that the mere use of the name “Johnson” in defendant’s corporate name, especially where as here the evidence discloses that Alfred Johnson is its president and owns a considerable amount of its capital stock, is not a ground for the issuance of the injunction. The burden was upon the complainant company to prove something more. As this is an “unfair competition” case and as thére is no question here involved of contract or estoppel, the basis of complainant’s action is fraud. It was not claimed that the Skate Company had directly attempted to palm off skates manufactured by it as the skates of the complainant company. The theory of the action was in substance (1) that the word “Johnson,” as used by Nestor Johnson and afterwards by complainant company, had ceased to indicate only the name of a manufacturer of tubular ice skates but had gained a secondary meaning indicating a particular make of such skates manufactured by complainant company and by it alone, and (’2) that the Skate Company was using the name “Johnson” in its said secondary meaning in its corporate name, business, advertisements, etc., and thereby was in effect passing off the skates manufactured by it as those of the complainant company. In 38 Cyc. 769, it is said:
“Words or names which have a primary meaning of their own, such as words descriptive of the goods, or the place where they are made, or the name of the maker, and which are not capable of exclusive appropriation as a trade-mark, may nevertheless by long use in connection with the goods or business of a particular trader come to be understood by the public as designating the goods or business of that particular trader. Such words have both a primary and secondary meaning. In their primary descriptive sense, they are publid juris, and all the world may use them, but they must be used in such a way as not to falsely convey the secondary meaning, for this would constitute unfair competition as tending directly to pass off the goods or business of one man as and for that of another. This is what is known as the doctrine of secondary meaning. * * * In all this class of cases where the word, ñame, or other mark or device is primarily publid juris the right to relief depends upon the proof. If the plaintiff proves that the name or word has been so exclusively identified with Ms goods or business as to have acquired a secondary meaning, so as to indicate , his goods or business and his alone, he is entitled to relief against another’s deceptive use of such terms. If he fails in such proof, he is not entitled to relief.”
In Kellogg Toasted Corn Flake Co. v. Quaker Oats Co., 235 Fed. 657, 664, decided by the Circuit Court of Appeals of the sixth circuit, it is said:
“If the words in issue in the instant case constitute a technical trade-mark, „ use by others of the mark would be presumed to be made with wrongful intent and so would be enjoined. * * * This, however, is not the rule in respect of the use by others of descriptive words which have acquired such secondary significance as is here urged. * * * It is conceded that the burden of proof is upon the appellant to establish such secondary meaning; and this is a substantial burden, since the ultimate fact to be proved is fraud, that is, that defendant is using the words in their secondary, not simply their primary, sense, and with the result of passing off its goods as the goods of appellant. ’ ’
In Hanover Star Milling Co. v. Allen & Wheeler Co., 208 Fed. 513, 518, decided by the Circuit Court of Appeals of the seventh circuit, it is said :-
“In both the ‘trade-mark’ and the ‘unfair competí-■ tion’ cases the ground of the action and the reason for the remedy are identical. They are all cases of unfair competition in trade, and the remedy is to tie the hands of the unfair trader. To the extent that differences exist, they pertain, not to the underlying principle, but to the methods and degrees of proof required to enforce the principle. If a dealer has adopted a true trade-mark, his trade has given the mark its only meaning, and he need produce no other proof respecting meaning. If he has applied to his article a mark or name that had an existing meaning, it is incumbent on him to establish the fact that his trade has added a new meaning that is exclusively appendant to his trade. If a defendant has put into a common market his articles bearing another dealer’s technical trade-mark, no further proof of fraud is required. If a defendant has put into a common market his articles bearing a mark or name that had a common meaning, the complainant must show that the defendant is using the mark or name, not in its common meaning, but in its new meaning created by the complainant.”
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Mr. Justice Gridley
delivered the opinion of the court.
