In an action to restrain the use of a personal name in trade,
where it appears that defendant has the right to use the name and
has not done anything to promote confusion in the mind of the
public except to use it, complainant's case must stand or fall on
the possession of the exclusive right to the use of the name.
A personal name -- an ordinary family surname such as Remington
-- cannot be exclusively appropriated by any one as against others
having a right to use it; it is manifestly incapable of exclusive
appropriation as a valid trademark, and its registration as such
can not, in itself, give it validity.
Every man has a right to use his name reasonably and honestly in
every way, whether in a firm or corporation; nor is a person
obliged to abandon the use of his name or to unreasonably restrict
it.
It is not the use, but dishonesty in the use, of the name that
is condemned, and it is a question of evidence in each case whether
there is false representation or not.
One corporation cannot restrain another from using in its
corporate title a name to which others have a common right.
Where persons or corporations have a right to use a name, courts
will not interfere where the only confusion results from a
similarity of names,
Page 198 U. S. 119
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 person
for that of another, and if defendant is not attempting to palm off
its goods as those of complainant, the action fails.
This was a bill exhibited, in September, 1898, by Wyckoff,
Seamans & Benedict, a corporation of New York, in the Circuit
Court of the United States for the District of Vermont against the
Howe Scale Company of 1886, a corporation of Vermont, alleging that
complainant had been for many years engaged in the manufacture and
sale of typewriting machines known in the markets and to the trade
and public, and referred to, identified, offered for sale, and sold
as the "Remington typewriter," and the "Remington Standard
typewriter," and that the words "Remington" and "Remington
Standard" had been registered in the Patent Office under the act of
Congress, and charging defendant with fraud and unfair competition
in making use of the corporate name "Remington-Sholes Company" and
the designations "Remington-Sholes," "Rem-Sho" and
"Remington-Sholes Company" in advertising for sale, offering for
sale, and selling typewriting machines, and praying for an
accounting, and for an injunction restraining defendant from
advertising or offering for sale or selling typewriting machines
manufactured by the "Remington-Sholes Company," bearing the name
"Remington" or "Remington-Sholes" or "Rem-Sho" or "Remington-Sholes
Company," and from advertising or offering for sale or selling any
such machines under said designation or under any designation of
which the name "Remington" was a part.
Defendant was the sales agent of the "Remington-Sholes Company,"
a corporation of Illinois, and was engaged in selling the
typewriting machines called the "Remington-Sholes" or "Rem-Sho"
typewriter, which were manufactured by the Illinois corporation at
Chicago. The right to use those designations in the way they were
used was asserted by the defense, of which the Remington-Sholes
Company, and subsequently the Fay-Sholes Company, had charge. The
word
Page 198 U. S. 120
"Rem-Sho" was alleged to have been registered in the Patent
Office as a trademark.
The circuit court found that defendant's use of the name
"Remington" was an unjustifiable invasion of complainant's right to
the use of that name, and entered a decree, August 14, 1901,
denying an account for gains and profits, without prejudice to the
recovery thereof from the Remington-Sholes Company, and perpetually
enjoining the use of the designation "Remington," or "Rem-Sho," as
the name or part of the name of any typewriting machine whatsoever
manufactured by the "Remington-Sholes Company," or by defendant, or
any person or concern, and from selling, offering, or advertising
for sale in any manner, typewriting machines so manufactured "under
the name of or as "Remington-Sholes" or "Rem-Sho," or by any
designation of which the word "Remington" or the abbreviation "Rem"
shall constitute a part." 110 F. 520.
The case was carried by appeal to the Circuit Court of Appeals
for the Second Circuit, and was there heard before Circuit Judges
Wallace, Lacombe, and Coxe. April 20, 1903, the decree was
reversed, without costs, and the cause remanded "with instructions
to decree in favor of complainant only as to the name
Remington.'" Lacombe, J., delivered an opinion in support of
that decree, Coxe, J., concurring in the conclusion because "unable
to distinguish this cause from Rogers v. Rogers, 70 F.
1017;" Wallace, J., dissented, holding that the decree of the
circuit court should be reversed with instructions to dismiss the
bill. 122 F. 348.
