198 U. S. Argument for Petitioners. every legitimate purpose; and where a personal or generic name has acquired a secondary signification, the most that can be required of a person having a right to use such name is that he shall accompany its use "with such indications as to show that the thing manufactured is the work of the one making it." Holzapfel Co. v. Rahtjens Co., 183 U. S. 1; Baker v. Baker, 115 Fed. Rep. 297; Duryea v. National Starch Co., 79 Fed. Rep. 651. In cases like that at bar, the ground of relief is the injury to a complainant by the passing off of defendant's wares for those of complainant, and where a complainant invariably marks his wares with his name, address and a designating mark, the fact that a defendant has invariably marked his wares with his own name and address and with a different distinctive mark, is most persuasive of the absence of any intent to pass off his wares as and for complainant's. Cases supra and Goodyear Rubber Co. v. Goodyear Rubber Mfg. Co., 128 U. S. 598; Corbin v. Gould, 153 U. S. 328; Coats v. Merrick Thread Co., 149 U. S. 562; Lorillard v. Peper, 86 Fed. Rep. 956; Kahn v. Diamond Steel Co., 89 Fed. Rep. 706; Proctor & Gamble Co. v. Globe Ref. Co., 92 Fed. Rep. 357; Dadirrian v. Yacubian, 98 Fed. Rep. 872; Sebastian on Trade Marks, 4th ed., 123. The issuing of cautionary circulars is recognized by the courts as clearly repugnant to any purpose to palm off defendant's wares for complainant's. Cases supra and Boiler Co. v. Tripod Boiler Co., 142 Ill. Sup. 494; Salt Co. v. Burnap, 73 Fed. Rep. 818; Walter Baker Co. v. Sanders, 80 Fed. Rep. 889; Allegretti Co. v. Keller, 85 Fed. Rep. 643; Menendez v. Holt, 128 U. S. 514, 520; Pittsburg Co. v. Pittsburg Co., 64 Fed. Rep. 841. Where the name or mark adopted by a defendant is sufficiently different from that employed by a complainant to enable the ordinary purchaser, using reasonable care, to distinguish defendant's from complainant's goods, no injunction will issue. The name "Sholes" amply differentiates the com Argument for Petitioners. 198 U.S. pound names "Remington-Sholes" and "Remington-Sholes Company" from the single name "Remington." Cases supra and Liggett & Myers Co. v. Finzer, 128 U. S. 182; Meneely v. Meneely, 62 N. Y. 427. use. The courts have uniformly recognized that a man's use of his name in a firm name is a reasonable, honest and legitimate National Starch Mfg. Co. v. Duryea, 101 Fed. Rep. 117; S. C., 79 Fed. Rep. 651; Gilman v. Hunnewell, 122 Massachusetts, 139; English v. Publishing Co., 8 Daly (N. Y.), 375; Marcus Ward & Co. v. Ward, 61 Hun, 625; Burgess v. Burgess, 3 DeG. M. & G. 896; Hardy v. Cutter, 3 O. G. 468. It being a general custom to employ personal names for corporations, no distinction can be made between the use of such names in a firm and in a corporation, since in both cases the names adopted are selected and artificial. Baker v. Baker, 115 Fed. Rep. 297, 303; Celluloid Co. v. Cellonite Co., 32 Fed. Rep. 94; Monarch v. Rosenfeld, 39 S. W. Rep. 236; Am. Cereal Co. v. Eli Pettijohn Co., 72 Fed. Rep. 903; Scott S. & C. Co. v. J. W. Scott Co., 58 N. Y. Super. Ct. 379; Employers' Co. v. Employers' Co., 61 Hun, 552; Columbia Mill Co. v. Alcorn, 150 U. S. 460. The courts recognize that the business of a corporation or of a firm in which a man has his capital invested, and to which he devotes his whole time and energy is his business, and that he has a right to use his name in connection therewith. Although it is true that there is no necessity for a man engaged in a corporation or in a firm to employ his name in connection therewith-since both firm and corporate names are alike artificial-this lack of necessity for using a personal name cannot affect the individual's right to so use it, because such use is a universally recognized legitimate and reasonable use of a personal name. Turton & Sons v. Turton & Sons, 42 Ch. D. 128; Continental Ins. Co. v. Continental Assn., 96 Fed. Rep. 846; Chivers & Sons v. Chivers & Co., 17 R. C. P. 420. The decisions recognize family reputation as a valuable heritage and as an ample reason for the use by a man of his 198 U. S. Argument for Petitioners. name in the selection of a firm name and in its business. In this case defendant has never imitated complainant's signs, labels or other indicia, nor trespassed upon its good will, which complainant owns, but has simply availed in an honest. way of the family reputation, which complainant does not own, of Mr. Franklin Remington, the general manager of the Remington-Sholes Company. See German decisions regarding name "Remington-Sholes," in Newald v. Glogowski & Co., rendered by the Koenigliches Kammergericht, July 3, 1897, affirmed March 4, 1898, by the German Reichsgericht, and these decisions although not of controlling force, should be recognized as precedents. Liebig Co. v. Libby, McNeill &c., 103 Fed. Rep. 87; Centaur Co. v. Heinsfurter, 84 Fed. Rep. 955; Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169. In considering a corporate name comprising one or more personal names, the impression is different from that conveyed, under certain