Among the findings of the court in the decree appealed from are that “the tubular ice skates manufactured by the complainant and its predecessor Nestor Johnson had, prior to the year 1917, come to be, and were then, known to skaters and the trade in general as ‘Johnson skates,’ ” and that “the word ‘Johnson’ had ceased to be only the name of the manufacturer and had gained a secondary meaning describing and indicating the particular make of tubular ice skates of Nestor Johnson Manufacturing Company, the complainant.” And the court perpetually enjoined the Skate Company, first from using, in the advertising, distribution or sale upon any skate, box, letterhead, etc., “the word ‘Johnson’ in its secondary sense as hereinbefore defined,” in the description or partial description of, or as the name or part of the name of, a tubular ice skate, and, second, from using, in the advertising, distribution or sale upon any skate, box, letterhead, etc., “the name ‘Alfred Johnson Skate Company’ in print, script or writing in any form without the four words of said name set forth in equal prominence,” etc., “and without adding thereto in type,” etc., “the words ‘Not connected with the original Nestor Johnson Manufacturing Company. ’ ”
The name “Johnson” is a well-recognized family surname. It is the law 'that a personal name cannot be exclusively appropriated by any one as against another having a right to use it in his business. (38 Cyc. 807; Meneely v. Meneely, 62 N. Y. 427, 431; Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 187; Howe Scale Co. v. Wyckoff, 198 U. S. 118, 134.) And it makes no difference- whether that other’s name is used in a firm or an incorporated company, provided there is no dishonesty in its use. (38 Cyc. 817; Howe Scale Co. v. Wyckoff, 198 U. S. 118, 136.) In the case last cited it is said (p. 140): “Having the right to that use, courts will not interfere where the only confusion, if any, results from a similarity of the names and not from the manner of the use. The essence of the wrong in unfair competition consists in the sale of the goods of one manufacturer or vendor for those of another, and if defendant so conducts its business as not to palm off its goods as those of complainant, the action fails. * * * We hold that, in the absence of contract, fraud or estoppel, any man may use his own name, in all legitimate ways, and as the whole or a part of a corporate name. ’ ’ Hence, it would seem to follow that the mere use of the name “Johnson” in defendant’s corporate name, especially where as here the evidence discloses that Alfred Johnson is its president and owns a considerable amount of its capital stock, is not a ground for the issuance of the injunction. The burden was upon the complainant company to prove something more. As this is an “unfair competition” case and as thére is no question here involved of contract or estoppel, the basis of complainant’s action is fraud. It was not claimed that the Skate Company had directly attempted to palm off skates manufactured by it as the skates of the complainant company. The theory of the action was in substance (1) that the word “Johnson,” as used by Nestor Johnson and afterwards by complainant company, had ceased to indicate only the name of a manufacturer of tubular ice skates but had gained a secondary meaning indicating a particular make of such skates manufactured by complainant company and by it alone, and (’2) that the Skate Company was using the name “Johnson” in its said secondary meaning in its corporate name, business, advertisements, etc., and thereby was in effect passing off the skates manufactured by it as those of the complainant company. In 38 Cyc. 769, it is said:
“Words or names which have a primary meaning of their own, such as words descriptive of the goods, or the place where they are made, or the name of the maker, and which are not capable of exclusive appropriation as a trade-mark, may nevertheless by long use in connection with the goods or business of a particular trader come to be understood by the public as designating the goods or business of that particular trader. Such words have both a primary and secondary meaning. In their primary descriptive sense, they are publid juris, and all the world may use them, but they must be used in such a way as not to falsely convey the secondary meaning, for this would constitute unfair competition as tending directly to pass off the goods or business of one man as and for that of another. This is what is known as the doctrine of secondary meaning. * * * In all this class of cases where the word, ñame, or other mark or device is primarily publid juris the right to relief depends upon the proof. If the plaintiff proves that the name or word has been so exclusively identified with Ms goods or business as to have acquired a secondary meaning, so as to indicate , his goods or business and his alone, he is entitled to relief against another’s deceptive use of such terms. If he fails in such proof, he is not entitled to relief.”
