Howe Scale Co. v. Wyckoff, Seamans & Benedict, 198 U.S. 118 (1905)
U.S. Supreme CourtHowe Scale Co. v. Wyckoff, Seamans & Benedict, 198 U.S. 118 (1905)
Howe Scale Company v. Wyckoff, Seamans & Benedict
Argued January 16-17, 1905
Decided April 24, 1905
198 U.S. 118
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,
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
"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."
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,
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
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
(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. "