It appeared that the mandate of the circuit court of appeals was
issued April 22, 1903, and that the circuit court entered a final
decree, June 22, 1903, enjoining the use of the word "Remington,"
and also that, after the original decree of the circuit court the
Remington-Sholes Company changed its corporate name to that of
Fay-Sholes Company, and ceased to make its machines marked with the
registered trademark "Rem-Sho," and with the inscription
"Remington-Sholes Company, Mfrs., Chicago."
Page 198 U. S. 121
It also appeared that, in October, 1901, complainant filed its
bill in the Circuit Court of the United States for the Northern
District of Illinois against the Remington-Sholes Company for
alleged unfair trade competition, and that, after answers filed, an
order was entered staying proceedings until the determination of
this cause, and providing that, if this cause resulted in favor of
complainant, that cause should be sent at once to an
accounting.
On petition of the Howe Scale Company of 1886, and the
Fay-Sholes Company, filed October 22, 1903, and on petition of
Wyckoff, Seamans & Benedict, filed December 21, 1903, writ and
cross-writ of certiorari were granted.
For some years prior to 1860, E. Remington and his three sons
were engaged at Ilion, New York in the manufacture of firearms
under the firm name of E. Remington & Sons. The father died in
1863, and in 1865 the sons, who had continued the business,
organized the corporation E. Remington & Sons under the laws of
New York. About 1866 E. Remington & Sons produced a
breech-loading rifle that obtained great vogue throughout the
world, and was and is known as "the Remington rifle." The
"Remington sewing machine" and other machines were also
manufactured and sold.
In 1873, E. Remington & Sons began the manufacture of a
typewriting machine, the most important features of which were
invented and patented by Christopher Latham Sholes. It was the
pioneer writing machine, and called "the Typewriter," and "the
Sholes & Glidden typewriter," and in 1880 the names "Remington"
and "Remington Standard" were used instead, as they have since been
continuously.
One of complainant's witnesses testified that the typewriter was
called "Remington"
"for the reason that the name Remington was known the world
over, owing to their building guns for foreign governments,
building sewing machines, and having one of the largest
manufacturing works in the world."
In March, 1886, the typewriter branch of the business of E.
Remington & Sons was sold to Messrs. Wyckoff, Seamans &
Benedict,
Page 198 U. S. 122
and there was also transferred the exclusive right to the name
"Standard Remington Typewriter," by which name the assignment
states the machines were generally known. The assignment contained
the express reservation to E. Remington & Sons of the right to
engage in the manufacture and sale of typewriters at any time after
ten years from its date.
Complainant's typewriting machines have been for years
conspicuously marked with the name "Remington" and with a large
"Red Seal" trademark on the paper table and frame; the name and
address "Remington Standard Typewriter, manufactured by Wyckoff,
Seamans & Benedict, Ilion, N.Y. U.S.A." on the cross-bar in
front of the keyboard; the words and figures "No. 6 Remington
Standard Typewriter No. 6" on the front of the base, and the words
"This machine is protected by 67 American and foreign patents" on
the back. "Remington" and "Remington Standard" and the "Red Seal"
have all been registered by complainant as trademarks.
In 1892, Z. G. Sholes, a son of Christopher Latham Sholes,
invented a typewriting machine, and early in 1893 the Z. G. Sholes
Company was organized under the laws of Wisconsin for its
manufacture, but the stock of the company was never issued, and no
machine was ever made or sold by it. Later in the year, Franklin
and Carver Remington, sons of Samuel Remington, formerly president
of the E. Remington & Sons corporation, bought a three-fourths
interest in Sholes' invention, Sholes retaining one-fourth, and a
like interest in the stock of the company, paying from eight to
nine thousand dollars. They entered into a written agreement with
Sholes, which provided, among other things, that "no further,
other, or different business of any kind or nature shall be
transacted by said corporation or in its behalf, except that the
same may be dissolved, in due form of law, as soon as practicable
hereafter." Franklin Remington gave his entire time to the
promotion of the enterprise, and advanced for expenses from six to
seven thousand dollars in addition to the original investment of
eight or nine thousand. The name of the machine
Page 198 U. S. 123
was subsequently changed by Sholes from "The Z. G. Sholes" to
"The Remington-Sholes." Thereafter, the Remingtons and Sholes
induced Head and Fay of Chicago to furnish funds to manufacture the
Remington-Sholes machine, and a corporation organized in the spring
of 1894 for its manufacture was designated the "Remington-Sholes
Typewriter Company." This company purchased tools and machinery,
and its typewriting machines were placed on the market in December,
1894. In the fall of 1896, the company had become so deeply
indebted that it became necessary to take steps to meet its
obligations, and at a meeting of the stockholders December 14,
1896, it was resolved that the property and assets be sold at
public auction, the buyer to have the privilege of using all or any
part of the company's corporate name. Thereupon Fay purchased in
his own name, but as trustee for himself and other stockholders,
the whole of the assets of the company, together with its goodwill,
the exclusive right to use its trademarks, etc., and for some
months carried on the business at the factory formerly occupied by
the Remington-Sholes Typewriter Company. The charter of that
company was surrendered in April, 1897, and the Remington-Sholes
Company was incorporated under the laws of Illinois, and purchased
all the assets, goodwill, trademarks, trade names, etc.,
theretofore belonging to Fay and the Remington-Sholes Typewriter
Company. And the new company continued at the same factory and
through the same instrumentalities to manufacture and sell its
typewriters. It was stipulated that the common stock of the new
company
"was divided among the stockholders in keeping with the amounts
of cash actually invested by them in the Remington-Sholes
Typewriter Company, and that the allotment of said common stock to
said Franklin Remington was in keeping with such plan."