In Kellogg Toasted Corn Flake Co. v. Quaker Oats Co., 235 Fed. 657, 664, decided by the Circuit Court of Appeals of the sixth circuit, it is said:
“If the words in issue in the instant case constitute a technical trade-mark, „ use by others of the mark would be presumed to be made with wrongful intent and so would be enjoined. * * * This, however, is not the rule in respect of the use by others of descriptive words which have acquired such secondary significance as is here urged. * * * It is conceded that the burden of proof is upon the appellant to establish such secondary meaning; and this is a substantial burden, since the ultimate fact to be proved is fraud, that is, that defendant is using the words in their secondary, not simply their primary, sense, and with the result of passing off its goods as the goods of appellant. ’ ’
In Hanover Star Milling Co. v. Allen & Wheeler Co., 208 Fed. 513, 518, decided by the Circuit Court of Appeals of the seventh circuit, it is said :-
“In both the ‘trade-mark’ and the ‘unfair competí-■ tion’ cases the ground of the action and the reason for the remedy are identical. They are all cases of unfair competition in trade, and the remedy is to tie the hands of the unfair trader. To the extent that differences exist, they pertain, not to the underlying principle, but to the methods and degrees of proof required to enforce the principle. If a dealer has adopted a true trade-mark, his trade has given the mark its only meaning, and he need produce no other proof respecting meaning. If he has applied to his article a mark or name that had an existing meaning, it is incumbent on him to establish the fact that his trade has added a new meaning that is exclusively appendant to his trade. If a defendant has put into a common market his articles bearing another dealer’s technical trade-mark, no further proof of fraud is required. If a defendant has put into a common market his articles bearing a mark or name that had a common meaning, the complainant must show that the defendant is using the mark or name, not in its common meaning, but in its new meaning created by the complainant.”
The record in the present ease, including the many letters, circulars, advertisements and other exhibits, is very voluminous. We have carefully examined the testimony and many of the exhibits and are of the opinion that the complainant company did not sustain the burden, which the law casts upon it, of proving the secondary meaning of the name “Johnson” as claimed, or of proving that the Skate Company used that name in its secondary meaning and thereby passed off the skates manufactured by it as those of the complainant company. To discuss the evidence bearing on these points in detail would unnecessarily extend this opinion and serve no useful purpose. Suffice it to say that in our opinion the entire evidence discloses that most of the skates of the complainant company were advertised and sold under the trade name “North-Star” and were known to the trade as “North-Star” skates rather than “Johnson” skates; that several other concerns in the United States at various times manufactured and sold tubular ice skates which were known in certain localities as ‘ ‘ Johnsons ’ ’; that the name ‘‘Johnson ’ ’ was first given to such skates because of their use prior to 1895 by a celebrated skater, named John S. Johnson; and that as early as 1895, and thereafter, certain individuals manufactured and sold such skates, advertising them as “John S. Johnson’s Speed Skates.” And our conclusion is, under the law and the facts in evidence, that the above-mentioned finding of the court (viz., that the word “Johnson” had ceased to be only the name of the manufacturer and had gained a secondary meaning describing and indicating a particular make of tubular ice skate, manufactured and sold by complainant company and by it alone) is not sustained by the evidence, and that the decree appealed from is not warranted, either as to the injunction or the accounting. It is true, as found by the court, that some confusion arose in the skate trade and in minds of some purchasers of tubular ice skates as the result of the acts of the Skate Company, but, in our opinion, this confusion resulted, not from any deception practiced by the Skate Company, or its officers or agents, but rather from the word “Johnson” appearing in the corporate names of the parties, and from certain similarities in the catalogs and advertisements of the parties and in the pasteboard boxes in which the skates were packed and sold. In Meneely v. Meneely, 62 N. Y. 427, 432, it is said: “Where the only confusion created is that which results from the similarity of the names the courts will not interfere.” (See also, Hazelton Boiler Co. v. Hazelton Tripod Boiler Co., 142 Ill. 494, 509.) In Ball v. Siegel, 116 Ill. 137, 146, it is said: “The court is not bound to interfere where ordinary attention will enable purchasers to discriminate between the trade-marks used by different parties.” And we do not think that the evidence as to confusion was such as warranted the decree. (See United States Tobacco Co. v. McGreenery, 144 Fed. 531, 534; Viavi Co. v. Vimedia Co., 245 Fed. 289, 293; De Long Hook and Eye Co. v. Hump Hairpin Mfg. Co., 297 Ill. 359, 369.) What is said in the Hump Hairpin case, supra, p. 370, is here applicable, viz.: “Even a casual observer would readily distinguish the appellant’s packages and advertisements from those of the appellee. If purchasers were mistaken it was not because they were deceived by false representations, and equity will not enjoin against telling the truth.”