circumstances, by a corporate name involving geographical or purely fanciful names. In such latter cases the public may assume that the corporation having the double name is a consolidation of two corporations, but even in such cases the courts have frequently refused to grant injunctions against defendants bearing the double names. Merchants' Banking Co. of London v. Merchants' Joint Stock Bank, L. R. 9 Ch. Div. 560; London & Provincial Law Assurance Society v. London & Provincial Joint Stock Life Assurance Co., 17 L. J. (Ch.) 37; London Assurance v. London & Westminster Assurance Corp., Ltd., 32 L. J. (Ch.) 664; Colonial Life Assurance Co. v. Home & Colonial Assurance Co., Ltd., 33 Beav. 548; Kerly on Trade Marks, 2d ed., 510. The Remington-Sholes Company never used its corporate name otherwise than as an entirety (except as its machines are marked "Rem-Sho", or in any manner tried to conceal or disguise its own identity. While the appearance of the name "Remington" in the corporate name of the Remington-Sholes Company may tempt the curiosity of some persons to inquire as to the existence of Argument for Petitioners. 198 U. S. a connection between such company and complainant, the use of the name "Sholes" in such corporate name is a distinction so prominent that no reasonable person can fail to recognize it, and, if vested with common intelligence, to understand its significance. Yost Typewriter Co. v. Typewriter Exchange Co., 19 R. P. C. 423; Aerators, Ltd. v. Tollit, 19 R. P. C. 419; Heintz v. Lutz, 146 Pa. St. 592. Where a name is incapable of exclusive appropriationlike the name Remington-a court will not destroy the right of another to use such name but will direct its injunctive process against the specific abuse of the right, if any such has occurred. The sweeping decrees of the lower courts in the case at bar are therefore manifestly in error. Singer Mfg. Co. v. June Mfg. Co., supra; Meriden Brittania Co. v. Parker, 39 Connecticut, 450; Ill. National Watch Co. v. Ill. Watch Case Co., supra. That defendant in the case at bar has not been guilty of any unfair trade competition (unless the use of the name "Remington-Sholes" be so regarded) is conclusively established by the record and has been unanimously so held by the Circuit Court of Appeals. The record being devoid of any showing that there has ever been any deception or mistake or injury to complainant by reason of the use of the name "Rem-Sho," this court will not disturb the unanimous finding of the Court of Appeals allowing defendant's right to use such fanciful name. Rem-Sho is a fanciful name and can be trade-marked. Brown on Trade Marks, §§ 273, 337; Sterling Co. v. Eureka Co., 80 Fed. Rep. 105; Amoskeag Mfg. Co. v. Trainer, 101 U. S. 51, 56; nor can its suggestiveness detract from its character as a distinctive trade-mark. Davis v. Kendall, 2 R. I. 566; Holt Co. v. Wadsworth, 41 Fed. Rep. 34; 26 Am. & Eng. Ency. 282. Cases cited by appellee are inapplicable, as in those cases the trade-mark was held illegal and adopted for purposes of deception and imitation. 198 U. S. Argument for Respondent. As to what is necessary to establish a charge of unfair competition, see Gorham Co. v. Emery &c. Co., 104 Fed. Rep. 243; Brown Chemical Co. v. Meyer, 139 U. S. 540; Centaur Co. v. Marshall, 97 Fed. Rep. 785; Lorillard v. Peper, 86 Fed. Rep. 956; Sterling Co. v. Eureka Co., 80 Fed. Rep. 105; Rogers v. Rogers Mfg. Co., 70 Fed. Rep. 1019; Mueller Co. v. McDonally & Morrison Co., 132 Fed. Rep. 585; Am. Washboard Co. v. Saginaw Co., 103 Fed. Rep. 281; Coats v. Merrick Thread Co., 149 U. S. 562, 573; Richardson & Boynton v. Richardson & Morgan, 8 N. Y. 52; and cases cited supra. Petitioner's machine is the only typewriter actually made by a Remington, and equity will not enjoin a defendant from speaking the truth. Canal Co. v. Clark, 13 Wall. 311; Lawrence Co. v. Tennessee Co., 138 U. S. 537; Holmes, Booth & Hayden case, 97 Connecticut, 278; Leather Cloth Co. v. American L. C. Co., 11 Jur. N. s. 513; Jennings v. Johnson, 37 Fed. Rep. 365; Tarrant & Co. v. Hoff, 76 Fed. Rep. 959. The law assumes that purchasers will use ordinary care. Cases supra and Rogers v. Simpson, 54 Connecticut, 568; Faber v. Faber, 49 Barb. 357; Ball v. Siegel, 116 Illinois, 137; Monroe v. Tousey, 129 N. Y. 138; Knights of Pythias case, 71 N. W. Rep. 470; Singer Co. v. Wilson, 2 Ch. Div. 477; Popham v. Cole, 66 N. Y. 69; Fairbanks v. Bell Co., 77 Fed. Rep. 869; Morse v. Worrel, Price & Steuart Am. Tr. Cas. 8. Mr. Henry D. Donnelly and Mr. Edmund Wetmore, with whom Mr. William W. Dodge and Mr. Archibald Cox were on the brief, for respondent: Respondent is the exclusive owner of all trade-names and trade-marks of its predecessors, relating to the typewriter business, and has the legal right to designate its product by the trade-names and trade-marks adopted and used by E. Remington & Sons and by its other predecessors. Richmond & Co. v. Richmond, 159 U. S. 293; Walter Baker & Co. v. Sanders, 80 Fed. Rep. 889; Raymond v. Royal Baking Powder Co., 85 Fed. Rep. 231; Kidd v. Johnson, 100 U. S. 618; Le Page VOL. CXCVIII-9 |