The machines made and sold by the Remington-Sholes Typewriter
Company were plainly marked with the words "Remington-Sholes,
Chicago." After the new company entered on the business, the
trademark "Rem-Sho" was adopted
Page 198 U. S. 124
(registered as a trademark October 19, 1907), and the machines
were also marked on the cross bars with the words "Remington-Sholes
Company, Mfrs., Chicago." The Remington-Sholes Typewriter Company
widely advertised that its machine "was not the Remington Standard
typewriter," and the catalogues circulated by the Remington-Sholes
Company declared:
"We state, then, emphatically that this company has no
connection whatever with that well known and excellent machine, the
Remington Standard typewriter, and caution possible customers
against confusing the 'Rem-Sho' with that machine or any other.
"
Page 198 U. S. 134
MR. CHIEF JUSTICE FULLER delivered the opinion of the Court.
Referring to the Remington-Sholes Company, it was unanimously
held by the circuit court of appeals:
"We do not find in this voluminous record sufficient evidence
that defendant has itself done anything to promote confusion in the
minds of the public, except to use the name 'Remington' on its
machines and in its literature."
Accepting that conclusion, it follows that complainant's case
must stand or fall on the possession of the exclusive right to the
use of the name "Remington."
But it is well settled that a personal name cannot be
exclusively appropriated by any one as against others having a
right to use it, and as the name "Remington" is an ordinary family
surname, it was manifestly incapable of exclusive appropriation as
a valid trademark, and its registration as such
Page 198 U. S. 135
could not, in itself, give it validity.
Brown Chemical
Company v. Meyer, 139 U. S. 540;
Singer Manufacturing Company v. June Manufacturing
Company, 163 U. S. 169;
Elgin National Watch Company v. Illinois Watch Case
Company, 179 U. S. 665.
The general rule and the restrictions upon it are thus stated in
Brown Chemical Company v. Meyer. There, plaintiff had
adopted as a trademark for its medicine the words "Brown's Iron
Bitters," and the defendants used upon their medicine the words
"Brown's Iron Tonic." This Court, after commenting upon the
descriptive character of the words "Iron Tonic," and confirming the
defendants' right to the use of these, said:
"It is hardly necessary to say that an ordinary surname cannot
be appropriated as a trademark 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 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."
And, after citing numerous authorities, MR. JUSTICE BROWN,
delivering the opinion, continued:
"These cases obviously apply only where the defendant adds to
his own name imitations of the plaintiff's labels, boxes, or
packages, and thereby induces the public to believe that his goods
are those of the plaintiff. A man's name is his own property, and
he has the same right to its use and enjoyment as he has to that of
any other species of property. If such use be a reasonable, honest,
and fair exercise of such right, he is no more liable for the
incidental damages he may do a rival in trade than he would be for
an injury to his neighbor's property by the smoke issuing from his
chimney, or for the fall of his neighbor's house by reason of
necessary excavations upon his own land. These and similar
instances are cases of
damnum absque injuria."
In
Singer Mfg. Co. v. June Mfg. Co., 163 U.