Counsel for the Skate Company in his brief here filed contends, in addition to his main contention that the injunction on the merits' of the case was wrongfully issued, that complainant’s delay in instituting suit should alone defeat the action. The bill was filed on September 18, 1919. The Skate Company was incorporated in March, 1917. It appears from the evidence in substance that immediately after incorporation the Skate Company commenced doing business, adopted various trade names for different grades of skates manufactured by it, issued' circulars, letters and catalogs to the trade and entered upon an intensive advertising campaign; that its methods of advertising, trade practices, forms of stationery, labels, boxes, etc., continued practically the same as in the beginning; that its place of business was located about one-half mile from complainant’s; that it sold its product to substantially the same trade and in substantially the same field; that its business became a prosperous one; and that complainant was fully informed as to its acts and methods from the beginning. And counsel argues that complainant’s failure to take any steps for over two years and until the present bill was filed to stop the Skate Company from doing the acts complained of amounts to such acquiescence by it in the Skate Company’s acts as is sufficient to warrant a dismissal of the bill. We think that there is merit in the contention and the argument. And what is said in Valvoline Oil Co. v. Havoline Oil Co., 211 Fed. 189, 194, may here be quoted, viz.:
“I think we must realize modern conditions. Men can build up new businesses these days in a period of time which would have seemed amazingly short years ago. It is true that mere acquiescence will not preclude injunctive relief, but whether a case falls within the principle of Menendez v. Holt, 128 U. S. 523, * * * or within Richardson v. Osborne & Co., (C. C.), 82 Fed. 95, affirmed 93 Fed. 828, * * * depends, of course, on the particular facts and circumstances. Where a trade-mark is bodily appropriated, as in Menendez v. Holt, the courts will grant injunctive relief, although in some instances denying an accounting. See also, Mosler & Co. v. Lurie, 209 Fed. 364. * * * But this is not such a case. * * *
“I am of opinion that equity as applied to modern business developments requires that, in this particular case, injunctive relief in any event be denied. No satisfactory explanation is given for the delay, and, during that time, the defendants have spent thousands of dollars to create a valuable asset in the word ‘Havoline. ’ Complainant is not uninformed, as in Mosler é Co. v. Hwrie, supra, but is a business corporation in this very same kind of business.
“There are cases where delay is excusable because it is necessary to obtain essential testimony or because a person unfamiliar with the subject-matter is ignorant of his rights, or where there is some situation that shows that a defendant should not be permitted to go on with his own wrongful conduct just because he has continued it for a long time.
“But it cannot be equitable for a well-informed merchant with knowledge of a claimed invasion of right, to wait to see how successful his competitor will be and then destroy with the aid of a court decree, much that the competitor has striven for and accomplished — especially in a case where the most that can be said is that the trade-mark infringement is a genuinely debatable question.”
For the reasons indicated we are of the opinion that the court erred in entering the decree appealed from and that the decree should be reversed and the cause remanded with directions to dismiss complainant’s bill for want of equity, and it is so ordered.
Reversed and remanded with directions.
Barnes, P. J., and Pitch, J., concur.