S. 169, the rule is thus laid down by MR. JUSTICE
WHITE:
Page 198 U. S. 136
"Although 'every one has the absolute right to use his own name
honestly in his own business, even though he may thereby
incidentally interfere with and injure the business of another
having the same name. In such case, the inconvenience or loss to
which those having a common right are subjected is
damnum
absque injuria. But although he may thus use his name, he
cannot resort to any artifice, or do any act calculated to mislead
the public as to the identity of the business, firm, or
establishment, or of the article produced by them, and thus produce
injury to the other beyond that which results from the similarity
of name.'"
In the present case, the decree enjoined the use, "in any manner
whatsoever,"
"of the designation 'Remington' as the name, or part of the
name, of any typewriting machine whatsoever manufactured by the
Remington-Sholes Company, or by defendant or any person or concern,
and from selling, offering, exposing or advertising for sale by
means of signs, show cards, catalogues, circulars, publications,
advertisements, or by word of mouth, or in any manner whatsoever,
typewriting machines manufactured by said Remington-Sholes Company
or by defendant, or any person or concern under the name of or as
'Remington-Sholes,' or by any designation of which the word
Remington shall constitute a part."
This denies the right to use the personal name, rather than aims
to correct an abuse of that right, and involves the assertion of
the proposition that the use of a family name by a corporation
stands on a different footing from its use by individuals or firms.
But if every man has the right to use his name reasonably and
honestly, in every way, we cannot perceive any practical
distinction between the use of the name in a firm and its use in a
corporation. It is dishonesty in the use that is condemned, whether
in a partnership or corporate name, and not the use itself.
Goodyear's India Rubber Glove Manufacturing Company v.
Goodyear Rubber Company, 128 U. S. 598, was
a suit by a corporation of New York against a corporation of
Connecticut
Page 198 U. S. 137
to restrain the use in business of the name "Goodyear's Rubber
Manufacturing Company," or any equivalent name. It was held that
"Goodyear Rubber" described well known classes of goods produced by
the process known as Goodyear's invention, and that such
descriptive names could not be exclusively appropriated. And Mr.
Justice Field, delivering the opinion, said:
"Names of such articles cannot be adopted as trademarks, and be
thereby appropriated to the exclusive right of any one; nor will
the incorporation of a company in the name of an article of
commerce, without other specifications, create any exclusive right
to the use of the name."
The principle that one corporation is not entitled to restrain
another from using in its corporate title a name to which others
have a common right is sustained by the discussion in
Columbia
Mill Company v. Alcorn, 150 U. S. 460, and
is, we think, necessarily applicable to all names
publici
juris. American Cereal Company v. Pettijohn Cereal
Company, 72 F. 903;
Hazelton Boiler Company v. Hazelton
Tripod Boiler Company, 142 Ill. 494;
Monarch v.
Rosenfeld, 19 Ky. 14.
It is said that the use of the word "Remington" in the name
"Remington-Sholes" was unnecessary -- as if necessity were the
absolute test of the right to use. But a person is not obliged to
abandon the use of his name or to unreasonably restrict it. The
question is whether his use is reasonable and honest, or is
calculated to deceive.
"It is a question of evidence in each case whether there is
false representation or not."
Burgess v. Burgess, 3 De G.
M. & G. 896.
The circuit court of appeals in the present case quotes with
approval from the concurring opinion of Wallace, J., in
R. W.
Rogers Company v. William Rogers Mfg. Co., 70 F. 1019,
that
"a body of associates who organize a corporation for
manufacturing and selling a particular product are not lawfully
entitled to employ as their corporate name in that business the
name of one of their number when it appears that such
Page 198 U. S. 138
name has been intentionally selected in order to compete with an
established concern of the same name, engaged in similar business,
and divert the latter's trade to themselves by confusing the
identity of the products of both, and leading purchasers to buy
those of one for those of the other. . . . The corporators chose
the name unnecessarily, and having done so for the purpose of
unfair competition, cannot be permitted to use it to the injury of
the complainant."
This, of course, assumes not only that the name selected was
calculated to deceive, but that the selection was made for that
purpose.
In
Turton and Sons v. Turton and Sons, 42 Ch.Div. 128,
plaintiffs had carried on the iron business as "Thomas Turton &
Sons." Defendant began the same business as John Turton, then
traded as John Turton & Co., and finally took in his sons and
changed the firm name to "John Turton & Sons." Some confusion
had arisen, and plaintiffs contended that there was no necessity
for defendants to use their own names.
Lord Esher said:
"Therefore the proposition goes to this length: that if one man
is in business, and has so carried on his business that his name
has become a value in the market, another man must not use his own
name. If that other man comes and carries on business, he must
discard his own name and take a false name. The proposition seems
to me so monstrous that the statement of it carries its own
refutation."
And Lord Macnaghten said in
Reddaway v. Banham,
L.R.Appeal Cases, 1896, 199, 220: "I am quite at a loss to know why
Turton v. Turton was ever reported. The plaintiff's case
there was extravagant and absurd."
And see Mencely v.
Mencely, 62 N.Y. 427;
Meriden Co. v. Parker, 39 Conn.
450.
In our opinion, the Remingtons and Sholes made a reasonable and
fair use of their names in adopting the name "Remington-Sholes" for
their machine, and in giving that name to the corporation formed
for its manufacture and sale.
The formation of a corporation as an effective form of
business
Page 198 U. S. 139
enterprise was not only reasonable in itself, but the usual
means in the obtaining of needed capital. And as Wallace, J.,
said:
"It was natural that those who had invented the machine, and
given all their time and means in introducing it to the public,
when they came to organize the corporation which was to represent
the culmination of their hopes and efforts, should choose their own
name as the corporate name. In doing so, I think they were
exercising only the common privilege that every man has to use his
own name in his own business, provided it is not chosen as a cover
for unfair competition. They did not choose the complainant's name
literally, or so closely that those using ordinary discrimination
would confuse the identity of the two names, and that
differentiation is sufficient to relieve them of any imputation of
fraud."
The name "Remington-Sholes Company" is not identical with, or an
imitation of, "Remington Standard Typewriter Company," or
"Remington Typewriter Company," or "E. Remington & Sons."
Defendant's marks "Rem-Sho," "Remington-Sholes Co., Mfrs.,
Chicago," are not identical with, or an imitation of, complainant's
marks "Remington;" Large Red Seal; "Remington Standard Typewriter,
manufactured by Wyckoff, Seamans & Remington, Ilion N.Y.,
U.S.A.;" "Remington Standard Typewriter."
The use of two distinct surnames clearly differentiated the
machines of defendant from those of complainant, and when
defendant's cards, signs, catalogues, instructions to agents, etc.,
are considered, it seems to us that the record discloses, to use
the language of Mr. Justice Field in the
Goodyear case, a
persistent effort on defendant's part "to call the attention of the
public to its own manufactured goods, and the places where they are
to be had, and that it has no connection with the plaintiff."
Doubtless the Remington and Sholes, in using the name
"Remington-Sholes,"desired to avail themselves of the general
family reputation attached to the two names; but that does not, in
itself, justify the assumption that their purpose was to confuse
their machines with complainant's, or that the
Page 198 U. S. 140
use of that name was, in itself, calculated to deceive.
Remington and Sholes were interested in the old company, and
Remington continued as general manager of the new company. Neither
of them was paid for the use of his name, and neither of them had
parted with the right to that use. 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 conduct its business as not to palm off its
goods as those of complainant, the action fails.
As observed by Mr. Justice Strong in the leading case of
Canal Company v.
Clark, 13 Wall. 311, "Purchasers may be mistaken,
but they are not deceived by false representations, and equity will
not enjoin against telling the truth." And by Mr. Justice Clifford,
in
McLean v. Fleming, 96 U. S. 245:
"A court of equity will not interfere when ordinary attention by
the purchaser of an article would enable him at once to
discriminate the one from the other."
And by Mr. Justice Jackson in
Columbia Mill Co. v.
Alcorn, 150 U. S. 460:
"Even in the case of a valid trademark, the similarity of brands
must be such as to mislead the ordinary observer."
And see
Coats v. Merrick Thread Company, 149 U.
S. 562;
Liggett & Myers Tobacco Company v.
Finzer, 128 U. S. 182.
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. And, in our view, defendant's
name and trademark were not intended or likely to deceive, and
there was nothing of substance shown in defendant's conduct in
their use constituting unfair competition, or calling for the
imposition of restrictions lest actionable injury might result, as
may confessedly be done in a proper case.
Decree of circuit court of appeals reversed; decree of
circuit court also reversed, and cause remanded to that court, with
a direction to dismiss the bill.
